*)* UNIVERSITY OF CALIFORNIA LOS ANGELES SCHOOL OF LAW LIBRARY OF PATENTS FOE INVENTIONS .. 1 rormwooDi *vu <>.. vEw-muorr L05DOK THE PATENTEE'S MANUAL A TREATISE ON THE LAW AND PRACTICE OF PATENTS FOR INVENTIONS WITH AN .APPENDIX OF Statutes, Hulcs, mrb foreign miit Colonial patent |Tafos Ininnaiional Contention: anb- ^protocol BY JAMES JOHNSON i OF THE MIDDLE TEMPLE, BARRISTER -AT - LA W AND J. HENRY JOHNSON SOLICITOR, ASSOC.INST.C.E. PAST PRESIDENT OF THE INSTITUTE OF PATENT AGENTS SIXTH EDITION REVISED AND ENLARGED LONDON LONGMANS, GREEN, & CO., PATERNOSTER ROW STEVENS & SONS, LD., 119 & 120 CHANCERY LANE 1890 1090 PBEFACE TO THE SIXTH EDITION IN preparing the Sixth Edition of this Work for the press, considerable changes have ,*been made both by way of enlargement and in the arrangement of the matter. The provisions of three supplementary Acts of Parliament and of four new sets of official Eules, now consolidated with the previous Rules, have been noticed, whilst numerous decisions of the Courts during the last six years, many of which have an important bearing on the Law of Patents, have been cited. Several chapters have been divided with a view to a fuller and more convenient treatment of the subjects, and additional chapters on other branches of the law have been introduced. Every page has undergone careful revision, and no pains have been spared to render the treatise one that patentees and inventors may consult with confidence as a trustworthy exposition of that branch of law with which their interests are most closely con- cerned. It may be added, that although the treatise was originally written especially for their use, the authors ven- ture to think that in its enlarged form it may deserve the notice of the legal profession, since the large experience of one of them in obtaining Patents, and in the conduct of litigation arising out of Patents for forty years, has been turned to account in the production of the volume. 761210 ri PRKFACK TO I III Hvril ReprintH are given of all lament which have any direct bearing <> tin- -n!.j-rt <*f tin- v. as well as of tin- Uu!'-, anil I-'-. i jus issued by tin- Board of Trade under the auth'-rit; Acts, of th- I Jules framed I.N tin Law Offio ^ard to proceedings bef< if the KuleH of tin- l'n\\ Council with r.'S|Ht to applications for the (treat additions to and alteration* in th. :- i^n States and British Colonies have been mad- <>f recent years. The Appendix containH summaries of tli u !.!. <>f thwte laws to date, re\ised by profefii<'!iiil rorreh) Tin \i'|M inli\ aU> MI i tains a reprint of the International Convention and Protocol relating to arrangements foi mutual protection of inciu.strial property including I'n' 1 MM \, i a ion Great Britain pivo her adhcHion, and a i-hupt* r has therefore been devoted to the subject in tin- Ixxly of tlh treatise. A copy of the Rules lately issued by tin Board of Trade in n hit ion to applications for Patents under thisG \\ ill also be found in the Appendix. >us Iiul. \ will IK- found of material assistance liv those readers who are in search of any particular topic. following summary of the alterations effected by the :it Acts of Parliament may be given here, // i,. . - if they make default in gran: i'le terms. "2. ;..-lit <-f the < u<) minus without making com) * \va*i .1!.., h-h, ,i :;. \ I'.iti nt maybe aeaigned for any pta or part of the United Kingdom. 4 A British I'.tt. i longer oomea to an end at the expiration of any earli> r .it. nt for the sauic in\. ntiun. Hi- tin.. -upplciiieiitaiy Act- have ma tin- charge of tin- Institute of Patent Agents. itulate in brief the changes effected by recent iti"M : Tiic i'1-ovi-ions of many earlier statutes were consolidated and amended ; several f.-atun > hitherto im- knowii in our system were introduci d : tin- procedure was simplified : the fees payable to Government on applica- tions for Patents were n-duc.-d, and greater facilities forth.- jwyin. nt applications for Patents during the first four year> of the new system was on the averaj:. 17.108, but no fewer than 7,79*2 of them, that is, about 45 per cent., were annually abandoned or otherwise came to naught. The number of ap- plications increases at the rate of about a thousand a year. 47 LINCOLN'S bra FIELDS, LONDON : iv. .0. CONTENTS EXPLANATION OF ABBEEVIATIONS . . . xvii CASES CITED xix CHAPTER I PRELIMINARY 1 CHAPTER II THE SUBJECT-MATTER OR NATURE OF A PAT- ENTABLE INVENTION 5 A BARE PRINCIPLE NOT PATENTABLE ... (5 PROCESSES 11 CHIEF CLASSES OF PATENTABLE INVENTIONS . . 14 New contrivances applied to new objects or pur- poses ... ..... 14 A new contrivance employed to effect a well-known object 14 A new combination of known parts or old pro- cesses ........ 15 A new mode of applying a known thing . . 1(J Chemical processes, sometimes in combination with mechanical contrivances . 19 CHAPTER III THE INCIDENT OF UTILITY . X CON < HAITI i; iv IHI !\< 1IU.NT OF NO TBUB IXVBNTOB ' AMI8TAKT8 AND WoRKMEX ... : ..... U'D I"' \XDOXED KXPBRIMEXTK OP OTHEK PERSOXh PRIOR IMPERFECT MACHINES MBB IHVEXTIOXB n\\ ' IECT . I is PHINTF.D BOOHB . . . . "1 rios IN THB SPECIFIC vrto \ PHIOK l'\TI ;OB PUBLICATION BY IXVKMOI; ... C<> VI. CoMMtNK VTP .... I'BRIMENTS BY Tin .... <>2 I'KIOII POBLICATIOX in OMM.I. 1' IMITIONS CH.M'TKK V \MolNToFlNVl.NTIoN Kl.t.H I KKI > T< > A PAli 1'VTBNTS FOR APPLICATIOXB 84 CH.M'TKK VI WHO MAY HE A PATI.M I .... CHAPTKi: VII I'KOCEDUBE ON APPLYING I TIIK (iH 1 I'M I A > \L TO THI I.VW On . . . . hi" I'M IM i i' is THIS ('< N OP >K DATE Kl\ \I. Ari'l.lc \TION8 M\: l'-7 COSTS CHAlTKi: XII Till PATENT, 1T> DAT!.. IHKATKtN. AND i TKNT ... 170 ( HAITI.!; Xlll AMENDMKNTS <>K si'K( II K ATIONS . AlI'KAl. TO THE L\\\ .... 180 WHO IS KNTITLED TO OPPOSE . . . . .180 i SDH OF OPPOSITION 1^1 CONDITIONS IMPOSED ox ALLOWING AMEND.MI INDEH THE OLD L,A\Y 1^1 COITIONS TNOEH THE Al'T OF 1888 1. \ri.\NATION8 Ari i.i* ATION TO A JUDGE FOR LIBKKTY TO APPLY TO AMIM> I'l MM.NTK LlTK 1M AMI NDMKNTN Ml ST NOT KNLARGE OR MATKKI AI.I.V \ AI;V THi: OHKHNAL INVENTION .... 1H(> I>IM LAIMKK- I M'l K THE OLD LAW . . .1*7 POWERS OF THE MASTER OF THE ROLLS . .1 s " Co- r.'M CHAPTER XIV KXII.NSION OR PROLONGATION OF LKTTERS PATH NT l'.l THE PETITION AND PROCEDURE .... 198 THE HEARIS ]it" THE A< COI-NTS l!'H (iiutrM>s or I> IBIOM rroN THE MERIT . 2<>'2 CONTENTS xiii PAGE THE NEW PATENT 206 COSTS 208 SELECTED DECISIONS OF THE PRIVY COUNCIL . 209 CHAPTER XV ASSIGNMENTS AND LICENCES ASSIGNMENTS 216 LICENCES 219 COMPULSORY LICENCES ..... 225 CHAPTER XVI THE REGISTRATION OF PATENTS, ETC. . ' . 228 CHAPTER XVII INFRINGEMENTS 233 WHERE THE PRINCIPLE is NOT NEW . . . 242 INVENTION OF IMPROVEMENTS NO DEFENCE . . 246 COMMON DILEMMA 247 COMBINATIONS 247 CHEMICAL PROCESSES AND PRODUCTS . . . 254 DEALING IN ARTICLES MADE BY INFRINGING A PA- TENT .... 261 INFRINGEMENT BY USER . . . . ; 263 AGENTS . . . ". . . . . . 265 CARRIERS . 265 FOREIGN VESSELS . . . . . . . 265 THE CROWN . . . . ^ . .-. ~ . .266 CASES OF NON-INFRINGEMENT . . . . 267 INTENTION OF INFRINGER NOT MATERIAL . . 269 CHAPTER XVIII THE PRACTICE IN ACTIONS FOR INFRINGE- MENTS ... .272 CONCURRENT ACTIONS AGAINST SEVERAL INFRINGEBS . 276 ISSUES .... .... 276 INSPECTION OF MACHINES AND PROCESSES . . 277 PARTICULARS. OF BREACHES 279 00 v I'Ulll- I I M :iSs ..... -JMO . OF MODBLH REFUSED l\ .... TlIK TlCl\! ........ I:\IIM NCB . . . ... ID J .'. 1 l'i:l M. . . :>!> !>\M\I. I'KOKITS . . . :>s2 DBLI\ I \:\ II' i>l: M \< MINES. "7-/.<\/) ......... t- M.<\ ........ COSTS \ND ('KUTIKICATK8 ...... CIIAITKH XIX \( TIONS TO H1.STKAIN A PATENTEE'S THREAT . 808 THKI at ......... 805 : IONS ..... H AM- Bahama Islands . . 470 Barbadoea . . .471 P.orm-o, British North . 472 British Guiana . . 472 British Honduras . . 478 Canada . . . .478 Cape of Good Hope . 477 'ii . . . . 477 Fiji . . . .478 Hong Kong . . . 479 India . . . .479 Jamaica . . . 482 Leeward Islands . . 488 Malta 488 Mauritius . . . 484 Natal .... Nt \\ foundland . . 4H -outh Wales . . 486 New Zealand ... 487 Queensland . . . 491 St. Helena . . .408 South Australia . Straits Settlements Tasmania ... Trinidad ... 496 Victoria .... 497 Western Australia . :.no INDEX EXPLANATION OF ABBREVIATIONS Act of 1852 15 & 16 Viet. c. 83 Act of 1883 46 & 47 Viet. c. 57 Act of 1885 48 & 49 Viet. c. 63 Act of 1886 49 & 50 Viet. c. 37 Act of 1888 51 & 52 Viet. c. 50 Ad. & El Adolphus & Ellis' Eeports B. & A Barnewall and Adolphus' Eeports B. & Aid Barnewall and Alderson's Reports B. & C Barnewall & Cresswell's Eeports Bea Beavan's Eeports B. & S., or Best & Sm. . Best & Smith's Eeports Bing. N. C Bingham's New Cases Bos. & Pul Bosanquet & Pullar's Eeports C. B Common Bench Eeports C. B. N. s Common Bench Eeports, New Series C. & K Carrington & Kirwan's Eeports C. & P Carrington & Payne's Eeports C. L Common Law Eeports Carp. Eep Carpmael's Eeports of Patent Cases Ch. D Law Eeports, Chancery Division Coop. C. C Cooper's Chancery Cases Cr. M. & B Crompton, Meeson, & Eoscoe's Eeports Dav. P. C Davis' Patent Cases De G. F. & J De Gex, Fisher & Jones' Eeports De G. & J De Gex & Jones' Eeports De Mac M & Gonl ^ ^ '\ De Gex ' M ac n g h ten & Gordon's Eeporta De G. J. & S De Gex, Jones & Smith's Eeports Dr. & Sm Drewry & Smale's Eeports E. & B., or El. & Bl. . . Ellis & Blackburn's Eeports E.B.&E.,orEll.Bl.&Ell. Ellis, Blackburn & Ellis' Eeports Ell. & Ell Ellis & Ellis' Eeports Eq. Eep Equity Eeports Exch. Eep Exchequer Eeports Giff Giffard's Eeports Goodeve's Cases. . . . Goodeve's Patent Cases 1 Griffin P. C Griffin's Patent Cases 2 Griffin P. C Griffin's Eeports of Cases before Law Officers H. Bl H. Blackstone's Eeports H. & M Hemming & Miller's Eeports H. L. C . House of Lords Cases Holroyd Holroyd on Patents Holt N. P. C Holt's Nisi Prius Cases Hurlst. & Norm. Ex. Eep., , Hurlstone & Norman ' s Exchequer Eeports or Jri. cV IN * ' Johns Johnson's Eeports Jur. N. s. ...... Jurist, New Series K. & J Kay & Johnson's Eeports a EXPLANATION OK ABBREVIATIONS x. H. Ch. law Journal Report*, New Serial. Chancery Law Journal Report*. New Bsriea. Queen'* Beneh ditto. Common PteM v K.EX. ... ditto, BKeheauer L. R. App. Ca. . The Law ReporU, Appeal Case* Rngli.h and Iriah Appeals L-R-t,' I: I' . Do. '. i I' L.R.EX. DO. bh i : Dfc ..... L. R. Ch. I> ...... Do. Chancery Division ' Uw **} Do. Chancery Appeal, IMW Rep. Eq. . . . Do. Equity Case* Law Rep. C Do, Qtnm I L. T ........ Law Time* ReporU L. T. x. K. ..... Do. New Serie* liacr. P. C ...... Macrory't Patent Cam Mac. A Oord. ..... Maenaghten A Gordon's Report* II. A (J ....... Manning and Qrainger's ReporU II. A \v ....... MeeMn A Webby's ReporU Her ......... Merivale'a ReporU Moore P. C ...... Moore's ReporU of Cases in the Privy Council Moore P. C. C. M. s. . . . Ditto. New Series Myl. A Cr ....... Mylne A Craig's ReporU N. R ........ The New ReporU Newton's Lond. Jour. . . Newton's London Journal Pract Mcch. Jour. . . . Practical Mechanic's Journal R. P. C ........ ReporU Patent Cases (Patent Office) Ross ........ Russell's ReporU Ry. A Moo ...... Ryan A Moody's Reports Scott C. B. R ..... Scott's Common Bench ReporU Stark. K ....... Starkie's ReporU Times R ....... The Times ReporU T. R. ....... Term ReporU Tyr ......... Tyrwhitt's ReporU V. A B ........ Vesey A Beamea' ReporU W. N ........ Law ReporU, Weekly Notes W. P. C ....... Webster's ReporU of Patent Cases W. R ........ The Weekly Reporter T. A C ........ Young A Collier's ReporU CASES CITED The Defendant's Name is printed in Italics Abel's Application, 169 Adair's Patent, 194, 197, 201, 205 Adair v. Young, 234, 264, 276 Adam's Patent, 174 Adams v. North British Railway Co., 225 Adamson's Patent, re, 59, 63 Adie Clark, 107, 134, 145, 153, 225 248 Adie v. Clark, 223, 224 Aiden Fletcher, 76 Aire and Calder, etc., Application, 161 Airey's Application, 160 Albo-Carbon Light Co. v. Kidd, 76, 300 Albuquerque Nunn, 297 Allan's Patent, re, 196 Allen's Patent, 183 Allen v. Doulton, 185 Allen v. Rawson, 31, 289 Allison Collard, 274 American Braided Wire Co. v. Thomson, 25, 57, 67, 288, 293, 294, 299 Amos Eeynolds, 71 Ancoats Vale Rubber Co. Spen- cer, 265, 288, 302 Anderson Stead, 40, 269 Anderston Foundry Co., The Harrison, 133, 134, 141, 152, 250, 251, 252 Anglo-American Telegraph Co. Piggott, 278 Anglo-American Brush Corpora- tionKing, Brown, and Co., 45, 110 Anglo-American Brush Corporation v. Crompton, 282 Arkwright Bex, 23, 33, 51, 115, 127, 309 Arkwright v. Nightingale, 129 Army and Navy Co-operative Society Tickelpenny, 76 Arnold v. Bradbury, 106, 150 Ashburn Calvert, 84 Ashworth's Patent, 181, 183, 187 Aston Brook, 77, 80, 84 Aston Saunders, 148 Atherton's Patent, 164 Aube's Patent, 205 Automatic Weighing Machine Co. v. International Hygiene Co., 301 Automatic Weighing Machine Co. v. Knight, 8, 241, 298, 300 Automatic Weighing Machine Co. Combined Weighing Machine Co., 299, 305, 306, 307, 308 Automatic Weighing Machine Co. v. Combined Weighing Machine Co., 157, 242, 305, 308 Avery's Patent, 310, 311 Axmann v. Lund, 224, 225 Bacon v. Jones, 275 Badham v. Bird, 300 Badische Anilin und Soda Fabrik v. Dawson, 261 Badische Anilin und Soda Fabrik v. Levinstein, 19, 25, 121, 122, 125, 126, 156, 240, 241, 258, 260, 285, 286, 287, 298 Baily, ex parte, 167 Bailey's Patent, 163, 201, 202 Bailey v. Roberton, 19, 74, 84, 109, 111, 116, 119, 124 Bainbridge v. Wigley, 91 Bairstow's Patent, 160, 163 Bakewell's Patent, re, 196 Ball v. Lelm, 301 Ball's Patent, 194, 197, 208 Bamlett v. Picksley, 82 Barber v. Grace, 237, 242 Barber v. Harris, 31 Barker v. Shaw, 33 Barlow v. Baylis, 49 a 2 CITKI !.,'. . '. . . ' : < ;..: Barrett T. Day, 805, 806 Co.. Irtmttet-BarMtt, 806 Telephone Co., Bateman T. Gray, 888 Bateman and Moore's Paten BafcMOU Walton. 48. 138 Bate* and RadgAte, toe part* 99, 166. 171 Bailey T. Kynock, 878, 879, 808 Batty Thomson, 60, 85 fioyto Barlow. 49 Boyiu-Ootea, 875 Batakad PttotjSIQ Beard v. Eowion, 87, 98. 185, 186, 180, 186, 889 Beard T. Turner, 898 Beck and Justice's Patent, 188 Bell's Patent, 180, 198 fimec&e Bridaoi hennet -Moon, 133, 184, 885 fimnw -Proctor. 134, 841, 348. 345, 346, 865 Bentley T. Fleming, 58, 63 Stmyon Campi< Berdan's Paten t Server Jonea. 54, 380 Bergmann T. Macmillan, 318 Bette' Patent, 196. 198, 300, 201 Betts T. Dt Vitre, 55. 155, 365. 370, 395, 301 Betta T. Mauiet, 55, 57, 59, 154, 345, 373, 374 Betta T. Neiltcn. 363, 864, 887 Beto-Neilson, 140, 293 Better. WMmott, _'.!. -JTI BMWrky Croesley, 124, 130, 156, 08, V7<-, B0ley Hancock Bewlej T. Han& Bibby-Penn, 83, 98, 108, 110, 124, 363, 380, 382, 293 Bickford T. Skeu-es, 121. 126, 138, Binney v. Feltmann, 15 Birch v. Mather. 383 Bird Badham. 300 Bishop Qtmdl, 245, 247 Blake's Patent, 205 Blakey T. Latham, 68, 882, 388. 398,299 Blamond's Patent, re, 174 Blank T. Footman, 898 BUatU* Galloway, 46, 136 fiboMtr-Honiball, 40 Bloxam T. Ehce, 27, 31, 106, ISA 140, 177, 318 I : ! ..' ' . Boot Hall, 868 Booth v. Kennard, 16. 117. 148, M Botoc*-Foxwell. 97, 181. 188, 188, 184. 185 Bottle Envelope Co. T. Stvmer, 79, NO Boolton r. Dull. 7, 11. 18, 17, 89, 69 Boulton Hornblower, 6 : Boviir* I'au-nt. 807 liovill T. CraU, 374, 376 Borill T. Goodier, 277 Bovill v. Iladlfy. 301 1 T. Ktyworth, 850 BovM Knowlea, 888 11 T. Moore. 88, 877 Bovill T. Pimm. 848, 869 Bower T. Hodge*. 888 Bowman v. Taylor, 880 Bown T. Sanium, 384 Boyd T. Harrock*. 345, 388, 886, 99 Bradbury Arnold, 106. 150 Bradbury Haydock, 300 Bramah v. HardcattU, 59 Brand Gibson, 11, 12, 29. 113. 125, 362, 366 Brandon's Patent, 176, 192 Bratby Codd, 185 Braver Sharp, 76, 304, 305 Bray- Sugg, 303 Bray v. Gardner, 67, 136, 185, 899 Brereton T. Richardson, 44, 49 Brett Electric Telegraph Co., 10, 12,238 Bridson T. Uentcke, 274 Bridson v. McAlpine, 275 Briggs v. Lardeur, 273. 274 Britain v. Hirsch, 67, 76. 387, 388 British Dynamite Co. T. Krebs, 129, 157 Brook T. Aston, 77, 80, 84 Brook* Noton. I Brotherhood Halsey, 303 Brown Hastings. 107, 135 Brown's Application, 95 Brown v. Moore, 277 Brunton T. Hawkts, 23, 27, 72 Bryant and May Fusee Testa Co., 185,306 BuW Boulton, 7, 11, 13, 17, 29. 69 Buller Smith, 302 Burgess T. Hattley, 297 Burgess v. i/t5, 297 Burland'a Trade Mark, 296 CASES CITED XXI Burnett, v. Tate, 253, 261, 303 Burt v. Morgan, 305 Bush v. Fox, 13, 80, 245, 289 Butler Elsey, 280 Caldwell v. Van Vliessengen, 264, 266 Calvert v. Ashburn, 84 Campbell Speckhart, 232, 263 Campion v. Benyon, 91 Cannington v. Nuttall, 16, 83, 189 Cardwell's Patent, 193, 199 Carez's Application, 88, 332 Carpenter's Patent, 207 Carpenter v. Smith, 37, 45, 87 Carr's Patent, 201 Challender v. Boyle, 304, 306, 307 Chamberlain Heugh, 225 Chambers v. Crichley, 219, 225 Chandler's Patent, 160, 162 Chanter v. Dewhurst, 225 Chanter v. Johnson, 225 Chanter v. Leese, 222 Chappell v. Puraay, 87 Chatwood's Patent, 194 Chavasse v. Stevens, 223 Cheavin v. Walker, 88, 314 Cheetham v. Oldham, 278, 279,280 Childs' Patent, 215 Chollet v. Hoffman, 216, 230 Christy Ellwood, 231, 292 Chubb Kaye, 55, 56, 134, 155, 157, 237, 245, 247, 288, 294 Church Engineering Co. Wil- son, 306 Church Engineering Co. v. Wilson, 280 Church's Patents, 193, 194, 197, 206, 207, 208 Claridge's Patent, 192 Clark's Patent, re, 196, 199 Clark v. Adie, 107, 134, 145, 153, 225, 248 Clark Adie, 223, 224 Clark Ellington, 117, 247 Clark v. Ferguson, 273 Clarke Ormson, 78, 85 Clarke Walker, 305 Clayton Goucher, 219, 253 Clayton Murray, 16, 49, 237, 253, 293 Chines Saxby, 243, 246, 250 Cochrane's Patent, 181 Cochrane v. Smethurst, 91 Cooking's Patent, 197 Codd's Patent, 184 Codd v. Bratby, 185 Cole v. Saqui, 67, 139, 299 Coles v. Baylis, 275 Collard v. Allison, 274 Colley v. Hart, 304, 305 Combined Weighing, etc., Co. v. Automatic Weighing Machine Co., 299, 305, 306, 307, 308 Combined Weighing Machine Co. Automatic Weighing Machine Co., 157, 242, 305, 308 Conder Hall, 217 Conniff's Application, 165 Cook v. Pearce, 91, 93 Cooper Palmer, 280 Cooper v. Whittingham, 297 Corcoran Wegmann, 114, 119, 154, 302 Cornish v. Keene, 13, 17, 36, 38, 46, 47, 51 Couchman v. Greener, 224 Cowley Russell, 16, 23, 69, 130, 143 Crabtree's Patent, 182 Craig and Macfarlane's Applica- tions, 165 Crampton v. Patents Investment Co., 98, 111, 124, 305, 308 Crampton The Queen, 316 Crane's Patent, 24 Crane v. Price, 12, 15, 23, 67, 69 Crate Bovill, 274, 276 Crawley Bushton, 78 Crichley Chambers, 219, 225 Croll v. Edge, 112 Crompton Anglo-American Brush Corporation, 282 Crompton v. Ibbotson, 128 Cropper v. Smith, 27, 148, 157, 184, 219, 237, 299, 300 Crossley v. Beverley, 124, 130, 156, 238, 276 Crossley v. Derby Gas Light Co., 292, 293 Crossley v. Dixon, 223 Crossley v. Potter, 22, 112, 124, 138, 148, 150, 288 Crossley v. Stewart, 282 Crossley v. Tomey, 280, 282 Crosthwaite v. Steele, 224 Croysdale v. Fisher, 44 Cunard Co. Washburn, etc., Co., 265, 296 Curtis v. Platt, 240, 242, 243, 279 Cutler Eegina, 79, 84, 136 Cutler Bex, 147, 309 Dale Wallington, 14, 121, 189 Dance's Patent, 161 Dangerfield v. Jones, 10, 19, 22, 158, 224 Dania Tatham, 67, 73, 79, 251 Daniel's Application, 161 i \>l-> < II Kit Dart's Patents, 90. 180 Davenport v. Goldberg. 277 i . . . i . ; Davenport v. Phillip Davenport v. HicHardt, 382 Davenport v. liyiandt. 961, 370 993,801 I and Woodlcy. 169 i> . .^ Lfvia,TQ Daw v. Kley, 107 389 Dawton- Badiaehe Anil in and Soda Fabrik, 361 floy Barrett, 805, 808 Deaoon'i Patent, 301. 915 I)e la Hue v. Dickinson, 391 De la flw-Sturtz. 93. 130. 123. 135 Derby Out Light Co.- Croaaley, Daring, ex porte, 166 Deroane v. Fairie, 17, 2.: 138 Deroane's Patent, 304, 311. 409 De Vi/rr- Bette. 55, 155, 2' 995.301 Dewhunt Chanter, Dewick- Fisher, 93, 280 Dickinson De la Bu> Dickinson Sellers, 158, 250 Dismore, r. . Dixon's Patent, re. in". Dixon Crosalev Dixon v. London Small Arm* Co., Limited, 366 Dollond'a Paten: Doulton Allen, 185 Dowries v. Falcon Worfci, -_M7 Drake v. .Muntz's Metal Co., 379 Driffield. etc.. Co. v. Water low and Co., 305 Drumnumd's Patent, 313 Drysdale Owynne, 287 Dublin and Liverpool, etc. Wash- born, etc., Co.. Dudgeon v. Thomson, 153, 189, 234, 248, 250, 251, 273. 27 Duke of Buccleuch Wakefield, 275 Duncan and Wilson's Patent, 200, 201,202 Dunnicliff v. Mallet, 218 Eades v. Starbuck Waggon Co., 113 Eadie's Patent, 164 Easterbrook v. Great Western Railway Co., 22,139, 11 '.Ml. _' I _.-.". 1 1 Easttrbrook -Saxby, 298 COMB KM Railway Co. Oraavcw. 980 Eatton -TeUej. 74. 128. 135, 140. JW^~Crol / :;, ...... .1 If^fSI Pxigebery v. Sfetwiu, 87 Eduoo and Swan United, Co. v. Woodh.m*e, 16. 71 117. 196, Ediaoo and Swan Co. v. Holland, 36. 49, 85. 118. 139, 154, 288, MA, Ml, 198, Jr. Bdiaon Telephone Co. v. Imlia Rubber Co., 989 Edmund's Paten: 318 /:/. i.. H i, -7. 9S, i-''., LM, 130, 186, 389 l.lni.,1, v. /UM,i5,9Jft,S4.-. -'"ii. IM, Ml Electric Lighting Co. Liardet, Electric Power Storage Co. Union Electrical Power Co., 304 Electric Telegraph Co. v. Brett, 10, I-.' c Telegraph Co. v. Daw, 107 Elgie v. Webtler. A'/A*m-Upmann. .'71 Ellington v. CUi, Elliot v. Turner, I'.'l. 1'.'. Elliott Xcwall. 1 111. U-', 268, 269 Ellwood v. Chritty, 2H1 Elmslic v. Boursier, _''. 1 l-Bex, 147 bee Bloxam, 27, 31, 106, 138, 140, 177, 218 Else; v. u//r, 280 Equitable Telephone A$sociation United Telephone Co.. 274, 275 ^ -Hills, 20, 66, 290 Evans and Otway's Patent, 165 Everington Mackintosh, 120 Everitt's Case, 103 Fairburn Household, 306 Fairburn v. Household, 113, 142, 143 Fatria- Derosne, 17, 23, 121. 1'J :< Falcon Works Downes, 347 Fardell Poapard, 107 Farquharson Plating Co., I'.' Feather v. The Queen, 174, 26C, Fearer Griffin, 298 CASES CITED XXlll Feltham Slazenger, 74, 286 Feltmann Binney, 15 Felton v. Greaves, 92 Fenn White, 246, 250 Ferguson Clark, 273 Fernie Young, 19, 20, 84, 287 Fisher v. Dewick, 93, 280 Fislier Croysdale, 44 Fleming Bentley, 58, 62 Fleming United Telephone Co., 280 Fletcher v. Aidcn, 76 Fletcher v. Glasgow Gas Commis- sioners, 268 Flower v. Lloyd, 253, 279, 280, 294 Footman Blank, 298 Ford v. Foster, 293 Forrester Upmann, 297 Forsyth v. Riviere, 12, 17, 30 Foster Ford, 293 Foster Muntz, 19, 42, 85, 119, 120, 258, 262, 273, 289 Fothergill Neilson, 224 Fowler v. Gaul, 281 Fox Bush, 13, 80, 245, 289 Fox Holland, 280 Foxwell v. Bostock, 97, 131, 132, 133, 134, 135 Foxwell v. Webster, 276 Foxwell Thomas, 147, 158, 245, 289, 290 Franks Pidding, 221 Fraser Hocking, 294, 298 Frearson v. Loe, 70, 148, 267, 276, 295 Fuller Morgan, 280 Furness' Patent, 201 Fusee Vesta Co. v. Bryant and May, 185, 306 Galloway's Patent, 197, 201 Galloway v. Bleaden, 46, 136 Gamble v. Kurtz, 236 Gandy v. Reddaway, 148 Gann Wilson, 282 Gardner Bray, 57, 126, 185, 299 Gardner Nordenfeldt, 145, 176, 243 Gare's Patent, re, 105, 174, 189 Garrard v. Edge, 253, 283 Garthwaite's Patent, 165 Gas Light and Coke Co. Patter- son, 28, 60, 75 Gaul Fowler, 281 Gaulard and Gibb's Patent, 76, 110, 111, 117, 180, 185, 187,309,311, 313 Gaulard v. Lindsay, 185, 305 Geary v. Norton, 272 Germ Milling Co. v. Robinson, 59, 278, 279, 283, 299, 300 Gibson v. Brand, 11, 12, 29, 113, 125, 262, 265 Gillett v. Wilby, 254 Gisborne Lang, 52 Glasgow Gas Commissioners Fletcher, 268 Glossop's Patent, 163 Gloucester Waggon Co. Saxby, 64, 68, 74, 285 Goldberg Davenport, 277 Goodfellow Haslam Co., 185 Goodier Bovill, 277 Goodwin Higgs, 19, 268 Gosnell v. Bishop, 245, 247 Goucher's Patent, 207 Goucher v. Clayton, 219, 253 Gozney's Application, 164 Grace Barber, 237, 242 Grand Junction Railway Co. Newton, 250 Gray Bateman, 288 Gray McCormick, 268 Great Eastern Railway Co. Sheehan, 218 Great Northern Railway Co. Harwood, 77, 80 Great Western Railway Easter- brook, 22, 139, 143, 240, 241, 242, 294 Greaves v. Eastern Counties Rail- way Co., 280 Greaves Felton, 92 Green's Patent, 163, 231 Green Mathers, 176, 222 Greener Couchman, 224 Gridley v. Swinborne, 315 Griffin's Applications, 168 Griffin v. Feaver, 298 Grimshaw Huddart, 54, 129, 138, 262 Griswold London and Leicester Hosiery Co. 288 Grover and Baker Sewing Machine Co. v. Millard, 223 Grover and Baker Sewing Machine Co. v. Wilson, 280 Guest and Barrow's Patent, 164 Guilbert-Martin v. Kerr, 76, 298 Gwynne v. Drysdale, 287 Haddan's Patent, 167,183, 311, 313 Hadley Bovill, 301 Hague Hullett, 50 Hague Losh, 35, 78, 272, 273 Halbard Newton, 152 Hall and Hall's Patent, 163, 164 Hall and others, 184 Hal! . C.m^r. 217 Hall's il>r ) Patent. 39 -HM 67, 70, WO, 284, "7 :tiMi Hall T. /arru. 70 Haisey T. Brotherhood, 808 namiltcn Hayward. 16, 71, 187, M Hampton and Facer's Patent, 188 Hancock Bewlej, 19 Hancock v. Bewley, 176 Hancock T. Moufem, 254 Hancock T. Som^rwW, 40 HardcastU Bramab, 59 Hordcffc-Haworth,24, 148, 157 Hanly's Patent, 201, 207 Hart Taylor, 288 Harford -Neilson, 7, 23, 93, 115, 125, 126, 127, 138, 155, 289 Harrii Barber, 81 Harris v. RothtctU, 53, 281 Harrison v. The Anderston Foundry Co., 133, 184, 141. 152, 2/-< 252 Harrison Newby, 225 Harrison v. Taylor, 298 Harrison United Telephone Co., 53, 110, 253 Hart Colley, 304, 30-"> Hart Mullins, 44 Hartley's Patent, 12 Hartley Heap, -2-J4. 225, 232 Hanvood v. Great Northern Rail- way Co., 77, 80 Haslam Co. v. Goodfellow, 185 Haslam Nickels, 92 Haslam v. Hall. 57, 76, 280, 284, 297,300 HassaH v. Wright, 216, 230 Hastings v. Brown, 107, 135 Hateley- Burgess, 297 Hatfield Russell, 280 Hatches Brunton, 23, 27, 72 Haworth v. Hardcastle, 24, 148, 157 Haworth-- Townsend, 252, 269 Haydock T. Bradbury, 300 Hayne T. Maltby, 221 Haythornthwaite's Application, 163 Hayward and Eckstein v. Pavement Light Co., 237 Hayward T. Hamilton, 16, 71, 237, 306 Heald Steiner, 19, 291 Healey's Application, 165 Heap T. Hartley, 224, 225, 282 Hearson's Application, 1W) Hearson's Pat. : Heath and Proat's Paunt.162. 186 Heath's Patent, 197. 198, Slf ii. tfft N Mti . It, r. '. .'. 170, v-'i B : tuSy. i '.:'.' Ji.^ Henry , tx par tt, 106, 167 AmMMtett-HoUidaj, 2*1. 987 Herbert'! Patent, 196, 207 Herrborgor T. Squire, 58, 78, 76. IOM01 HMM T. SUvtnton, 218 Heugh T. Chamberlain, 986 Hcugh T. Magill, 274 Hickt Lovell, 288 //.^/.n* -Seed. 148, 168. 188, 888, MB, Ml HigRt T. Goodwin, 19, 868 Higham London Hosiery Co., in Hill v. Thompson, 14. 23, 27, 80, 88, 146, 278 Hill v. Tombs, 82 Hills' Patent, 197. 198, 200, 802, J.205, 208, 211 Hills Bargeas, 297 Hills v. Evans, 20, 56, 290 Hills v. Laming, 220 Hills v. Liverpool Go* Light Co., Hills v. London Gas Light Co., 19. i-. M, H, -.'-.i Hinde v. Osoom*. 288 Hinks v. Safety Lighting < 11'.. I!.'. 153, 158 Hirsch- Britain, 67, 76, 287, 888 Hirschfeld Leather Cloth Co., J first Osmond. 237 Hitchcock Wright, 108, 168, 861, 270 Hocking T. Fraser, 294, 298 Hocking v. Hocking, 155, 21 Hodges Bower, 222 Hoffman Chollet, 216. 280 Hoffman v. Post ill, 888 HoWert-Oxley, 59, 112, 262 Holland Edison and Swan Co., ; M, US 129, 154, 288, 284, 285, 298, 299 Holland T. Fox, 280 Holliday T. Hcppenstall, 281, 287 Holliday Simpson, 19, 21, 120. 129, 137, 138, 154. 182 Holmes v. L. and N. W. R. Co., 181 Holste T. Robertson, 277 Honiball's Patent, 198, 20S CASES CITED xxv Honiball v. Bloomer, 40 Hookham's Application, 163 Hornblower v. Boulton, 6 Hornby's Patent, 208 Horrocks Boyd, 245, 282, 286, 299 Horrocks v. Stubbs, 110 Horsey's Patent, 193 Horsley and Knighton's Patent, 218, 232 Horton v. Mabon, 78 Hoskin's Patent, 161 Houghton's Patent, 193, 196 Househill Co. v. Neilson, 8, 45, 51, 126, 239, 241, 280 Household Fairburn, 113, 142, 143 Household v. Fairburn, 306 Howarth Sykes, 265, 269, 287 Huddart v. Grimshaw, 54, 129, 138, 262 Hudson Peroni, 287, 300 Hughes' Patent, 197 Hughes Thomson, 275 Hull v. Bollard, 280 Hullett v. Hague, 50 Hulse Macnamara, 54, 128, 247, 280 Humpherson v. Syer, 28, 62, 65, 294, 299 Hunt Thomas, 220 Hutchison's Patent, 193 Hutchison v. Patullo, 109, 117, 247 Hyde v. Trent, 79 Hydro-CarbonSyndicate Walker, 288, 311 Ibbotson Crompton, 128 Ihlee Ehrlich, 25, 238, 245, 247, 280, 282, 283 India Rubber Co. Edison Tele- phone Co., 282 International Hygiene Co. Auto- matic Weighing Machine Co., 301 Isaacs Kolls, 44, 282 Jack Penn, 288, 293 Jack Spencer, 16 Jackson v. Needle, 76, 275 Jackson v. Wulstenhulmes, Rye, and Co., Limited, 142, 145 James Thompson, 76, 78 Jarvis Hall, 70 Jensen v. Smith, 44 Jepson Davenport, 274, 275 Johnson's and Atkinson's Patents, 194, 206 Johnson Chanter, 225 Johnson Liardet, 115 Johnson Needham, 154 Johnson's Patent, re, 105, 190, 193, 197, 208 Jones Bacon, 275 Jones v. Berger, 54, 280 Jones Dangerfield, 10, 19, 22, 158, 224 Jones - Nobel's Explosives Co., 264 Jones v. Pearce, 45, 47, 267 Jones' Patent, re, 97, 162, 179, 182," 196, 198, 211 Jordan v. Moore, 81, 158 Jupe v. Pratt, 6, 238, 241 Kay's Patent, 198, 201, 209 Kay v. Marshall, 27, 72, 143, 144, 158 Kayev. Chubb, 55, 56, 134, 155, 157, 237, 245, 247, 288, 294 Keating Stevens, 12, 119, 120, 150, 247, 254 Keene Cornish, 13, 17, 36, 38, 46, 47, 51 Kennard Booth, 15, 117,148,289 Kenny's Button-holing Co. v. Somerville, 219 Kerr Guilbert-Martin, 76, 298 Keyworth Bovill, 250 Kidd Albo-Carbon Light Co., 76, 300 King, Brown, and Co. v. Anglo- American Brush Corporation, 45, 110 King Eothwell, 275, 300 Kneller's Patent, 49 Knight Automatic Weighing- Machine Co., 8, 241, 298, 300 Knowles v. Bovill, 222 Kollmann's Patent, 196 Krebs British Dynamite Co., 129, 157 Krupp Vavasseur, 267, 269 Kurtz Gamble, 236 Kurtz v. Spence, 19, 25, 33, 122, 138, 148, 166, 304, 305, 308 Kynock Batley, 278, 279, 302 Lake's Application, 160 Lake's Patent, 162, 169, 186, 205 Lamb v. The Nottingham Manu- facturers Co., 279 Laming Hills, 220 Lancashire and Yorkshire Railway Co. Westinghouse, 157, 288 Lancaster's Patent, 163, 207 Lang v. Gisborne, 52 Lang v. The Whitecross Company, 185 DCfi cm:!- Lome** -Talbot. 866. 880 La SoeiAU Anonyuw Ut Manu. factores da Qlaoes v. reaJWnan's Potent Sand Bfcui Co., 961, MB, m / . ..: | l;:.ik, ... ?-J. _ .:-... 9M Lawes T. Pvntr, 281 Lawrence T. Prry, 184. 800 LeotiMr Lister, 15. 85. 148. 158. Leather Cloth Co. T. Hinchfeld. Ml Ledsam Russell, 171, 806 Lee's Patent. 806 Ldste Chanter, 898 Ldm-Ball, 301 Lever Reass, 225 LCMMfM Badisehe Anilin uiul Sod* Fabrik, 19, 25. P.M. P.-.'. 185. 186. 156. 240. 241. 258. 860, 885. 286. 287, 298 Lertiwtem Renanl. _''. 1 1 274, 282. 288 Lewis T. Dai-is, 70 Lewis T. Marling, 28, 30. 34, 69 Liardet T. Electric Lighting Co., HI Liardet T. Johnson, 1 1 " Liddell's Patent, 161 Limiaay-Oaalard, 185, 305 Linford Otto. 11. 26, 57. 127. 130, 131, 153, 239. 268, 289 Linoleum Manufacturing Co. T. Nairn, 314 Lister T. Eattwood, 268 Lister T. Leather, 15, 85, 143, 158, 246, 249. 250. 251, 252, 280 Lister T. Norton, 28, 44, 77, 93, 98, 275. 282 Liverpool Gas Light Co. Hills. Ml Livtity Ward, _'-'! Lloyd -Flower, 253, 279, '-'- Lloyd Patent Type Founding Co., 278 Loe-Frearson, 70. 148, 267. 276, 295 L'Oiseau and Pierrard London Gas Light Co. Hill-. P.'. 48, 56, 85, 289 London and Globe Telephone Co. United Telephone Co., 264 London Hosiery Co. v. Higham,3Bl London and Leicester Hosiery Co. v. Grisiffold, 288 iMndan and N. W. R. Co. Holmes, 181 London and N. W. R. Co. -Smith, London Small Amu Co., Limited KV, ... HI London onu Renard v. Levinstein, 26, 113, 273. 274, 282, 283 Bennie Mackelcmi. IT.', llf. Reuss v. Lever, . Rex v. Arkvnight, 23, 33, 51, 115, 127. : Rex v. Cutler, 147, 309 Rex v. Else, \ 17 Rex y. Metcalf, 91 Rex T. Neilton, 309 Rexv. Wheeler, 11, 91, 127 Reynolds v. Amos, 71 Richard Patent Type Founding Co., 121, 260 Richards Davenport, 262 CASES CITED XXIX Richardson Brereton, 44, 49 Richardson Oxford and Cam- bridge Universities, 265 Bidgway v. Philip, 220 Riviere Forsyth, 12, 17, 30 Robert's Patent, 198, 209 Roberton Bailey, 19, 74, 84, 109, 111, 116, 119, 124 Robertson Holste, 277 Robinson's Patent, 97 Robinson Germ Milling Co., 59, 278, 279, 283, 299, 300 Rodger s Stocker, 301 Rolls v. Isaacs, 44, 282 Roper's Patent, 196 Rosenthal Young, 22, 270, 299 Rothwell Harris, 53, 281 Rothwell v. King, 275, 300 Rowcliffe v. Longford Wire Co., 76 Rowcliffe v. Morris, 113, 143, 297 Royle Challender, 304, 306, 307 Ruberry's Patent, 190 Rushton v. Crawley, 78 Russell's Patent, 161, 164, 198 Russell v. Cowley, 16, 23, 69, 130, 143 Russell v. Ledsam, 171, 206 Russell v. Hatfield, 280 Ruthven's Patent, 204, 213 Ryder's Patent, 213 Rylands Davenport, 261, 270, 292. 301 Rylands Useful Patents Co., 62, 63, 224 Safety Lighting Co. Hinks, 70, 116, 142, 153, 158 St. George United Telephone Co., 238, 273, 301 Sampson Printing and Numerical Registering Co., 219 Samuel Post-Card Automatic Supply Co., 224 Sansum Bown, 284 SonsMW^-Woodward, 97, 98, 108, 110, 124 Saqui Cole, 67, 139, 299 Saunders v. Aston, 148 Saville Street Foundry and En- gineering Co. Marsden, 88 Savory v. Price, 122, 138 Saxby's Patent, re, 197, 199, 201, 204, 212 Saxby v. dunes, 243, 246, 250 Saxby v. Easterbrook, 293 Saxby v. Gloucester Waggon Co., 64, 68, 74, 285 Saxby v. Bennett, 167, 245 Schlumberger's Patent, 194, 205 Scott Smith, 223 Scott and Young, ex parte, 167 Seed v. Higgins, 143, 158, 188, 288, 289, 292 Sellers v. Dickinson, 158, 250 Serrell's Patent, 186 Seward Morgan, 21, 23, 25, 27, 60, 114, 116, 122, 127, 234, 277 Seymer Bottle Envelope Co., 79, 250 Shallenberger's Application, 88 Sharp's Patent, re, 190 Sharp v. Brauer 76, 304, 305 Sharpies United Telephone Co., 261, 264, 299 Shaw Barker, 33 Shaw Longbottom, 76, 298, 299, 300 Sheehan v. Great Eastern Railway Co., 218 Sheffield, ex parte, 160 Siddell v. Vickers, 97, 98, 104, 111, 140, 293 Sielaff's Application, 164 Silber Sugg, 282 Sillar's Patent, 193, 214 Simpson v. HolUday, 19, 21, 120, 129, 137, 138, 154, 182 Simpson and Isaac's Patent, 162 Singer Otto, 224 Singer Manufacturing Company v. Wilson, 278 Singer v. Stassen, 176, 185 Skewes Bickford, 121, 126, 138 Slazenger v. Feltham, 74, 286 Smethurst Cochrane, 91 Smith's Patent, 104, 181 Smith v. Buller, 302 Smith Carpenter, 37, 45, 87 Smith Cropper, 27, 148, 157, 184 219, 237, 299, 300 Smith Heath, 43, 45 Smith Jensen, 44 Smith Oddy, 300 Smith v. London and N. W. R. Co., 218, 250 Smith v. London and S. W. R. Co., 250 Smith v. Neale, 217 Smith Ralston, 13, 75, 148, 187, 188 Smith v. Scott, 223 Soames' Patent, 203 Societ6 Anonymedes Manufactures de Glaces v. Tilghman's Patent Sand Blast Co., 261, 262, 303 Societd Generale d'ElectriciU Werderman, 218 Somervell Hancock, 40 XXX CASKS CITKI* Somirvill* Kmny's Buttonholing Co., 919 Southworth'i Patent. 196 SoMwroy Van Gelder. 318 Speekhart v. CompbtU, 389, MS Spence's Patent. 169 ^pMM-Korts. 19. 86. 88. 198. 188, 148. 166. 804, 806, 808 Spencer v. Ancoatt Volt Rubber Co., 966, 888, 808 Spencer Y. Jack, 16 Spill* Plimpton. 58, 68. 148. 158. 154, 167. 375, 880 Spar* Herrbarger, 58, 78, 76, 804.807 SUIT-..!'- P:it, !it. I-..K Starbuck Waggon Co. Eades, 118 Statsen Singer. 176, 185 Stead v. Xndmon, 40. 969 Stead T. William*, 40, 48, 58 StoJ Otto, 53. 883, 394. 801 SUele Crosthwaite, 334 Steiner v. Heald, 19, 391 Stevens Chavaaae, 888 Stevens Edgeberry, 87 Stevens v. Keating, !_>. 11'*. )-'<' 150, 347, 354 SUvnu Parkes, 74. 134, 288, 351, _>:_> Steoetu-Watling, 111, 134, 888 SterMon Hesse, 318 Stewart Crossley, 383 Stewart United Horsenail Co., -' 1.298 Stewarts' Patent, 194, 197, 198 Stocker v. Rodgers, 301 Stone Wyatt, 151 Stoner v. Todd, 58, 98, 108 Stoney's Patent, 196, 204, 215 Tangye, 45, 48, 295 Stubbs Horrocks, 110 Startz v. De la live, 92, 120, 123. 125 Sugg v. Bray, 303 Sugg T. Silber, 883 Button Lodge Chemical Co. Proctor, 301 Swedish Horsenail Co. United Horse Shoe and Nail Co., 76, 187 Swinborne Oridley, 815 Syer Hnmpherson. 38, 63. 65, 894, -".'! Sykes v. Houarth, 366, 26'.' Talbot v. Larochf, 355, 880 Tangye T. StoU, 46, 48, 295 Tate Burnett, 358, 361, 808 Tatham v. AMMO, 67, 78, 79, 351 '/',: | .- r.'.w.:iin V.0 Taylor T. Hart, 9S8 Taylor Harrison, 898 TempUton T. Mat/aHatu, 81. 1M IMI . t. ::. <74, r.:i \r.. no. 145, 149. 889 Thorns* T. Foanotll. 147. 158. 845. HI, _ Thomac v. 7/im^. 880 Thoma. T. WMeJk, 108. 141, 148. 158 TkompHmmi 14, 38, 37. 80, 88, 146. 878 Thompson T. Janus, 76. 78 Thornton- American Braided Wire Co.. 25, 57. 67. 888, 898. 894, 899 Thomson T. Hatty, 60. 86 TAomjon- Dudgeon. 158.189.884, 848, 850, 851. 878. 374. 895 Thomson v. Hughes, 375 Thomson v. Moorr, 845 Thorn v. Worthing Skating Rink Co., 384, 353 Tickelpenny v. Army and Navy Co-operatine Society, 76 Tityhman'* I'atfnt Sand Blatt Co. Soc. Anon, den Manufactures de Olaces, 361, 363. 308 Todd- Stoner, 58, 98, 108 lolson's Patent. 163 omte Hill. 83 T omeu Croacley, 880, 888 3>u_ White, 76 Tope Pascall, 388 Townsend v. Hawortk, 358, 369 Townsend United Telephone Co., 301 Tranter's Patent, re, 181 Tmtf Hyde, 79 Trotman's Patent, 301 Trotman v. Wood, 888, 887 Turner Beard, 898 Tttrn*r Elliot, 121. 155 Turner v. Winter, 37, 118, 133, IM Union Electrical Power and Light Co. v. Elfctrical Power Storage Co., 304 United Horse Nail Co. T. Stewart, 31,393 United Horse Shoe and Nail Co. v. Swedish Hone Nail Co., 76, 187 United Telephone Co. - Barney, 307 United Telephone Co. T. Bassano, 23*. 289 United Telephone Co. v. Equitable Telephone Association, 274, 275 CASES CITED XXXI United Telephone Co. v. Fleming, 280 United Telephone Co. v. Harrison, 53, 110, 253 United Telephone Co. v. Londoii and Globe Telephone Co., 264 United Telephone Co. v. Mottis- head, 277 United Telephone Co. v. Patterson, 301 United Telephone Co. v. St. George, 238, 273, 301 United Telephone Co. v. Sliarples, 261, 264, 299 United Telephone Co. v. Townsend, 301 United Telephone Co. v. Walker, 263, 293, 294 Universities of Oxford and Cam- bridge v. Rictutrdson, 265 Unwin Heath, 123, 256, 257, 270, 280 Upmann v. Elkan, 271, 272 Upmann v. Forrester, 297 Useful Patents Co. v. Rylands, 62, 63, 224 Van de Poele's Patent, 322 Van Gelder's Patent, 180 Van Gelder v. Sowerby, 218 Van Vliessingen Caldwell, 264, 266 Vaucher Newton, 83, 268 Vavasseur v. Krupp, 267, 269 Ftc&ers Siddell, 97, 98, 104, 111, 140, 293 Victoria Rubber Co. Moseley, 49, 57, 111, 126, 280, 282, 283 Vincent's Patent, re, 167 Von Buch, 163 Von Heyden v. Neustadt, 3, 45, 53, 57, 261 Wagstaff Palmer, 21, 23,137, 158, 262, 280 Waketield v. Duke of Bucdeuch, 275 Walker Cheavin, 88, 314 Walker v. Clarke, 305 Walker v. Hydro-Carbon Syndi- cate, 288, 311 Walker v. Longford Wire Co., 76 Walker United Telephone Co., 263, 293, 294 Waller and Batcliff s Application, 161 Wallington v. Dale, 14, 121, 189 Wallis The Queen, 316 Walter Patent Type Founding Co., 277 Walton v. Bateman, 48, 123 Walton v. Lavater, 218, 219, 261 Walton v. Potter, 155, 235, 252 Ward v. Livesey, 221 Warman's Application, 160 Warner v. Murdoch, 272 Washburn Co. v. Cunard Co., 265, 296 Washburn, etc., Co., v. Dublin and Liverpool, etc., Co., 265 Washburn, etc., Co. v. Patterson, 294 Waterlow & Co. Driffield, etc., Co., 305 Watling v. Stevens, 111, 134, 288 Webster's Patent, 163 Webster Elgie, 220 Webster Foxwell, 276 Wegmann v. Corcoran, 114, 119, 154, 302 Welch's Patent, 162 Welch Thomas, 108, 141, 143, 158 Wells Minter, 10, 23, 31, 241 Wenham Co. v. May, 247 Werderman v. Societe Gentrale d'Electricite, 218 Westinghouse's Patent, 183 Westinghouse v. Lancashire and Yorkshire By. Co., 157, 288 Wheeler Bex, 11, 91, 127 White v. Fenn, 246, 250 White v. Toms, 76 Whitecross Co. Lang, 185 Whitehouse's Patent, 207, 213 Whittingham Cooper, 297 Wield's Patent, 196, 199, 208 Wigley Bainbridge, 91 Wilby Gillett, 254 Willacy's Patent, 194, 196, 202 Williams Minter, 262, 265 Williams v. Nash, 173 Williams v. Nye, 74 Williams Stead, 40, 48, 53 Willmott Betts, 261, 271 Wilson Church Engineering Co., 280 Wilson v. Church Engineering Co., 306 Wilson v. Gann, 282 Wilson Grover and Baker Sewing Machine Co., 280 Wilson Newall, 274 Wilson Singer Manufacturing Co., 278 Windover Morgan, 49, 76, 82, 111 Winby v. Manchester, etc., Tram- ways Co., 49, 238 Winter Turner, 27, 118, 122, 136 Wirth's Patent, re, 87 Wood Trotman, 223, 237 Wood v. Zimmer, 59, 62, 121 x xxii CASES CITED Woodcroft'i Patent, 198, 210 Wright - Tilghman 1 *. etc., Co., 2HO Woodkou* Edison and Swan Wttfttfnktthnm, K^t, end Co., United Co., 16,71. 1 17. 126, 189. -.iUd Jackson. 142. 145 143.157.264.286.298 W^ait v Stone, 161 Woodward v. Satuum. 97, 98, 108, 110. 124 Worthing Skating Kink Co. Yate and Kellatl'i Patent. 199 Thorn, 284, 262 Foany-Adair, 884. 264, 276 Wright's Patent, 198. 210 Young v. Ftrmt, 19, SO, 84, 287 Wright Haatall, 216, 280 Young v. BotaUhal, 22. 270, S99 Wright v. Hitchcock, 108, 158, 961. 270 IPngJW Podmore, 44 Eimmtr Wood, 59, 62, 121 THE LAW OF PATENTS FOE INVENTIONS. CHAPTER I. PRELIMINARY. THAT the Crown has the power in certain cases of granting to inventors the privilege of a monopoly in working their inventions for a certain number of years is probably known to every reader before he opens this volume. During that period the entire community is precluded from making use of the invention, except by the permission of the inventor or the person who has duly succeeded to his rights ; the law declaring that the privileged person shall derive the exclusive benefit, whatever that may be, of the invention for the specified time. This privilege was formerly secured to the inventor by letters patent passed under the Great Seal. It is now se- cured to him by a patent obtained at the Patent Office, and the person to whom the privilege is granted is termed in common parlance the patentee. For the purposes of the present treatise, there is no need that we should enter upon any historical disquisition as to the common-law right of the Crown in matters of patent privileges. It will be sufficient to state that the right of the Crown to grant privileges by letters patent to subjects obtaining its favour was exercised in very early times, and it was only disputed when exclusive rights to sell various B 2 1 l;i:i.IMlNAlJY commodities, such as salt, iron, and coal, had been granted to certain persons, to the great grievance of How- subjects, and to the oppression of trade. The Statute of Monopolies, passed in the twenty- first year of James I., was ltd at the abases which an undue exercise of prerogative had produced, and being, says Sir Edward Coke, forcibly and vehemently penned for their suppression, cut off all claim on the part of the Crown to the right of grai monopolies and exclusive privileges, whereby the subjects of the realm could be aggrieved and inconvenienced. 1 That statute (ce tht Appendix) declared that all mono- polies, grants, and letters patent, for the sole buying, selling, making, working, or using of anything within the realm, were contrary to the laws, and void. But it excepted from the operation of this enactment all letters patent and grants of privilege of the sole irorkinfj r making of any mann ni'ic manufacture* t tin- true and first inventor of such manu- facture, which others at the time of making such letters patent 1 The King had undoubtedly, by the ancient laws of the realm, Urge powers for the regulation of trade ; bat the ablest judges would hare found it difficult to say what was the precise extent of those powers. ... In addition to his undoubted right to grant special commercial privileges to particular places, he long claimed a right to grant special commercial privileges to particular societies and to particular individuals; and our ancestors, as usual, did not think it worth their while to dispute this claim till it produced serious inconvenience. At length, in the reign of Queen Elizabeth, the power of creating monopolies began to be grossly abused ; and as soon as it began to be grossly abused, it began to be questioned. The Queen wisely declined a conflict with the House of Commons backed by the whole nation. She frankly acknowledged that there was reason for complaint ; she can- celled the patents which had excited the public clamours ; and her people, delighted by this concession, and by the gracious manner in which it had been made, did not require from her an express renunciation of the disputed prerogative. The discontents which her wisdom had appeased were revived by the dishonest and pusillanimous policy of her successor, called King, craft. He readily granted oppressive patents of monopoly. When he needed the help of his Parliament, he as readily annulled them ; and as soon as the Parliament had ceased to sit, his Great Seal was put to instruments more odious than those he had recently cancelled. At length that excellent House of Commons which met in 1623 determined to apply a strong remedy to the evil. The King was forced to give his assent to a law which declared mono- polies established by royal authority to be null and void.' (Macaulay's History of England/ iv. 127.) PRELIMINARY 3 and grants should not use, so they be not contrary to law, nor mischievous to the state, by raising prices of commodi- ties at home, or hurt of trade, or generally inconvenient. It was afterwards declared that these excepted grants of privilege should have the same validity that they had pre- vious to the passing of the statute, but no other. ' It is to be observed ' (said Lord Justice James in the case of Von Heyden v. Neustadt, 50 L. J. N. s. Ch. 126) ' that the statute of James gives no right to the inventor. The statute is a statute for the abolishing and forbidding monopolies, and the sixth section, under which the Crown acts in these matters, is a mere proviso excepting from the operation of that Act certain patents or grants of privileges, which are to be " of such force as they should be if that Act had never been made, and of none other." And it is from the ancient power and prerogative of the Crown so saved and preserved that every patentee derives his monopoly. What the Crown could lawfully do, and has lawfully done, after that statute, is shown by the uniform tenor of the letters patent which have been since issued, by the advice and authority of every law officer and every holder of the Great Seal for upwards of two centuries and a half. The power of the Crown to grant letters patent of such tenor has never been brought in question.' When the validity of a monopoly comes into question, the first point to consider is, whether it is rendered void by the statute ; and secondly, if it should not be thereby avoided, whether it is a privilege permitted by the common law. In this treatise, however, we restrict ourselves to a con- sideration of Patents for inventions. It is not every kind of discovery that can be protected by a patent. The statute of James I. requires a patentable invention to be referable to some manner of manufacture, as these words have been interpreted by the courts of law. Nor is it every one who may succeed in obtaining the grant of a patent for an invention that is able to sustain it B 2 4 PRELIMINARY under strict legal scrutiny. In order that a patent should be held valid in a court of law : 1. '/'/<- Invention must possess a certain amount of utility ; must display some degree of novelty ; and must have been attained by the exercise of some measure of ingenuity. 2. Tl> ]'!( ntse must be the true and first inventor, that is, he must not have obtained the invention from another person (unless he has imported it from abroad); nor must he have derive. 1 it from a printed book ; nor from a patent specification published in this country or intro- duced from abroad. 8. The Specification, that is the patentee's formal de- scription of his invention, must be accurate, intelligible, and sufficient ; it must point out distinctly what the patentee claims as his own ; and must not claim anything that is not his own. Besides treating of these subjects, the procedure in ap- plications for patents will be explained in this volume. Tin Patent itself, its form, intent, and duration, and the deal- ings with it by way of Assignment and Licence, will be ex- pounded. Various contentious matters, such as oppositions to grants, the infringement of patent rights, the revocation of patents, and the proceedings taken to restrain a patentee's threats will be dealt with. Certain collateral topics, such as the amendment of specifications, the registration of patents and of documents relating thereto, and the international and colonial arrangements for the reciprocal issue of patents, will be handled. A brief account of the Patent Office esta- blishment, where the business of obtaining patents is trans- acted, will be given ; and lastly, a short chapter on tin- Institute of Patent Agents will be found at the end of the treatise. PRINCIPLES CHAPTEK II. THE SUBJECT-MATTER OR NATURE OF A PATENTABLE INVEN- TION A BARE PRINCIPLE NOT PATENTABLE PROCESSES CHIEF CLASSES OF PATENTABLE INVENTIONS. IN proceeding to consider the subject-matter or nature of the inventions which may be legally protected by patents, it is proper to premise that no general definition can be given which shall exactly mark out what can and what can- not be included in a valid patent. Where the invention is not one of a well-known class, it will be much better for the inventor to consult some one conversant with such matters some one whose practical experience comes in aid of general principles, and who is bound by his profession and standing in society to the utmost secrecy than to rely altogether upon what is stated in books, or upon a narrow range of precedent. It is the more important that the in- ventor's attention should be drawn to this point previous to his incurring expense, since a patent is taken out entirely at the risk of the inventor, the Crown in no degree guarantee- ing the validity of its grant, which, if contested, will be judged by the abstract rules of law applicable to the case. As we have already remarked, it is not every kind of discovery which can be protected by a patent. No inven- tion is patentable which does not fall within the language of the Act of King James, and is not referable to some ' manner of new manufactures.' It is true, as we shall see further on, that these words have received a very wide in- terpretation ; still they have never been held to include such inventions and discoveries as that of an abstract prin- ciple without reference to any of its practical applications ; or that of a game of skill or chance irrespective of the 6 appliances for playing it ; or that of a method of calculation nnected with apparatus for working it; or that of a vegetable suitable for food ; or that of a natural substance applicable to a useful purpose, such as guano or mineral phosphate of lime ; or that of an elementary body such as a metal. Patents which relate to imvntiniis and discoveries -u.-li as these can only be maintained when they are taken out for the manufacture of the apparatus required for the ti purpose, or for methods of preparing the natural sub- stance for some useful end. Before giving examples of the chief classes into which those inventions which have received the sanction of judicial decision are divisible, it may be well first to clear the ground a little by making some remarks on the cases relating to Principles and Processes. It has been repeatedly laid down by the Courts that BARE PRINCIPLES ABE NOT PATENTABLE. A principle may be of the utmost value in the eyes of philosophers ; its discovery may lead to highly important consequences, and form the germ of a striking advance in civilisation ; yet unless its discoverer can show at least one application of it to a useful purpose unless he can point out the means of gaining therefrom some immediate material advantage he is not permitted to exclude his fellow-sub- jects from turning it to any account they like. * I rather think it would be difficult' (said Lord A'< ////, in llorn- M.nrrr v. Boulton, 8 T. R. 95 ; Dav. Pat. Ca. 221) ' to form a specification of a philosophical principle; it would be something like an idea without a substratum.' Neither are principles in a more restricted sense patent- able, unless they are embodied in a concrete form and their application to some purpose of utility indicated. ' You can- not ' (said Aldcrson, B., in Jupe v. Pratt, 1 W. P. C. 145) ' take out a patent for a principle. You may take out a patent for a principle coupled with the mode of carrying the principle into effect, provided you have not only dis- covered the principle, but invented some mode of carrying PRINCIPLES 7 it into effect. But then you must start with having invented some mode of carrying the principle into effect.' 'Un- doubtedly ' (said Eyre, C. J., in Boulton v. Bull, 2 H. Bl. 463) ' there can be no patent for a mere principle ; but for a principle so far embodied and connected with corporeal substances as to be in a condition to act and to produce effects in any art, trade, mystery, or manual occupation, I think there may be a patent. ... It is not ' (referring to the case before him) ' that the patentee has conceived an abstract notion that the consumption of steam in fire-engines may be lessened, but he has discovered a practical manner of doing it, and for that practical manner of doing it he has taken his patent. Surely this is a very different thing from taking a patent for a principle ; it is not for a prin- ciple, but for a process. Again, the substance of the inven- tion is a discovery that the condensing the steam out of the cylinder, and protecting the cylinder from the external air, and keeping it hot to the degree of steam-heat, will lessen the consumption of steam. This is no abstract principle ; it is in its very statement clothed with practical applica- tion.' In the much-debated case of Neilso?iv. Harford (1 W. P. C. 295) a great deal was said as to the point now before us. Neil- son took out his patent in 1828 for the improved application of air to produce heat in furnaces, and in his specification declared that his invention consisted in passing a blast of air from the blowing- apparatus into an air-vessel kept heated to a red-heat, or nearly so, and from that vessel, by means of a pipe, into the furnace ; that the size of the vessel must depend on the blast, and on the heat necessary to be produced, but that the form of the vessel was imma- terial to the effect, and might be adapted to the local cir- cumstances or situation. The defendants, who were alleged to have infringed this patent, contended that it was void, as being for a principle. The Court of Exchequer, after full consideration, thought that the plaintiff did not merely claim a principle, but a machine embodying a principle. The case must be considered as if the principle being well 8 SCIPLE8 known, the plaintiff had first invented a mode of applying it by a mechanical apparatus to furnaces; and the in tion then consisted in this the application of air heated up to red-heat, or nearly so, and the interposition of a receptacle for heating air between the blowing-apparatus and the furnace. And Mr. Baron Aldtrton, in reply to the argument of the plaintiff's counsel that he claimed every vessel and every shape of closed vessel in which air could be heated between the blowing-apparatus and the furnace, said, 1 Then I think that is a principle, if you claim every shape. If you claim a specific shape, and go to the jury and say that \\hich the other people have adopted is a colourable imitation, then I can understand it. If you claim every shape, you claim a principle. There is no difference between a principle to be carried into effect in any way you will, and claiming the principle itself. You must detail some specific mode of doing it.' (See L. J. Lindley's approving remarks on this dictum. Automatic }]' ii<-hinc Co. v. Kniffht, 6 R. P. C. 808.) In the same case (1 W. P. C. 942) Aldcnon, B., said, ' I take it that the distinction between a patent for a principle and a patent which can be supported is, that you must have an embodiment of the principle in some practical mode, described in the specification, of carrying the principle into actual effect ; and then you take out your patent, not for the principle, but for the mode of carrying the principle into effect. In Watt's patent, which comes the nearest to the present of any you can suggest, the real invention of Watt was, that he discovered that by condensing steam in a sepa- rate vessel, a great saving of fuel would be effected by keeping the steam-cylinder as hot as possible, and applying the cool- ing process to the separate vessel, and keeping it as cool as possible ; whereas before, the steam was condensed in the same vessel ; but then Mr. Watt carried that practically into effect by describing a mode which would effect the object.' The words of Lord Justice Clerk Hope, in the case of the Househitt Company v. Xeilson (1 W. P. C. 683), may be cited in reference to the same point. ' A patent cannot be PEINCIPLES 9 taken out solely for an abstract philosophical principle for instance, for any law of nature or any property of matter, apart from any mode of turning it to account in the practi- cal operations of manufacture, or the business, and arts, and utilities of life. The mere discovery of such a principle is not an invention in the patent-law sense of the term. Stating such a principle in a patent may be a promulga- tion of the principle, but it is no application of the principle to any practical purpose. And without that application of the principle to a practical object and end, and without the application of it to human industry or to the purposes of human enjoyment, a person cannot in the abstract appro- priate a principle to himself. But a patent will be good, though the subject of the patent consists in the discovery of a great general and most comprehensive principle in science or law of nature, if that principle is by the specifi- cation applied to any special purpose, so as thereby to effectuate a practical result and benefit not previously attained. ... It is no longer an abstract principle. It comes to be a principle turned to account to a practical object, and applied to a special result. It becomes then not an abstract principle, which means a principle con- sidered apart from any special purpose or practical obser- vation, but the discovery and statement of a principle for a special purpose, that is, a practical invention, a mode of carrying a principle into effect. . . . The instant that the principle, although discovered for the first time, is stated in actual application to, and as the agent of, producing a certain specified effect, it is no longer an abstract prin- ciple ; it is then clothed with the language of practical application, and receives the impress of tangible direction to the actual business of life.' Minter's patent was for an improvement in the con- struction of chairs, which consisted in the application of a self-adjusting leverage to the back and seat of a chair, whereby the weight on the seat acted as a counter-balance to the pressure against the back. The patentee having obtained a verdict at the trial of an action for the infringe- 10 PRINCIPLES ment of the patent, it was contended, on a motion for a nonsuit, that the patentee had claimed a j . and not any particular means of carrying the prin< i]>l. into effect Now, to a principle per *c he was not entitled; and as to the particular means adopted, the defendant had not borrowed it. The plaintiff, it was further argued, had attempted to appropriate by his specification one of first principles in mechanics, viz. tin- 1. ,... But,' said Lord Lyndhurst, C. B. t l it is not a leverage only, Imt it is a self-adjusting leverage; and it is not a self-adjusting leverage only, hut it is a self-adjusting leverage producing a particular effect, by means of which the weight on the seat counterbalances the pressure on the back of a chair.' And . .'.'., suul, ' Fur tin- application of a self-adjusting leverage to a chair, cannot he patent that ? He claims the combination of the two, no matter in what shape or way you combine them ; but if you combine the self-adjusting leverage, which he thus applies to the subject of a chair, that is an infringement of the patent.' Lr-i Lywlhunt wuit on to say that the application of a self-adjusting leverage producing the effect constituted the machine, and the patentee claimed that machine, and the right to make it, ly the application of a self-adjusting leverage producing a particular effect. (Minter v. 1 1". Kt, 1 \\. P. C. 134.) Again, Sir If. J'. If" /, I". ('., said in l>rri>ltl v. - (13 L. T. N. s. 142), ' If, having 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 has never been before applied, that is a sufficient ground for taking out a patent, provided that the Court sees that which has been invented is new, desirable, and for the public benefit.' In the case of the Electric Tdcyrnph Company v. (10 C. B. R. 838) it was argued that the giving of duplicate signals at intermediate stations was not the proper subject of a patent, being an idea or principle only, and not a new manufacture. But it was held by the Court, that as the patentees had not only communicated the idea or principle, PKOCESSES 11 but showed how it might be carried into effect, viz. by appropriate apparatus at each station, the patent was valid. See also the remarks upon this subject of Sir G. Jessel, M. R., in the case of Otto v.Linford (46 L. T. N. s. 39, Goodeve Patent Cases, 343). PROCESSES. It will have been observed that what the statute of King James excepts from the operation of the invalidating first clause is the privilege of the sole working or making of any manner of new manufactures. Now it seems to have been at one time doubted whether a mere method or process was embraced by these words of the statute. Perhaps, said Lord Tenterden, C. J., in the case of Rex v. Wheeler (2 B. & A. 350), the statute ' may extend to a new process to be carried on by known implements, or elements acting upon known substances, and ultimately producing some other known substance, but producing it in a cheaper or more expeditious manner, or of a better and more useful kind.' The current of decision since Lord Tenterden's time has converted what he put in a doubtful way into a certainty ; for the books are full of cases which prove beyond a doubt that a process is patentable. The patent contested in Gibson v. Brand (1 W. P. C. 631) was for a new or improved process or manufacture of silk. Tindal, C, J., said that there was strong reason to suppose that a patent for a process, in the strict or proper sense of the term, might be good in law. Such certainly was the opinion of Chief Justice Eyre in Boulton v. Bull (1 Carp. E. 146). ' It was admitted in the argument at the bar that the word "manu- facture " in the statute was of extensive signification ; that it applied not only to things made, but to the practice of making, to principles carried into practice in a new manner, to new results of principles carried into practice.' It has been said that the doubt as to whether a process is patentable has been needlessly raised, and that it is a misuse of terms to speak of a patentable process at all. The subject-matter of the patent, it is urged, is in reality a manufacture according to a new process, and this is there- 12 PROCESSES fore a new manufacture. For example, in Crane v. Price (1 W. P. C. 377), the Mil.jtrt of the patent WM, according to this view, the manufacture of iron by means of a new process, viz. the combination of a hot-air blast and anthra- cite in the furnace. In Gibton v. Brand it was the manu- facture of silk by a new process. We are told by Sir F. Pollock, C. It. (Stercru v. K sating, 2 W. P. C. 182), that ' the real invention may be, not so much the thing when produced, as the mode in which it is produced ; and its novelty may consist, not so much in its existence as a new substance, as in its being an old sub- stance, but produced by a different process. In one sense, an old substance produced by a new process is a new manufacture ; of that there cannot be a doubt ; and there- fore, although the language of the Act has been said to apply only to manufactures and not to processes, when you come to examine, either literally, or even strictly, it appears to me the expression " manufacture " is free from objection, because, though an old thing, if made in a new way, the very making of it in a new way makes it a new manufac- ture. Therefore, although I think this is a patent for the process rather than the product, I think it may be a pa for the product.' Allowing this explanation its full force, it will not ex- tt-nd to many cases wherein it has been decided that bare processes are patentable, or to cases where patents for mere applications have been supported. For example, in Forsyth v. H'n-i.rc (1 Carp. Rep. 401), the application of a known detonating powder to the discharge of known kinds of fire-arms was held to be a patentable invention. But how could this be a manufacture in the ordinary meaning of the word? Again, in the case of If>j' (1 W. P. C. 54), it was held that the application of metal plates, made in the ordinary way, to ships and buildings, with the view of protecting them against fire, by preventing the access of air, was a patentable invention. Again, in the case of the Electric Telegraph Company v. Brett (10 C. B. B. 838), a method of giving duplicate signals at PROCESSES 13 intermediate stations was held to be properly the subject of a patent. In none of these cases was any new substance produced, nor any new machinery employed. ' Most cer- tainly the exposition of the statute, as far as usage will expound it, has gone very much beyond the letter ' (Eyre, C. J., in Boulton v. Bull, 1 Carp. E. 146) ; and Lord Chief Justice TindaVs remarks in Cornish v. Keene (1 W. P. C. 508) show the latitude of interpretation which is given to the word ' manufactures ' in the Act of Parliament. ' It has a very wide and extended meaning. You may call it almost invention.' Again, Coleridge, J., said, in Bush v. Fox (Macr. P. C. 176), manufacture includes both process and result. And in Ralston v. Smith (11 H. L. C. 223), Lord Westbury said, ' By the large interpretation given to the word "manufacture," it not only comprehends produc- tions, 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 im- provement of an old process.' In Newall v. Elliott (13 W. E. 11) the patent was for ' improvements in apparatus employed in laying down submarine telegraph wires ; ' and the specification, after describing the apparatus, concluded with the following claim : ' First, coiling the wire or cable round a cone ; secondly, the supports placed cylindrically outside the coil round the cone ; thirdly, the use of the rings in combina- tion with the cone as described.' It was objected that the invention thus claimed was merely a mode of coiling and paying out cables, and was not a new manufacture, and could not, therefore, be the subject-matter of a patent. The Court, however, over-ruled the objection, and held the patent valid. Previous to the patent granted to Wallington, gelatine had been made by submitting large pieces of hide to the action of caustic alkali, and by employing blood to clarify the product. Wallington's process consisted in cutting the hides into thin slices, and the use of blood was unneces- 14 CLASSES OF INVENTIONS sary. This was held to be a pat en table invention. n v. Dale, 7 Exch. Rep. 888.) CLASSES OF PATEXTABLE IXVEXT1 The in vint ions for which valid patents have been granted may be roughly divided into the following classes: 1. .Vfic contrivances applied to new objects or purposes t a ml i/ifliliiilil to old objects or purposes. 8. New combinations of old parts, or of old a parts, the subject- matter consist' r of material in oil //rim evidence of want of utility. But ' that ' (said JetscJ, M. /,'., in deliv. judgment in the case of \. I 16 L. T. N. s. 85) ' is subject to this observation, that you may make and vend an improvement upon it, and if you have found out immediately after you have patented your invention that it can be improved, it does not by any means show that the first invention was useless.' Then, referring to the case of Renard v. Lennstein (10 L. T. N. s. 177), which arose out of a patent for a dye, he said, ' There they never sold an ounce of dye made according to the patent because imme- diately afterwards the inventor had discovered an improve- ment, and they had always sold the improved dye, and they were obliged to call a witness to show that they bad made a few ounces of dye and tried it, and that it would dye. The answer was that under those circumstances the mere fact of not selling the original dye was nothing at all. So in this case (<>'-, \. I.infnrd) we have rather a stronger illustration, because the inventor has patented these modifi- cations, and it turns out that what he has used, made, and sold have been almost entirely number threes. No. 1 itself does not appear ever to have been sold. But then they say that No. 1 will work, and they call witnesses to prove it, and there is no denial from the other side. Therefore there is evidence of utility. It is very small indeed as regards No. 1, but it is quite sufficient for the support of a patent ; and as to this question of utility, as we know, very little will do.' NOVELTY 27 CHAPTEE IV. THE INCIDENT OF NOVELTY. THE statute of James declares excepted from the invalidat- ing clause ' all letters patent and grants of privilege of the sole working or making of any manner of new manufactures to the true and first inventor of such manufactures, ivhich others at the time of making such letters patent and grants should not use.' Moreover, the patent contains clauses rendering the grant voidable in case the invention is not a new invention as to the public use and exercise thereof, or in case the patentee is not the true and first inventor of the invention. The meaning of all this is that if it should be proved that the invention is destitute of novelty the patent is void. If several distinct heads of invention are claimed in the specification, and one of them is old, that will invalidate the whole patent (Turner v. Winter, 1 W. P. C. 77 ; 1 T. E. 602 ; Bloxam v. Elsee, 6 B. & C. 178 ; Morgan v. Seivard, 1 W. P. C. 196 ; Kay v. Marshall, 2 W. P. C. 71 ; Cropper v. Smith, I E. P. C. 87 ; S. C. 2 E. P. C. 17). The Crown having been misled as to the extent of the invention, the grant of a patent in respect of it is void. It was on this principle that the Court, in deciding Morgan v. Seward, looked at the cases of Hill v. Thompson (1. W. P. C. 237), and Brunton v. Haivkes (4 B. & A. 541), in which a patent for several inventions was held to be altogether void because one was not new. The want of novelty is a fatal defect by the express wording of the statute, so far as relates to that which is old ; and the whole patent is rendered void by the construction that the consideration for the grant is the novelty of all the parts claimed to be new, which considera- 28 NOVKI.TV tion failing, or, as it is sometimes expressed, the Crown being deceived, the patent is void. The two chief questions under the head of Novelty are: 1. Was the patentee the true inventor of that for which he has obtained a patent ? J. If so, was the invention new to the public at its date? This includes the narrower question, Was the patentee the first inventor of the subject-matter of his patent? As n-^ards the first of these questions it must be an- s\v red in the negative if tin- i>att nh.- obtain. .1 ti ti<>n from another person, inventions imported from abroad being excluded from consideration. And as to the second question it must also receive a negatiu reply, (i) if the invention had got into public use ; or (ii) if the invention had become known to the public (a) by a description of it in a printed book accessible to the public ; or (6) by a description in an earlier specification ; or (r) by prior publication by the inventor or another j> rson. It has been broadly laid down that when the public has become possessed of an invention in any manner whatever, no valid patent for it can be subsequently obtained, either by the true and first inventor, or by any other person (' Hind- march on Patents,' p. 88, referred to by the judges with approval in the cases of Patterson \. (iiht Co., L. R. 8 App. C. 235 ; Li*ter v. .WfM, 3 R. P. C. 'J11 ; // son v. Sycr, 4 R. P. C. 414). There are, however, certain exceptions to the universality of this rule, as will be shown further on in this chapter. The enquiry will be whether th,- invention had become part of the public stock of knowledge before the date of the patent. 'If that means' (said Lr>l -In in Ifnm- phcrson v. Sycr) the knowledge that every member of the public possesses, it is clear that the definition will meet very few of the cases in which publication has taken place.' NOVELTY 29 TRUE INVENTOR. 1 A discovery may be both useful and quite new to the world at large ; yet if it can be shown that the person, upon whose statement that he was the true inventor the patent was granted, does not really answer to that designation, the patent is not saved from the clause in the statute of James, which declares that all monopolies are invalid. ' A man may publish to the world,' said L. C. J. Tindal, in Gibson v. Brand (1 W. P. C. 628), 'that which is per- fectly new in all its uses, and has not before been enjoyed,, and yet he may not be true and first inventor; he may have borrowed it from some other person . . . and then the Legislature never intended that a person who had taken all his knowledge from another, from the labours and assiduity or ingenuity of another, should be the man who was to receive the benefit of another's skill.' Hival Inventors. One of the earliest cases on this sub- ject is that of Dollond, the optician, who brought an action for an infringement of his patent for a new method of making the object-glasses of refracting telescopes. It was alleged, on the part of the defendant, that Dollond was not the true and first inventor of the method, inasmuch as Dr. Hall had made the discovery before him. But since Dr. Hall had confined it to his closet, and had not communicated it to the public, it was held (1766) that Dollond was to be considered the first and true inventor as required by the statute. The case was not reported, and our knowledge of it is derived from the mention made of it in the case of Boulton v. Bull (2 H. Bl. 469). Dollond's case was fol- lowed by numerous others, the result of which may be thus stated : If two persons make the same invention about 1 It must be kept in mind that the word ' patentee ' in this section signi- fies, in the case of a patent granted to several persons jointly under the Act of 1883, only the person who claimed to be the inventor of the subject- matter of the patent, and does not include other non-inventors who may have joined him in obtaining the grant. Moreover, it will be shown hereafter that the importer of an invention from abroad is held by the courts of law to fall within the meaning of the words ' true and first inventor.' 30 N"V I. I.TV tin- same time independently of each oth< r, h. who first obtains a patent has an \cluM\. i i-ht to /A v. / . - ; and he will In- held the first inv. ntor, although, in point of fact, the date of his invention was subsequent to that of rson, provided tlmt there was not such a use of tin- invention previously to the patent as amounted to what is Win/ called ' public use.' In / Miirlin.j (1 W. 1'. C. 49G . . said, ' If I make a discovery, and am enabled to produce an effect from my own experiments, judgment, and skill, it is no objection that some one else has made a similar discovery in his mind, unless it has become public.' And 1'nrkc, J., said, ' There is no case in which a patentee has been deprived of the benefit of his invention because another had also invented it, unless he had also brought it into use.' Again, in the case of Hill v. Thompson (1 W. P. C. 211 . Dallas, J., said, ' It is not enough to have discovered what was unknown to others before, if the discovery be confined to the knowledge of the party having made it ; but it must have been communicated more or less, or it must have been more or less made use of, so as to constitute discovery as applied to subjects of this sort.' Joint Iiwntnr*. It may happen that a given invention results from the combined operation of two or more minds, in which case it is necessary that all the inventors should apply for the patent. Patents have sometimes been dis- puted on the ground that the patentee owed a material part of the invention to another person ; and if this can be made out on satisfactory evidence, it is fatal. Assistants .\ in. nt <>f tin- j;it. litre may be safely adopted by him and embodied in his specifi- cation. 'I take tbe law to be* (said Mr. before whom the action for an infringement was tried) 'that if a person has discovered an improved principle and employs engineers, agents or other persons to assist him in carrying out that principle, and they in the coarse of experiments arising from that employment make valuable discoveries accessory to the main principle, and tending to carry that out in a better manner, such improvements are the property of the inventor of the original improved prin- ciple, and may be embodied in his patent ; and if so em- bodied the patent is not avoided by evidence that the agent or servant made the suggestions of the subordinate im- provement of the primary and improved principle.' When a new trial was moved for, on the ground that the judge had misdirected the jury, it was refused. On that occasion C. J. Tindal said, ' It would be difficult to define how far the suggestions of a workman employed in the construction of a machine are to be considered as distinct inventions by him, so as to avoid a patent incorporating them taken out by his employer. Each case must depend upon its own merits. But when we see that the principle and object of an invention are complete without it, I think it is too much that a suggestion of a workman employed in the course of the experiments, of something calculated more easily to carry into effect the conceptions of the inventor, should render the patent void.' A firm of manufacturing chemists employed ., a scien- tific chemist, in their laboratory as analyst and experimen- talist. The manufacture of alum free from impurities being a desirable object, it occurred to E. to try experiments with peroxide of manganese for that purpose, and he was there- upon instructed by the firm to make the suggested experi- ments. This he did with the assistance of one member of the firm, and whilst having communications with the other. The experiments succeeded, and a patent was obtained for the discovery by the firm in their own names. The judge, NOVELTY 33 at the trial of an action where the validity of the patent came in question, held that they were justified in applying for the patent. Although many stages of the discovery may have been due to E., yet he was the agent of his mployers. His labours were theirs, he worked in their laboratory and with their materials as well as with their assistance, and the benefit of the discovery belonged to them. (Kurtz v. Spence, 5 E. P. C. 180.) But where the patentee has no closer connection with the invention than that of being simply the employer of the inventor, he will not be able to sustain his patent. Thus, in Arkwright's case, it appeared that Arkwright, the patentee, had been told of a particular roller, part of the machinery by Kay, and that, perceiving the value of the invention, he took Kay into his service for two years, during which time he employed him to make models, and subsequently claimed the invention as his own, making it the foundation of a patent. Arkwright adopted in the same way a crank invented by Hargrave. In the face of this evidence, Arkwright's claim to be the true and first inventor fell to the ground. (Rex v. Arkwright, 1 W. P. C. 64.) Again, in the case of Barker v. Shaw (I W. P. C. 126 w.), an action for the infringement of a patent for an improvement in making hats, a witness proved that he had made the improvement whilst employed in the patentee's workshop, whereupon the plaintiff was nonsuited. In these cases it was clear that the patentee was not the true and first inventor, since the source of the invention could be traced elsewhere. "Whenever this can be done {with the exceptions stated in the note on page 29) the patent is invalid. It is so, as we have seen, although the real inventor should be in the service of the patentee ; and, a fortiori, will it be so where there is still less connection between them. In Tennant's case it was proved that, before the grant of the patent, conversations had taken place between Tennant (the patentee) and a chemist, who had suggested to Tennant the basis of the patented im- provement. This piece of evidence, in addition to slight D It-! NuVKl.IV evidence of user, induced the Court to nonsuit the plain tiff. p. c. i PRIOR PUBLIC UHKB. One of the first cases which the books contain was decided in 1798. Tennant brought an action for the in- fringement of his patent for a method of using calcareous (art ha instead of alkaline substances in bleaching. It was proved, on the one hand, that bleachers were generally ignorant of the patented bleaching liquor until after the date of the patent. On the otlu r hand, it was proved that a certain bleacher had used the same method of preparing bleaching liquor for five or six years previously to the date of the patent ; and that the method had been kept s< from all except his two partners, and two servants em- ployed in preparing the liquor. On this evidence the previous user was held to render the patent invalid (I \\. P. C. 125). The evidence given in Lewis v. Murlimi, to impugn the patentee's claim of novelty, \vas that several years viously a similar machine was in use at New York, and that a specification had been sent over in 1811 to a person residing at Leeds, who employed two engineers to manu- facture a machine from it, which, however, was never finished. The specification was shown to several persons, but the machine was never brought into use. In 1816 a, model of a machine for shearing from list to list, by means of a rotatory cutter, was brought over from America, and shown to two or three persons in the manufactory of the importer ; but no machine was ever made from it, nor was it publicly known to exist. Moreover, one Coxon, many years previously, had made a machine to shear from list to list, and this was tried by a person called as a witness ; but he did not think it answered, and soon discontinued the use of it. Loril T> nt>'nh-n told the jury that if it could le shown that the patentee had seen the model or specification, that might rebut the claim of invention. But ther. no evidence of that kind ; and he left it to them to say NOVELTY 35 whether the invention had been in public use and operation before the granting of the patent. They found that it had not ; and on the motion for a new trial the judges thought there was no reason to find fault with the verdict. Losh's patent was for improvements in the wheels of railway carriages, and these improvements consisted in constructing the pieces composing the entire wheel of malleable iron, and then welding them together. It was contended by the defendant in the case of Losh v. Hague (1 W. P. C. 202) that the invention was not new, inasmuch as one Paton had, previously to the date of Losh's patent, and under a patent of his own, described a mode of con- structing wheels of wrought iron, which differed little, if at all, from those patented by Losh ; moreover, that although the first wheel made under Paton's patent was riveted, all Paton's other wheels, thirty pairs in number, were made with the circumference of the inner rim entirely of wrought iron, and then welded into one piece. ' The question you have to try,' said Lord Abinger to the jury, ' on the origin- ality of Losh's invention, is not whether Paton's patent contains that perfect periphery that is required in this case, but whether wheels have been publicly made on this prin- ciple.' (The jury by their verdict found that wheels had been previously made on the same principle as Losh's wheels.) 'If,' continued his lordship, 'the wheels had been made and sold to any one individual, the public's not wanting them because there were no railways, their not being adapted to any particular use, which at that time was open to the public to apply them to, makes no difference. You have it in evidence that thirty pairs were made with a complete continuous circumference all round. If they were so made and sold, or used at all, though not for any purpose that then made them popular or desirable, still they were made with that particular advantage which is claimed by Losh's patent, namely, a periphery made of one continuous piece of wrought iron, as well as the spokes. But that is not all the evidence ; there are two parties from Manchester. One, Horsefall. says that he remembers, nearly twenty-eight years D 2 36 NOVELTY ago, that tin ! \\. n tin. trucks, having each three wheels, and those \\h.. U were made of wrought-iron spokes in a ..:ht-ir'ii t -ircumference, ami t)i n- is one exhibited >ti which was actually in use at that time ; tin- other, Roberts, confirms that, and has stated that existed for many years, and that they have been used.' In charging the jury assembled to try the action of Cornish v. A < 1 \\ . I 1 . < . 506 , / - I -aid that 4 if th. invention was at the time the letters patent were grant* 1 in any degree of general use ; if it was known at all to the world publicly, and practised openly, so that any other person might have the means of acquiring the know- ledge of it as wvll ns the person who obtained the patent, then the let t< M. Now it will be a que- for you to say whetln r. upon the evidence which you have heard, you are satisfied that the invention was or was not in public use and operation at the time the letters pat ut were granted. It is obvious that there are certain limits to that question ; the bringing it within that precise de- scription which I have just given must depend upon the particular facts which are brought before a jury. A man may make experiments in his own closet for the purpose of improving any art or manufacture in public use ; if he makes these experiments, and never communicates them to the world, and lays them by as forgotten things, another person who has made the same experiments, or has gone a little further, or is satisfied with the experiments, may take out a patent and protect himself in the sole making of the article for fourteen years ; and it will he no answer to him to say that another person before him made the same experiments, and therefore that he was not the f\r>t discoverer of it, because 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 that comes to the Crown and takes out a patent, it not being generally known to the public, is the man who has the right to clothe himself with the authority of the patent and enjoy its benefits. That would be an extreme case on one NOVELTY 37 side ; but if the evidence, when properly considered, classes itself under the description of experiment only, and unsuc- cessful experiment, that would be no answer to the validity of the patent. On the other hand, the use of an article may be so general as to be almost universal. In a case like that you can hardly suppose that anyone would incur the expense and trouble of taking out a patent. That would be a case where all mankind would say, " You have no right to step in and take that which is in almost uni- versal use, for that is, in fact, to create a monopoly to yourself in this article without either giving the benefit to the world of the new discovery, or the personal right to the value of the patent, to which you would be entitled from your ingenuity and from your application." Therefore it must be between these two limits that cases will range themselves in evidence ; and it must be for a jury to say whether, supposing these points to be out of the question in any particular case, the evidence which has been brought before them convinces them that the subject of the patent was in public use and operation at that time, at the time when the patent itself was granted by the Crown. If it was in public use and operation, then the patent is a void patent, and amounts to a monopoly; if it was not, the patent stands good.' The case of Carpenter v. Smith (I W. P. C. 530) arose out of an alleged infringement of a patent for an improved lock. ' I think,' said Lord Abinger to the jury, ' that what is meant by " public use and exercise " is this : a man is entitled to a patent for a new invention, and if his inven- tion is new and useful, he shall not be prejudiced by any other man having invented that before, and not made any use of it ; because the mere speculations of ingenious men, which may be fruitful of a great variety of inventions, if they are not brought into actual use, ought not to stand in the way of other men equally ingenious, who may after- wards make the same inventions and apply them. . . . The meaning of these words, " public use," is this : that a man shall not, by his own private invention, which he 38 NOVKI.TY keeps lock* <1 up in his own breast, or in his own desk, and never communicates it, take away the rig) it which another man has to a patent for the same invention. Now " public use " means this : that the use of it shall not be secret, )>nt public. If a man invents a thing for his own use, whether he sells it or not if he invents a lock, and puts it 01 own gate, and has used it for a dozen years, that is a public use of it. If it were otherwise, see what the consequence would be. If Mr. Danes has a lock whii -h he directed to be made and put on his gate sixteen years ago at leant ; if that was not a public use which prevented a man from taking out a patent, any man might go and take a model of that lock, and get a patent for it. How can he be the inventor of it? Because, to obtain a patent, a man must be the inventor; and if it has been once in public use, tha used in a public manner, not used by the public, yet if it has been used by half-a-dozen individuals, or one, 1 in a public manner, any man having access to it, how can he be said to be the inventor, if by merely gaining access to that he takes out a patent ? A man cannot be said to be the inventor of that which has been exposed to public view, and which he might have had access to if he had thought fit. ... If you are of opinion (not that they were generally adopted by the public and used by the public, for that, in my opinion, is a perfect fallacy) that the use of them is public, and the exercise of the invention was public, and not kept secret so that the public might have no benefit from it, then I think that part of the issue you ought to find for the defendant.' The learned judge summed up the evidence as 1 ' If a person ' (asked Dallas, J., Hill v. Thompson, 1. W. P. C. 240) ' had done precisely all that is specified to be done in this specification, and had not communicated it to any one, could he be prohibited by the patent from doing that which he had done before, though known to no one but him- self ; or could it be considered as new, if practised by only one person, but not communicated to the world ? ' And Tindal, C. J., in Cornish v. Kccnc (1 \V. P. C. 511), observed that 'if the defendants had shown that they practised it (i*. the patented invention), and produced the same result in their factory before the time the patent was obtained, they cannot be pre- vented by the subsequent patent from going on with that which they have done.' NOVELTY 39 to a public user in this way : Twenty-six years ago Freer produced to Tilsley a model of a lock, and desired him to make six dozen like it, and afterwards a dozen and a half. Tilsley employed Walker to execute the order, and gave him the model. The locks were made, and Freer paid for them. ' Here you have an article manufactured by an English manufacturer, and sold ; and in my opinion, if it was sold even for the assumed purpose of being sent to America, I cannot but think that that would be a destruc- tion of the novelty of the plaintiff's invention. When a model is sent to a workman, who sells seven and a half dozen, and sells them for a certain price, I must say I think the invention was used and publicly exercised. There is no secrecy in the manufacture of them ; it is not shut up in the closet of the workman who makes them, but the man who makes them gives directions to another workman ; he sells them for his own profit.' These observations of Lord Abingcr were made at the trial of an action which terminated in favour of the de- fendant. On the motion for a new trial, on the ground of misdirection, the judges of the Court of Exchequer expressed themselves satisfied with his lordship's view of the law and refused a rule, Alderson, B., saying 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.' The point as to public use was again raised in an action for infringing a patent for paving streets with wooden blocks. It was shown that, some time before the date of the patent, the carriage-way of a porch of Sir W. Worsley's dwelling- house in Yorkshire had been laid with blocks of wood, on a system apparently similar to the plaintiff's. Cresswell, J., told the jury, that if they thought the plaintiff's method of constructing the wooden pavement was the same as that adopted at Sir W. Worsley's, the invention must be deemed to have been made public. It had been publicly used, and made known to all persons who went to the house, so far as ocular inspection could acquaint them with it. Whether it 40 had been used by one or used l.y H\. , the learned j thought limde lio differel: I'l \. II 'illi.ii;,. '2 \\ '. In another action for infringing the same p against another d f. ndant, it wa> proved tliat the pavement ir W. \Y -vas on a different principle from tin- plaintiffs. I'm-).' . /:., !<>ld tin- jury that if tin- mode of forming and laying tlie blocks at Sir \V. Worsley's had been isely similar to the plaintiffs, that would have 1" sufficient user to destroy tin- plaintiffs patent, though put in practice in a spot to which the puhlic had not free access. (St,-,i,l v. .1; B W. P. C. 1 '.'.' A patent for an improved anchor was granted in 1838 to one Porter. On the trial of an action, brought by Porter's assignee, for an infringement, it was shown that in 1826 an anchor-smith had invented an anchor similar to Porter's, and had sold a few of that make to various shipowners for use in their ships. This was held such a public user as sufficed to invalidate the patent. // nilmll \. Hln,>mer, -2 W. P.O. 199.) IlnncorL- v. Sniiii'n-tU (reported in Newton's L. J., vol. \x\i\. p. 158) is a case in which peculiar circumstances tending to show public user were adduced in evidence for tin- purpose of rebutting the claim to novelty, and it raised the interesting question whether publication in this country of an artirl,- made abroad, there having been no disclosure of the secret of making it, is equivalent to a publication of the inri'iitinn, so as to render void a patent afterwards obtained in this country by another inventor for a similar invention. Hancock's patent was for improvements in the preparation of caoutchouc, and the invention consisted in combining sulphur with the caoutchouc, which rendered it elastic at all temperatures. The defendants imported from America shoes made of caoutchouc, which, when analysed,, were found to contain sulphur along with oxide of lead and other ingredients. In an action for an infringement of the patent it was proved that previously to the date of the plaintiffs patent specimens of caoutchouc prepared by NOVELTY 41 sulphur were sent to England by Goodyear, of New York, and were shown to Hancock, but the secret of the manu- facture was not communicated to him. Negotiations were commenced for the sale of the invention to Hancock, but never completed. It was stated in evidence that Goodyear's agent left specimens with Hancock, supposing that it would not be possible for him to discover the process by which it was prepared. However, Hancock made experiments, and discovered that sulphur endowed caoutchouc with the pro- perty of elasticity at all temperatures, and he then took out his patent. Mr. Justice Williams left it to the jury to say whether, supposing the shoes to have been manufac- tured in England, they could have been made without infringing the plaintiff's patent ; and then he proceeded to make these remarks upon the novelty issues : ' The de- fendants do not deny that Hancock is to be considered the inventor, notwithstanding Goodyear had previously made the discovery, provided the invention had not been pub- lished or in use in this country before the date of the patent. The defence consists of this : not only had Good- year discovered the invention first, but also that the in- vention had been substantially published, and was in use not in secret use, but in public use before the date of the patenb; that the material being in public use, the ready means of the invention were also necessarily before the public ; because it is said the article presented in itself such means of knowledge to the public as to enable anyone of ordinary competence to reproduce the article. If you should be of opinion that the material was in use before the date of the patent, then the question resolves itself into this : what is your opinion as to whether the publication of the material was substantially a publication of the invention ? If you should find that the material was in public use, but that, notwithstanding, the invention remained still a matter to be discovered, in my opinion the plaintiff's case would not be affected by the circumstance of the material being in public use. If, on the other hand, you should think not only that the material was in public use (and I should here 42 KOVI:I say that I do not think it is necessary tin- use should be actual sale if it were in j.ul.lic use it net- W. P. C. 108-108), Timid, C. ,/., said to the jury, 'I look upon the invention to consist in this, that Muntz has by an experiment ascer- tained that a certain mixture of the alloy of zinc with copper will have the effect of producing a better sheathing (for the bottom of shii> by reason and by means of its oxidating just in sufficient quantities that is, not too much, so as to wear away and impair the sheathing and render the vesoel unsafe, but enough, at the same time, to keep l>y its wearing the bottom of the vessel clean from those impurities which before attached to it. And if it was shown, as possibly it might be, that sheets had been made of metal before, in the same proportion which he had pointed out, and if this hidden virtue or quality hod not been discovered or ascertained, and consequently the application never made, I cannot think the patent will foil on that ground. ... In my judgment it will not go far enough [to show that sheets of this particular alloy bad been previously made], unless they can show there has been some application of them before to this very useful purpose. ... I do not think that the circumstance of showing that the combination of these two materials in a metal plate will of itself destroy this patent, when no attention at the time was paid to the NOVELTY 43 purpose for which this patent was taken out, and it was made merely in the ordinary course of melters of metals for the various and ordinary purposes of life. I do not think that the circumstances of showing, that in the long time that has passed before us in the different, and I may say infinitely varying, combinations that must have been made for the various purposes for which brass and other metal was manufactured for ordinary and common purposes of life to call a workman to show that on some occasion or occasions he had combined them in those proportions for another and different purpose ; it does not appear to me that such destroys the patent.' The question of public user arose in the case of Heath v. Smith (2 W. P. C. 268). An action for the infringement of a patent under which the invention claimed was an im- proved method of making cast steel, by fusing carburet of manganese along with common iron or steel. It was proved at the trial that five manufacturers of steel had used substantially the process patented by the plaintiff before the date of his patent, not by way of experiment, but in the way of their trade, and to the extent of hundreds of tons. Two of the manufacturers had kept the process a secret. The other three had openly practised it ; but it had not become generally known, and the trade was not made acquainted with it until the plaintiff took out his patent. It was held, after argument, by the Court of Queen's Bench, that there had been a public use of the process, and that the patent was, therefore, invalid. One of the judges pointed out this consequence of an opposite decision, that a man who made a discovery would be obliged to take out a patent for it in order to free himself from liability to action in the event of another man making the same dis- covery and procuring a patent. The process adopted by the five manufacturers was to place iron, manganese, and carbon in a crucible. The application of heat, according to the scientific witnesses, made first a carburet of man- ganese, and then made that substance unite with the iron. Now the Court of Exchequer Chamber had previously held 44 NOVELTY tlmt this process was an infringement of the patent, the specification of \\hich claimed ' the use of carburet of nian- ganese in any process for the conversion <>f iron into east steel;' for although the plaintiff only mentioned carl as a well-known substance which he put into the his patent was held to cover every mode of operating whereby carburet of manganese, however formed, was made to act upon iron. The result 1>\ the two processes was identical. The process used by Smith, tin- defendant in thi- action, was .similar to that of the five manufacturers. If it was the same as the plain tiffs, he had a good defence; for the process was not new, and the plaintiffs patent was invalid : if it was not the same as the plaintiffs, then t was no infringement. When- the drlVndants at the trial of an action for the infringement of a patent for a method of manufacturing penholders proved that they had made penholders accord- ing to the method which the plaintiff afterwards patented, and that such penholders had been placed in their ware- house for sale, though no sale was proved. >;> /. Jervis, < '. !., the presiding judge, held that the plaintiffs invention was destitute of novelty. (Mullht* \. Hurt, :J Car. A: K. 297.) The sale in England of articles made abroad is an anti- cipation of a subsequently patented invention. (Jensen v. Xmith, 2 R. P. C. 249.) The following later cases on the subject of prior user may be referred to: ('ri/x ; Lixd-r \. \<>rtti, 8 R. P. C. 199 ; 7Wwiv v. HViV//,/, 5 R. P. C. 880. It was decided by V. < . J:n in the case of JloU v. - iL. II. 10 Ch. D. 268) that the prior user of an in- vention in a colony does not affect the validity of a patent subsequently obtained for the same invention in the United Kingdom. But, in order to break down the patent of the person who was de facto the first to produce a useful article by the NOVELTY 45 patented process, the fact of anticipation, if that is relied on, must be very clearly made out. (Von Hcyden v. Neustadt, 50 L. J. N. s. Ch. 126.) When previous public user of the invention is relied upon as ground of the invalidity of a patent, it is not necessary to show that such user continued up to the time of the patent being granted. Even if discontinued, the patent will be invalidated. (The Househill Co. v. Neilson, 1 W. P. C. 709, in the House of Lords. And see the remarks of Sir W. P. Wood, V. C., on Jones v. Pearce in Tangye v. Stott, 14 W. R. 386, as well as the case of King, Brown d- Co. v. Anglo-American Brush Corporation, 6 E. P. C. 414.) Their lordships, however, in delivering judgment in the first of these cases, expressly left it an open question whether a patent for an invention would or would not stand, if a similar invention had formerly been in use but had ceased to be used long before the date of the patent, and the thing had been completely lost sight of until discovered again and patented. Secret User, from which the inventor derives a profit, and being not merely a user by way of experiment, will certainly deprive his after-acquired patent of its validity. But there is still the question whether prior secret user by someone other than the patentee is sufficient to vitiate a patent. This point has never been judicially decided in an English court ; but we have a dictum of Mr. Justice Erie, uttered in the above case of Heath v. Smith : ' If one party only,' said that learned judge, ' had used the process, and had brought out the article for profit, and kept the method entirely secret, I am not prepared to say that then the patent would have been valid.' Tennant's case (ante, p. 33) may be referred to, as well as Lord Abinger's remark in Carpenter v. Smith (ante, p. 37) and the note on page 38. Fraud. By the thirty-fifth section of the Patents Act of 1883 it is enacted that a patent granted to the true and first inventor shall not be invalidated by an application in fraud of him, or by provisional protection obtained thereon, 46 NOVELTY or by any use or publication of th< in\. ntion sulweqnent to that fraudulent application during tin- j)eriod of provisional protection. Alxinilor i-'nncnt* <>/ -en hut a step beyond what has before been reached by experiments which seemed fruitless, and were abandoned. The question whether the evidence amounts to proof of public use, or whether it only proves that abandoned experiments had been mode, is frequently of considerable delicacy ; since, as it has been remarked from the Bench, a slight difference in the evidence will establish either the one proposition or the other. (Corninh v. Kcrnr, 1. W. P. C. 519.) In nUnicii v. />'/,/,./, (1 W. P. C. 525), TiiM. C. /., said, ' A mere experiment, or a mere course of experim for the purpose of producing a result which is not brought to its completion, but begins and ends in uncertain experi- ments, that is not such an invention as should pr another person, who is more successful, or pursues with greater industry the chain in the line which has been laid out for him by the preceding inventor, from availing himself of it and having the benefit of it. ... That there had been many experiments made upon the same line, and almost tending, if not entirely, to the same result, is clear from the testimony you have heard ; and that these were experiments known to various persons. But if they rested on experi- ment only, and had not attained the object for which the patent was taken out, mere experiment, afterwards supposed by the parties to be fruitless, and abandoned because they had not brought it to a complete result, that will not prevent NOVELTY 47 a more successful competitor who may avail himself, so far as his predecessors have gone, of their discoveries, and add the last link of improvement in bringing it to perfection.' See also the observations of the same learned judge in Cornish v. Keene (1 W. P. C. 508). In Jones v. Pearce (I W. P. C. 124), an action brought for an infringement of a patent for an improved construction of carriage-wheels, the defendants contended that wheels similar in principle to those for which the patent had been obtained had been invented several years previously by a Mr. Strutt, made under his orders, and used in a cart em- ployed on the public roads for upwards of a year. These wheels were afterwards laid by, the spokes having occasion- ally got bent. Patteson, J., told the jury that if ' you are of opinion that Mr. Strutt's wheel was an experiment, and that he found it did not answer, and ceased to use it alto- gether, and abandoned it as useless, and nobody else fol- lowed it up, and that the plaintiffs invention, which came afterwards, was his own invention, and remedied the defects of Mr. Strutt's wheel, then there is no reason for saying that the plaintiff's patent is not good.' On the trial of an action for infringing a patent for im- provements in cards for carding fibrous substances, which improvements consisted in using caoutchouc as a substitute for leather as an elastic bed in which the teeth were fixed, it was given in evidence, in support of a plea denying the novelty of the invention, that a certain material, called Hancock's patent leather, had been made and sold previ- ously to the patent ; and it was suggested, rather than proved, that this material was substantially the same thing as the elastic bed in which the carding teeth were fixed. It appeared that the patent leather had been supplied to- certain manufacturing firms, during the space of about a year and a half, several years before the date of the patent, and that it had been used in the construction of cards, but had not been employed for that purpose since that time. * Supposing,' said Cresswell, J., to the jury 'that the article (Hancock's patent leather) did embody the principle of the 48 1'laintitT, BO aa to present to persons u-ii. : - it ; qualities, and advantages in principle of Unit article , tin plaintiff makes, the queHtimi for you will he, \\] that user is not to I..- coii~id.-rcd ratln r in tli- of an experiment, than of any public u-^e of the article, BO as to deprive the plaintiff of the fruit of In in respect of this miinufiu-ture.' ( H 'niton v. Itatfnian, 1 \\ . 1'. ( . 519.) At the trial of .sv. ././ v. Williams cl \\. V. ('. 1 ::,.. < reu- /r7/, ./., said to the jury, 'I take it that there is a great difference between the knowledge of an invention as a thing that would answer and was in use, and the knowledge of it as a nun experiment that had been found to be a failure, and thrown aside. If a person has had a scheme in his head and has carried it out, hut after a trial has thrown it aside, and the thing is forgotten and gone by, then another person re-introducing it may, within the meaning of tin- Act, be the inventor and the first user of it, so as to justify a patent.' In the case of Tanay,- \. St,,tt (\\. N. 1866, p. 68), it appeared that the plaintiff was the assignee of a patent ob- tained for improvements in pulley-blocks, and that pn to the patent there had been described in a book a pulley similar in principle to that patented, from which description one Moore had made a pulley. This he had tried a few tunes and then laid aside. The defendant had also made a pulley from the description in the book. It was held, how- ever, that although the principle had been made known, the facts above mentioned were of the nature of experirn< and that as the patentee was the first to carry the invention fully into effect his patent was good. In Jlill* v. Liatilnii fi'fix Liaht Co. (5 H. & X. 312) it appeared that Mr. Croll had purified many thousand feet of gas by a mode for which Hills subsequently obtained a patent, and this gas was sold. The jury, on the trial of an action brought by Hills for the infringement of his patent, found that this was by way of experiment, and the Court refused to disturb the verdict. In delivering judgment on the defendants' rule for a new trial, the Court said, ' The NOVELTY 49 word " experiment," in the cases referred to, has been used, not as the sole test upon a matter of this sort, but as in- dicating a class of practice, and for the purpose of showing that if there has been a user of an invention not of a sub- stantial character, but in the character of an experiment, then, although the thing has been done before, it does not preclude a person from taking out a patent for it ; so that although what Croll did may not have been strictly in the nature of an experiment, still the jury have so found it, and we cannot grant a new trial.' Other cases bearing upon the question of prior experi- mental user are Brereton v. Richardson (1 E. P. C. 165) ; Moseley v. Victoria Rubber Co. (4 E. P. C. 253) ; Morgan v. Windover (4 E. P. C. 417) ; S. C. on Appeal (5 E. P. C. 295) ; and in H. of L., 7 E. P. C. 130 ; Edison and Swan Co. v. Holland, Court of Appeal (6 E, P. C. 277, 283) ; Winby v. Manchester, d-c., Tramways Co. (6 E. P. C. 359). Prior Imperfect Machines. The fact that there had pre- viously been made a machine which turned out a failure will not invalidate the right of a patentee who has made a successful machine with the same object, although there may be a certain degree of similarity between some of the details of the two machines (Murray v. Clayton, 7 L. E. Ch. 570). And in Barlow v. Baylis (1 Griff. P. C. 44), where a machine, alleged to be an anticipation of a patented machine, was shown to have been so imperfect as to be incapable of doing the promised work ' more or less badly,' it was held not to have deprived the later machine of the attribute of novelty. Earlier Inventions having a similar object. It is some- times argued that a patentee is not to be deemed the true and first inventor, if a patent for a similar object had been previously obtained by another inventor ; but this contention will not prevail when it can be shown that the earlier patentee had not secured the principle, and that the means by which the object is attempted to be accomplished are substantially different in the two cases. Kneller obtained a patent for an apparatus for the E 50 NOVEL evaporation of liquids and solutions at a low temperature. The apparatus consisted of pipes or tubes, alon- \\ hi.-h air was forced nearly to the bottom of the vessel containing the li. I u ill to bo evaporated, which air, passing through small holes in the submerged tubes, traversed the liquid and car- ried off the aqueous particles. The invalidity of this \<. was attempted to be proved by showing that an i having a similar object in view had been previously patc-i But when it appeared that the earlier invention consisted in propelling a quantity of heated air into the lower part of the vessel containing the liquid, and causing such air to pass through the liquid in streams, by means of a perforated coil of pipe or colander, the jury found that, although the principle of both inventions consisted in forcing air in finely divided streams through a fluid, for the purpose of facili- tating evaporation, yet the modes by which this was effected in the two cases were sufficiently distinct to acquit the latter invention of being a piracy of the former : and that the latter patent was not invalidated by reason of want of novelty in the invention. The Court was of the same opinion, upon the application for a rule to set this v aside. (Hull-it v. /%<-, 1 Carp. Rep. 501 ; 2 B. and A. 870.) In Mhit,-r v. Mmrrr (1 W. P. C. 140) it appeared that the plaintiff had taken out a patent for an improvement in reclining chairs, which consisted in the application of a self- adjusting leverage to the back and seat of a chair, whereby the weight on the seat acted as a counterbalance to the pressure against the back. Mower, the defendant, made chairs in imitation of Minter's chair, and contended, in an action for an infringement of the patent, that the plaintiff was not the lir>t and true inventor, alleging that one Brown had, previously to the patent, made chairs embodying a similar principle. It appeared, however, that although Brown's chair contained a similar principle to that patented, it was encumbered with machinery which rendered it a very different thing from the plaintiff's. Lord Itcnnmn said that, supposing Brown's chair to have been a chair with a self- NOVELTY 51 adjusting leverage (i.e. a chair similar to the plaintiffs), if the encumbering additional part had been away, 'then the question is, whether the principle of self- adjustment was at all discoverable or thought of at that time. Because, it seems to me, if that principle might have been deduced from the machinery of the chair that was made, but it was so encumbered and connected with other machinery that nobody did make that discovery, or ever found out that they could have a chair with a self-adjusting leverage, by reason of that or any other defect in the chair actually made ; it seems to me that does not prevent this from being a new invention, when the plaintiff says, I have discovered, throwing aside everything but this self-adjusting leverage itself, something that will produce an effect, which I think a very beneficial one.' PUBLICATION IN PRINTED BOOKS. It has been repeatedly held that an inventor's claim to novelty is destroyed by showing the previous publication of the invention in some printed book in use in Great Britain. Mr. Justice Buller, in Rex v. Arkicright (1 W. P. C. 72), said, ' It is admitted that this is not a new discovery ; for Emmerson's book was produced, which was printed a third time in the year 1773, and that is precisely the same as this.' ' Although ' (said Tindal, C. J., in Cornish v. Keene, 1 W. P. C. 507) ' it is proved that the invention is a new discovery, so far as the world is concerned, yet if anybody has been able to show that although that was new that the party who got the patent was not the man whose ingenuity first discovered it, that he had borrowed it from A or B, or taken it from a book printed in England, and which was open to all the world then it would become an important question whether he was the first and original inventor of it.' In the course of the argument of the case of The House- hill Company v. Neilson (1 W. P. C. 673), an appeal from the Court of Session in Scotland to the House of Lords, Lyndhurst, L. C., asked, ' If the machine is published in a book, distinctly and closely described, corresponding with 51 i.-srription in the sp of tin- patent, though it has never been actually worked, is not that an answer to patent ? It is continually tin* practice on trial* for patents to read out <>f printed books, without re to anything tluit luis been done.' If the foreign book containing a description of an im tion has been circulated in Kn^litml i. /.' ton's Lond. Jour. vol. xl. p. 71), or v. n if only four copies of the fon-i^n lKX)k are sent . a bookseller in this country and by him exposed for sale, only one being ac- tually sold to a public library (I.f the skate attached to tin- pa ten tee's Amti patent, and which book had been received by a librarian of the Patent Office Library in London about thirty-h days before the date of the English patent without bcin^ entered either in the list of donations or in the catalogue of tlu- library, and nothing more was known of it until another librarian found it many months afterwards on a shelf in a corridor leading to the public room, which corridor was open to the public, all this was held by sir > /. M. /,'.. and afterwards by the Court of Appeal, not to prove a pub- lication sufficient to invalidate the patent. (Plimpton \. ,s>///<>r, L. R. 6 Ch. D. 412.) In the case of Ott,, \. St.-,-l (31 Ch. D. 241, and 3 R. P. C. 112) Mr. JH* held that the simple fact that a copy of a French book was in the inner library of tin- British Museum was not sufficient publication to lead to the inference that whatever was found in that book had become part of the public stock of common knowlt Two specifications in the German language of German patents, with drawings, were deposited in the Library of the Patent Office, London, the one more than two years, the other forty days, before the date of a British patent, and NOVELTY 53 entries of these specifications were published in the official Patents Journal and their subject-matter stated, a footnote being appended to the effect that the specifications might be seen in the Library. It was held that this amounted to a publication of the inventions in this country. (Harris v. Rothwett, 31 Ch. D. 416 ; S. C. 3 E. P. C. 383 ; 4 E. P. C. 225.) It may be inferred from some of the preceding cases that when the validity of a patent is contested on the ground of the invention having been previously communicated to the world by a book, it is not necessary to show that the patentee derived his knowledge of the invention from such book. And it was expressly decided in Stead v. Williams (2 W. P. C. 142), that if the invention has been already made public by any description contained in a work, whether written or printed, which has been publicly circulated, in such case the patentee is not the true and first inventor within the meaning of the statute, whether he has himself borrowed his invention from such publication or not ; be- cause the public cannot be precluded from the right of using such information as they were already possessed of at the time the patent was granted. The application of this rule must depend upon the par- ticular circumstances of each case. The existence of a single copy of the work in a depository where it had long been kept in a state of obscurity, would afford a very different inference from the production of an encyclopaedia or other work in general circulation. The question will be, whether, upon the whole evidence, there has been such a publication as to make the description a part of the public stock of in- formation. (See also Plimpton v. Malcolmson, L. E. 3 Ch. D. 531; Plimpton v. Spiller, L. E. 6 Ch. D. 412; Von Heyden v. Nemtadt, 50 L. J. N. s. Ch. 126 ; United Telephone Co. v. Harrison, L. E. 21 Ch. D. 721.) If a published drawing of a machine is sufficient of itself to enable a mechanist to construct the machine, that would be enough to invalidate a subsequent patent for a similar machine. (Per Lord Esher, M. E., in Hen-burger T. Squire, on Appeal, 6 E. P. C. 198.) 54 NOVELTY PUBLICATION IX THE SPECIFICATION CXUER A PBIOft PATKXT. The law as regards the publication of th< in\. uti-n in the ppn-ifinition umlt-r n prior pat. nt is precisely the same as that with t<> :i ]>uln in a printed book. The invention lias lx- n <1 privc-d of its n .juisit<- attrilmteof novelty if it has heen described in u iMvvious specification, wlu -tlicr the patent has or has not expired. 1 If, prior to his obtaining a patent, any part of that which is of the sub- stance of tin- invention has been communicated to t)x> puMic in the shape of a specification of any other pn v he cannot claim the benefit of his patent. '//- borowjlt, in llmUlirt \. (iriiintlmic, 1 \\. P. C. 86; and see r, 1 W. P. C. 550.) In the case of Mnmntnam v. //"' -I \V. P. C. 128), an action for the infringement of a patent for a method of paving struts \\ith blocks in tlu> form of two solid rhombs placed one in front of the other, in opposite directions, so that each side of a block was bevelled both inwards and outwards ; it was proved that the defendant used blocks, each consisting of a single solid rhomb, and tin n fastened two together by pins, so that two of the defendant's blocks thus fastened exactly resembled one of the plaintiff's blocks. This was the infringement complained of. The defendant, at the trial, put in the specification of an expired patent, obtained by one M'Arthy, for a pavement in which each block had two levels inwards and two outwards on the same side. If M'Arthy's block were cut into two, it would make two blocks similar to the plaintiff 's ; if cut into four, it would make four blocks similar to the defendant's. Both judge and jury thought that, under the circumstances, the plaintiff's invention was destitute of novelty. The plaintiff asserted that the defendant had infringed his patent by 1 The operation of this Rale is now narrowed by Art. 4 of the Inter- national Convention, and by Sect. 103 of the Patents Act, 1883. Any person who has duly registered an application for a patent in any of the States of the Union enjoys a right of priority to a British patent for a period of seven months from the date of his foreign application, although the invention may have been meanwhile published or used in this country. NOVELTY 55 cutting his block into two. The defendant showed that the plaintiff, in forming his block, had only cut M'Arthy's block into two. The plaintiff, in support of his own patent, was bound to contend that M'Arthy's invention and his own were distinct ; but then if he established that, it fol- lowed that his own and the defendant's were likewise distinct, in which case there was no infringement. Even the specification under a worthless patent might sufficiently disclose the invention so as to anticipate a sub- sequent patent. (Per Lord Halsbury, C., in Kaye v. Chubb, 5 E, P. C. 648.) But if the prior inventor had not shown how the invention is to be practically carried out, and an indepen- dent inventor does this and fully explains the mode in which the result is obtainable, his patent will be held good. In the case of Betts v. Menzies (10 H. L. C. 117) it was held that a general description in a prior specification or in a published book, even if suggesting information or involving some speculative theory pertinent to the invention in ques- tion, is not to be considered as anticipating a subsequent patent involving a practical invention unless the antecedent publication contains the same amount of practical and useful information. Betts's patent was for the production of a material capable of application to many useful pur- poses by combining thin sheets of lead and tin by means of pressure. It appeared that as far back as 1804 one Dobbs had patented a process for making a new material by com- bining lead and tin by pressure, but he did not with any precision define the relative thicknesses of the sheets of metal nor the degree of pressure to be applied, whereas Mr. Betts entered minutely into those points. Moreover, it was not shown that the earlier process had ever been carried into practice. Under these circumstances the House of Lords held that Betts's invention had not been anticipated. See also the observations of Wood, V. C., in the subsequent case of Betts v. De Vitre (11 L. T. N. s. 445), in which the validity of the same patent was in question. Under a patent for the purification of gas, Mr. Croll 5f, NOVELTY claimed the use of oxides of iron, which expression was held to mean hoth hydratcd and anhydrous oxides of iron. Mr. Hills afterwards obtained a patent for the use of anh> i oxide of iron for the same purpose ; but it was said, in an action which he brought fur the infringement of his pa 1 that he had been anticipated by Croll. On his part it was argued that as it was a fact that M>m. <>xil-> would answer tii. object in view, and some would not, it became a subj< rt for investigation and experiment to ascertain what oxides it would be proper to employ, and that when he had made the discovery he was entitled to a patent in respect of it. The Court of Exchequer held that this discovery might proj be the subject of a patent. (Hill* v. London Gat Liylit < i>any, 5 H. and N. 812.) If a specification contains a general statement which gives no clear intimation either by its own construction or in the opinion of a workman of ordinary skill, either as to the result or as to the means, and if a person should out of the general words which describe nothing discover some- thing not inconsistent with them but not disclosed by them, he may obtain a patent for his discovery. But if in a specification one of the modes described in it gives a clear result by clear means, although the person who took out the patent does not see that result, and another person by studying the specification more carefully perceives the result, he has no right to take out a patent for it. (Per /,..// V. 7i.. in A'n.v v. Cltnbb, 4 R. P. C. 298.) The antecedent description of an invention which will have the effect of depriving a subsequently patented inven- tion of the attribute of novelty, must (according to / Wettbury, C., in llitts v. Eran*, 4 De G. F. & J. 288) ' be such that a person of ordinary knowledge of the subject would at once perceive, understand, and be able practically to apply the discovery, without the necessity of making further experiments and gaining further information, before the invention can be made useful. If something remains to be ascertained which is necessary for the useful applica- tion of the discovery, that affords sufficient room for another NOVELTY 57. valid patent. . . . The information as to the alleged inven- tion given by the prior publication must, for the purposes of practical utility, be equal to that given by the subsequent patent. The invention must be shown to have been before made known. Whatever, therefore, is essential to the in- vention 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 and accurate, and gives a specific rule of practical application. . . . Upon principle, therefore, I conclude that the prior knowledge of an invention to avoid a patent must be a knowledge 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 practical use.' According to L. J. Brett, in Otto v. Linford (Court of Appeal, 46 L. T. N. s. 39), the question to be considered is whether the prior specification, fairly read by a person con- versant with such matters, would give a reasonably clear description of the later invention that is, supposing it to relate to a machine, whether it would give a reasonably clear description of a machine that would effect what the machine of the later inventor effects. (See also Von Hey den v. Neustadt, 50 L. J. N. s. 126 ; Moseley v. Victoria Rubber Co., 4 E. P. C. 252 ; Bray v. Gardner, 4 K. P. C. 400 ; Haslam v. Hall, 5 E. P. C. 19 ; American Braided Wire Co. v. Thomson, 5 E. P. C. 122.) ' Even if there is identity of language in two specifica- tions ' (said Lord Westbury, in Betts v. Menzies, 10 H. L. C. 152), ' and (remembering that those specifications describe external objects) even if the language is verbatim the same, yet if there are terms of art found in the one specification, and also terms of art found in the other specification, it is impossible to predicate of the two with certainty that they describe the same identical external object, unless you ascertain that the terms of art used in the one have pre- 58 cisely the same signification, and denote the same external objects at the date of the one specification as they do at the date of the oth* r. Where a provisional specification contained an incom- plete description of a piece of mechanism which was omitted from the complete specification, and another patent was afterwards obtained for similar mechanism, the passage in the preceding patent was lu 1<1 not to be a prior publication so as to vitiate the second patent, because the description was not sufficient to enable a workman to make the object. MT \. T.xM, L. It. 1 Cli. D. 58.) PRIOR PUBLICATION BY INVESTOR. We now come to a series of cases which declare the law with regard to a publication of the patented invention be- fore the date of the patent not by persons other than the patentee, but by the patentee himself. A person may be the true and first inventor of that for which he has obtained a patent, and yet he may have disentitled himself to the benefit of it by prior dealings with or prior publication of the invention. The law says that a man may not first publish his discovery and then obtain protection for it against the public, whom he has already made acquainted with it. Having done that, he has no longer anything to give as a consideration for the grant. Some of the cases will show inventors who intend to protect their inventions that they should be extremely cautious how they deal with them before applying for patents. An inventor does not lose his right to a patent by keep- ing his invention to himself after its completion, provided there is no profitable user of it (lientlcy v. !'! mintj, 1 C. & K. 587). But it may be remarked that, although not de- structive of his right, delay is here especially dangerous, and the fact might, under certain circumstances, be used as a strong argument against a patentee. In the same case of Bentley v. Fleming it was held that an inventor might safely deposit a machine of his invention, NOVELTY 59 for a reasonable time, in a room open to the public, for the purpose of having its properties tested. In Bramali v. Hardcastle (Holroyd, 81), which was an action for infringing a patent for a water-closet, it appeared that the patentee had made two or three of these machines before he obtained his patent ; but it w r as admitted that this fact would not of itself invalidate the patent. (See also Lewis v. ^Marling, 4 C. & P. 57 ; and Moss v. MaUnys, 3 E. P. C. 378.) Where the article had been manufactured for sale, and offered for sale, although not sold, this was held to be such a user of the invention as rendered a subsequently obtained patent bad. (Oxley v. Holden, 8 C. B. N. s. 666.) Where delay occurred in the issue of a patent without the patentee's fault, the manufacture by him of articles before the date of the patent for the purpose of being sold after the date was held not to render the patent invalid. (Betts v. Mcnzies, 4 Jur. N. s. 477.) In Wood v. Zimmer (Holt, N. P. C. 57) it appeared in evidence that a great quantity of verdigris made according to the patented process had been sold by the inventor in the course of four months before the patent was obtained, and Gibbs, C. J., held that ' the public sale of that which is afterwards made the subject of a patent, though sold by the inventor only, makes the patent void.' In July 1875 a patent was granted to Thomas Muir for improvements in the manufacture of meal and flour. On the trial of an action for the infringement of this patent the patentee himself proved that in June 1875 he had made flour according to the patented process and had sold it in the ordinary way of business. The action was thereupon dismissed. (Germ Milling Co. v. llobinson, 3 E. P. C. 253, and see Ee Adamson's Patent, 6 De G. M. & G. 420.) Patterson, one of the three gas referees appointed by the Board of Trade under the City of London Gas Act of 1868, procured a patent for an improved mode of purifying coal gas on March 9, 1872. He had obtained a knowledge of the patented process in the course of his labours as <><> NOVELTY referee, and it appeared that it hod been de* tin-" . in. -lulling Patterson, in an official report, which, though dated January 81, 1872, and print. .1 al.out that time, was kept back from the authorities to whom it ought to have been presented as soon as printed, until March :!'.. A suit for an infringement of the patent having been decided in Patterson's favour, the case went before the Court of Appeal (/'HM.-/-X.I// v. f/./x I.'ujht !; ('m- JHIHII, L. R. 2 Cli. I>. 812), ami then to the House of I (L. R. 8 App. Cas. 239), where it was hd.l that th. know- ledge obtained in the discharge of his duty by one referee, and by him communicated to bis colleagues, became at once public property, and could not be treated by them as confidential, nor could one of their number take out a patent for it. It was contended in Tlnnn*nn \. Hatty (- lished a mathematical paper discussing the objects to be aimed at, the difficulties to he overcome, and the condii to be satisfied in all attempts to improve the compass, he had disclosed his invention to the public and was not afterwards entitled to a patent. But the judge at the trial of an action for infringement held that what the pat had done was very far from disclosing how the prim i]-l< s enunciated in the paper were to be realised in an improved instrument, and that as he had shown this by his specifi- cation after much thought and many experiments, he was entitled to a patent for his very useful invention. Confidential Communications. If, however, the inventor communicates his discovery to a few persons under the bond or seal of confidence, there is no publication. In Mre admitted that if the patentee himself had, be for. his patent, constructed machines for sale, as an article of commerce, for gain to himself, and been in the f selling them publicly that is, to any one of the puhlic who would buy the invention would not be new at tli. date of the patent. This was laid down in the case of /v. '//immi-r. . . . But we do not think that the patent is defeated on the ground of the want of novelty, and the ions public use or exercise of it, by a single instance of a transaction such as this/ And see the remarks of J..-I. /'/// in Hninjihrrxon v. Syer (-1 I:. I 1 . (' 111: also f testing or improving the invention (such disclosure being unavoidable and not more than was necessary for the pur- . this will not take away the inventor's right to a potent Before applying for a patent the inventor of a machine entrusted it to a person for the purpose of trying experi- ments, and it was held that he had not thereby made it public. (Bentlfji v. /'// >/m/ fn>m the drawings in Edwards's office, when- fmir r live draughtsmen were kept, and tin y w re afterwards sent to the offices of the L. \ those cases which approach nearest to the one about \vhk-h doubt may be f-lt. Some of the decisions, indeed, seem to conflict with others; and it will require a good deal of acute discrimination on the part of those who are called on to advise inventors, to distinguish the line which separates what is patentable from what is not patentable. The question whether that which is claimed as an im- provement of an existing machine was the result of a suffi- cient amount of invention often raises one of the most difficult points of patent law. ' There are many cases in which the moment yon see the specification or improvement you can say without any evidence at all, " This is a most remarkable, elaborate, and difficult thing to do; it must have required great invention, and there can be no dispute about it," and no dispute is ever raised. On the other hand, there are some things so clear, so simple, and so obvious, that a person having any decent amount of mechanical knowledge says at once it is so easy that it requires no in- vention at all ; it is a mere mechanical equivalent, or that sort of thing, that any ordinary workman can do without any difficulty. Then there are a great number of cases between, where the improvement is no doubt small, but it may require a considerable amount of invention to effect it.' Per Sir G. Jessel, M. R. t in Saxby v. The Gloucester Waggon Company (Court of Appeal shorthand writer's notes ; see an abridged report in 2 Griff. P. C. 54). AMOUNT OF INVENTION 69 ' In point of law ' (said L. C. J. Tindal, in Crane v. Price, 1 W. P. C. 411), 'the labour of thought or experiment, and the expenditure of money, are not the essential grounds of consideration on which the question whether the invention is or is not the subject-matter of a patent ought to depend ; for if the invention be new and useful to the public, it is not material whether it be the result of long experiment and profound search, or of some sudden and lucky thought, or mere accidental discovery.' In either of the two last cases, the practical realisation of a good idea will be considered a sufficiently meritorious consideration for the exclusive privi- lege granted to the inventor, although the actual amount of thought expended in making the invention was trifling. The case of water-tabbies, so often mentioned in courts of law, is a case in point. The invention (according to Mr. Justice Butter in Boulton v. Butt, 2 H. Bl. 463, 1 Carp. 117) first owed its rise to the accident of a man spitting on a floor- cloth, which changed its colour, whence he reasoned, had his patent, and made, it is said, a considerable fortune by it. The making of iron gas-tubes without the use of a man- drel, viz. by welding them without striking them on a solid surface, ' seems to be a very simple invention ' (said Lynd- hurst, C.B., in Russell v. Cowley, I W. P. C. 467) ; ' but it has been productive of great advantages inasmuch as it has enabled the manufacturer to construct pipes of lengths much beyond what could be done previously to this discovery.' Here the great utility of the invention came in aid of the apparent smallness of the step, and the patent was sus- tained. Lace made from cotton thread had the defect of being covered with a kind of down, which injured its appearance and diminished its value. A similar defect was removed from muslin by passing it over rollers of heated iron, and from mitts and stockings by the action of flame, fed by oil or alcohol. It occurred to Mr. Hall that the flame of gas might be employed in the manufacture of cotton lace ; and after some failures he succeeded in inventing a method for 70 AMOUNT OF IN VI NTION removing the unsightly fibres by the flame of gas. A pat n t obtained for this invention was held good. (///-/* (1 \\. V. ( . 188) ia of cited to show that a small degree of invention suffices to sustain a patent, provided it be attended with useful n The object of the patent was the shearing of cloth from list to lint by means of rotatory rutti rs. Now a rotatory ci; to shear from end to end was known, and cutting from list to list by means of shears was also known. ' 1 1\u ,-ver ' (said ' '. J., to the jury, mi tin- trial of an action for the infringement of the patent, in which the question of Ity was raised), 'if before the plaintiffs' patent tin: cutting from list to list, and the doing that by means of ro- tatory cutters, HV/V nt foinhiii'il, I am of opinion that this is such an invention by the plaintiffs as will entitle them to maintain the present action.' In the case of llinkx \. ,s'efore, but in which the combination of different parts is new and a new result is produced, is good, because there is novelty in the combination. Here formerly three pieces were united together; Brunton only unites two ; and if the union had been effected in a mode unki before, as applied in any degree to similar purposes, I should have thought it a good ground for a patent ; but I think that a man cannot be entitled to a patent for uniting two things instead of three, where that union is effected in a mode well known and long practised for a similar purpose.' (Brunton v. Ilnirh x, 1 Carp. Hep. 410.) In the case of Kn;i v. Marshall (2 W. P. C. 34), it appeared that Kay had procured a patent for improved machinery for preparing and spinning flax, and the invention was declared in the specification to consist of new machinery for macerating flax previous to drawing and spinning it ; and also for improved machinery for spinning the same after having been so prepared. It appeared that the im- provement in the spinning machinery was nothing more than the placing of certain portions of a well-known machine within two inches and a half of each other, in- stead of at a greater distance. It was shown that the dis- AMOUNT OF INVENTION 73 tances between the parts in question had not been fixed in previous machines, but had been varied according to cir- cumstances; and, further, that the reach used in cotton spinning had actually been less than two inches and a half. It was held by the Court of C. P. that the adoption of a particular distance did not, under these circumstances, constitute such an invention as would support a patent. ' Suppose,' said Tindal, C. J., on delivering judgment, ' suppose a patent to have been first obtained for some entirely new method, either chemical or mechanical, of re- ducing the fibres of flax to a short staple, we think that a second patent could not be taken out for an improved mode of machinery in spinning flax which consisted of nothing more than the spinning of short staple of flax by a spinning machine of a reach of a given length, not less than that already in use for the spinning of cotton, the effect of which would be to prevent the first patentee from working his invention with the old machine at the proper reach.' Or, as Lord Cottenham put it in the House of Lords, if the plaintiff (Kay) has a right to tell the rest of the world that they shall not use the common spinning machine with rollers at two and a half inches distance, then the existence of the patent deprives all the rest of the world of the right of using the ordinary spinning machine in the form in which they had a right to use it before the patent was granted. To adjust in a more beneficial manner than before the distance between two of the working parts in check-action pianos was held not to be good subject-matter for a patent. (Herrburger v. Squire, 5 B. P. C. 581 ; affirmed on app. 6 E. P. C. 194.) In the case of Tatham v. Dania (1 Griff. P. C. 213), it was held by the judge who tried the action that the use of sets of rollers in a series going at different rates of speed for the purpose of making fibrous or textile materials pass through in a form more convenient and advantageous for being operated upon by the succeeding part of the machine was not the proper subject of a patent when it was shown ~ 1 AMOUNT OF INVENTION that a similar contrivance bad been employed previously in ( otton spinning. In Parket v. Stevent (L. R. 8 Eq. 858), Jamti, V. C. t was of opinion that the substitution <>f a slide for a hinge in the door of a lamp could not be the foundation of a valid it. And in the same case (affirmed L. R. 5 Ch. D. 86) it was held that the application of a sliding door to a t]>li-rical lamp was not patontable, as it was proved that sliding doors had been previously fitted to cylin, 7 R. P. C. 87, 62.) Notwithstanding proof of practical usefulness and of a large sale, it was held by the Court of Appeal that the making of the handles of bats used in lawn tennis and other games with two opposite grooves and with an enlarged end was not good subject-matter for a patent. (Sla;> //y the Court of Appeal not to constitute of itself the subject-matter of a patent. A specification claim. .1 the use'of solid naphthaline ] '1 in the form of sticks, rods, or pellets, for the enrich - nu-nt of illuminating gas. Now as liquid naphthaline had been previously applied for nriehinjj illuminating gas, and as solid naphthaline in tin- granular form and in tin- form of sticks was a known article, it was held that this applica- tion of a known article to a purpose for which the same article in another form had been pn -vi.u>ly applied was not proper subject-matter for a patent. (Ml>-< /.//t for a slide in certain cooking apparatus (/'/./i> //. 5 R. P. C. 46) ; the substitution of a pivot for a hinge in a nail-making machine (I'mt,,! llr*e1ioc d Xail Co. V. Swedish Horse Nail Co., 6 R. P. C. I). 1 PATENTS FOB 'APPLICATIONS.' These are patents for inventions which have reference to the application of an existing article to a purpose for which other similar articles have been previously used ; or 1 Other cases in which the inventions were held to be insufficient to support patents were Whitt v. Toms (32 L. J. Ch. 204) ; Jackson v. Needle P. C. 191) ; Sharp v. Braver (3 R. P. C. 193) ; Guilbcrt-Martin v. AY rr (4 R. P. C. 18) ; Britain v. Hirsch (2 R. P. C. 74) ; S. C. on app. 226 ; Walker v. Longford Wire Co. (4 R. P. C. 281) ; Roiccliffe v. Longford Wire Co. (4 R. P. C. 287) ; Haslam Co. v. Hall (5 R. P. C. 21) ; Longbottom v. Shaw (5 R. P. C. 497 ; affirmed on appeal, 6 R. P. C. 143) ; Gaulard and Gibb's Patent (5 R. P. C. 525) ; Herrburgcr v. Squire, on appeal (6 R. P. C. 194) ; Windover v. Morgan (7 R. P. C. 130). PATENTS FOE 'APPLICATIONS' 77 to the application of a well-known process to produce a well- known article ; or to the application of a well-known pro- cess to effect a result in a well-known article after the same process has been publicly applied to an analogous article. When there is nothing new in the machinery or methods employed, patents for such applications are not favoured by the law, which looks upon the inventions as wanting in ingenuity or novelty. The rule is well established that the mere application of an old mechanical contrivance to an analogous purpose is not an invention for which a patent can be granted. ' In all the cases in which a patent has been supported' (said Lord Campbell in Brook v. Aston, 8E. & B. 478) ' there has been some discovery, some invention. It has not been merely the application of the old machinery in the old manner to an analogous substance. That cannot be the subject of a patent.' In Harwood v. Great Northern Railway Company (2 B. & S. 208), Sir A. Cockburn, C. J., said : ' Although the au- thorities establish the proposition that the same means, apparatus, or mechanical contrivance cannot be applied to the same purpose, or to purposes so nearly cognate and similar as that the application of it in the one case naturally leads to the application of it when required in some other, still the question in every case is one of degree, whether the amount of affinity or similarity which exists between the two purposes is such as that they are substantially the same ; and that determines whether the invention is suffi- ciently meritorious to be deserving of a patent.' ' If the use or application is merely analogous ' (said Mr. Justice Chitty in Lister v. Norton, 3 E. P. C. 205) 'it is plain that the patent cannot be granted. When it is not only analogous, but is sufficiently out of the beaten track, the patent may be upheld. These general propositions are not precise or scientific. It is impracticable to frame proposi- tions of a scientific character on this point. Every case must be decided on its peculiar merits and with reference to its own special circumstances. The authorities are ne- cessarily decisions on particular cases, and are useful only 78 PATEXTS FOB 'APPLICATIONS' as affording some guide to the decision of the case before theCour The following eases will illu-tratr the law as thus laid down by these learned judges : The casting of tubular boilers in one piece, similar boilers having been previously made in several pieces which were afterwards fastened together i>y means of cement, was held not to be an invention for which a valid pat- be obtained, although the result was useful and beneficial public. It was only the application of a well-known article, vi/. iron, by a well-known process, viz. casting, to production of a well-known article, tubular boilers. 'i/V,-, 18 C. B. N. s. 8:r . in error, 1 1 Again, the application of ngle iron (a well-known article of commerce already applied to a variety of purposes) to the construction of hydraulic joints of telescopic gas- holders, instead of making them of two pieces of */ an^le iron attached to a plate, was held not to be patent - able, (llorton v. Malon, 12 C. B. N. s. 487 ; S. C. in error, 16 C. B. N. s. 141.) ' The use of a new material to produce a known article is not the subject of a patent,' said ]'.('. Mulinx, in /. L. R. 10 Eq. 522), a case where a man had taken out a patent for the use of a kind of wool called Russian tops in the manufacture of artificial hair. (See also Thompson v. Jainrx, 82 Beav. 570.) In the case of Lo*/i v. // / / (1 W. P. C. 202), the question was reduced to this Is a man who finds a par- ticular construction of wheel already in use for carriages on ordinary roads entitled to a patent for applying it to rail- way carriages, such application not having been previously made? Lord AUnncr remarked that you cannot have a patent for applying a well-known thing, capable of being applied to fifty thousand different purposes, to an operation which is exactly analogous to what was done before. His lordship put this case : ' Suppose a man invents a pair of scissors to cut cloth with ; if the scissors were never in- PATENTS FOR 'APPLICATIONS' 79 vented before, he could take out a patent for it. If another man found he could cut silk with them, why should he take out a patent for that ? ' Again ' It would be a very ex- traordinary thing to say, that after all mankind have been accustomed to eat soup with a spoon, that a man could take out a patent because he says you might eat peas with a spoon.' In an action for an alleged infringement of a patent for improvements in separating the fibres of cocoa-nut husks, it was shown that the principal part of the invention con- sisted in passing the split husks between crushing rollers, and that, for some time previous to the date of the patent, similar rollers had been employed in treating hemp. Lord Campbell, who presided at the trial, told the jury that the use of the crushing rollers having been thus anticipated, no claim for their application to the crushing of cocoa-nut husks would hold good. (Hyde v. Trent, Newton's Lond. Jour. vol. 45, p. 135. See also Tatham v. Dania, 1 Griff. P. C. 213.) So, in the case of Eegina v. Cutler (Macrory's Pat. Ca. 124-138), it was held by two judges on different occasions, that the mere application of a known article to a new use, the mode of application having been previously employed in applying analogous articles to the same purpose, cannot be made the subject of a patent. In this case the patent was for improvements in the construction of the tubular flues of steam boilers. The specification claimed the appli- cation of iron tubes coated with copper or brass to this purpose. This kind of tube was not new ; nor was there any novelty in the way the patentee applied the tubes in the construction of flues, uncovered tubes having been pre- viously used in a similar way. In The Patent Bottle Envelope Co. v. Seymer (5 C. B. N. s. 164) it was held that the use of a model or mandrel in the form of a bottle in making envelopes for bottles out of rushes or straw could not be the subject of a patent, this being merely the application of a well-known tool to work previously untried materials or to produce new forms. 80 PATENTS POR 'APPLICATIONS' On the trial of Btuh v. Fox (Macr. P. C. 168), i peared that tin- invention. f<>r an infringement of which tin- action was brought, consisted in th- use of a caisson or hollow cylinder for building under water. It was proved at tlu- trial that a similar caisson for building on land had been described in the specification of a patent granted several years previously. Thin, therefore, was only a new apj'lit -ation of a machine previously applied to an purpose. 'I think' (said >// 7. / ' . /.'.. to ti . jury) 'that a man cannot, if he has applied an old invention, or part of an old invention, to a new purpose, obtain a pat' nt for such an invention. Both the plaintiff and the other witness say that the invention consists in the application, and not in the novelty of the thing itself in other words, that the only novelty is in the application of the apparatus. I think that a patent cannot be taken out for such an application. If a man were to take out a patent for a telescope to be used to make observations on land, I do not think any one could say, " I will take out another patent for that telescope to be used for making observa- tions on the sea." On appeal to the House of Lords (Macr. P. C. 179), the judge's direction was held to be right. In /.'/-A v. Aston (8 E. & B. 478), it appeared that the plaintiff had obtained a patent in 1856 for improvements in finishing yarns of wool and hair ; and that in 1853 he had taken out a patent for a process precisely similar except that it was applicable to the finishing of cotton and linen yarns. The patent of later date was held bad because the alleged invention was only the application of an old machine in an analogous manner to another but similar object. This decision was affirmed by the Court of Exchequer Chamber (5 Jur. N. s. 1025). In the case of Ilaru-ood v. lite Great Northern Railway Company (2 B. & S. 194 ; 11 H. L. C. 654), a patent for the application of 'fishes' to iron rails for railways, for the purpose of securing them, was held invalid, because a similar contrivance had been employed to fasten pieces of timber PATENTS TOE ' APPLICATIONS ' 81 together in the construction of bridges, and had also been used in various articles of machinery. Mr. Justice Willes said the invention for which the patent had been obtained was ' the mere application of an old contrivance in the old way to an analogous subject without novelty or invention in the mode of applying such old contrivance to the new purpose.' Jordan's specification claimed the construction of ships with an iron frame combined with an external covering of timber planking for the sides, bilges, and bottoms. It appeared that a combination of wood and iron in the con- struction of ships was well known previous to the patent, and that frames partly of iron and partly of wood had been coated with iron. The Court decided that as iron and wood had both been long used in the construction of vessels, the application of w r ooden planking to the iron frame of a vessel, without any peculiarity in the nature of that plank- ing, could not be the subject-matter of a patent. The alleged invention was as to one part nothing more than the substitution of one well-known and analogous material for another that is, wood for iron to effect the same purpose on an iron vessel ; and as to another part, it W 7 as the appli- cation of the same old invention, viz. planking with timber, which had been formerly done on a wooden frame, for an analogous purpose on an iron frame. (Jordan v. Moore, L. E. 1 C. P. 624.) If an old combination used in one kind of machine is applied to another but cognate kind of machine in which it had not been previously found, this application will not be considered novel for the purpose of supporting a patent unless some ingenuity or invention is displayed in the application. A patented improvement in a combined mowing and reaping machine consisted of a contrivance by which the cutting knife could be made to revolve more rapidly when cutting grass than when cutting corn. It was shown at the trial of an action for an infringement that a similar contrivance had been previously applied to a hay-making machine with the view of driving the tossing rakes quickly 82 KST8 FOB ' APPLICATIONS' or slowly at the will of the operator. The patent was there* fore held to be invalid. (/ 1 < iriflin. P. C. 40.) And BO, the use of a guide in a frilling machine for the purpose of keeping down the work was held 1 Jettcl, M. A'., in //-iui v. Ifibby (L. R. 2 Ch. 127). Mr. John Penn obtained a patent for an im- provement in bearings and bushes for the shafts of s< propellers, which consisted in grooving the inner surfaces of the bearings of the shaft, and placing in the grooves strips of wood, which projected beyond the inner surface of the metal bearings, so as to support the rubbing action of the shaft whilst water was allowed to circulate freely in the intermediate channels. The metal bearings previously em- ployed had been found unable to withstand for any length of time the friction of the screw-shaft, and it almost seemed as if the screw-propeller would have to be abandoned ; but Mr. Penn's simple contrivance got over the difficulty, and the invention came into general use. It was contended that the alleged invention was merely a new application of an old and well-known thing, viz. wood, and the wooden bear- ings of grindstones and waterwhcels were adduced as show- ing that the invention was not novel. ' In every case of this description' (said Lord Chdmford} t 'one main con- sideration seems to be whether the new application lies so PATENTS FOE 'APPLICATIONS' 83 much out of the track of the former use as not naturally to suggest itself to a person turning his mind to the subject, but to require some application of thought and study. Now, strictly applying this test to the present case, it appears to me impossible to say that the patentee's in- vention is merely the application of an old thing to a new purpose. The only examples of old use . . . are of a totally different character, and for a totally different object. It is difficult to believe that bearings of this description could ever have suggested the application of wood to the bearings of screw-propellers in the way described in the patent.' A patent was obtained for improvements in the manu- facture of glass. The invention consisted of a mode of forming the sides of the chambers, where the materials were fused, in such a manner that a current of cool air might circulate and so prevent over-heating. Although the principle was previously known, yet, as the contrivance when applied to the manufacture of glass rendered the process of melting less costly and less dangerous, the patent was held good. (Canningtonv. Nuttall, L. E. 5 H. L. 205.) The existence of a patent for a certain application of a given thing (which thing is not new) will not vitiate a sub- sequent patent for another application of the same thing, provided that the two applications are perfectly distinct, and that the second application is not in any way com- prised in the specification under the first patent. Vaucher took out a patent for an improvement in packing hydraulic and other machines by means of a lining of soft metal, whereby certain parts of the machines were rendered air- tight and water-tight. It was subsequently discovered by Newton that the same material, soft metal, could be use- fully employed in diminishing the friction of machinery in rapid motion, and in preventing the generation of heat, by applying it to the surfaces in contact. It was held, in an action for an infringement of Newton's patent, that the two applications of soft metal were essentially different, and Newton's invention was not wanting in novelty. (Newton v. Vaucher, 6 Exch. Rep. 859.) G 2 si PATENTS FOR 'APPLICATIONS' Cli.-niiil Inr.ntivn*. Tin- Same dktinrtin, \\lii.-lj, it has been seen, is made between mechanical appli< ations brought about by an obvious exercise of tin- m\, : faculty and those where it is scari.lv appn < -iaMe, holds good with regard to tlu- applications of the chemi< ;il \-v\ i tics of matter. Thus, in ('a' 1'ract. Mech. Joui vol. ii. 2nd ser. U7, it \vas laid that the application of caustic alkalies for the purpose of dissolving tin- ^lut n contained in tlour employed in the manufacture of could not be th- subject of a i>at -nt. inasmuch as ca alkalies had been previously used for the purpose of dis- solving gluten in the manufacture of .s/. ///*. See also tin- observations of Lord llntln-rlnj and /."/'/ /- burn in / i'frton (L. K. 3 App. Cas. 1055, 1073, 1079). This case, in which the amount of invention was ad- judged too small to support the patent, should be compared with that of Y> (4 Giff. 597, 612), a suit for an injunction to restrain the infringement of a patent for obtaining paraffine oil by the distillation of bituminous coal*, wherein it was proved that previously to the plaintiff's invention paraffine oil had been extracted from bituminous */!/ by distillation. It was argued for the defendants, on the authority of Regina v. Cuth-r, Brook v. Anton, and such cases, that bituminous shale being a substance analogous to bituminous coal, the invention of the plaintiff was not in law the subject of a patent. But I". ('. Stuart said that there seemed to be no analogy behvt -n the cases cited and the present one. And in giving judgment in favour of the validity of the patent, his Honour observed, ' Inventions in mechanics are as widely different from inventions in eco- nomical chemistry as the laws and operations of mechanical forces differ from the laws of chemical affinities, and the results of analysis and experiment in the comparatively infant science of chemistry, with its boundless field of un- discovered laws and undiscovered substances. This obser- vation, as applied to reported cases, will strike the mind of every lawyer who has even a slight elementary knowledge PATENTS FOB ' APPLICATIONS ' 85 of both sciences.' (See also the case of Muntz v. Foster, ante.} In Hills v. London Gas Light Company (5 H. & N. 369), an action upon a patent for the purification of coal gas by the use of hydrated oxides of iron, it was argued that, as the property which these oxides possess of combining with sulphuretted hydrogen, the deleterious part of unpurified coal gas, was a perfectly well-known property, the mere application of the oxides to remove sulphuretted hydrogen from gas could not be the subject of a patent. The Court of Exchequer held that if a man were simply to say that he claimed the use of hydrated oxides of iron for the purifi- cation of gas, without saying how they were to be applied, the objection might possibly be well founded ; but as the patentee had shown how the oxides were to be used, the objection failed. (Comp. Ormson v. Clarke, 13 C. B. N. s. 337 ; in error, 14 C. B. N. s. 475.) Patents for Improvements on Inventions the Subject of Existing Patents. Inventors after obtaining a patent fre- quently discover that their invention is capable of consider- able improvement, and they think it desirable to take out a second patent for the improvements. In Lister v. Leather (8 E. &B. 1004), it was held that a second patent for an improvement on an invention which is the subject of a previous patent afterwards assigned to the second patentee is not void as being contrary to public policy. And the same rule holds good in regard to a second patent obtained by the same inventor. A patented invention which was afterwards greatly im- proved by a second patent obtained by the same inventor is not on that account thrown open to the world. (Thom- son v. Batty, 6 E. P. C. 100.) Nor is a patent defeated because later inventions improved the articles produced, and they ceased to be made in accordance with the direc- tions of the specification. (Edison & Sivan Co. v. Holland, 6 R. P. C. 243.) 86 WHO MAT BE A PATENTEE CHAPTER VI. WHO MAY BE A PATENTEE. BY the fourth section of the Patents Act of 1883, any person, whether a British subject or not, is empowered to make application for a patent. Two or more persons may make a joint application, and a patent may be granted to them jointly. ]>y th- fifth section of that Act, an applies must contain a declaration to the effect that the applicant is in possession of nn invention, whereof he, or in the case of a joint application, one or more of the applicants, claims or claim to be the true and first inventor or inventors. No application will be entertained at the Patent Office unless the person or persons claiming to be the true and first inventor or inventors are applicants (3/ara/ia//'x . (;>;>//- ~ R. P. C. 661), but other persons who are non- invt ntors may join in the application, and in that case the patent will be issued to all the applicants, who will be joint patentees. (Patents Act, 1885, s. 5.) Although there is no form enabling an inventor and an incorporated company to apply jointly for a patent, this may be done, since by sect. 117 of the Act of 1888 * person' includes a body corporate. For a long series of years the strict letter of the statute of James has been so far relaxed as to allow persons simply importing an invention from a foreign country into this realm to obtain a patent in respect of it, provided that such an invention is new and useful, the administrators of the law always reading the word ' inventor,' in the statute, as embracing an importer. ' I must look on it (said Jewel, M. It.) as a sort of anomalous decision, not depending on any principle whatever, which has acquired by time and recog- nition the force of law.' The first decision on this point WHO MAY BE A PATENTEE 87 since the Statute of Monopolies, was in the case of Edgebery v. Stevens, to be found in the second volume of ' Salkeld's Reports,' p. 477 : ' If the invention be new in England a patent may be granted, though the thing was practised beyond sea before ; for the statute speaks of new manufac- tures within this realm ; so that if it be new here, it is within the statute ; for the Act intended to encourage new devices useful to the kingdom, and whether learned by travel or by study, it is the same thing.' In Carpenter v. Smith (I "WY P. C. 535), Lord Abinger said, ' A man has a right to a patent not only for his own original invention, but he has a right to a patent if he is the first person who brings into England an invention which is used abroad and not known in England.' Previous to the Act of 1883 it had been decided (Chap- pell v. Purday, 14 M. & W. 318) that an alien might be the grantee of a patent ; and In re Wirth's Patent (L. R. 12 Ch. D. 303), that a patent might be granted to an alien resident abroad for an invention communicated to him by another alien also resident abroad, but Form A of the Patents Rules, 1890, renders it necessary that the applicant for a com- munication patent must be resident in the United Kingdom (see p. 395). In Beard v.Egerton (3 C. B. Rep. 97), it was held that the grant might be taken either in the alien's name or in the name of a British subject in trust for him. It has long been a common practice, which the new Act has not abrogated, to grant patents to British subjects resi- dent in Great Britain in respect of inventions communicated from abroad. If the grantee is the agent of the foreign in- ventor, the letters patent are subsequently assigned to the latter or his nominee. But in these cases it is necessary for the applicant to state in his application that the subject- matter wfts communicated to him from abroad. (Milligan v. Marsh, 2 Jur. N. s. 1083.) (See the form of application A 1 in the second schedule of the Patents Rules, 1890.) By the International Convention and section 103 of the Patents Act of 1883 a foreign patentee has an absolute right of priority for his invention for a period of seven months from 88 WHO MAY BE A tin date of his foreign application, notwithstanding any intermediate publication or use of tl. in\< ntion in tiiis country. A I'.i iti-h patent und r tin Convention will only be granted to the person who made the foreign application. It will not be granted to an agent. (Shall' /eing woven into canvas and sailcloth. The title of Fulton's patent described the invention as a machine for giving an edge to knives, razors, scissors, and other cutting instruments; hut the invention appeared, from the specification, not to be applicable to scissors, and the patent was adjudged to be void. ir/ \ . : , 8 C. B. 97). A process for more distinctly showing the finer lines of an engraving by means of a glazed surface on the paper designed to receive the impression was held sufficiently described by the words ' Certain improvements in copper and other plate printing ' (Start; v. De la Hue, 5 Buss. 822). Title, ' Improvements in Carriages : ' the specification de- scribed improvements in adapting German shutters to car- riages. But as such shutters can only be applied to covered carriages, and the title spoke generally of carriages, it was contended that it was too large. After argument, it was held a sufficiently accurate title ; Timlal, C. J., observing that it would endanger the validity of very many patents which have hitherto been free from exception, if the mere fact that their titles were given in such terms as to be capable of comprising other inventions besides that con- THE TITLE 93 tained in the specification were sufficient to avoid them, in the absence of any proof of intention to commit a fraud on the Crown, or to deceive or mislead the public. (Cook v. Pearce, 8 Q. B. 1044.) A patent was obtained for * Improvements in machinery for the manufacture of bobbin net lace.' It was objected that the invention really was only for making a spot during a particular part of the process, and was useless where that addition was not wanted. The Court, however, overruled the objection. (Fisher v. Deivick, 1 W. P. C. 264.) The title and specification must be read together ; and if the former should be ambiguous, the latter may explain it. Thus the title of Neilson's patent was an invention 'for the improved application of air to produce heat in furnaces where bellows or other blowing-apparatus are required.' The invention disclosed by the specification was the intro- duction into the furnace of air heated between the blowing- apparatus and the furnace ; and it was held that this answered sufficiently well to the title. (Neilson v. Harford, 1 W. P. C. 312, 373 ; Lister v. Norton, 3 E. P. C. 203.) i i THE PROVISIONAL SPECIFICATION CHAPTER VIII. THE PROVISIONAL SPECIF I THE fifth section of the Patents Act of 1883 directs that the application l for a patent must be accompanied by either a provisional or complete specification. The latter instru- ment is the subject of the next chapter ; it is to the former that we now draw the reader's attention. According to the third subsection of the same section, a provisional specification must describe the nature of the invention, and be accompanied by drawings if required ; whilst by the fifth subsection it is directed that it must commence with the title. (As to size, form, &c., of the drawings, if any, see Patents Rules, 1890, rr. 80-38.) It ought not to com- prise more than one ini-ention (sect. 88), and the Comp- troller may refuse to accept it if it does comprise more. (As to the meaning of the words * one invention ' see p. 96.) The applicant, however, is authorised by Rule 19 of the Patents Rules, 1890, to amend the application so as to make it apply to one invention only ; and he can then make application, if he thinks proper, for separate patents for the other inventions. In that case every such application will be dated as of the date of the first application, as if originally made on that date. 1 The form of the application is given as already stated in the second schedule to the Patents Bales, 1890, Form A. In case of an application on a communication from abroad Form A 1 mast be ased. For the form of provisional specification see Roles 5 and 6 (2) of 1890, and Form B in the second schedule to those roles. As to the procedore the reader is referred to the note on p. 89. Specifications and all other documents most be written or printed in large and legible characters upon one side only of strong wide-raled foolscap paper measuring thirteen by eight inches, leaving a margin of two inches on the left-hand ; and the signatures of the applicants or agents thereto most be written in a large and legible hand (see Bole 10). THE PROVISIONAL SPECIFICATION 95 Then by the sixth section the Comptroller is directed to refer every application to an examiner, who is to ascertain and report to him whether the nature of the invention has been fairly described, and the application, specification, and drawings (if any) have been prepared in the prescribed manner. If the examiner reports (sect. 7 as altered by the 2nd sect, of the Patents Act, 1888) that the nature of the invention is not fairly described, or that the application, specification, or drawings has not or have not been pre- pared 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 require that the application, 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 com- plied with. Where the Comptroller refuses to accept an application or requires an amendment, the applicant may appeal from his decision to the law officer, who will, 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. (Brown's Application, 2 Griffin, P. C. 1.) When an application has been accepted, the Comptroller will give notice thereof to the applicant, and by Eule 21 of the Patents Kules, 1890, he will advertise such acceptance in the official journal of the Patent Office. If (subs. 5 of sect. 2, Act 1888), after an application for a patent has been made, but before the patent thereon has been sealed, another application for a patent is made, accompanied by a specification bearing the same or a similar title, the Comptroller, if he thinks fit, on the re- quest of the second applicant, or of his legal representative, may, within two months of the grant of a patent on the first application, either decline to proceed with the second application or allow the surrender of the patent, if any, granted thereon. Under section 4 of the Patents Act of 1885, where an '.'; TION application for a patent has been abandoned or become void, tin- specification and drawings (if any) shall not at time be open to puMir : puMMi d la- the Comptroller. \\ h. n the legal representative of a deceased inventor intends to apply for t, under tin- authority of the :tlth section (f the Patent Act of 1888, the appli* must be made within -i\ months of the decease, and it must contain a declaration 1-y tlu 1* ^al representative that In believes the person whom he r< to have been the trui' and first inventor of the invention. An official copy of or extract from ihe will or letters of administration must mpany the application in proof of the applicant's title. lk '20 of 1890.) ' One Inri-ntinn.' It has been already stated that by sect. 88 of the Act of 1888 the provisional specification ought not to comprise more than one invention. The question whether a provisional specification comprises more than one invention will often be a delicate one, and no general rule can be laid down for the inventor's guidance. If the words of the Act were interpreted strictly patents would be greatly multiplied, whilst a liberal interpretation cannot go far in the face of the clear language of the statute. The Comptroller must be left to exercise his dis- cretion on the facts of each case subject to appeal to the law officer. It has been said by a law officer that if there are several heads of invention it ought to be shown in the pro- visional specification that they have all a common object. Under the title of Improvements in Railway Carriages, an attempt to include improvements in the seats, doors, win- dows, coupling apparatus, and illumination would doubtless be a failure, and yet all these heads of invention have the common object of improving a railway carrin The following cases have been decided by the law officers on appeal and have been reported. "Where there is a new combination of parts and some of the subordinate parts are themselves new, they may all be included along with the entire combination in the same THE PEG-VISIONAL SPECIFICATION 97 specification. But where a specification describes a com- bination of parts and also comprises a minor combination which is stated to be applicable not only to the purpose of the entire combination but to a purpose distinct therefrom, the latter application must be considered a different inven- tion and ought not to be included in the same specification. (Jones's Patent, 1 Griff. P. C. 265; Hearson's Patent, 1 Griff. P. C. 266 ; Robinson's Patent, 1 Griff. P. C. 267.) Alternative devices for effecting the same object ought to be treated as one invention ; for example, several devices of an analogous nature, or cognate devices, for securing the rails on a railway. (Jones's Patent, 1 Griff. P. C. 265.) The thirty-third section of the Act of 1883 enacts that it shall not be competent for any person in an action or other proceeding to take any objection to a patent on the ground that it comprises more than one invention. Office of the Provisional Specification. A general descrip- tion of the invention, fairly showing its real nature, is suffi- cient for the provisional specification. An applicant is not bound to describe the way in which his invention can be, carried into effect. (Woodward v. Sanswn, 4 E. P. C. 174 ; Siddett v. Vickers, 8 E. P. C. 426.) It is enough if its principal and essential features are set forth. In the next chapter it will be shown that it is not allow- able to vary the invention in any important respect when the complete specification is in preparation, or to introduce new matter into that instrument ; and the chief object of the provisional specification is to afford means for securing the identity of the invention at the time of application and when finally specified. The provisional specification is not intended to ascertain the entirety but the identity of the invention, said Pollock, C. B., in Neicatt v. Elliott, 1 H. & C. 797. And see also Foxwell v. Bostock, 4 De G. J. & S. 298. * The office of the provisional specification ' (said Mr. Justice Byles in Newall v. Elliott, 4 C. B. N. s. 269) ' is only to describe generally and fairly the nature of the invention, and not to enter into all the minute details H !',s THE PROVISIONAL SPECIFICATION as to the manner in which the invention in to be carried OUt.' 4 A provisional specification ' (said >V r ' Stontr v. ToiU, I.. I:, 1 Ch. I). 58) ' is not intended to con- tain a complete description of tin- thing BO as to enable any workman of ordinary skill to make it, but only to disclose the invention -fairly, no doubt, hut in its rough state, until :!: inventor can perfect its details.' ' The office of the provisional specification ' (said Ch,lnii\,r< v. 7n claimed.' i.sWf/r* I',,t,nt, I (irilVin 1'. C. 'JG8.) In Si.1,1,11 v. r/rAvm I.', I!. I 1 . C. HC, it u ;is h.ld that the 5th subs, of sect. 6 of the Act of 188U i in< rely directory, and that non-compliance \\ith the direction does not in- validate the patent. As a patentee cannot recover damages in respect of in- fringements committed In-fore the publication <>f the com- plete specification (sect. 13 of the Act of 1883), it is il. -irahle in many cases to file it \\ii\\ us little delay as possible. By subs. 4 of sect. 9 of the Act of 1883, u: complete specification is accepted within twelve months from the date of application, then (save in the case of an appeal having been lodged against the refusal to accept) the application will become void at the expiration of that time. But the Comptroller is empowered, by sect. 3 of the Act of 1885, to extend the time for three months on pay- ment of the prescribed fee. In the event of the applicant's death before leaving a complete specification, no power is expressly given by the Act to his legal representatives to leave a specification at the Patent Office, or to the Comptroller to accept it if tendered. But perhaps it may be held that such powers are impliedly given by subsection (3 b) of the twelfth sec- tion of the Act of 1883. On the acceptance of the complete specification the Comptroller will give notice thereof to the applicant, and will advertise the acceptance in the official journal, and the application and specification or specifications, with the drawings, if any, will then be open to public inspection (sect. 10, and Rules 21 and 22). ! After the acceptance of a complete specification, and 1 If anyone wishes to be informed as soon as a complete specification is accepted, or an application for an amendment is entered, he should forward a copy of Form Q (bearing a stamp of 05.). with a request for such infor- mation. THE COMPLETE SPECIFICATION 105 until the date of sealing a patent in respect thereof, or the expiration of the time for sealing, the applicant shall have the like privileges and rights as if a patent for the inven- tion had been sealed on the date of the acceptance of the complete specification : Provided that an applicant shall not be entitled to institute any proceeding for infringement unless and until a patent for the invention has been granted to him (sect. 15). It was decided in Ex parte Henry (L. E. 8 Ch. 167) that a second applicant who had filed a complete specifica- tion along with his petition under the ninth section of the Patents Act of 1852, and had thereby become entitled for six months to ' the like powers, rights, and privileges, as might have been conferred on him by letters patent duly sealed, as of the date of the application,' did not acquire the rights of a patentee so as to prevent a person who had previously applied for a patent for a similar invention from obtaining a patent. It is directed by section 9, subsection 5 (as amended by sect. 3 of the Act of 1888), that the reports of examiners shall not in any case be published or be open to public in- spection, and shall not be liable to production or inspection in any legal proceeding, unless the court or officer having power to order discovery in such legal proceeding shall certify that such production or inspection is desirable in the interests of justice, and ought to be allowed. Specifica- tions accompanying applications which have been abandoned or become void are not to be open to public inspection or published (sect. 4 of the Act of 1885). Clerical Errors. In case of clerical errors in a spe- cification they could only be amended formerly by order of the Master of the Eolls. (Johnson's Patent, L. K. 5 Ch. D. 503, and the cases there cited.) This jurisdiction still subsists. (Re Gare's Patent, L. K. 26 Ch. D. 105.) In Dixon's Patent (January 15, 1881) the M. E. required from the applicant an undertaking not to take proceedings for infringements committed before the date of the amending order. But now, by sect. 18 of the Act of 1883, such 106 THE COMPLETE SPECIFICATIOir s may be amended, after the patent baa been granted, he Comptroller on such terms as he may thin). Before the issue of the patent clerical errors in or in nection with the application may be corrected by him under the 91st section of the Act of 1883. DRAWIKO*. The Patents Act of 1883 (sect. 5, subsect. 4) directs that a complete specification must be accompanied by drawings if required. 1 Those who are called upon to interpret the instrument \\ill look both at the words and the drawings, with the view of making them explain each other, and of arriving at the patentee's meaning. (Abbott, C. /., in Jiloxam v. FA*'c t I C. iV I'. ~>i;i.) Many inventions can be ex- plained perfectly well without any drawings; but wherever machines are the subject of or connected with tin- inv n- tion, drawings should always accompany the specification, for in such a case the relation of the parts will be clear at once through a visual representation, when a verbal n>vi~ specification. (Tlionta* v. W,lr) t , L. R. 1 C. 1'. LM v. /;%, L. R. 2 Ch. 134; Stoner v. 7"\ tl The mode of applying the phonograph, a complete instrument in to the transmission of the sounds over a telegraph line was also described. It was held 1-y Mr. who pre- sided at the trial of an action for the infringement of the patent, that the nature of the phonograph had not been fairly described in the provisional specification, and that the patent was therefore invalid. (Tit-- I'nitxl 7 '/// ;]>.or invalid. (Croll v. J Scott, C. B. R. 479; Crottlty v. Potter, Macr. P. C. 240.) However, where the title of a patent was for 'Certain Improvements in tin- Doors and Sashes of Carriages,' and the patentee, in his specification, said, ' I have shown my invention as appli* <1 to railway-carriage doors and windows, although they are equally applicable to the doors and windows of any oth< r description of carriage, or in any position where doors and windows are subject to jar and vibration/ this was hel to extend his claim beyond the title (Oj-l // \. I [olden, 8 C. B. N. 8. 707). See also AfaMB v. Elliott (10 Jur. N. s. 954). A patentee will not be allowed to read the provisional specification with the view of aiding or supplying a defect in the complete specification. (Moth l>y the Court of Session in Scotland, and by the House of Lords on appeal, that the patent was bad on account of the want of a sufficient description of the manner in which tin- inven- tion was to be performed, (linilrii v. linbertun, L. R. 3 App. Cas. 1055.) The plaintiffs specification, filed in 1873, contained two claims ; the first for a method of thickening oils for lubri- cating purposes ; the second for combining thickened oils .THE COMPLETE SPECIFICATION 117 with mineral oils. The patentee described his method of thickening, but not the process of mixing the oils, nor did he state any proportions. It was held in the Court of Ses- sion, Scotland, that if skill were required to make the oils combine under the second claim, the specification was de- fective ; because the method of carrying out the invention had not been shown ; and that if no skill were required there was no proper subject for a patent. (Hutchison v. Patullo, 5 E. P. C. 351.) Grave doubts were entertained by the Lords Justices in the Court of Appeal with respect to the sufficiency of a specification which described an hydraulic machine, adapted, according to the evidence, to work only at high pressure, there being no advantage gained, as was admitted, in work- ing it at low pressure. Now the patentee had not set forth this important fact in his specification. (Ellington v. Clark, 5 E. P. C. 327.) "Where a specification claimed a combination of three elements, and the third element was not stated or explained, the patent was held invalid. (Gaulard d- Gibbs' Patent, 5 E. P. C. 535.) Description must not be vague and general. When a pa- tentee attempts to secure a right of an extensive nature, the description of the process must not be vague and general. Thus in Booth v. Kennard (2 H. & N. 84), an action brought for the infringement of a patent for improve- ments in the manufacture of gas, the specification was held bad, because it claimed generally the exclusive privilege of making oil directly from oleaginous seeds ; and, instead of describing particularly how this was to be done, only stated ihat the mode of using the materials might be ' the same as in the apparatus used in the ordinary mode of making gas from coal.' The Court deemed such a description too vague and general when coupled with a sweeping claim like that above mentioned. However, in Edison <& Swan United Electric Light Co. v. Woodhouse (4 E. P. C. 105), an action for the infringe- ment of a patent for an electric lamp, it was contended by 118 THE COMPLETE SPECIFICATION the defendant that the specification was bad on accou vagueness, since showed that it was essential to success in preparing the lamp that the temperature should be gradually increased, and this was not stated. But, said /.. -/. />//. 'if the language of a specification is clear enough to guide a competent workman and enahlc him to obtain the desired result, we cannot see how the Court can hold the language insufficient in point of law. No doubt it is for the Court and not for a workman to con- strut tin -].. .-iiication, but if a workman says it is a suffi- nYnt guide to him, and the Court believes him, the Court must hold that as regards clearness of description Un- ification is in point of law sufficient.' (See ak< ^ran Co. v. 7/..//ir>'ilifnt. A specification, in describing materials and ingredients re- quired for carrying the invention into effect, must not employ general terms which cover what is unsuitable as well as what is suitable. The public has a right to look for definiteness and precision in this respect, and ought not to be put off with vagueness and loose generalities. Experi- ments, would be required to discover which one of the various objects included under the general term is suitable, and that task the law declares ought not to be imposed upon the public. For instance, a specification stated that/*i7 *n, 2 Carp. Rep. 191.) The names of articles mentioned in a specification must be taken to be used in their ordinary commercial sense. Thus, a direction in a specification to use dry arsenic acid in the manufacture of dyes was held to refer to the ordinary arsenic acid of commerce (which is dry to the touch, although it contains water in combination), not to anhydrous arsenic acid, which could not be commonly bought in the trade, and which would not answer the purpose. (Simpson v. Holliday, 20 Newt. Lon. J. 118; 5 N. R. 840; L. R. 1 H. L. C. 815.) And see Sturtz v. De la Rue (1 W. P. C. 88 H.) ; Steven* v. Keating (2 W. P. C. 183, 187) ; Muntz v. THE COMPLETE SPECIFICATION 121 Foster (2 W. P. C. 104) ; Badische Anilin und Soda Fabrik v. Levinstein, House of Lords (L. R. 12 App. C. 710; 4E. P. C. 463). A person who takes out a patent for an invention con- sisting of the use of known materials in new proportions, though bound to state the most suitable proportions within his knowledge, is not bound to limit his claim to the pre- cise proportions recommended by him in his specification. (The Patent Type Founding Company v. Richard, Johns. 881.) Whether or not a specification describes with sufficient accuracy the material out of which an article is to be made is a question for the jury, where the case is tried before one. (Bickford v. Skeives, 1 W. P. C. 214 ; Derosne v. Fairie, 1 W. P. C. 154; Elliot v. Turner, 2 C. B. 446; Wattington v. Dale, 7 Ex. 888.) , Must describe the best method of operating. A patentee is bound to describe the most advantageous method within his knowledge for carrying his invention into effect ; and he ought to put the public in possession of his secret in as ample and beneficial a way as he himself uses it. In Wood v. Zimmer (Holt, N. P. 57) a patent for a method of making verdigris was contested. It seemed that verdigris was made by the process set forth in the specification ; but that the patentee was in t'he habit of secretly putting aquafortis into the boiler. The copper, forming one of the ingredients, was thereby more rapidly dissolved ; but the verdigris pro- duced was neither better nor cheaper than that made according to the specification. Gibbs, C. J., considered, however, that this was a prejudicial concealment, and held the patent to be invalid. Letters patent were obtained for a mode of making a medicine, composed of three salts, commonly sold in the shops under certain well-known names. The specification, instead of simply mentioning these salts by their names, described the processes by which they were produced, and then pointed out the proportions in which the salts were to be combined in order to form the medicine. The methods \1'2 THE COMPLETE SPECIFICATION of producing the separate salts were not essential to the combination, and formed no part of the invention. It was IM Id at A T I*I J'rinx that the specification was bad, A< < I., saying that it is the duty of anyone to whom a patent is granted to point out in his specification the plainest and most easy way of producing that for which he claims a monopoly; and to make the public acquainted with the mode which he hiin^.lf adopts. If a person would be led to suppose a laborious process necessary to the pro- duction of any one of the ingredients, when in fact he might go to a chemist's shop and buy the same thing as a separate simple part of the compound, the public are misled. (S. /.. /. Cottnn said that an inventor is bound to give the public in his complete specification the benefit of what he has discovered, after filing his provisional specification, in regard to the mode of carrying the invention into effect, although there may be improvement and even invention which was not known to him at the time. (See also Cnunptnn v. Pat' tit* Inf:^ni>-iit Co., 5 R. P. C. 897, and the section on the relation of the complete to the provisional specification, ante, p. 107.) It should, however, be kept in mind that the additions must strictly relate to the invention as it stood at the date of the application. The introduction of new heads into the specification or an extension of the subject-matter of the original invention will not be permitted. (Oro**/- // v. / Macr. P. C. 240; liailcy v. Kolterton, L. R. 8 App. Ca. 1055.) ' The complete specification,' said Lorrf Chdmsford in Pi-nn v. ItiMiii (L. R. 2 Ch. D. 58), 'is in a sense supple- mental to the provisional specification, not going beyond nor varying from it as to the nature of the invention, but conveying additional information which may have been acquired during the currency of the provisional specification THE COMPLETE SPECIFICATION 125 as to the manner in which the invention is to be per- formed.' But need not set forth every application. An inventor who obtains a patent for the useful application of a prin- ciple is not to be called on to set forth every mode of applying it. It is sufficient if he shows some of its useful applications, those applications being the best illustrations of the invention known to him. See what fell from Lord Abinger in Neilson v. Harford (1 W. P. C. 356), and see Badisclie Anilin und Soda Fabrik v. Levinstein (L. E. 24 Ch. D. 176 ; S. C. in H. of L. 4 E. P. C. 466). But it must be borne in mind that a patentee cannot, by making a general claim, cover improvements and applications of which he was ignorant at the date of his specification. (Tctley v. Easton, Macr. P. C. 77.) Where a patentee by his specification under a patent for the production of certain aniline colouring matters had claimed all the shades from red to brown producible by the various processes described in the specification, whilst only one shade was known to have any present commercial value, it was held by the court of first instance and after- wards by the House of Lords that he was not bound to in- dicate the respective advantages for dyeing purposes of the different shades of colour produced or to select the most valuable shade and give specific directions how to produce it. (Badische Anilin und Soda Fabrik v. Levinstein, L. E. 12 App. C. 710 ; 4 E. P. C. 464.) Must be intelligible to ivorkmcn of ordinary skill. The specification is to be considered as addressed to persons of ordinary skill and ability, acquainted with the particular subject. It must be intelligible to such persons, and the directions must be such that, by pursuing them, they would produce without difficulty the result which the patentee describes. (Tindal, C. J., in Gibson v. Brand, 1 W. P. C. 631 ; Beard v. Egerton, 8 C. B. 165.) Lyndhurst, L. C., said, in Stiirtz v. De la Rue (I W. P. C. 83 w.), that the specification must describe the invention in such a way that a person of ordinary skill in the trade 'should be able to THE COMPLETE SPECIFICATION carry on the process. And Lord Demn it<>n, 8 C. B. 165.) But when placed in the hands of a person of ordinary skill and intelligence, ' possessed of knowledge in the par- ticular industry* (Badische Anilin mul .sWH THE COMPLETE SPECIFICATION outwards, it was objected by the defendant that the specifi- >n gave no direction as to the angle at \\hii-h the bevels were to be made. The judge who trid the case (Lord Alnnijer) told tin- jury that if any angle would be of some use, the specification was good ; but if some particular angle was essential, tin n, us tin- specification 1< ft that to be discovered by experiment, it was deficient and bad. (Uir;,,i/;,,/ni V. Unlit,', 2 W. P. C. 129.) JJllt Mr. -1 />'ni]>ti>ti \. //>//.-/*.., 1 < Hep. 462) that a patentee, knowing that given maU-ri;ils will not answer the purpose, is bound so to word his specifi- cation as to prevent others from trying experiments on that \\hirh lie knows will not answer. In this case a patent for an improved method of dyeing and finishing paper came into question ; the specification described the paper as being conducted to a heated cylinder by means of cloth, 'which cloth may be made of any suitable material, but I prefer it to be made of linen warp and woollen weft.' Now the patentee had ascertained from repeated trials that no other substance would answer the purpose. It was held that the public had not the full benefit of the inventor's discovery, and persons misled by the specification might be iml to make experiments which the patentee knew would fail. 1 1 \V. P. C. 88.) This, however, must be considered an t \trtmecase. In connection with this subject the following observa- tions of Lord U'l-stliui-y, C., are worthy of attention: 4 When it is stated that an error in a specification, which any workman of ordinary skill and experience would per- ceive and correct will not vitiate a patent, it must be un- derstood of errors which appear on the face of the 8] fication, or the drawings it refers to, or which would be at once discovered and corrected in following out the instruc- tions given for any process or manufacture; and the reason is because such errors cannot possibly mislead. But the proposition is not a correct statement of the law if applied to errors which are discoverable only by experi- ment and further inquiry. Neither is the proposition true THE COMPLETE SPECIFICATION 129 of an erroneous statement in a specification amounting to a false suggestion, even though the error would be at once observed by a workman possessed of ordinary knowledge of the subject. For example, if a specification describes several processes or several combinations of machinery, and affirms that such will produce a certain result which is the object of the patent, and some one of the processes or combinations is wholly ineffectual and useless, the patent will be bad, although the mistake committed by the patentee may be such as would at once be observed by an ordinary workman. (Simpson v. Holliday, 13 W. R. 577.) But when in the case of the Edison & Swan Co. v. Holland (6 E. P. C. 277) it was objected in the Court of Appeal that the specification did not sufficiently show how the invention was to be carried into effect, L. J. Cotton said, ' It is necessary that this should be done so as to be intel- ligible, and to enable the thing to be made without further invention not, as was pressed upon us, by an ordinary workman, but by a person described by Lord Ellcnborough in Huddart v. Grimsliaw (1 W. P. C. 85-7) as a person skilled in the particular kind of work, or, as said by Lord Lougliborough in Arkwright v. Nightingale (1 W. P. C. 60), a person conversant in the subject. But in my opinion it is not necessary that such a person should be able to do the work without any trial or experiment which, when it is new or especially delicate, may frequently be necessary however clear the description may be.' In the case of British Dynamite Company v. Krebs (Goodeve's Cases, p. 88) the House of Lords reversed the decision of the Lords Justices of Appeal on the ground that the description of the mode of manufacture as set out in the specification had been conclusively proved to be suffi- cient for all practical purposes. The four law lords were unanimously of opinion that since it was shown in evidence that the patented article had been made by following the instructions of the specification, the Judges of the Court of Appeal ought not to have disregarded this, nor to have relied upon their own opinions that they, persons practically 130 THE COMPLETE SPECIFICATION unacquainted with tho subject, would not have been able to manufacture the article without more instructions than the specification contained. It would seem from ('n>*$lrii v. J 18 C. & P. 51 that in construing a specification, the state of thepartit -uliir manufacture at the date of the patent must be kept in \ In this case, in describing a gas apparatus, no direct: #ven as to a condenser ; but since a workman capable of constructing a gas apparatus knew that he would have to put it in, the specification was IK Id suflirn nt. The pit in /;//**// v. < 1 W. P. C. 459) was for a method of manufacturing iron tubes without the use of a mandril. The specification gave no directions as to leaving out th- mandrel ; but it was held that an intelligent workman would sufficiently understand, from the purport of the specifica- tion, that a mandrel was not to be used. So, in Beard v. n (8 C. B. R. 165), it was held that a compel, i it operator would perceive, on perusing the whole specification, that it would not be necessary to interpose an operation at a certain stage in the process of daguerreotyping. Again, in Otto v. Lin/nl (40 L. T. N. s. 89) the specifi- cation under a patent for gas motor engines did not state the proportion of atmospheric air to be let into the chamber where the inflammable gas was fired with the view of pro- ducing a gradual in place of an explosive ignition. Never- theless it was held that as exact proportions were not re- quired to be mentioned, and as there was enough informa- tion in the specification to enable a maker of machinery to construct a working engine without exercising his inventive powers, the specification was sufficient. It sometimes occurs that the drawing attached to the specification is erroneous in some particular, so that if an attempt were made to construct the machine by the draw- ing it could not be done, or if made it would not work. If, however, the text has correctly described the construction, or if the error is of a kind which an ordinary workman would easily perceive and rectify, requiring not experiments, but merely regulation, then the error in the figure will be THE COMPLETE SPECIFICATION 131 disregarded, and will not be held to vitiate the patent. (Otto v. Linford, 46 L. T. N. s. 35.) Combinations. It has been already stated (Chap. II.) that a number of well-known things, such as implements, machines, or parts of machines, may be combined so as to form a new and useful instrument or machine ; and a patent obtained for such combination will be valid, care being taken that the specification does not claim the old parts as well as the novel combination. The combination may also comprise additions of a novel character along with old parts. The treatment of a combination in a specification ought to have reference to the facts of the case and to the in- ventor's intentions in regard to what he wishes to secure by the patent. If he desires to protect a simple combina- tion and nothing more, it is not necessary that he should distinguish old parts from new parts. It may be that all the parts are old, in which case he can only lay claim to their combination as being a new and useful invention. But it often happens that some of the constituent parts of the combination are also new and useful inventions. In such a case he has a right to protect them, but if he seeks to do so they ought to be specially pointed out, fully described, and expressly claimed. (See the section on the Claims.) In the case of Foxwell v. Bostock (4 De G. J. and S. 298) Lord Wesibury, C., laid down the rule to be that in a patent for an improved arrangement or new combination of machinery, the specification must describe the improve- ment and define the novelty, otherwise and in a more specific form than by the general description of the entire machine. ' On both principle and authority it is most neces- sary that the specification should ascertain the improve- ment, when the patent is for an improved, that is, for a new combination. At the date of this patent many combi- nations of machinery, or, in other words, many machines for sewing or stitching by a needle and shuttle, were known and used. If in that state of things a patent is taken out for an improved arrangement or combination, the patentee THE COMPLETE SPECIFICATION is bound to show in what the improvement consists, and how it is to be effected. But this obligation is not dio- ( ! uirged by a description of the entire machine which embodies the improvement, l>ut which description does not distinguish the improvement ; and tin -reby r -nd r- it nn- 'Verable, except ujwui a minute comparison anl c..lla- tion of all c\i>tin^ combinations \\ith the new com bin that is claimed. A specification so framed has the effect of concealing nither than of disclosing tin- invention.' plaintiffs counsel stated that th. improvement consist* an arrangement of three cams on one shaft, by ti action of which the three principal mov< -ments in a needle and shuttle machine were effected. The plaintiffs evidence went to show that this arrangement formed the n<>. and utility of the machine. ' ]>ut this clear and simple statement is not to be found anywhere in the specification. It is true that the cams and shafts are descried indiscrimi- !y with the rest of the machine in the specification, but there is nothing to indicate that it is this addition which constitutes the improved arrangement or the new combina- tion.' The specification was therefore held to be < and the patent invalid. Lord Westbury's language in /'.,./-,// \. /; /. has 11 rise to much comment in later cases, and the deci- have been conflicting ; but the Courts now refuse to under- stand it as deciding that where a combination is alone claimed it is necessary to distinguish the new par;> from the old. It is now firmly establi.-hed that where the only invention sought to be protected by the patent is the com- bination, and that is properly set forth, it is sufficiently described without separating new parts from old. I'nder the circumstances supposed, it can be of no moment, so far as the point before us is concerned, whether the parts are all old or partly old and partly new, and therefore ;t -cription of the parts and of the manner of arranging them into a working whole, followed by a claim restricted to the combination, will be a sufficient description of the invention. THE COMPLETE SPECIFICATION 133 Thus in Harrison v. The Anderston Foundry Co. (L. E. 1 App. C. 574) it was objected to the patentee's claim for a combination that he had not shown what was the novelty of the invention as he ought to have done according to the case of Fox well v. Bostock ; but Lord Cairns, C., in giving judgment in the House of Lords said : ' If there is a patent for a combination, the combination itself is ex necessitate the novelty ; and the combination is also the merit, if it be a merit, which remains to be proved, by evidence. So also with regard to the discrimination between what is new and what is old. If it is clear that the claim is for a combination and nothing but a combination, there is no infringement unless the whole combination is used, and it is in that way immaterial whether any and which of the parts are new.' When the case of Moore v. Bennett (1 E. P. C. 142) was taken to the House of Lords, Lord Sclborne, C., and two other law lords overruled the unanimous decision of the three Lords Justices in the Court of Appeal (which had followed Foxwell v. Bostock too literally), and laid down the law to be that where the claim is for a new combination and not for particular subordinate things included in that combination, and where the manner of arriving at it and working it, and the purpose for which it is useful, are all sufficiently described in the specification, so that anyone acquainted with the subject will know in what respect it differs from the things that have gone before, it is unneces- sary to go on to specify the subordinate parts of it as constituting new elements and a new thing, if a claim to subordinate parts as distinct from the entire combination is not intended to be made. ' When a combination and nothing more is claimed, the combination being a novelty, it is immaterial that the patentee should point out how far he claims for particular portions which go to make up the combination. Those portions are not his claim, but it is the putting them together and combining them that constitutes his claim. That seems to me to be the true law as laid down in li.l TilE COMPLETE SPECIFICATION v. The Andertton Foundry Co., without a refer- ence to which case Foxwtll v. / ought not to be read ; because it is possible to misread /'/"// k unless yon correct your impression of it afterwards by the judg- ment of the House of Lords in Harriton v. The Andertton I-'iinndniCo.' (Per /,.././.'./// in /'< ', Court of Appeal, 4 R. P. C. 858. See also clnrl v. Adie, L. i;. 2 A pp. C. 828; Wtitlitnj v. .sVt-iv;i, 8 R. P. C. 87 ; Kaye v. Chtll, 5R. P.C. 649.) When, however, an inventor's improvement of a com- plicated machine bears but a small proportion to the whole machine, it is highly desirable, if not imperative, thnt, if he ventures to claim the entire improved machine, h.- should not do so without distinctly pointing out the small addition or alteration which constitutes the improvement. In such a case Lord Westbury's quoted words may well be held to apply. In Harrison v. The Anderston Foundry Co. Lord Hatherley said in substance that it is not competent to a man to take a well-known existing machine and, having made some small improvement, to place that before the public, without explaining the improvement. ' You must state clearly and distinctly what it is in which you say you have made an improvement. To use an illustration which was adopted I think by L. J. James in another case (Parkes v. Stevens, L. R. 8 Eq. 866), I think it will not do if you invented the gridiron pendulum to say " I have invented a better clock than anybody else," not telling the public what you have done to make it better than any other clock that is known.' Again, in Moore v. Jienm-tt (1 R. P. C. 148), Lord Selbornc, C., said, ' The case of Foxicell v. Bostock was qualified or explained in Harrison v. A ndrston Foundry Co. . . . and so explained it appears to me to amount to no more than this : that when a claim is made for a general combination and arrangement of the different parts of a machine, if the Court sees that the combination is not new, but that there is some particular improvement in some particular part, it will not do to claim the whole combina- tion as new, but you must condescend upon that which is THE COMPLETE SPECIFICATION 135 improved. For example, if a machine had been long in use in the brush trade and some particular improvement . . . had been made, the general combination remaining the same, then, according to the decision in Foxwell v. Bostock, by describing it as a new combination you would be misdescribing it, because, indeed, the thing discovered would be a particular improvement upon a particular part of that combination. And upon the principle that the specification should not be vague, but should give sufficient information, it ought not to disguise the real invention by a claim so wide that anyone would suppose something to be claimed as new which is not, but it should do it suffi- ciently and with proper precision.' Having studied the rules previously propounded as those by which he ought to be chiefly guided in preparing his specification, the patentee may now be cautioned on the subject of certain faults, which, if committed, would have a disastrous effect upon its validity, and against which, there- fore, he cannot be too vigilantly upon his guard. Ambiguity to be eschewed. The fatal effect of ambiguous language in a specification is illustrated by the case of Hastings v. Brown (17 Jur. 648 ; S. C., 1 E. & B. 454). A patent was obtained for arrangements for raising ships' anchors, and the specification claimed as the invention ' a cable-holder to hold without slipping a chain cable of any size,' but it could not be gathered from it whether the inventor claimed a cable-holder to hold chain cables of any one size, or to hold chain cables of different sizes. Now, a cable-holder to hold a chain cable of any one size was already known at the date of the patent. ' The patentee,' said Lord Campbell, when the case was argued before the Court of Queen's Bench, on a motion to enter a nonsuit, ' ought to state distinctly in his specification what is his invention, and to describe the limits within which he is to enjoy a monopoly. That is not done in this case with respect to the nature of the cable-holder. What is claimed [in the pleadings] is a right to construct a capstan which will raise chain cables of different dimensions. Does the 136 THE COMPLETE SPECIFICATION plaintitT di>rl<>sr in his s|* c ification that he claims that iu\ ntion '.' If it is only claimed with regard to one ca then there is no infringement of the patent. The vice of the specification is, that it is quite equivocal what tin claim is. There is nothing in tin- titl< \\hirh at all assists us; and \\hni we look to the description in tin specification, \\ hirli speaks of " a chain cable of any size/' I think that the proper construction t , ) put upon the words is that tiny UK an "one chain r (MY. P. C. 80), A*h<> aid that if there is any unnecessary ambiguity affectedly intro- duced into the specification, or anything which tends to mislead the public, the patent is void, and it was laid down in GaUuH-nii v. llb-adcn (1 W. 1'. ( . 584 . that if tin re is a want of clearness in the specification, so that tin public cannot afterwards avail themselves of the invention, much more if there is any studied am lenity in it, so as to con- ceal the invention from the public, no doubt the patent would be completely void. Mnxt nut xi-t forth tir nn-tlimlx ichi-n /;//// mn- ix i-ffi-ctire. If two methods of doinx r a thing are described in the speci- fication, and by one of these it cannot be done, the specifi- cation is bad. (liiyina v. Cntl*-,-, Macr. P. C. 187 : / v. K.I,, -ton, 8 C. B. 165.) Medlock's specification of his invention for making red and purple dyes from aniline commenced the description of the process thus : ' I mix aniline with dry arsenic acid and allow the mixture to stand for some time, or I accelerate the operation by heating it to or near its boiling-point until it assumes a rich purple colour, and then I mix it with Ixnling water and allow it to cool : when cold it is filtered and decanted.' When the case went before the House of Lords, it was held, in affirmation of the view THE COMPLETE SPECIFICATION 137 taken by the Lord Chancellor, that on the construction of the whole specification two processes, a hot and a cold process, were described, and as it was proved that only the hot process was effective, the specification was declared to be bad and the patent consequently invalid. It was urged that every person well informed on the subject could see that the cold process was ineffective, but ' this,' it was said, ' would be to correct the specification by the superior in- telligence of the reader.' (Simpson v. Holliday, 13 W. E. 577, affirmed L. E. 1 H. L. 315.) Must not contain misdirections or misrepresentations. If the specification contains language calculated to mislead in regard to an important part of the patented process, as where it contains positive misdirections as to the mode of operating, or as to the materials to be employed, the patent will likewise be void. ' You must not mislead people ' (said Jcsscl, M. 11., in Plimpton v. Malcolmson, 3 L. E. Ch. D. 531, 576) 'by telling them to do something wrong, and leaving them to find out the mistake. . . . You must not give people mechanical problems and call them specifica- tions.' On the trial of Palmer v. Wagstaff (Newton's Lond. Journ. vol. xliii. p. 131), an action brought by a candle manufacturer for an infringement of a patent for improve- ments in the manufacture of candles, it was alleged that the specification contained a positive misdirection as to the position in which the wicks were to be placed in the process of manufacture. The object proposed was the production of a candle requiring no snuffing, by using two or more plaited wicks, arranged in such a manner that they would separate and bend outwards as the candle was burned. Now, it was shown that if the directions of the specification were followed, the candle would require lighting at the bottom instead of the top. If lighted at the top, the wicks converged instead of diverging, and produced a long snuff. The judge (Pollock, C. B.) told the jury that this was a serious mistake ; and though the verdict was given against the plaintiff upon other points than those connected with 138 THE COMPLETE SPECIFICATION the validity of the specification, there is reason to suppose this instrument could not have been supported. Win -re a specification claimed the process of purifying sulphate of alumina l>y means of peroxide of manganese \\hrthiT in the hydratcd or anhydrous form, and it was proved that the use of the latter form was impracticable, patent could not be sustained. Kurt; < (5 l;. 1'. C. 184). See also Sar>/ 1 l;%. un.l Moo. 1 ; 1 W. P. C. 88) ; / r. Sfc . i 1 W. 1'. C. -218). It may be inferred, from the case of Hudthirt \. (irim- Juiw (1 W. P. C. 85), that the assertion in the specifica- tion of something In in^' important, when in point of fact it is not, \\ill vitiate the patent, because there is evidence of an attempt to deceive. Again, if anything is said to be immaterial which is in reality material, this will be a fatal defect. Thus, in \,'il*m \. Hnr/,, r ,l d. \V. 1'. C. 818), 7W.v, //., said, ' The patentee states that the size and form of the vessel in which the air is heated, previous to its being driven into the furnace, are immaterial. Now, my strong opinion is that the clause is an incorrect state- ment, and that being untrue vitiates the specification, and prevents the patent from being a good patent.' See also Simpson v. llnlli - new combinations of old things to produce a new result, >r something of that kind. Therefore, having described his invention and the mode of carrying that invention into effect, by way of security he says, " But take notice I do not claim the whole of that machine ; I do not claim the whole of that Hindu* <']>i-rn th trial of the first action for an infringement, that several of these contrivances were old; and with regard to one in particular, which the def ndanN \\vrr ehar^.-d with infrin^in^. that a person named Hales had pi. \iously procured a patent for something substantially the same. 'I'll, plaintiff afterwards entered a disclaimer as to st parts of his specification, and brought another action against the same defendants. The jury again returned a verdict for the defendants. A rule to set aside the verdict, and for a new trial, having been obtained, the legal questions came on for argument before the full court. It appeared that the amended specification described a centrifugal pump, composed of a hollow wheel, revolving within a case furnished with pipes for conveying the water. This wh I was not stated to be old, nor was it disclaimed. The specification claimed generally the machinery for raising and impelling water. It also claimed the application of th ventions before mentioned, 'both when all used in com- bination, and when used severally.' It was held that the hollow revolving wheel was thereby claimed, and as thi> was an old invention, the specification was bad. By a second disclaimer the patentee's claims were reduced to the single one of 'the means of increasing the action of tli> machine by causing the liquid to enter the wheel at lx>th sides ; ' and he then brought a third action for the infringe- ment of his patent. Unfortunately it was shown that previous inventions had embraced a contrivance for the admission of the water on both sides of the wheel ; and Mr. Justice Willcs directed the jury to find for the defendant, for the reason that, although the wheel had been previously THE COMPLETE SPECIFICATION 145 combined with apparatus which made the combination use- less, yet that the contrivance in question had been made public property, and could not of itself be made the subject of a patent. The Court of C. P. said that the use of a wheel known before, in a manner known before, could not be deemed an invention capable of sustaining a patent, and held that the judge was right. (Tctley v. Easton, Macr. P. C. 48; 2 C. B. N. s. 706.) New parts and minor combinations must be expressly claimed. Where a patentee claims in his specification an entire combination only, he will be deemed not to have claimed any of the novel minor combinations if any such there be. A combination of three parts is a different thing from a combination of two of them ; and if a patentee desires to secure the minor combination he must distinctly claim it. (Clark v. Adie, L. R. 10 Ch. 667 ; affirmed on appeal, L. R. 2 App. Gas. 315.) With respect to patents granted before the Act of 1883 came into operation, it was held in Nordenfeldt v. Gardner <1 R. P. C. 69), when the patent was for an improvement consisting of an addition to an old mechanical combination, that as the improvement was made clearly manifest on the face of the specification, where it was sufficiently pointed out what the improvement was, the patent was not invalid although there was no mention of the improvement in the claims. On the other hand, where a patentee had omitted from his claim a process which was properly described in the body of the specification, an action brought by him for the infringement of the process w 7 as dismissed. (Jackson v. Wolstenhulmes, 1 R. P. C. 105.) The claims must not cover too much. The inventor should beware of claiming more than he is strictly entitled to, since a failure in part is a failure altogether, and that to which he has a just right will fall along with that which does not belong to him. To use Lord Eldon's illustration if there be a patent both for a machine and for an im- provement in the use of it, and it cannot be supported for the machine, although it might for the improvement merely, 146 THE COMPLETE SPECIFICATION it is good for nothing on account of its attempting to cover too much. ( Hill v. Thnmpx,.,,. i W. 1'. c. -2 ; Therefore, if an inventor lays claim to a principle in addition to a method of carrying it into effect, and it should turn out that tin- principle was known and had been i viously applied to a similar purpose, in such case the patent cannot stand. In the specification under the patent \\hich formed the ground of dispute in Hill v. 7 A. //// 1 W. P. C. 289), the patentee claimed not only the use of a particular quantity of lime in smelting iron, hut the discovery of the usefulness of lime in that process generally. It appeared, however, that lime had been previously used for the purpose, and the patent was accordingly held bad, although, if the patentee had restricted bis claim to the particular proportions of lime and metal, it might have been sustained. Again, tin- specification under Minter's patent, for an improvement in the construction of chairs, was faulty for a similar reason : its claim was too extensive. The improvement consisted in applying a self-adjusting leverage to the back and seat of a chair, whereby the weight on the seat acted as a counter- balance to the pressure against the back. It was proved that one Brown had previously invented a chair on the same principle, but his application of it was encumbered with additional machinery. If Minter had restricted his claim to the particular mode in which he effected the thing, his patent would have been valid ; but since the specifica- tion went generally to the application of a self-adjusting leverage to the given purpose, it claimed more than he was entitled to ; and if the patent had been held good, Brown could not have continued to make his chair without infring- ing it. (Mintim v. Mmnr, 1 W. P. C. 188.) Under a patent for improvements in stoves the specifi- cation claimed the construction of stoves made in such a manner that the fuel should be introduced from beneath. Now it was shown at the trial of an action of scire facias that grates had been previously constructed on this prin- ciple ; and although the particular method of effecting the THE COMPLETE SPECIFICATION 147 object was new, yet Lord Ellenborough held that as the patentee had claimed the principle, which was not new, the patent was bad. If the inventor had limited his claim to his own mode of carrying the principle into effect his patent would have been upheld. (Rex v. Cutler, 1 Stark. 354, 1 W. P. C. 76.) The case of Rex v. Else (1 W. P. C. 76) affords another instance of the same error. The specification claimed in effect the exclusive right of combining silk and cotton thread, and then of making lace of the combined material. It was proved that silk and cotton thread had previously been combined in some mode or other ; and although the material so constructed was unfit for making lace on account of its coarseness, yet as the patentee did not confine him- self to any particular mode of combining the two, his claim was held to extend to every mode, and was therefore bad. Fisher and Gibbons obtained a patent in 1844 for an invention of a machine in which a shuttle was combined with a needle for producing stitches to ornament fabrics. In 1846 Thomas procured a patent for improvements in machinery for sewing and stitching various fabrics. His specification was construed as claiming generally the use of needles in combination with shuttles for producing stitches ; and although he showed one particular form of a needle and shuttle machine which was a different combination from that described by Fisher and Gibbons, it was held that, having regard to the language employed, his claim could not be confined to that particular combination. His patent was, therefore, invalid in consequence of the patentee claiming too much. (Thomas v. Foxwell, 5 Jur. N. s. 37 ; 6 Jur. N. s. 271.) Under a patent for improvements in weaving figured fabrics, the specification described mechanism for weaving coach lace, but the patentee said that he did not confine himself to narrow goods only, as his improvements were applicable to the production of carpets. It was shown that the specified mechanism could not be adapted to the weaving of carpets by merely enlarging it, but required certain x, 2 148 THE COMPLETE SPECIFICATION additions to be made to it before it could be employed for that purposo. Sir /'. /'..//..,/.. < . /;., t..i,l th,. jury, at the trial of an action for an infringement, that if carets could not be made by the means stated in the specification, the patent was not good ; and tin- jury n turned a vcnlitt in favour of the defendant. (Croulfij \. M:u-r. I*. C. 240.) So likewise if a specification claims a novel combination of parts forming an entire machine, and also makes a claim to a subordinate combination which is not new, the patent cannot stand. (< \ . Smith, 1 11. P. C. 81.) Under a patent for an invention for constructing belts for driving machinery the specification claimed to make belts of that class of cotton canvas which was known in the market as hard woven canvas. Now it was proved that there were ten qualities of such canvas in the market, and that at the most three of them would answer the purpose. In the absence of evidence that an ordinary workman would know which quality to select without trying experiments, it was held by the Court of Appeal that the specification claimed too much. (Gaudy v. Ileddaway, 2 R. P. C. 49.) A specification claimed the use of all peroxides of man- ganese for a given purpose, but it was shown that only the hydrated peroxide would have the desired effect, and the patent was therefore declared to be invalid. (Knrtz v. Sj> 5 R. P. C. 161.) See also Ralston v. Smith (9 C. B. N. B. 117 ; 11 C. B. N. s. 471 ; 11 H. L. Cas. 228) ; Booth v. K.nnard (2 H. & N. 84); Saunders v. Aston (18 B. & A.I. 886 ; 1 W. P. C. 75 n.) ; and Ilaworth v. Hnrdcaxtl*- U AY. P. C. 484.) We must not forget, however, the remarks made by Jessel, M. R., in the case of 1 n v. Loe (L. R. 9 Ch. D. 58) : ' It does not follow that because an inventor thinks he has invented more than he has in fact, and describes the advantages of his invention, 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 BO limited as to fail to cover the actual thing in use, while THE COMPLETE SPECIFICATION 149 it covers some of the advantages mentioned ; in such a case it may still no doubt be a good patent.' Vague, speculative claims to be avoided. A patentee will not be allowed to make wide hypothetical or speculative claims based on mere conjecture or surmise, nor will his patent be permitted to cover matters of which he was ignorant at the date of his patent. In the specification under a patent for improvements in machinery for raising water, the patentee said, 'If any gases or elastic media other than atmospheric air are used, with which to charge the case [part of the machinery], I claim the sole right to do so.' Pollock, C. B., who tried an action brought for infringing this patent (Tetley v. Easton, Macr. P. C. 48), remarked upon this passage, that, in point of law, the patentee had no right to make such a claim ; the law would not permit a patentee to claim more than he has invented. ' It will permit him to claim that which he has invented by means of successful experiments or otherwise, and which he has given to the public, but not that which is the mere subject of his speculation or imagination, or of his endea- vouring to grasp more than he is entitled to. I think we are bound to give, as far as possible, the fullest effect to an invention ; but, on the other hand, I think we are also bound to oppose the endeavours to make a patent grasp at and embrace a number of matters that were never in the head of the inventor.' In another part of the specification, the patentee described a wheel with straight arms, and then he said, *I propose to construct the wheel of every variety of configuration, so long as it is constructed with a channel in the interior.' The defendant had made use of a wheel with bent arms, and the patentee treated this as an infringe- ment, although he admitted that at the time he obtained his patent he had never thought of bent arms, and also that curved arms almost trebled the effect of the machine. The judge told the jury that the patentee's claim to every shape of arm would not stand. To hold that it was good would be to reward a man who had rashly and ignorantly 150 THE COMPLETE 8PI :OX taken out a patent on a subject ho had not appreciated. The same learned judge, when presiding at the trial of Stcrfn* v. A I \Y. P. C. 184) an action for inf ing a patent for processes for combining materials to form cements said, with reference to that part of the specifica- tion which was In-lil to claim tin- use, imt only of a parti- cular acid, but of all acids which mi^ht succeed, that no patentee could be allowed to make such a claim, and to say, Whereas other substances will succeed, I claim them all. A perusal of these cases will show that it is safer for a patentee to restrict his claim to the use of those processes, or those materials, which he has found by actual trial to answer the purpose, than to extend it to matters of which he has no accurate knowledge; since, in doing this, he may either claim something which will not answer the object in view, something which is not new, or something which he does not sufficiently describe. The law will aid him, without any general claim in his specification, in repressing infringements which are an illegal imitation of his process behind a colourable variation, or by means of mechanical or chemical equivalents. ' The safest course for patentees to adopt ' (said Pollxk, C. B., to the jury on the trial of Crosslcy v. Potter, Man-. P. C. 256) 'in framing their specifications is, instead of including everything, to confine themselves specifically to one good thing, and a jury will always take care that if that be a real invention, no man under colour of improve- ment shall be allowed to interfere with that which is the offspring of their genius.' In the case of Arnold v. Bradbury (L. R. 6 Ch. 706) Lord Hathrrli'ii, C., said that a claim must be very large and vague indeed to justify any court in saying, indepen- dently of evidence, that it is impossible to sustain a patent based upon it. In that case he decided that the claims for making ruffles ' by machinery ' meant by the described machinery, and that there was no ground for holding that the claims were too large per sc. In the course of his THE COMPLETE SPECIFICATION 151 judgment, he remarked that it was a singular fact that no case had been cited from the law books of any claim being held to be too large on account of the greatness of the claim independently of external evidence. But he referred to an American case (Wyatt v. Stone, 1 Storey 273) where the patentee had claimed every method of cutting ice by machinery. 152 INTERPRETATION OP SPECIFICATIONS CHAPTER X. ON THE INTERPRETATION OF SPECIFICATIONS. FORMERLY there was a disposition in the Courts to take part against patentees, under the impression that mono- polies were not to be encouraged, attaching the old odious sense of the term to the phrase indicating a patent privi- lege for an invention. The judges were then astute to detect flaws in specifications, to the language of which tin y were accustomed to apply a rigorous criticism. Then came a change, and some of the judges thought that a specifica- tion ought to be read with indulgence ; that a liberal construction should be put upon it, and that the words should receive a benign or a benevolent interpretation. But of late years the Courts have laid down that specifica- tions are to be construed like other written documents, that is, with a disposition to read them fairly, and with an endeavour to ascertain their real meaning, not straining tlu language nor giving effect to petty objections. In the case of Newton v. Hallard (Hil. Term, 1872) Mr. J> fir- -re said, 'A specification should not be construed in a technical or captious spirit, but with a fair intention to give it effect if it be reasonably intelligible.' In the case of Harrison v. Tin- .1m// r*tf kimul, ,1^, at tin- time it was prepared. Thus, the specification under a patent for a chemical invention will be held to refer to what was known at the time, and not to anything which wa.- covered subsequently. The language will not be deemed too wide because it is extensive enough to embrace unsuit- able ingredients of later discovery. As a patentee would not be allowed to secure the exclusive use of materials un- known at the date of the patent, although the words of the specification are sufficiently ample to cover tin in, it would be manifestly unjust to hold that his language, having become applicable by the advance of knowledge to more than he contemplated, should render the patent void, if it was properly limited and accurate at the time it was employ nl. In 1878 a patent was obtained for certain methods of preparing colouring matters from naphthylamine, a sub- stance derived from one of the products of the distillation of coal. In an action for infringing the patent the defendant contended that as two substances named naph- thylamine (viz. the alpha and beta forms) were known to chemists at the date of the patent, one of which would not answer the purpose, the specification was insufficient by reason of its not stating which of the two was to be used. But it was held by the judge who tried the action, and by the House of Lords, that as the alpha form (the suitable one) was the only one in the market at the date of the patent, the beta form being a costly substance known only to a few chemists as a laboratory product, the specification was sufficiently explicit. (Badische Anilin vnd Soda Fabrik v. / ;//x/,-iw, 2 R. P. C. 78 ; S. C. House of Lords, 4 R. P. C. 463.) See also Crossley v. Bcrcrlcy (3 C. & P. 515). Where a specification has received an interpretation in the Court of Appeal and afterwards goes there again on appeal from the decision in another action against another defendant, the construction previously put upon it will be adopted and will not be allowed to be questioned. (Auto- INTERPRETATION OF SPECIFICATIONS 157 matic Weighing Machine Co. v. Combined Weighing Machine Co., 6 E. P. C. 367.) Construction of Claims. ' You must always construe a claim with reference to the whole context of a specification.' (Per Sir W. M. James, L. J., in Plimpton v. Spiller, L. E. 6 Ch. D. 412.) ' Every claim in every patent must be read and construed with reference to the specification, and not as if the claim was an isolated sentence having no connection with or reference to what precedes it.' (Edison & Swan United Electric Light Company v. Woodhouse, Court of Appeal, 4 E. P. C. 107, and see Kaye v. Chubb, 5 E. P. C. 641.) As to the construction of a claim which can be read in two senses, one of which would make the patentee appear to claim something which was well known and in common use, see Cropper v. Smith, Court of Appeal, W. P. C. p. 81, and Westinghouse v. Lancashire and Yorkshire Railway Company, ibid. p. 98. And see what fell from Tindal, C. J.,m Haworth v. Hardcastle, 1 W. P. C. 484. If one construc- tion would imply that the claim is practically a repetition of what has gone before and entirely superfluous, yet so long as it does not seek to enlarge the monopoly beyond what the patentee is entitled to, it will not make the patent invalid. (Plimpton v. SpiUer, L. E. 6 Ch. D. 412.) It was decided by the House of Lords in The British Dynamite Company v. Krebs (Goodeve's cases, p. 88) that an appendant claim to something old did not vitiate a patent. In this case the patentee had claimed the manu- facture of the dynamite which was found to be new, and also claimed the means of firing by special ignition as described. Some of these means of firing being old and well known as applied to other explosives, the House of Lords construed this claim as being only appendant to dynamite, and upheld the patent. It is not, however, advisable for inventors to make claims of this kind, which if held to extend the patent would invalidate it, and if held not to extend it are simply useless. The following decisions have reference to the interpre- 158 ilRPRETATION OF SPECIFICATIONS tation of ' claims : ' Kay v. Marshall (2 W. P. C. 89) ; r v. l.,-,itlt,-r (X ,Tur. N. 8.811, S. < '. in error 8 E. and B. 1004); I'.ilm.r v. n'ag$ta/ (9 Exch. !'.' Manffnall (3 C. B. 496) ; Tetn]>/> t-m v. .I/./ .-..--,.. 1 II. L. C. 595) ; Sdltr* v. Dickinson (5 Exch. 812 > //iV/i//* (8H. L. C. 550); Thomas v. / I ft -. ,. -71 ; Dangerfitld v. Jorw* (18 L. T. N. 8. 142) ; ITtowa* v. I: (L. it. 1 C. P. 192) ; Jordan v. Moore (L. R. 1 C. P. 624) ; (L. R. 8 Eq. 497) ; Hink* \ . !L. R. 4 Ch. D. 607); Wriyht v. Ilitrl,r,.,-k (L. I;. :. Ex. 78). OPPOSITIONS TO THE GRANT OF PATENTS 159 CHAPTEE XI. OPPOSITIONS TO THE GRANT OF PATENTS. AN inventor's application for a patent may be opposed under the eleventh section of the Act of 1883, amended by the Act of 1888, which enacts that any person may at any time within two months from the date of the advertisement of the acceptance of a complete specification give notice at the Patent Office of opposition to the grant. The opponent is restricted by the Acts of 1883 and 1888 to three grounds : viz. (i) that the applicant had obtained the invention from him, or from a person of whom he is the legal representa- tive ; or (ii) that the invention had been patented in this country on an application of prior date ; or (iii) 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 appli- cation made by the opponent in the interval between the leaving of the provisional specification and the leaving of the complete specification. The last ground was substituted by the 4th sect, of the Patents Act, 1888. Where such notice is given the Comptroller will give notice of the op- position to the applicant, and will, on the expiration of the two months, after hearing the applicant and the person so giving notice, if desirous of being heard, decide on the case, but subject to appeal to the law officer. As to the procedure in cases of opposition before the Comptroller, see rules 34-44 of the Patents Eules, 1890. The notice of opposition must state the grounds of opposi- tion. When a ground of opposition is that the invention has been previously patented, the title, number, and date of 160 OPPOSITIONS TO THE GRANT OF PATENTS the alleged prior specification must be duly specified. Th- opponent's evidence in 8ii]>]><>rt of his case and the appli- cant '- i \ id nice in reply must be in tin- form of statutory declarations. At the hearing before the Comptroller no matter can be gone into which has not been stated in tl it- notice of opposition. He may allow amendments in n of opposition at the hearing. (See Patents llul-s, IH;O, R. 1C, : /.,//.-, 'x .l/.y./Y,/r , -J llriff. P. C. ' ft .lyy//- cat'mn, f R. P.O. :>H.) "Win- re a notice of the hearing before the Comptroller did not reach the opponent's agent and the case was decided against the opponent in his absence, the Comptroller gested that the opponent should appeal, and this being done the law officer referred the case back to the Comptroller for rehearing. (Warman'g Apjilicntion, 2 Griff. P. C. 48.) Appeal t thf Ln ir Officer. When a person intends to appeal to the law officer against the Comptroller's decision, he must file in the Patent Office a notice of his intention, within fourteen days from the date of the decision. (See the Rules of the Law Officers in the Appendix). Win n the Comptroller requires an amendment to be made, but does not at once settle the words of the amend- ment, it is the practice to regard the time for appealing to the law officer as dating from the day of forwarding to the opponent a copy of the amendment approved by the Comptroller. (Chn,U,-r'g Patent, 1 Griff. P. C. 278). When a notice of appeal is given by one party, the other party will not be allowed to question at the hearing another part of the Comptroller's decision unless he has also given notice of appeal, or has obtained the consent of the other side. (Baintmc'g Patent, 5 R. P. C. 287.) When the appellant is one of the opponents, it is the pra< going beyond the rule, to send him notice of the hearing before the law officer. At the hearing the parties may appear in person, or be represented by counsel, solicitors, or patent agents. The onus of proof lies on the opponent. (Exparte Sheffield, L. R. 8 Ch. 237.) The more important decisions of the law OPPOSITIONS TO THE GRANT OF PATENTS 161 officers are now officially reported, so that more uniformity may be looked for than formerly, when it was not unusual to find different law officers holding different views on the same points. They are always reluctant to stop patents, because applicants cannot appeal from their decisions ; but if the law officer entertains no doubt that the invention has been anticipated by a prior patent he will refuse the application. (Aire and Colder, d-c., Application, 5 R. P. C. 345 ; Waller and Ratcliff's Application, 5 R. P. C. 347 ; Daniel's Application, 5 R. P. C. 418.) The infringement of an existing patent was formerly not considered a ground for refusing an application, for the reason that it was possible that the later invention covered a valuable improvement, and according to the present practice if the later invention is an improvement on an invention under an existing patent, the application must be distinctly made for the improvement separate from the already patented invention. (Hoskins Patent, 1 Griffin, P. C. 291.) Under the old system, if the law officer was at all doubtful as to the effect of the evidence before him, he would allow the patent to proceed, that the question might be tried in a court of law. In the case of Dance's Patent (P. M. J. vol. vi. 2nd series, 298), Atherton, A. G. (1861), finally gave his judgment as follows: 'I allow this patent to proceed, thinking that the question of fact, whether Dance or Stevens invented, and the mixed ques- tion of fact and law, whether the invention had been made public before Dance applied for protection, admit of too much doubt to justify a law officer in stopping the patent.' And so in other cases w r here much doubt hung about the matter ; for example, where the evidence was conflicting, and the law officer was unable to decide which side was speaking the truth, he would allow the application to pro- ceed, as was done by Giffard, 8. G., May 6, 1876, in the matter of Liddell's Patent, No. 3872, 1875. And in He Hiissell's Patent (2 De G. and J. 130), where M 1G2 OPPOSITIONS TO THE GRANT OF i the novelty of tin- inv ntion was contested, I < .. thought that in such a case it was better to run tin- risk of putting the party opposing to the costs of ult proceedings than to withhold the Seal, for the obvious reason that the former course, if wrong, would only create a remedial)!*- injury, whilst the latter course, if wrong, would cause an irremediable injury. (See also Re ToUon't /,; I ).-(i. M.an.K,. l-J-J : / ifi L. J. Ch. I.' I : /,'. ,SJ;/J/IX,.M and Isaac's 1 Jl L. T. o. s. 81 ; -! Mt*4 I'at. nt, 3 De G. and J. 528.) And under the new law it is the well-recognised prac- hiit if there is doubt as to the applicant's right to a patent the question hhwild be determined in his favour, and tin- patent sealed. (Chandler's Patent. I (iriff. P. C. 270; HY/r/r* Patent, 1 Griff. P. C. 800 ; Jones' J Griff. P. C. 88.) It is no part of the law officer's duty to decide the validity or invalidity of patents. (.\ I ' nt, 5 R. P. C. 277.) If a strongly controverted question of scientific anticipation should arise, the patent will not be stopped. (Lake's Patent, 6 R. P. C. 548.) The first ground of opposition mentioned in the Act is that the applicant had obtained the invention from the opponent, or from a person of whom he is the legal repre- sentative. The fact that a workman has assisted his master in improving the details of the machine invented by the master and sought to be patented by him affords no ground of opposition to the grant of a patent to the master. d>,irl,l ,(' }\'u >. ~> I:. I'. < . -J71 : Goznetit .\}'i'li>. iti,.n. :. I;. I'. < . .V.7 : l.yndr't I R. P. C. 668. pin (1 iiitnit is some- times required to be inserted. (Hair* ]' nn.t Barrott :. I:. I 1 . C. 812) ; and 'i Apjilicntiu,, i.l K. 1'. C. 184), a dis- claimer of a i>rim-ij)le was ordered to be inserted. Tin- reference to an earlier specification must not put a con- struction on the latter. (Ath,-rtnn'* 1'tit.nt, ; i:. r. C. 547.) lin-nl .\]>i>li<;iti,,,ig. When two contending applim for a patent claimed to be indejx nl. nt cont< ni]>oraneouB discoverers, the law officer usually refused to allow the grant to issue to either separately, but offered it to the two jointly. And so in a case of opposition before Lord ( n-orth. ('., where a master and his foreman had both in- vt 'ii ted certain improvements, for which the master alone applied for a patent, but was opposed by the foreman on the ground of prior invention by the latter, the patent was ordered to be vested in trustees for the benefit of both. Rum-ir* r,it,-nt, 2 De G. & J. 180.) Where there was ground for supposing that the applicant owed part of the invention to the opponent, the Comptroller decided to seal a patent for the invention to the two as joint inventors. nt, 1 Griff. P. C. 279.) Evans's application was opposed by Cutting on the ground that the former had obtained the invention from the latter. Cutting afterwards made an application in respect of substantially the same invention, but that application was not opposed by Evans. As it appeared that the t\\o had been jointly experimenting on the invention, >'// /.'. A. G., directed that a patent be issued to Evans on condition that he assigned one half share to Cutting, and that Cutting should assign a half share of his patent to Evans, and if Cutting refused to assign, then Evans's patent was to be sealed forthwith. There being a difficulty in carrying out this arrangement, the law officers afterwards directed that Evans's patent should not be sealed, but that Cutting should assign one half share of his patent to Evans, OPPOSITIONS TO THE GRANT OF PATENTS 165 the assignment to contain provisions as to payment of the patent fees. (Evans cO Otway's Patent, I Griff. P. C. 279. And see Garthwaite's Patent, 1 Griff. P. C. 284; Luke's Patent, 1 Griff. P. C. 294.) Where an employer opposed the application of a person who was or had been in his service, on the ground that the invention sought to be patented probably resulted from investigations or experiments directed and paid for by the employer, the law officer, being satisfied of the bona fides of the opposition, granted his warrant on condition that the applicant should submit his provisional specification to the inspection of the opponent, and should strike out such portions of it as contained matters of the kind referred to by the opponent. This was done by Coleridge, S. G., in the case of Healey's Application, No. 85, 1872, and also in the case of Conniff's Application, No. 3895, 1872. In a case where there were rival applications for a patent for the same invention, and there was a conflict of evidence as to priority of discovery, the patent was awarded by the Lord Chancellor to him who was first in a position to seal it. (In re Loice's Patent, 25 L. J. N. s. 454.) But now priority of sealing will confer no advantage on a later applicant, inasmuch as by section 13 of the Act of 1883 a patent must be dated and sealed as on the day of the application. In cases of rival applications where the law officer was satisfied that one of the applicants was entitled to one part of the invention, whilst the other could more fairly claim another part, he issued his warrants to both, limiting the provisional specifications accordingly. This was done by Coleridge, S. G., in the matter of Craig and Macfarlane's Applications. (P. M. J. vol. iv. 3rd series, 366.) Macfarlane had applied for Letters Patent for ' Improvements in rollers for paper-making machines,' and obtained the usual pro- visional protection. He claimed to have invented both a * coutch-roll ' and an ' underpress roller ' for a paper-making machine. The application was opposed by Craig, on the ground that he was the first inventor of an underpress 166 OPPOSITIONS TO THE GRANT OP PATENTS roller, covered with vulcanite and vulcanised india-rul which formed part of Macfarlane's provisional specification, and for which ('rain had also applied anl obtained the usual protection. Craig contended that Macfarlane, who had obtained the matt-rial for the covering of the roll. T- from a rubber company, was at that time in Craig's em- ployment, and that he had only applied for his patent after thr rollers had In -t-n experimented with l>y Craig at one of his mills, and had been found successful. Craig submitted that the experiments adduced hy Macfarlane had only re- nee to the coutch-roll of the machine, and that Mac- farlane had not proved that he had ever experimented on the underpress rollt-r. (',-n- ]{een opposed, before the first applicant petitioned for the Seal. /."/ rl>->/, ('., only permitted the first applicant to include in his patent so much of the invention as was not covered by the patent already sealed, and, moreover, he ordered the first applicant's patent to bear date after the second applicant's. 1 And so, where the law officer had reported that part of an invention for which a patent was sought was the subject of an existing patent, the Lord Chancellor ordered that part to be excluded from the new patent. (Ex parti- Man- r, L. R. 6 Ch. 273.) The principle of these cases was that the Crown would 1 In Ex parte Dering (13 Ch. D. 393), where two applicants had applied on the same day for the same invention. Lord Cainu, C., re- fused to follow the decision in Ex parte Batt* & fledgaU as to the post- dating of the patent, on the ground that the Legislature intended patentees to have the full term of protection given bj provisional specification, and ordeied the applicant's patent to be sealed, and dated as of the day of application, although the sealing was opposed by the second applicant, who had already had the Great Seal affixed. (See the remarks on these cases by Mr. Justice Kekturich in Kurtz v. Spenct, 5 B. P. C. 178.) OPPOSITIONS TO THE GRANT OF PATENTS 167 riot grant a second patent in derogation of a former grant, and would not assume, without scire facias, that the first patent was void. See Ex parte Bailey (L. E. 8 Ch. 61) &nd,Ex parte Henry (L. E. 8 Ch. 167, 169). And this principle has been kept in view by the Comp- troller and the law officers with regard to applications under the Act of 1883, disclaimers, as already stated, being frequently directed to be inserted in specifications, referring to an earlier patent. Mala Fides. Under the old law, if a case of mala fides could be made out, the Chancellor would interfere to pre- vent injustice. Thus, where a servant having filed a pro- visional specification, his master afterwards filed a pro- visional specification for the same invention, and then after obtaining a patent, a complete specification, there was grave suspicion that the master had surreptitiously obtained a knowledge of the servant's invention, and there- fore the servant's patent was ordered to be sealed and dated as of the day of his application, notwithstanding the existence of the master's patent. (Ex parte Scott & Young, L. E. 6 Ch. 274.) The consequence of this would be that by virtue of section 24 of the Patent Act of 1852 acts done under the patent first sealed would be an infringement of the patent with an earlier date. (See Saxby v. Hennett, L. E. 8 Ex. 210.) When the opposition was founded on a prior patent granted to the opponent, and the applicant alleged that the invention for which that patent was granted had been communicated by him in confidence to the patentee who had fraudulently obtained a patent for it, the Lord Chan- cellor directed the applicant's patent to be sealed, so as to give him an opportunity of trying the question in a court of law. EC Vincent's Patent (L. E. 2 Ch. D. 341). And see section 35 of the Patents Act 1883. And where it was shown that the applicant had derived the principle of the invention from a rival applicant, the Seal would be refused to the former. In April 1853 Hadden made application for a patent 168 OPPOSITIONS TO THE GRANT OF PATENTS for a method of making gun -curt ridges. His plan obviated th' necessity of biting off the end of the cartridge when the gun was being loaded, and its main feature consisted in making it weaker at one end, BO that \\h< n rammed down it burst open and the- jx>\v< taken in an action or other proceeding on the ground that it comprises more than one invention. On reference to the form of patent printed in the Appendix to this volume it will be seen that the Crown grants unto A. B. especial licence, full power, sole privilege and authority, that he, the said patentee, by himself, his agents or licensees, at all times thereafter during the term of fourteen years from the date, may make, use, exercise, and vend his invention within the United Kingdom of Great Britain and Ireland, and Isle of Man, in such manner as to him or them shall in his or their discretion seem meet; and to the end that the said patentee may have and enjoy the sole use and exercise and the full benefit of the said invention, all the Queen's subjects whatsoever are strictly commanded not to infringe the patent. It is, however, pro- vided that, if it shall be made to appear to the Crown or the Privy Council that the grant is contrary to law, or prejudicial or inconvenient to the subjects of the realm in general, or that the invention is not a new invention as to the public use and exercise thereof within the United Kingdom, ullic fast or thanksgiving, the fee may be paid on the day following any of these days. \Vlu-re any prescribed payment has not been made in diu time, and no application has been made to the Comp- troller for an enlargement of the time, and the patent has const (jurntly become void, nothing short of a special Act of Parliament can restore its validity. But such Acts are more difficult to obtain since the Act of 1883 came into operation than formerly. In case clerical errors should have been made in Letters Patent, the Master of the Bolls had and still has power to correct them (Re Nickel*' Pnt.nt, \ Bea. 568; He Gare't t, L. B. 26 Ch. D. 105) ; but the application must be made within a reasonable time (He BlamtmiV* 1' 8 L. T. N. s. 800). In the case of Adam's l',it,,,t (1 W. B. 259), a doubt having been expressed as to the- jurisdic- tion of the Master of the Bolls, the order was made by the Lord Chancellor. But now the powers of amendment given to the Comptroller by section 18 of the Patents Act 1883 seem extensive enough to cover clerical errors in patents. In the event of a patent being lost or destroyed, or if its non-production should be accounted for to the satisfaction of the Comptroller, he is empowered by the thirty-seventh section of the new Act to cause a duplicate thereof to be sealed. In the case of l\-tli.*r v. The Queen (6 B. & S. 257), it was decided that the Crown has a right to the free use of any patented invention (see the case more fully stated at THE PATENT: ITS DATE, DURATION, AND EXTENT 175 the end of the chapter on Infringements) ; and this decision applies to all patents granted before the commencement of the Act of 1883, or on applications then pending ; but as to patents granted afterwards, they will have the same effect against the Crown as against a subject (section 27). The officers or authorities administering any department of the service of the Crown, their agents, contractors, or others are to be entitled to use any invention for the service of the Crown on terms to be agreed upon with the approval of the Treasury ; or if an agreement cannot be effected, then on such terms as the Treasury, after hearing all parties interested, shall settle. By the forty-fourth section of the Patents Act of 1883 the Secretary of State for War is empowered to acquire by purchase or gift the benefit of any inventions of improve- ments in munitions of war, and of any patent obtained for the same, and to prevent the disclosure of such inven- tions. The effect of the forty-fifth section is that patents issued or applied for before the commencement of the Act will not have the benefit of the provision binding the Crown, nor will they come under the liability imposed by the clauses relating to compulsory licences. But in all other respects, including the proceedings for amendments, prolongations, and revocations, the Act of 1883 will extend to patents granted before the commencement of the Act, or on applications then pending, except slight differences on the payment of the annual fees. (See Appendix.) By the thirty-fifth section of the Act of 1883 a patent granted to the true and first inventor is not to be invalidated by an application in fraud of him, or by provisional protec- tion obtained thereon, or by any use or publication of the invention, subsequent to that fraudulent application during the period of provisional protection. The 113th section of the Patents Act of 1883 repeals all the statutes described in the third schedule of the Act, but goes on to enact that the repeal shall not affect the past operation of any of those statutes. Now, the twenty-fifth 176 THE PATENT: ITS DATE, DURATION, AND EXTENT section of the Patents Act of 1852 declares tha itish patent \\hirh bears date after a foreign patent f..r th* game invention (being a foreign invention) hlioll be void ut th- < xpiration of such foreign patent. Consequently, any J'.nti-h patent granted before the commencement of the Act of 1883, and standing in this relation to a foreign pa will lie void by the operation of these two clauses, in case the foreign patent shall have \pin <1 )>< f<>n the commence- UK nt <>f tin- Act of 1883. That is to say, since the enrli. r Act has already rendered the Hi itish patent void, that 'past operation ' of the Act will not be affected by its repeal l.y tin- Act of 1883. But if the twenty-fifth section of the earlier Act nt tin- time of its repeal has not had an invali- dating operation on a patent, then the British paUnt \\ill not be touched, and the clause in question will have no effect. As regards patents which have been obtained on applications pending at the commencement of the new Act, it is presumed that the third subsection of the forty- fifth section of that Act will effectually protect them from the operation of the twenty-fifth section of the Act of 1852. The operation of sect. 113 on patents granted under the Act of 1852 was considered with reference to other points in the cases of Singer v. Stassen (1 R. P. C. 121) and Brandon's Patent (1 R. P. C. 154). It was held by />/// llnn in the case of A'/een obtained prior to the date of the British patent and had lapsed, the foreign patent must have been not merely applied for, but actually obtained before the British patent, and this, although the foreign patent when granted bore a date earlier than that of the British patent. When a patent is granted to two or more persons, each may use the invention without being liable to account to the other. (Mathers v. Green, 1 Law Rep. Ch. Ap. 29, before Lord Cranit-orth, C.) See, however, the earlier case of Hancock v. Dewley (Johns. 601), as to the rights of parties THE PATENT: ITS DATE, DUEATION, AND EXTENT 177 where Letters Patent are vested in trustees for two or more persons as tenants in common. In case of the death of the patentee intestate before the expiration of the patent, his interest under it passes to his personal representatives, and not to his heir. In case of bankruptcy the property in the patent will pass to the trustee or assignee, like the rest of the bankrupt patentee's personal assets. (Bloxam v. Elsee, 9 D. & E. 215.) N 178 MENTS OF 8PECII CHAPTER XIII. AMENDMENTS OP SPECIFICATIONS. IT has been shown that where a material part of an alleged invention is not new or not useful, the patent is altogether invalid ; and that if a patentee claims by his specification more than he is entitled to, the patent is likewise void. The fatal effect of an inconsistency between the title and the specification, or between the provisional and the com- plete specification, has also been pointed out. To remedy a law which in many cases bore unjustly upon patentees, the Act of 5 and 6 Win. IV. c. 88 empowered a patentee to take steps for altering his specification by disclaimer. That Act, however, as well as other Acts relating to dis- claimers, were repealed by the Act of 1883, which substi- tuted the following provisions for those of previous statutes. By the eighteenth section it is enacted that (1) An applicant or a patentee may from time to time, by request in writing left at the Patent Office, seek leave to amend his specification, including drawings forming part thereof, by way of disclaimer, correction, or explanation, stating the nature of such amendment, and his reasons for the same. (2) The request and the nature of such proposed amend- ment shall be advertised in the prescribed manner, and at any time within one month from its first advertisement any person may give notice at the Patent Office of opposi- tion to the amendment. (8) Where such notice is given the Comptroller shall give notice of the opposition to the person making the request, and shall hear and decide the case subject to an appeal to the law officer. AMENDMENTS OF SPECIFICATIONS 179 (4) The law officer shall, if required, hear the person making the request and the person so giving notice, and being in the opinion of the law officer entitled to be heard in opposition to the request, and shall determine whether, and subject to what conditions, if any, the amendment ought to be allowed. (5) Where no notice of opposition is given or the person so giving notice does not appear, the Comptroller shall determine whether, and subject to what conditions, if any, the amendment ought to be allowed. (6) When leave to amend is refused by the Comptroller, the person making the request may appeal from his decision to the law officer. (7) The law officer shall, if required, hear the person making the request and the Comptroller, and may make an order determining whether, and subject to what conditions, if any, the amendment ought to be allowed. (8) No amendment shall be allowed that w r ould make the specification, as amended, claim an invention substan- tially larger than or substantially different from the in- vention claimed -by the specification as it stood before amendment. (9) Leave to amend shall be conclusive as to the right of the party to make the amendment allowed, except in case of fraud ; and the amendment shall in all Courts and for all purposes be deemed to form part of the specifi- cation. (10) (As amended by the fifth section of the Act of 1888.) The foregoing provisions of this section do not apply when and so long as any action for infringement or proceeding for revocation of a patent is pending. The procedure on applications for amendments is regu- lated by rules 52-59 of the Patents Rules, 1890. After specifications have become public property they must be amended under section 18. Any other amendments are to be dealt with under sections 7 and 9 of the Act of 1883. (Jones' Patent, 1 Griff. 313.) Where an applicant desires, prior to the acceptance of his complete specification, to omit N 2 180 AMENDMENTS OF SPECIFICATIONS part of the invention covered by the original title, the Coniptmllrr should give him tin- option of either filing tho specification with tin- nri^iiuil title and ins rti clause, or should amend the original till, in and the provisional specification, as he is \ irtiiiilly empowered to do under ss. 7 and 9, the anu n]>li<-uti,in d 1;. P. C. 214), both the then law officers were of opinion that the Comptroller has power to impose conditions on ^ r i\ in- leave to amend a specification by way of disclaimer. But he cannot give costs. (Pichchmann't Patent, 1 (JrifiF. 1'. C. U10.) The twenty-first section directs that every amendment of a specification shall be advertised. This will be done by the Comptroller under rule 59. A]>i>'-dl t<> tlf Law Officer. The law officers rules will be found in the Appendix. By sect. 88 of the Act of 1888 they have power to examine witnesses on oath. There is no appeal from the order of the law officer \\ lit -n he grants or refuses leave to amend on the appeal to him from the decision of the Comptroller. Nor, according to the decision of a Divisional Court and the Court of Appeal in the case of Van Gelder'g Patent (6 R. P. C. 22), can a writ of prohibition be obtained, prohibiting the law officer from allowing the amendment of a specification. An amendment which has been allowed by the Comp- troller or law officer can be questioned in a Court of Law if it is contrary to subs. 8 of s. 18 of the Act of 1888, that is, if it makes the specification claim an invention larger than, or different from, the invention originally claimed. (Van Gelders Patent, 6 R. P. C. 22; Gaitlard and GMi*' P.itent, 6R. P. C. 225.) ir//<> i* entitled to oppose. When the ground of opposi- tion is that the invention as described in the amended specification is the same as that comprised in a prior patent, it is not competent for any member of the public to oppose ; the opponent must show that be has an interest in the prior patent. (BcWs Patent, 2 Griff. P. C. 11.) AMENDMENTS OF SPECIFICATIONS 181 Grounds of Opposition. These are usually some of the following: that the proposed amendment will introduce disconformity between the provisional and the complete specification ; that the scope of the invention will be enlarged ; that the amended specification will claim an in- vention substantially different from that claimed by the original specification ; that the invention will be made the same as that described in a prior specification. It is not a good ground of opposition that the invention will be restricted within narrower limits by the amendment, provided that the invention so restricted is covered by the original specification. Cochrane's Patent (1 Griff. P. C. 304) ; Ashworth's Patent (2 Griff. P. C. 6) ; Nordenfelt's Patent (2 Griff. P. C. 19). Conditions imposed on allowing Amendments under the old law. It had become a common but not invariable prac- tice under the old law for the law officers, on applications for leave to amend specifications under the Act of 5 & 6 Wm. IV., to impose as a condition that no action for an infringement before the date of the disclaimer should be brought either against certain persons or against any of the public. See Holmes v. London and North-Western Railway Co. (Macr. P. C. 31) and Smith's Patent (Macr. P. C. 232). In Re Tranter's Patent of 1865, which was a patent for fire-arms and cartridges, an application was made in August 1873, by the assignees of the patent, for leave to disclaim certain portions of the matters claimed in the specification, and the application was opposed by manu- facturers of fire-arms and cartridges chiefly on the ground that they had embarked large capital in the manufacture of cartridges, and that they ought to be protected in their manufacture against any proceedings on the part of pro- prietors of a patent which had been allowed to remain in its imperfect state for a long time, inasmuch as the effect of the disclaimer would be to enable the applicants to take such proceedings. Coleridge, A. G., granted the leave sought for on the condition that the applicants 'should undertake that no legal proceedings be taken against the 182 AMENDMENTS OF SPECIFICATIONS opponents in respect of the manufacture, nae, or sale of ulges, or for any alleged infringement of the patent in question \\lit n unit nded by disclaimer.' And tin- ion was followed 1>\ ' ''.. in the case of /.' x I'dt.nt, on the application of Mr. Batley, the assignee, for similar leave. On an application for leave to disclaim parts of the specification under Craltrcc't r.it.nt, No. 2775 of 1878, .lnm?* t A. (?., Feb. 12, 1881, allowed tin- application upon terms that no action should !>< brought against any person in respect of any machine which had prior to the hearing been made or sold by any of the opponents. He directed that lists of such machines should be supplied and verified if required by statutory declaration. The principle of these cases received considerable ex- tension in lie Mi'tlliH'h'x r9). That was an application for leave to enter a disclaimer of part of a specification under a patent for l>r] taring a red or purple dye. The patent had been declared invalid on the ground that, of the two alternative processes described in the specification, confessedly only one would answer. (Sec .S'w/>x.. v. Iflli/ th,- patent, of any processes for manufacturing red and purple dyes in use Inj tJi>-m at th>- pn^i-nt time. 1 The applicants refused to accept this condition, and the Solicitor-General consequently disallowed the disclaimer. The law officer, however, did not always insist upon the patentee giving an undertaking of this nature. It was sometimes thought right that he should be at liberty to seek compensation for the past infringement of the patent. (Re Lucas s Patent, Macr. P. C. 234.) AMENDMENTS OF SPECIFICATIONS 183 Conditions under the Act of 1883. An order having been obtained during the progress of an action for an in- fringement to amend a specification under a patent issued under the Act of 1852, subject only to the payment of the costs by the plaintiff, application was made to the Comp- troller, who gave leave to amend as proposed without imposing any conditions. On appeal to the law officer, Herschett, S. (?., he held that the leave should be made subject to the condition that no action should be brought or proceeding taken in respect of any infringement prior to January 1, 1884, but without prejudice to any question in the pending action. (Re Hearson's Patent, 1 E. P. C. 214.) See also Westinghouse's Patent (1 Griff. P. C. 315) ; Ashivorth's Patent (2 Griff. P. C. 6) ; Haddan's Patent (2 Griff. P. C. 12). The ground for fixing that date is that infringements subsequent to January 1, 1884, would be brought within the scope of the 20th sect, of the Act of 1883. Hence, such a condition is not usually imposed on allowing amendments in specifications under patents issued since the latter Act came into operation. (Allen's Patent, 2 Griff. P. C. 3.) There may be special circumstances to induce the law officer to impose the condition that no action should be brought for anything done at any time before the amendment. (Ashworth's Patent, 2 Griff. P. C. 9.) This was a patent under the Act of 1852. The law officer sometimes thinks it right to require the insertion of an additional disclaimer. (Hampton & Facer's Patent, 2 Griff. P. C. 13.) 1 Explanations.'' Sir E. Webster, A. G., said in Beck and Justice's Patent (2 Griff. P. C. 10), 'My idea of the function of an explanation (sect. 18, subs. 1, of the Act of 1883) is to explain more clearly what is necessary to understand the meaning of the patentee at the time he patented the invention. I do not think it is intended that he should put in subsequently acquired knowledge. I do not mean to lay down a hard-and-fast rule, but, speaking broadly, it was intended to permit a man to amend, correct, and explain the enunciation of his invention as he intended 184 AMENDMENTS OF SPECIFICATIONS originally to give it.' And sec KordfiiMC* 1' < .riff. P. C. 18). The amendment of a specification by inserting the correct description of a drawing which had been misdescribed was allowed in the cas of .V"f-M//' I'.tt.nt c2 (iriff. 1 17). Application to a Judge fr lil>-rti}>]>li/ to amend . When a patentee has brought an action for the infringement of his patent, or when proceedings for its revocation an p nding, he is prevented by the 10th subs. of sect. 18 of the Act of 1888 from applying directly in th. u>ual way to the Comptroller for leave to amend the speci- fication. But by the 19th sect, of that Act it is enacted that in an action for infringement of a patent, and in a proceeding for revocation of a patent, the Court or a judge may at any time order that the patentee shall, subject to such terms as to costs and otherwise as the Court or a judge may impose, be at liberty to apply at the Patent Office for leave to amend his specification by way of disclaimer, and may direct that in the meantime the trial or hearing of the action shall be postponed. Under rule 58 of the Patents Rules, 1890, an office copy of the judge's order must be left at the Patent Office along with the request for leave to amend. win* is I.. A I'.. 755). The patentee descriled in hi> specification, und \\\ by drawings, some machinery for preparing cotton, and alter saying that the apparatus so described represented one practicable mode of carrying out the invention, he pro- d to state that he did not intend to confine himself to this particular method, but claimed as his invention the application of the law or principle of centrifugal force for a certain purpose. He afterwards disclaimed his claim to the application of the law or principle, and limited his claim to the application of centrifugal force acting in a certain manner as described in the specification. This was held to be a limitation of his claim to the particular appa- ratus described, whereby the principle was applied in a certain \\ay, and afforded no ground for contending that the disclaimer described a different invention from that described in the specification. This view was also taken on appeal by the Court of Exchequer Chamber (8 E. . it was held that owners of patents existing before January 1, 1884, could apply for prolongations at any time before the expiration of such patents. Any person may enter a caveat, addressed to the Registrar of tin- Council at the Council Office, against the extension. If her Majesty shall be pleased to refer any such petition t<> the Judicial Committee of the Privy Council, the Committee shall consider the same, and the petitioner and any person who has entered a caveat shall be entitled to be heard on the petition. The Judicial Committee are to have regard to the nature and merits of the invention in relation to the public, to the profits made by the patentee as such, and to all the circumstances of the case. If they report that the patentee has been inadequately remunerated, her Majesty in Council may extend the term of the patent for seven, or in exceptional cases fourteen, years ; or may 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. An assignee may apply for an extension, but he does not stand altogether in the same favourable position as the patentee. (Claridge's Patent, 1 Moo. P. C. 894.) It is chiefly with the view of rewarding a meritorious inventor that the extension of a patent is granted. If, however, the assignee be a person who has assisted the inventor with funds to enable him to perfect the invention and bring it into use, this circumstance is a favourable feature in a petitioning assignee's case. (Xorton's 1 'nt>nt, 1 Moore, P. C. C. N. s. 839, in which case the petitioners, who were a public company, were refused a prolongation which they applied for after the death of the inventor.) See also the EXTENSION OF LETTERS PATENT 193 cases of Cardwell's Patent (10 Moo. P. C. C. 488) ; Pitman's Patent (8 Moo. P. C. C. N. s. 297) ; Hutchison's Patent (14 Moo. P. C. C. 364) ; Normand's Patent (L. E. 3 P. C. C. 193) ; Recce's Patent (51, Engineer, 207) ; Sillar's Patent (Goodeve's cases, 581). But public companies have in some xBases been successful petitioners, Hougliton's Patent (7 Moo. P. C. N. s. 309) ; Napier's Patent (13 Moo. P. C. 543) ; Church's Patents (3 E, P. C. 95). THE PETITION AND THE PROCEDURE. 1 The proceedings commence by the insertion of adver- tisements in the public prints, giving notice of the patentee's intention to apply for a prolongation of his patent (see the Privy Council Eules), and a petition setting forth the facts must then be presented to her Majesty in Council, at any time before the expiration of the patent, though it will be prudent not to delay presenting the petition much after six months before the expiration. All facts material to the petitioner's title, and to the .history of the patent, must be stated in the petition (Johnsons Patent, L. E. 4 P. C. C. 83), which ought to be a clear and candid statement of the circumstances under which the petitioner presents himself before the tribunal. In one case, when material facts were omitted, the hearing was postponed, and the petition directed to be amended. {Hutchison's Patent, 14 Moore, P. C. C. 364.) In other cases where important facts were not set forth, the applica- tions were refused. (Pitman's Patent, 8 Moore, P. C. C. N. s. 293 ; Horsey' s Patent, 1 E. P. C. 225.) Where the patentee had assigned his patent before applying for an extension, and had omitted to state this fact in his petition, it was dismissed, leaving the inventor or his assignee, if he thought proper, to apply again. (Mitchell's Patent, February 1882.) A mortgagee ought to be made a party to the petition. {Church's Patents, 3 E. P. C. 95.) And the legal personal re- 1 Forms of Petition for Extension of a Patent, Objections to Extension and a Petitioner's Accounts will be found in Mr. W. N. Lawson's Law and Practice under thz Patents Acts, 2nd ed. pp. 507-524. O 194 EXTENSION OF LETTERS PATBKT presentath- <>f the deceased patentee must, under certain < in umstances, join in tin petition, (ll'illacy'* R. 5 P. C. 690.) If foreign patent- have been obtained, the (act should be mentioned. (Pitman'* Pnt.-nt, L. l;. 1 I'. C. 86; Ail-. nt, 6 App. Cas. 176; .V--/..' Pat.nt, 1 I;. I 1 . C. 177), Important facts having been inadvertently omitted from the petition, leave was applied for and granted to file sup- plementary particulars before the hearing. (In lie R> t, 51 Eng. 207.) Any person may enter a caveat addressed to the Regis- trar at the Council Office against the extension. Having done so, he is entitled to have notice from tin- petitioner of any special application and of the hearing, and may be heard in opposition, when the case is entered upon, before the Judicial Committee. The caveat must be entered in the name of the actual opponent, not in that of the patent agent. (Lowe** Patent, 8 Moore, P. C. C. 1.) As to the right of an alien living abroad to be heard in opposition to an extension, see Schlumbrrger's Patmt (!) Moore, P. C. C'. 1 . By the sixth of the Privy Council Rules persons who have entered caveats must, within a fortnight after st -\ on them of copies of the petition, lodge at the Council Office notice of the grounds of their objection. In Ball'* nt (4 App. Ca. 171), it was held to be unnecessary to state the particulars if the grounds are given. The Crown may adduce evidence against a patent irrespective of the objections, Duncan Xt.-trart'x Patent (3R. P. C. 9); Clmrrl,'* Patents (8 R. P. C. 95). By the ninth rule the petitioner must lodge at the Privy Council Office, at least one week before the day fixed for the hearing, six printed copies of his specification, and also four copies of his accounts. If the accounts are not filed in due time the Committee may refuse to go into th< question. (Johnson's and Atkinson'* Patents, L. R. 5 J 87 ; Chatir,,tl'x Pati-nt, L. R. 5 P. C. 88, note.) Under the eighth section of the 7 and 8 Viet. c. 69, the Judicial Committee may appoint one of the clerks of the EXTENSION OF LETTEKS PATENT 195 Privy Council to take any formal proofs required to be taken in dealing with the matter before them, and may proceed on the clerk's report as if the proofs had been taken by the Committee itself ; and this section was not repealed by the Patents Act of 1883. By the sixth sub- section of the twenty-fifth section of that Act it was enacted that her Majesty in Council might make, from time to time, rules of procedure and practice for regulating pro- ceedings on such petitions, and subject thereto such proceedings should be regulated according to the existing procedure and practice in patent matters of the Judicial Committee. The rules now in force will be found reprinted in the Appendix to this volume. THE HEARING. The Judicial Committee of the Privy Council is empowered by the twenty-eighth section (sub-section 2) of the new Act to call in the aid of an assessor specially qualified in any proceeding before them relating to patents. Not more than two barristers will be heard on each side : that is to say, two in support of the applicant's case and two in opposition. Where, however, more parties than one oppose, and they have separate and independent grounds of opposition, each will be allowed two counsel. The Attorney- General usually appears to watch the case on behalf of the Crown. The petitioner may appear in person. The petitioner must be prepared at the hearing with evidence to show that there is an invention, and that the in- vention possesses utility, the word here meaning substantial merit and usefulness to the public, not merely the scintilla, utilitatis which is sufficient to justify the grant of a patent in the first instance. He must further show that all reasonable means had been taken to make the invention productive ; and if his case is that he has never been re- imbursed his expenses, he must give reasonable evidence of the amount of his loss. If, however, there is a balance of profit, but to an extent incommensurate with his fair ex- pectations, he will be required to show what the real profit o 2 196 >F LCTTEBS TAT has boon. \Vln-rr the statement of the accounts in un- satisfactory the Committee will -itlu r direct that question to be taken l>efore con>iU i in-^ the morit- of tin invention, or adjudicate without n-fm nrr to them, if '/////.' /'.; L. R. 8 P. ( . l-Jl : v f .7 Moore, P. C. ( MV./V'x Mmf, L. K. -I I'. C. s-.i : SL C. fl Moore, P. C. C. N. 8. 300.) J5ut where the accounts are satisfactory on their face the usual course is to go into the question of merits lir*t. (//..M///I/..'X //,/. L. R. 8 P. C. 402.) (See the section on the Accounts, pott.) The merit and substantial utility of the inventionou^ht to be shown by the testimony of persons of experience and weight. ..W.-/'..//.W'x Patent, L. It. 2 P. C.I; lirtu' : B Patent, 15 Moore, P. C. 885; J llan x Patent, L. R. 1 J 607 ; 11,-rbrrt'* Patent, L. R. 1 P. C. 889 ; Patterson's Pat, nf, 6 Moore, P. C. 469 ; IfiVW* Patent, 8 Mocre, P. C. N. s. 300.) For instance, the patentee may show that he was incapacitated for business for a long period by an accident. (Ropers Patent, 4 R. P. C. 201.) The presumption of non-utility in the invention may EXTENSION OF LETTERS PATENT 197 also be rebutted by evidence showing its merit and utility. (Hughes' Patent, L. E. 4 App. Gas. 174.) The petitioner should be prepared with evidence to show that there is a reasonable probability of an increased use or sale in the immediate future. It is open to those who oppose the extension to adduce evidence to show that the invention is wanting in novelty or utility, or that it is imperfect ; and they may likewise point out defects in the specification. It is sufficient to state the grounds of objection to an extension without stating the particulars. (Ball's Patent, 4 App. Cas. 171.) But in Saxby's Patent (L. E. 3 P. C. 294) the Council re- fused to go into the questions of novelty or utility where the merit of the invention had been proved and the patentee had been inadequately rewarded. Lord Cairns said, 'In point of fact it is not the practice of this tribunal to decide upon the novelty or utility of the invention, although it would abstain from prolonging a patent which was mani- festly bad.' See also Cockings' Patent (2 E. P. C. 151) ; Church's Patents (3 E. P. C. 95). However, in Stewart's Patent (3 E. P. C. 7), evidence that the invention had been anticipated by previous patents and by user of machines was admitted, and the petition was dismissed. The fact of improvements having been made by other persons in the patentee's invention after the date of his patent does not afford ground of opposition to an applica- tion for an extension if the invention has a merit of its own, and if the patentee has not reaped a benefit in pro- portion to that merit. (Galloway's Patent, I W. P. C. 727 ; Napier's Patent, 6 App. Cas. 174.) Nor is it a valid ground of objection that the manner of working the invention had been varied since the filing of the specification. (Heath's Patent, 2 W. P. C. 257.) If a patentee has allowed his foreign patents, obtained after the date of the British patent, to lapse, that is not a ground for refusing the prayer of the petition. (Adair's Patent, 6 App. Cas. 176 ; and see Johnson's Patent, L. E. 4 P. C. 79 ; Hills' Patent, 1 Moore, P. C. N. s. 258.) EXTENSION OF LETTEBS PATENT Bat if th invention an originally specified proved a failure (/M/'x Piitmt, 2 W. P. C. 160), or when it was only made completely successful by adopting improv* in. ntH in- troduced by other persons from abroad (Woodcraft* !' 1 W. P. C. 740), the patentee was thought disentitled to an extension. On the other hand, if the introduction of the invention has been strongly opposed by persons engaged in the trade 'l P,it,-nt, 1 W. P. C. 563 ; liobert*' Pat.-nt, 1 W. P. G. 573), or if the patentee has never been able to raise necessary funds (>/' . > . B Moore, P. C. C. N. s. 72 ; Ktnrarf* nt, 3 B. P. C. 9.) If a competent tribunal should, after the grant of a new patent, decide that the original patent was invalid, the new patent will share its fate, and will be invalid likewise. (Kay's Patent, 1 W. P. C. 571.) On the hearing of the application to extend the term of IIni- baWs Patent (3 Eq. Bep. 230 ; S. ( '. 2 W. P. C. 208), it was said that the grant of an extended term is to be considered as a new grant by new letters patent, subject to the same conditions, open to the same objections, and in ordinary cases entitled to the same advantages as the original grant. So that, in point of fact, the extension decides nothing, one EXTENSION OF LETTERS PATENT 199 way or other, as to the validity of the patent. And, there- fore, where it is only a matter of doubt as to the validity of the patent as, for example, where the evidence is conflict- ing the extension will be granted, if there appear good grounds aliiindc for that course. When it appeared that a patentee had agreed by deed with a public company to grant an exclusive licence, and also covenanted with them to obtain at the expiration of the term a prolongation of the patent for the same purpose, the application for a prolongation was refused by the Privy Council, on the ground that the agreement was con- trary to public policy and repugnant to the spirit of the statute 5 and 6 William IV. c. 83. (Cardwell's Patent, 10 Moore, P. C. C. 488.) THE ACCOUNTS. ' It is the duty of a patentee to take upon himself the onus of satisfying the Committee in a manner which admits of no controversy of what has been the amount of remuner- ation which in every point of view the invention has brought to him, in order that their lordships may be able to come to a conclusion whether that remuneration may fairly be con- sidered a sufficient reward for his invention or not. It is not for the Committee to send back the accounts for further particulars, nor to dissect the accounts for the pur- pose of surmising what may be their real outcome if they were differently cast ; it is for the applicant to bring his accounts before the Committee in a shape which will leave no doubt as to what the remuneration has been that he has received.' (Per Lord Cairns in lie Saxby's Patent, L. E. 3 P. C. 292 ; S. C. 7 Moore, P. C. C. x. s. 85. See also Re Clark's Patent, L. E. 3 P. C. C. 421 ; 8. C. 7 Moore, P. C. C. N. s. 255 ; Wi-cld's Patent, L. E. 4 P. C. C. 89.) In the case of Yates and Kcllett's Patent (4 E. P. C. 150), the petitioners applied at the hearing for an adjournment to give them time to amend the accounts, but the appli- cation was refused and the petition was dismissed. The accounts must, therefore, be full, clear, unreserved, and :OS OF LETTERS PATEKT rly proved, i /////*' I' \H rceive tht- propriety of keeping separate books. It i- d. -iral-lc that a patentee should from the first keep his accounts under the patent distinct from those of any <>th< r business in which he maybe engaged, so that in tin v. nt of his applying for an extension, he may be able to give satis- factory evidence of everything paid and received on account of the patent. (7M/x* I'ut.nt, 1 Moore, P. C. N. s. 49; Dunn,,, eiiic rule as to the proportion, since they vary in ditTm-nt I'usinwees, but in Hill* 1'nt. nt (1 Moore, P. C. 251) ami in luitimn and HV/x '1 I:. 1. C. 260) two- thirds of the net profits were deemed too large a proportion. Law expenses incurred by the patentee in maintaining his rights are in general allowed in deduction of profits, lut this will not be done \vh.u the patentee has compromised suits and given up costs to which he had an appan nt title. (7//7/.S-' I'atmt. 1 Moore, 1 . s. 258.) In the matter < t H.iil.-ii'x l' ( it>->it (1 11. P. C. 1), where the administrator of a patentee claimed at the bar to be allowed some deduc- tions from the profits not mentioned in the petition or accounts, it was held that no such deduction could be made, and evidence on the point was inadmissible. A petition was dismissed where the accounts were in- sufficient as not distinguishing the expenditure on that part of the invention which was proved useful. (W'illacii'x I'atrnt, 5 R. P. C. 690.) GROUNDS OF DECISION UPON THK MERITS. The jurisdiction conferred upon the Judicial Committee ly th Legislature, being an extraordinary one, is to be exercised, as remarked in the Council Chamber, only on the most special grounds alleged and proved in reference to each case, and at the discretion of the Committee ; for the extension of a patent is a matter of favour, net of right. In considering their decision the Committee is, according to the twenty-fifth section of the Act of 1888, to ' have regard to the nature and merits of the invention in relation to the public, to the profits made by the patentee as such, and to all the circumstances of the case.' In coming to a decision they seek to meet the justice of the case with respect to the meritoriousness and public useful- ness of the invention, and the adequacy or inadequacy of the patentee's remuneration, regard being had to the patentee's opportunities, the adverse circumstances with which he had to contend, and his general management EXTENSION OF LETTERS PATENT 203 of the matter. If he has met with loss, as the total result of his transactions under the patent, and there has been no neglect or gross mismanagement on his part, there is good primd-facie ground for an extension ; but, if a certain amount of profit has been derived from working the patent, a decision is less easily formed. The question to be con- sidered, it has been said, is not simply what the patentee has received, but what the patent has gained or what it ought to have gained with proper management. Assuming that the patentee's conduct in regard to this part of the case is not open to remark, it is obvious that the merit of the invention is now an element to be con- sidered, since a few hundred pounds may very well reward an invention of small utility, whilst 10,OOOZ. may be an inadequate payment for a discovery of great public benefit, the working of which has been attended with heavy losses and great anxieties. The amount of inventive power will be taken into consideration, as well as the amount of time and trouble expended by the inventor in making experiments, either previously to his discovery, or in testing it, or in carrying it out. Inventors have different degrees of meritoriousness. It is not, however, to be assumed, that because the step in improvement taken by an inventor is small, his merit is likewise small, and his invention unimportant. A very small addition or alteration may have altogether escaped notice until seized and turned to account by an acute mind, and its adoption may lead to most important consequences in the manufacture with which it is connected. The reward of such an invention ought not to be made proportionate to its apparent insigni- ficance. Common justice dictates that the benefit an inventor has conferred on the public ought to be regarded ; and the advisers of the Crown, acting under this idea, will .give him the opportunity of reaping a recompense in some degree commensurate with the value of the result. In delivering judgment on an application to the Privy Council for an extension of Soames' Patent (1 W. P. C. 729), Lord Brougham used these words : ' The whole history of science, 204 EXTENSION OF LETTERS PATEKT from the greatest discoveries down to the most unimpor- tant from the tlix'ov. ry of the system of grav; itself, and the fr;irtin;il cal.-ulus itself, down to tin- most trilling step that has ever heen made is one continued illustration of the slow progress by which th. human mind makes its advance in discovery. It is hardly perceptible, so little has been made by any one step in advance of tin- f<.nn< r state of things, because generally you tinl that just ln-f..r. there was something very marly the same discovered or invented.' Hi- lordship proceeded to say, that in the case of a new principle or a novel invention for instance, a new process the smallness of the step did not furni>h any argument against its importance, lint when a new application only is under consideration, such an application as mL-h; easily suggest itself to any person a new application of a well- known simple process, which hod been employed with respect to other substances then, when a patentee comes to apply for an extension of his patent, the smallness of the step involved in the patented invention will be taken into consideration in determining the length of the <. sion. In this case the invention consisted in an application of mechanical pressure to separate the solid and fluid con- stituents of cocoa-nut oil. The invention having l>een of moderate benefit to the public, the moderate extension of three years was granted to the patentee. See also the remarks of I*ord Kitujsdown on /////*' l'nti-nt (1 Moore, P. C. C. N. s. 258), and of Lord ('dims in ,SVi.//-//'x I'ntutt (L. R. 8 P. C. 294), as well as the case of Itcrotnt'* /'.// m . 1 Moo. P. C. 418). To justify an extension for a longer time than seven years the invention must be clearly shown to possess a very- exceptional degree of merit and pubh'c usefulness. In the cases of Mn<-rii'ft"x ]'p. Cas. 174; Church'* Patent*, 8 R. P. C. 102.) In the case of two cognate patents which had dif- ferent terms to run, it was ordered that the extensions granted should be such that they should both expire on the same day. (Johnson's and Atkinson's Patents, L. II. 5 P. C. 87.) Where the invention is one of great merit, and the patentee has assigned his interest in it to another person for a sum which, looking at the profits likely to be derived from working the invention, appears an inadequate con- sideration, the Privy Council will see that the patentee receives further reward. With this view, a condition IB sometimes introduced into the new patent, making it void in case a fixed annual sum, or a certain share in the profits, EXTENSION OF LETTERS PATENT 207 be not paid to the patentee by the assignee. (Whitehouse's Patent, 1 W. P. C. 473 ; Hardy's Patent, 6 Moore, P. C. C. 441 ; Morton's Patent, 51 Eng. 274.) So also where a patentee had mortgaged his patent, and he and his mortgagees asked for a prolongation, it was granted to the patentee alone. (Bovill's Patents, 1 Moore, P. C. C. N. s. 348.) But in Church's Patents (3 B. P. C. 95) the patentee undertook to give the mortgagee the same security over the new patents that he had over the old. Again, where the petition had been presented by the patentee and the assignee of a moiety of the patent, and the patentee had died before the hearing, a prolongation was granted on the condition that the assignee should hold one moiety of the new term on trust for the personal repre- sentatives of the deceased patentee. (Herbert's Patent, L. B. 1 P. C. 399.) Other special conditions are sometimes in- serted in the new letters patent : for example, that the patented article should be sold to the public at a certain price (Hardy's Patent, 6 Moore, P. C. C. 441) ; that licences should be granted on certain terms (Mallet's Patent, L. B. 1 P. C. 308 ; S. C. 4 Moore, P. C. C. N. s. 175) ; or that the Admiralty should have the privilege of using the inven- tion (in this case an improved propeller for steam and other vessels) without licences from the patentee. (Pettit Smith's Patent, 1 Moore, P. C. C. 133.) But in the cases of Lan- caster's Patent (2 Moore, P. C. C. N. s. 189) and Carpenter's Patent (ibid. 191) the Judicial Committee refused to insert this latter condition. For instances of other special con- ditions introduced into the new patent, see Bodmer's Patent (8 Moore, P. C. C. 282) ; Normandy's Patent (9 Moore, P. C. C. 452). When a prolongation of a patent term has once been granted, the jurisdiction of the Judicial Committee is exhausted, and they have no power to entertain an appli- cation for a further extension. (Gouchcr's Patent, 2 Moore, P. C. C. N. s. 532.) When an order has been made by her Majesty in Council for the extension of a patent, or for the grant of a KNSION OF LKTTERS PATENT new patent, an office copy of sucl* be forthwith h ft at tin Patent OtVx that it may IKS entered in the register. (See RuK 74 oi the Patents Roles 1890.) COSTS. The seventh sub-section of tin fth section of ih' 1'atrnts Act of 1883 directs that the costs of all parties of and incident to proceedings for the extension of a patent shall be in the discretion of the Judicial Committee, and the orders of the Committee respecting costs shall be- en- forceable as if they were orders of a division of tin i Court of Justice. \\li.-re the ground of opposition to a patentee's applica- tion is frivolous, costs have been awarded to him ; Init where the case is difficult and doubtful and there is fair ground for opposition costs will not be given to a success- ful petitioner. (Church's Pt,-nt*, \\ 11. P. C. 95.) On the other hand, if a successful opposer has conducted his case in a proper manner, he may obtain his costs. (JlonibaW* t, 9 Moore, P. C. C. 894 ; J,>hn*<,n' ]',it. ///, L. R. 4 P. C. 75; Hills' Patent, 1 Moore, P. C. (. x. s. 271; inv/./'x Put.-nt, L. R. 4 P. C. 89 : 9 Moore, P. C. C. K. s. 300 ; \,-u-tnn'x Patent, 51 Eng. 208.) Costs of opposi- tion have been given against a petitioner who abandoned iiis application. (Mackintnxh's Pat.-nt, 1 W. P. C. 739; II. ruin's r Moore, P. C. C. 39; M.nynn-limicn* Patent*, 3 It. P. C. 212.) It is not unusual for the Privy Council to award opposers a lump sum for costs, to be (when more than one) divided between them. In the case of Sen-ton g i ~> 1 Eng. 208), the opposers were so awarded 1,0007. In the case of Johnson' t Patent (L. R. 4 P. C. C. 83), the opposers were ordered to receive 500/., and in Ball's Patent 1 1 App. Cas. 171) an order was made for payment of 400/. to the opposers in lieu of costs. By the Privy Council Rules in patent cases, the taxing EXTENSION OF LETTERS PATENT 209 officer is empowered to allow or disallow at his discretion all payments made to persons of science or skill examined as witnesses to matters of opinion chiefly. SELECTED DECISIONS OF THE PRIVY COUNCIL. The following cases have been selected to illustrate what has been said with reference to the considerations guiding the Judicial Committee in arriving at a conclusion in regard to the term of extension under different circumstances. On an application for an extension of a patent granted to James Kay, for improved machinery for preparing and spinning flax, it was shown that the patentee had expended 500/. in experiments, 500Z. in obtaining his patent, 2,200L in law expenses, and that he had made about 6,800Z. profit. The invention was one of great utility, was used by nearly all the flax-spinners in the kingdom; but looking at the sum already cleared by the patentee, it was thought that a prolongation for three years would satisfy the justice of the case. (Kay's Patent, I W. P. C. 568.) Richard Roberts obtained a patent for improvements in spinning-jennies, the value of which was so great that, during the last three or four years of the original term, 5,000/. a year had been made by the patentee. In conse- quence, however, of piracies, of combinations amongst work- people, but chiefly of a fire, supposed to have been the act of an incendiary, which destroyed the patentee's premises, and entailed a loss of 10,OOOL beyond the insurance, the profits did not reach the amount of loss by several thousand pounds. The Committee of the Privy Council, guided by the ingenuity of the invention, and the peculiar character of the resistance to its introduction, were of opinion that seven years' prolongation was merited. (Roberts' Patent, 1 W. P. C. 573.) L. W. Wright applied for an extension of his patent for improvements in bleaching apparatus, and gave evidence before the Committee of his pecuniary embarrassments, and the disputes which had arisen out of his partnership with various persons ; which embarrassments and disputes p 210 EXi LETTERS PATENT had prevented th- introduction of the invention to the trade. He showed that the in\. ntion had been successfully practised by several bleachers, but that he had hitherto derived nn benefit wl :'r>iu it. The Committee re- ported that it would be proper to prolong the term for seven years. (JIV/'-////'* J'.it.nt, 1 \\ . r. < A patent for a new method <>f pr -pai-inx iron plates for tinning was granted in 1839 to Thomas Morgan, who, being unable to \\"rk the invention, had sold his patent right for 200/. to persons who applied, in conjunction with the patentee, for an extension of the term. The assignees had made a profit of about 1,000/. a year for three years, and the patentee, in addition to the sum received from them, was making about 2/. a week out of the patent. The invention appearing to possess only a moderate degree of merit, the Committee thought that the benefit received by the patentee and his assignees was a sufficient reward, and they refused the application. (Mriinn'x /'(>()/., the cost of experiment, 2, TOO/, interest at five per cent, on the average amount of capital employed, and 5,400/. for an allowance of 400/. a year to the patentee for his personal super int< mlence of the business. These sums reduced the profits to ' net. An extension of five years was granted, the invention- being ingenious and useful. (2 W. P. C. 7). An application for the extension of a patent for im- provements in the manufacture of steel was opposed on the ground that, whereas the patented process consisted in the addition of carburet of manganese to the crucible, it had been subsequently discovered that a better process of making steel was to place carbonaceous matter and man- ganese separately in the crucible, and this process obtained generally in practice. The Privy Council thought that the merit of the original invention was not thereby materially detracted from, and they granted an extension for seven years. In granting so long a time, the litigation going on in the courts of law was taken into account, as it was thought probable that some time would elapse before the litigation would terminate and the patentee's representa- tives have the benefit of the extension granted. (Heath'r Patent, 2 W. P. C. 257). Whitehouse, an ingenious mechanic, procured a patent for improvements in the manufacture of iron tubes, which he assigned to his master, Russell, who laid out 14.000/. in works to carry out the manufacture. The tubes were in EXTENSION OF LETTERS PATENT 213 great demand, being applicable to a variety of new purposes ; but, as the manufacture was simple, many expedients were adopted for evading the patent, and Mr. Eussell was in- volved in much litigation, in consequence of which, com- bined with the loss incurred by surreptitious manufacture and sale, his profits were very considerably reduced. There was evidence to show the value and importance of the invention, the losses he had suffered from infringements, and the great reduction that would take place in the value of the premises and machinery (much of which was fitted only for the particular manufacture) if the patent were thrown open. He further showed that his life had been endangered by the anxiety of certain law proceedings. One witness stated that, if the manufacture were thrown open, it would hardly be worth following : the process was so beautifully simple, that it would almost be within the reach of any person of capital. The net profits amounted to about 13,OOOZ. ; but this was shown to be not much greater than the ordinary profits on stock without the pro- tection of a patent. The Committee thought the patent ought to be extended for six years, the original patentee receiving 500L a year out of the profits for that time. {tVhitehouse's Patent, I W. P. C. 473.) A patent for forging and shaping small articles in metal was obtained by Mr. Ryder in 1841 : when he applied for an extension, he pleaded that though the profits had been 7,000., they had only been made during the last four years. This, however, was held to be no ground for the application in the face of the large sum realised, and the petition was dismissed. (Ryder's Patent, ' Pract. Mech. Journ.' vol. vii. p. 238.) In Ruthvcn's Patent (' Pract. Mech. Journ.' 2nd Series, vol. viii. p. 159), which was a patent for improvements in the propulsion of vessels, the invention was proved to be of very great merit, and to have failed in being brought into general use through circumstances altogether inde- pendent of the will and without the fault of the inventor, who had not merely derived no profit, but had suffered -Ml EXTENSION OF LETTERS PAT i considerable loss from his patent, h was shown, moreover, that tin- Admiralty had then lately in.stitut. .1 with a view to the adoption of the invention, nnn ami Xrth- Wcstern llailicay Company, 2 E. & B. 69). In the event of a patentee's bankruptcy, the patent becomes vested in the trustee, who may sue for infringements committed before the bankruptcy. \Ifcsse v. Strrrnson, 8 Bos. & P. 577; Moram v. Efat, 9 Dowl. & R. 215 ; #. C. 6 B. < n lj.-*>nsee, his executors, administrators, or assigns. (Bower v. Hodgfi, -i-i i.. .1. ( . r. r ; is no decision as to the power of one grantee to grant a valid liivm-e without the consent of his co-grantees, but it would probably be held that he cannot. is held by L<>nl liomUIn, M. /,'., in M r.r.i\ . 17(, that when one of three joint patentees had grant, d liivnci s, he \\a- 'hound to account to his co-patentees for the royalties i As licensees sometimes exercisr their ri-ht of making or dealing in articles jnxdi-m frequently stipulated that articles made by a licensee shall be marked in such a way as to show that they \v, M made under the patent. In the case of on exclusive licence it is desirable that the licensee should covenant to pay a certain minimum sum at stated periods in the shape of royalty ; and in some cases to insert covenants on the part of the patentee to proceed against persons infringing the patent (see II- son v. M' mt fin t L. R. 8 C. P. 202), or to permit the licensee to proceed in the patentee's name. When a sum of money has been paid for a licence, and the consideration fails, the money may be recovered. Thus in Kmndfs v. Bovill (22 L. T. x. s. 70), it appeared that a patentee had granted to the plaintiff a licence to use his patent, and had agreed to apply for a prolongation of the patent of which the plaintiff was to have the benefit ; and he further agreed to grant a licence under a new patent, for which he had applied. The patentee, however, died shortly afterwards without having done anything. It was held that the plaintiff could recover the money paid from the patentee's executors. In Cluinti-r v. Isw (4 M. it W. 295, affirmed on appeal, 5 M. A: W. 698), there was a licence not under seal to use LICENCES 223 six patents, one of which was found to be invalid ; it was held that there was a failure of consideration, as there was no proof that the licensee had used the five good patents and there was no apportionment of the annual payments. On the other hand, it has been decided that annual sums paid in consideration of a licence cannot be recovered I)y action when the patent turns out to be void (Taylor v. Hare, 1 Bos. and Pul. N. E. 260) ; except where fraud is proved. (Lovcll v. Hicks, 2 Y. and C. 472). To meet this case it will be prudent to have a covenant in the licence, under which the parties may readjust their accounts in the event of the patent proving void or voidable. A licensee during the continuance of the licence cannot set up as a defence to an action for the royalty that the invention was not new or not useful, or that the patentee was not the first inventor, or that the specification is insuf- ficient. (Noton v. Brooks, 7 H. & N. 499 ; Trotman v. Wood, 16 C. B. N. s. 479 ; Smith v. Scott, 5 Jur. N. s. 1356 ; Cha- vasse v. Stevens, W. N. 1874, p. 193 ; Adie v. Clark, L. E. 2 App. Gas. 423 ; Liardet v. Electric Lighting Co., W. N. 1883, p. 96.) But when in such a case the claim in the specification is susceptible of two constructions, one of which would make the specification bad, and the other and more natural one would make it good, it was held that the licensee may insist that the latter is the true construction. (Trotman v. Wood, 16 C. B. N. s. 479). But now see Adic -v. Clark cited above. Even where no formal licence has been executed, a person \vho has paid money in the nature of a royalty will not be allowed to dispute the validity of the patent. (Crossley v. Dixon, 10 H. L. C. 293.) Further- more, a licensee will not be permitted to use the invention -without payment of the royalties he has covenanted to pay, even after the patent has been found invalid in pro- ceedings between other parties. (The Grover & Baker Sewing Machine Company v. Millard, 8 Jur. N. s. 713.) The plaintiff held an exclusive licence from the patentee of a machine to use the invention within a certain district for four years, and the licence was registered at the Patent I'l' I I.iri-SCES Office. After tlio date of the lie. n<-e and before the tim.- -\pir. d tin- ili ft ndimts brought into the di machines which they had purchased from persons who had bought them from the patentee outside the district. It was held that as there was no proof that tin- <1. f. n ; hail notice of tin- lift ncr they were not liable in an a to restrain the use of the machines within the district. .//..i/. v. Hi,'!.,,. ;, !;. 1. C. 60:t . on appeal. ; II. P. C. 41W.) A licensee has, however, a right to have it ascertained \\ hat is the field covered by the specification as properly construed, and is entitled to say that he has not gone in-id' that field. He may seek to havi th. boundary of the patentee's invention defined with the view of showing that he had not rendered himself liable to make the payments stipulated in the licence. (.!m-*, 18 L. T. N. s. 142; Axmann v. i., mil, L. R. 18 Ch.D.880; and see AV//KM/I v. F<>th,-njHl, 1 W. P. C. 290). In an action for infringement the defendant, being the mortgagee of certain articles made under a licence which the plaintiff alleged had been revoked, disputed the fact of revocation, and at the same time contended that the patent was invalid. It was held that he must elect which of these lines of defence he would take. (Post Card A utomatic Sn]>]il>f Co. v. Samuel, 6 R. P. C. 560). A licence was granted during the period of provisional protection. The scope of the invention was afterwards considerably limited. The licensees contended that the licence was void, but it was held upon the particular words of the licence that the licensees were bound by the deed. (Otto v. Singer, 7 R. P. C. 7.) An exclusive licensee has no right to bring an action- LICENCES 225 for an infringement in his own name without joining the patentee. (Heap v. Hartley, 5 E. P. C. 602 ; S. C. on appeal, 6 E. P. C. 496.) An ordinary licensee has no right to apply in the name of the owner for an injunction to restrain infringements (Newby v. Harrison, 1 J. & H. 393) , nor has the agent of the patentee. (Adams v. North British Railway Company, W. N. 1873, p. 191.) A patentee will not be allowed to publish advertisements and circulars calculated to deter the public from dealing with his licensee. (Clark v. Adie, 21 W. E. 764.) The following cases relate to licences connected with partnerships : Chambers v. Crichley (33 Bea. 374) ; Axmann v. Lund (L. E. 18 Eq. 330) ; Heugh v. Chamberlain (25 W. E. 742). Formerly when the patent was silent as to the form of licence, a simple licence, without covenants, need not have been under seal (Chanter v. Deu-hurst, 12 M. & W. 823 ; Reuss v. Lever, Ch. Div. April 9, 1879 ; V. C. Hall) ; nor, it seems, if it was not a deed, did it require a stamp. (Chanter v. Johnson, 14 M. & W. 408.) But now the form of patent set forth in the first schedule of the Act of 1883 requires licences to be in writing under the hand and seal of the patentee. A stamp of 10s. must be impressed in ordinary cases, and an ad valorem stamp on the consideration-money when a fixed sum is paid. When a licence contains a covenant for the payment of a minimum royalty, the Stamp Office insists upon payment of an ad valorem duty upon the gross minimum royalty reserved, and this although the licence contains power for licensor or licensee to determine the licence. Compulsory Licences. The twenty-second section of the Patents Act of 1883 introduced an entirely new regulation as to licences by empowering the Board of Trade to order a patentee to grant licences to persons petitioning the Bbard. ' 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 licences on reasonable terms, (a) the Q 1'L'ii LICENCES patent is not being worked in the I'nit. d Kingdom; or the reasonable requirements of the public \\ith respect to tli iiiv. iitiiui cannot be supplied; or (r) any person is pre- vented fn>ni \\oi-kinx r or using to the best advantage an in- vention of which he is possessed, the Board may order the patentee to grant licences on such terms as to amount of royalties, security for payment, or otherwise, as the Board, having regard to the nature of the invention and the cir- cumstances of the case, may deem just, and any siu h < may be enforced by mandamus,' which will require an application to the High Court of ' Patents granted before the commencement of tip or on applications then pending, are excepted from the operation of this provision. (Sect. 45.) As to the procedure on petitions for compulsory licences see Rules 60-66 of the Patents P.ules 1890. As to the persons representing the Board of Trade in all matters authorised to be done by the Board under tin- Patents Act of 1883, and as to the documents and certificates issued by the Board, see the 25th sect, of the Act of 1888, or sect. 102A of the Act of 1883. The orders of the Board in relation to this difficult and delicate matter seem to be absolute and final, no appeal from their decision being given by the Act ; nor is any power to award costs given to the Board. From the wording of the section it is clear that the three grounds for application are independent of each other, any one if properly proved being sufficient to authorise the Board to make an ord< a defaulting patentee. To rebut the charge that a patent is not being worked in the United Kingdom the patentee, whether British or foreign, would probably be required to show that any manufacture established in this country was of a real and substantial nature carried on bonn fulc under the same conditions and to the same extent as a licensee, not exclusive, would carry it on under a reasonable royalty. Up to the time of the publication of this book very few petitions have been presented to the Board of Trade for compulsory licences, and not a single order has been made LICENCES 227 under the powers given to it. This section of the Act, though apparently a dead letter, may yet have had a certain indirect effect, by inducing patentees to come to terms privately with persons who desire to take licences, when otherwise they might have refused to do so. And in some cases foreigners who have obtained British patents for their inventions may possibly have been prompted to establish manufactories in this country instead of manufacturing the goods abroad and importing them. In case a patentee should have made a bond-fide grant of an exclusive licence, it may be doubted whether he would be ordered by the Board to grant other licences, and still more whether such an order, if made, would be enforced by mandamus in a court of law. c 2 _'Js i HE REGISTRATION OK PATENTS ( 1 1 AFTER XVI. THE REGISTRATION OP PATENTS, ETC. THE twenty-third section of the Patents Act of 1888 directs that there shall be kept at the Patent Office a book called the Register of Patents, wherein shall be entered the names and addresses of grantees of patents, notifications of assign- ments and of transmissions of patents, of licences unll't v. Hn/mann (1 E. and B. 636) that an assignee could not bring an action for an infringement against third parties until his assignment had been registered. But in the case of Hagsall v. Wriylit (L. R. 10 Eq. 509), Sir 11. Mating, V. C., was of opinion that an assignee of a patent might maintain a suit against the assignor and subsequent licensees of the assignor with notice of the assignment to THE REGISTRATION OF PATENTS 231 restrain them from using the patent, although at the time of the institution of the suit the assignment had not been registered. And from the same case it seems that the judge thought that registration related back to the date of the assignment, so as to enable the assignee to maintain a suit to restrain infringement instituted between the dates of the assignment and registration. No case bearing upon this point has been reported since the Act of 1883 came into operation. When the executors of a patentee ob- tained probate of their testator's will and assigned his patent, but the probate was not registered till after the assignment, it was held that the assignment was valid. (Ellwoodv. Christy, 10 Jur. N. s. 1079 ; S. C. 11 L. T. N. s. 342.) Under the thirty- eighth section of the Patents Act of 1852, which gave power to the Courts to expunge entries in the register of patents similar to that conferred by the ninetieth section of the new Act, the Master of the Eolls ordered the registry of a second assignment of a patent to be expunged on the application of the assignees under a prior assignment, which had not been registered until after the second, as it appeared that the second assignment had been executed for a fraudulent and improper purpose. (Re Green's Patent, 24 Bea. 145.) In another case, the Master of the Eolls said that if there were two deeds assigning the patent simpliciter to two different persons, and the second was registered before the first, and if it were clearly proved that the second deed was executed with full and complete notice of the prior one, though subsequently registered, he conceived he should have power to direct an entry to be made upon the register, stating the facts. In Re Morcy's Patent (25 Bea. 58), it was said to be the duty of the Court to insert on the register any facts relating to the proprie- torship, but not the legal inferences to be drawn from them. One of two joint patentees assigned by deed his interest in the patent to a third person, and released him from all claims on the part of both patentees. At the instance of the other patentee the Master of the Eolls ordered the THE REGISTRATION OP PATENTS tit try of the assignment to be expunged. (lie J Ionic;/ Kni.ihtnn'g /-.. '. i.. i;. s i;,,. t: In the matter of the same paten: I. 1:. I <'h. 784) it was decided that there was no appeal from such an order of the Master of the Rolls. But the jurisdiction having now been transferred to the Hi^h Court of Justice : >in'x Pat. nt, li l \\ . I;. _! ifi), it would seem to be subject to appeal. In SpecMart v. CampMl ('Times,' March 18, 1884), it was held by the Court of Appeal that a person (who in this case was a for may l>ring an action in his own name for an infringement when the patent is registered in the name of another person, if that other person is a trustee for the plaintiff. Registration of an exclusive licence for a district is not in itself notice to the world. >//"//' v. Hartley, 5 R. P. C. 603.) INFRINGEMENTS 233 CHAPTEE XVII. INFKINGEMENTS. THIS chapter will be devoted to a discussion of the sub- stantive law and the reported cases ; and the next will treat shortly of the practice connected with the proceedings for infringements in the High Court of Justice. The rights of a patentee may be violated in several ways. 1. The invention may be overtly exercised exactly as the specification has described it without the permission of the patentee. 2. The invention may be copied not textually and literally, but with certain changes and varia- tions, such as additions, omissions, transpositions, or sub- stitutions of parts, so as to produce something colourably different from the original. 3. By dealing in articles made by the patented method without the licence, express or implied, of the patentee. 4. By the user of articles made by an infringement of the patent. As to the first mode of infringing a patent, nothing more need be said at present, because, when the fact is capable of proof, the remedy can be readily applied. It is the second method of encroaching on his rights that gives most trouble to the patentee. Certain devices (mechanical equivalents, transpositions of parts, &c.) having been em- ployed to give a different appearance to the copy, with the design of seeming not to trespass within the pale set up by the patentee, and with the view of causing that copy to be mistaken for a distinct thing, it becomes the patentee's task to expose the scheme and to show that the pretended novelty is in truth an infringement in disguise. The lead- *J3 I ing idea, or principle, as it ia usually termed, remaining the same, the contrivances will be considered identical, and when that is capable of satisfactory proof, t tinnance of the infringement maybe stopped by application to a court of law, and the infringer may be compelled to make compensation for the injury he has committed. Further, a machine may display ingenuity in its construc- tion and may have been the work of an honest and inde- pendent inventor, yet if there is a previous patent for what is substantially the same thing it must be deemed an in- fringement. A person will not be allowed to deprive an imvntor of the fruits of his discovery by substituting a well-known equivalent, either chemical or mechanical, for some part of the patented invention. Where the question arises as to the infringement of the patent for a machine, the sub- stance and not merely the form of the invention will be looked at in a court of justice. Therefore, when it is shown that two machines are alike in principle, and that the con- structor of the second machine has carried the {irinrinle of the first into effect by substituting one mechanical equivalent for another, here it will be held that there has been an infringement. (See Morgan v. Si'icanl, I W. P. C. 171 ; Tlmrn \. }\'<>rtliii, : i Sl;titiii;i li'ink ( '"injHint/, L. R. 6 Ch. I> 11.-. n. : A.lair v. YI,HHni< \. Thomson, L. R. 8 App. Cas. ill ' because it has been coloured or disguised by additions or subtraction?, which additions or subtractions may exist and yet the thing protected by the specification be taken notwithstanding.' And in the same case (p. 53) Lord Blackburn said, ' If part of the property in the invention be really taken, there is an infringement, however much that may be disguised or sought to be hidden. If that is detected by the patentee, and if what is taken is really part of his property given to him by the letters patent, he has a right to proceed against the infringer, however in- geniously the colours may have been contrived to try to INFRINGEMENTS 235 conceal the fact that there has been a taking of part of the property.' The following cases will show clearly that to make a colourable alteration in a patented invention, or to arrive at the same result by means which are substantially the same, although independently discovered, will be an in- fringement of the patent. Walton took out a patent for making cards for carding textile materials with the aid of caoutchouc, the object being to obtain an increased degree of elasticity and durability. The wire teeth were described as inserted in a foundation of slices of caoutchouc, on the back of which a piece of cloth was cemented. The claim was not confined to the use of caoutchouc in slices, but he claimed the exclusive right of making cards by fixing the teeth in caoutchouc as the fillet, or sheet, or medium. After the date of this patent, Potter and Horsfall took out a patent for a new material for forming the backs of cards, and their mode of preparing it was by repeatedly passing a woven fabric of a peculiar construction through, and saturating it with, a solution of caoutchouc, and then drying it to evaporate the solvents, and leave the fabric impregnated and coated with caoutchouc, the object being to render the fabric so dealt with extremely elastic in the direction of the thickness of the fabric, so as to impart elasticity to the wire teeth when set. It was held (Walton v. Potter, I W. P. C. 585) that Potter's process fell within the generality of Walton's claim, and was an infringement of his patent. At the trial, Tindal, J., told the jury that, * when a party has obtained a patent for a new invention 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 inven- tion, to obtain either 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 evasion of the right.' Then referring to a card purchased from the defendants, which was produced to the jury, he said, ' Now, what you have to say is, whether you are satisfied that the card produced 236 INFRINGEMENTS IB a specious variation in form only, an ingenious alteration in the mode of adaptation, or whether it is really and sub- stantinlly a new discovery on the part of the defendants. In the one case it would be an infringement of the pat in the other it would not. . . . 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 same 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 reference 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 what- ever to take, if I may so say, a leaf out of his neighbour's book, for he must be contented to rest upon his own skill and labour for the discovery, and he must not avail himself of that which has been before granted exclusively to another ; and therefore the question again comes round to this, whether you are of opinion that the subject-matter of this second patent is perfectly distinct from the former, or whether it is virtually bottomed upon the former, vary- ing only in certain circumstances which are not material to the principle and substance of the invention.' Under a patent for improvements in apparatus for the manufacture of sulphate of soda, &c., the plaintiff claimed the use of iron retorts worked in connection with each other. The essence of the invention was held to be the use of two chambers with separate furnaces worked in con- nection with each other, so that the materials might be decomposed in one and then removed to and finished in the other. The defendant for the same purpose employed two chambers, one of iron, the other of brick. This was decided to be an infringement of the patent. (Gamble v. Kurt-, 3 C. B. 425.) Trotman obtained a patent for improvements in anchors. His mode of making the improved anchor was to affix the INFKINGEMENTS 237 ' palm ' and ' horn ' to the back of the * arm ' by a separate operation. It was held that the making of similar anchors by forging the arm, palm, and horn all in one piece was an infringement. (Trotman v. Wood, 16 C. B. N. s. 479.) In 1871 E. L. Hayward obtained a patent for an im- proved pavement-light. A piece of glass in the form of a prism was fitted into a frame and let into a floor with the object not only of allowing light to pass through, but also of sending it obliquely into the room below. In 1874 Hamilton took out a patent for a contrivance for the same purpose. He employed also a prism of glass shaped like that used by Hayward, except that pieces were cut out of it. The Court of Appeal held that as the notches had no effect on the strength of the apparatus, nor any optical effect, affording, in fact, no advantage whatever, there was no substantial difference, between the two' contrivances, and the second patent was therefore adjudged to be an infringe- ment of the earlier one. (Hayward v. Hamilton, 1 Griff. P. C. 115.) And in Hayward & Eckstein v. Pavement Light Co. (1 E. P. C. 207), the judge at the trial of an action for the infringement of the same patent held that the use of glass moulded so as to form a curve was an infringe- ment. It is not permissible for a person to evade a patent by making immaterial transpositions of parts of a machine (Cropper v. Smith, W. N. 1883, p. 49 ; 1 E. P. C. 84) ; or by making one part act indirectly instead of directly (Kaye v. Chubb, 4 E. P. C. 23 ; S. C. on appeal, 5 E. P. C. 641) ; or by altering the shape of part of a machine in an unimportant particular (Per Parke, B., in Barber v. Grace, 1 Exch. 339) ; or by transposing the action of some of the parts, as, for example, in a brick machine, moving the clay against the cutters, instead of making the cutters move against the clay (Murray v. Clayton, L. E. 7 Ch. 570) ; or, in a machine for marking out the court in the game of lawn tennis, removing the marking wheel from behind to the front, and substituting a revolving brush for a feeding wheel (Osmond v. Hirst, 2 E. P. C. 265) ; or in a mechani- nil musical instrument, t mjtl.ying a rotating wind chest and a fixed music sheet in place of a fixed wind cheht a rotating music she. /< \. //./. , .". ];. I'. C. 188; aflirmrd on uppnil, .*. II. 1'. < (8 1' it u;is laid down by I . < . tlmt a man CM mill not evade a pat-nUv's ri^ht by substituting a bj for a weight. And in Wtnl h> prin- ciple sliM\\n the patentee shows some mode of carrying that effi rtimlly into operation.' And the Court of Appeal held that tin n had been no infringement of the plaintiff K patent, because the defendant had employed diff. mechanism. See also Aut<>w,; // / ftfodbfen < 'n. v. r,.;/i/H../ \\;-i,ihiwi Mnchiii.- Co. (K II. 1'. C. 867). }\'h>-r>-th,- J'rinrij,!, ,x //,,/ \, ,r. We have seen that are judicial dicta which imply that where tin -principle of an invention is new, the patentee may secure not only the method of carrying it out described hy him, but all other methods that fall under the same principle. On the oth r hand, where the principle is not new the patentee is confined to the particular method described, and his patent will not be allowed to cover other methods. Thus in / > (1 Exch. 339) , it was held that the pressing of woollen goods by a set of rollers, heated within by steam, was not an infringement of a patent for a mode of pressing similar goods by two cast-iron boxes filled with steam. The jury found that the former was not a colourable variation of the latter process, and the Court, after argument, approved of the finding. (See also Easterbrook v. G. W. R. Co., 2 R. P. C. 201.) In Curt in v. Matt (L. R. 3 Ch. D. 185 it.), ,Si> II*. /'. ; . I'. C., said, ' When the object itself is one which is not new, but the means only are new, one is not inclined to say that a person who invents a particular means of doing something that has been known to all the world l"ir.: before has a right to extend very largely the interpretation of those means which he has adopted for carrying it into effect. Because, otherwise, that would be to say that the whole world is to be precluded from exercising its invention for achieving some desirable and well-known object which everybody has had in view for years. One looks more jealously at the claims of inventors seeking to limit the rights of the public at large for effecting that which has been commonly known to all the world long ago. Of course no patent can be taken out for effecting this as a new object, INFEINGEMENTS 243 but only for effecting it by a new means. What those means may be, and what is the extent of the claim which the patentee has a right to insist upon as to those means, is often a matter of much difficulty.' ' Where there is the principle first introduced in the (patented) machine we look upon it with very different eyes to what we do when what the patentee has done is simply by some variation to make an improvement in an existing machine. Then he is confined to the actual thing he has produced as an improvement in an existing machine, and we cannot say, if anyone else were to take some other mechanical means of arriving at the same end, that that is an infringement.' (Per L. J. Cotton, in Proctor v. Bennis, L. E. 36 Ch. D. 740.) Hence if another person invents a method of carrying out the same object different from that patented, he may obtain a valid patent for it, or he may use it without being liable for an infringement, since the inventions stand in- dependently one of the other, each inventor being limited to his own particular combination or method. Identity of object must not be mistaken for identity of means. The patented apparatus is, under the supposed circumstances, nothing more than a particular mode of attaining a certain end, and if one man is entitled to a patent for one road to that end, any other person is on the same ground entitled to a patent for another road to the same end. Where a patent has been obtained for improvements in an old machine and there is no novelty in the result, the patentee will be held strictly to his description of the par- ticular means by which his invention is to be carried into effect, and the doctrine of mechanical equivalents will not be applicable. (Curtis v. Platt, L. K. 3 Ch. D. 136 n., 139 n. ; Saxby v. dunes, 43 L. J. Ex. 228 ; Dudgeon v. Thomson, L. K. 3 App. Cas. 34 ; Nordenfeldt v. Gardner, on appeal, 1 E. P. C. 61 ; Hocking v. Hocking, House of Lords, 6 E. P. C. 76.) As an example of this class of cases, Bovill v. Pimm (11 Ex. E. 718) may be referred to. B 2 244 KMKNT9 It had been long known that if grain were kept cool during the process of grinding, the flour was of superior quality. To effect this desideratum various uices had been adopted, and siv.ral |-at-nN had been obtained for them, before Bovill obtained one for an im>nti<>n con- sisting of the application of ventilating vanes or screws at the centre of the grinding-stones, by which means air was supplied between the grinding surfaces. A portable venti- lating machine, blowing in a screw vane, which caused a flow of air parallel to the axis of the vane, was attached nally to the eye of the upper millstone. Wlien the screw vane was set in motion air was compelled to pass through the eye of the upper millstone into the centre of the two stones, and found its way out between tin m. Pimm subsequently took out a patent for improvements in grinding wheat. His plan for keeping the grain cool whilst grinding consisted in the removal from the centre of both stones of a large circular portion, and in the space thus obtained to place a fan, by the rapid rotation of which a centrifugal motion was given to the air, and it was driven between the stones. It was held that the latter method was no infringement of Bovill's ; the two inventions were deemed independent original improvements, and each in- ventor was entitled to protection in respect of the method disclosed in their respective specifications, but could not claim beyond the method actually described. An action was brought for the infringement of a patent dated in 1877 for improvements in machinery for winding, doubling, and twisting yarn and thread. As there were 1'ivvious machines for the same purpose as the plaintiffs, all of which included a swinging-plate and a catch-plate, and as the plaintiff laid special stress on the particular form of his catch-plate as an important improvement, and when describing the machine said he did not claim the combination of a swinging-plate with any catch-plate, but only the combination of a swinging-plate with a catch- plate as described in the specification, it was held by the Court of Appeal that the plaintiff was bound to this limited INFRINGEMENTS 245 claim, and as the defendant did not use a catch-plate in his machine he had not infringed the patent. (Boyd v. Horrocks, 6 E. P. C. 152.) On the other hand, where there is not only novelty in the patented machine, but also in the result produced by the machine, the doctrine of mechanical equivalents will be applied in the case of an alleged infringement. For in- stance, a patent was obtained for an improved and self- acting mechanism for supplying and distributing fuel at intervals over the fire surface of furnaces. From the specification it appeared that the object of the patent was the automatic placing of coal on a fire by intermittent radial motion, and this object was proved, at the trial of an action for an infringement, to be new and effected by a new combination. It was also shown that in the defendant's mechanism the motion was intermittent and radial, and produced by means of a radius as in the plaintiff's mechan- ism ; but there was this difference : that in the plaintiff's contrivance the shaft was actuated by tappets and a spring, the radius being attached to the shaft, whilst in the defendant's contrivance the radius itself was actuated by tappets and a spring, the radius working on a pin. Thus the same radial motion, with the same result, was produced by substantially similar means. The Court of Appeal, here applying the doctrine of mechanical equivalents, held that the defendant's mechanism was an infringe- ment. (Proctor v. Bennis, 4 E. P. C. 354, 359, 361.) See also Gosnell v. Bishop, on appeal (5 E. P. C. 156, 159) ; Ehrlich v. Ihlee, on appeal (5 E. P. C. 437) ; Thomson v. Moore, Court of Appeal, Ireland (6 E. P. C. 426). In the case of interfering patents, the following rule was laid down by Pollock, C. B., in Bush v. Fox (Macr. P. C. 165) : ' Whenever it appears that the use of a prior patent invention would be an infringement of a subsequent patent, the second patent cannot be sustained.' See also Thomas v. Foxwell (5 Jur. N. s. 39) ; Betts v. Menzies (1 Ell. & Ell. 1020) ; and Kaye v. Chubb (4 E. P. C. 298). In Saxby v. Hcnnctt (L. E. 8 Ex. 210), it was held that 246 RDfOEMEXTS where two patents are in existence for the same invention, acts done uml.-r the patent of later date are infringements of the earlier patent. Invention of Improvement A n<> />// nee. A person is at liberty to patent an improvement upon an invention which forms the subject of an existing patent, without rend< himself liable for an infringement ; hut he will not be able to use the improved invention before the expiration of tar Her patent unless he obtains the licence of the patentee. (Litter \. Leather, 8 E. mrt,,r \. Ji.nms (4 K. P. C. 353), an action for an infringement which went to the Court of Appeal, L<>ril Jnxtir.- Cnttmt made the following observations : ' What was very much relied on (by the defendant) was this : that there are certain omissions in the defendant's machine of parts which there are in the plaintiff's combi- nation, and that there are certain things in the defendant's machine not found in the plaintiff's, producing a result which is not obtained in the plaintiff's. . . . Now, if in fact the defendant has . . . made an improvement, that will not enable him to take the plaintiff's combination which he has protected without infringing the plaintiff's patent. . . . The mere fact that there are certain parts omitted or certain parts added, if he really has taken the substance and essence of the plaintiff's combination, cannot prevent his machine being an infringement of the plaintiff's. . . . If in substance and in essence the combination is taken, INFKINGEMENTS 247 and practically the same parts, or the parts in which there is a variation, or for which there are mechanical equiva- lents, are so arranged as to produce the same result, then the essence of the invention has been taken, and an in- fringement has been committed by the defendant who makes, sells, or uses these machines.' (And see Wenham Co. v. May, 4 E. P. C. 308 ; Hocking v. Hocking, 4 E. P. C. 442 ; Ehrlich v. Ililee, appeal, 5 E. P. C. 437.) Common Dilemma. In actions for infringements the defendant's defence frequently endeavours to place the patentee on one or the other horn of the dilemma, an example of which is afforded by the case of Macnamara v. Hulse, cited in the chapter on Novelty. If the patentee's claim is read in a wider sense so as to cover the alleged infringement, it is met by a charge of anticipation ; if read in a narrower sense so as to avoid that difficulty, there is no infringement. (Stevens v. Keating, 2 W. P. C. 194 ; Doicncs v. Falcon Works, 3 E. P. C. 70 ; Kaye v. Chubb, 4 E. P. C. 289 ; Gosnell v. Bishop, 5 E. P. C. 158 ; Elling- ton v. Claris 5 E. P. C. 327 ; Hutchison v. Patullo, 4 E. P. C. 359.) COMBINATIONS. With regard to the infringement of patents obtained for a general arrangement and combination of numerous parts, all of them old, or some old and some new, the whole in either case forming a new apparatus or machine, questions of some complication may arise, and it may not be easy to decide in a given case whether what has been done amounts to an infringement or not. A patentee may assert that, although his invention as described in the specification has not been exactly copied by another person part by part, yet sufficient has been taken to bring it within the reach of the law and render him liable as an infringer. In other words, that the differences are merely colourable, and that the inventions specified by the patentee and practised by the defendant are substantially identical. On the other hand, the alleged infringer may aver that what he has done, though directed to the same object and producing a 248 similar result, has been effected by methods that were open to all the world, and that if the means employed by him are to a certain extent similar to thoae employed by the patentee, they yet differ so far as to render his process or apparatus a distinct and independent mode of arriving at a common end, and do not constitute an illegal copy or evasion of the patentee's method. These opposite views may both be supported by witnesses of equal weight and credibility, and thus a very difficult question of fact may be placed before a jury or submitted to the decision of a judge. Those upon whom may devolve the duty of decid- ing a controversy of this nature will anxiously seek to dis- cover on which side lies the preponderance of probability after hearing the whole case. When the case L'lnrk v. AJ-ll, in . v. /.,,////./ (H E. <-i il- >1 1-y tin- patentee may not have been taken. It is a clear principle in patent law that a person cannot borrow some substantial part of that which as a whole is a useful invention, and tliuvby take the bene- fit of it, without remit -ring himself liable for an infringe- ment. In Parkes v. ,S>iv;/x ,L. R. 8 Eq. 858), Jai, stated the law on this branch of the subject as follows : 1 The law is summed up thus : the cases establish that a valid patent for an entire combination for a process gives protection to each part thereof that is new and material for that process ; which is nothing more than stating in other words that you not only have no right to steal the whole, but you have no right to steal any part of a man's inven- tion ; and the question in every case is a question of fact is it really and substantially a part of the invention ? Supposing that a clock was now for the first time im and patented as a machine for measuring and indicating time, a man could not evade the patentee's right by sulti- tuting a spring for a weight, or by leaving out the whole of the striking apparatus/ See also Walton v. /'//rn v. Wnrtlnmj Sl;atin r v. leather (said I. ; /' Harrixtm v. An/lerston Foundry Co., L. R. 1 App. Cas. 574) decided nothing more than this, that though the patent is for a combination, it does not follow that there can be no infringement of it unless every part of that combination without exception is pirated. What the Court said was that the taking of a subordinate part or parts of the combination miyht be, not that it necessarily would be, an INFRINGEMENTS 253 infringement of the patent ; and that whether it would be so or not depended, as the Court of Error said, ' upon what the parts taken were, how they contributed to the object of the invention, and what relation they bore to each other.' This only amounts to saying that on a question of infringe- ment the essential nature of the invention will be regarded ; and that there may be cases in which, though the patent is for an entire combination of numerous parts, a collusive imitation of that invention may be effected, though some detail of the combination is omitted or changed, which is a doctrine familiar enough in patent law. And see Flower v. Lloyd (W. N. 1877, p. 132) ; United Telephone Company v. Harrison (L. E. 21 Ch. D. 720). ' I understand the rule to be that if a man uses a part of that to which the patent applies for the purpose for which the patentee intended it, and for which he has taken out his patent, and the difference is unsubstantial or colourable, the use of it is an infringement.' (Per Mr. Justice Field in Burnett v. Tate, 45 L. T. N. s. 143.) It was decided in a case where the patentee's combina- tion consisted of three old mechanical parts, that another person might use two of those parts and substitute hand- power for the third. (Murray v. Clayton, L. E. 10 Ch, 675 n.) The taking of one part out of a combination of three-, the part taken not being a substantial part nor capable of being made the separate subject of a patent, was held not to be an infringement. (Garrard v. Edge, 6 E. P. C. 372 ; affirmed on appeal, 6 E. P. C. 563.) When a patent is for a new combination of machinery, every part being old, it may be that the manufacture of the separate parts in this country, and the exportation of them abroad, will be no infringement ; but in Goucher v. Clayton (11 Jur. N. s. 462, 465) it was held to be otherwise when the part so made and exported is new and is claimed as new. "When there are several distinct heads of invention, an infringement of any one renders the infringer liable to INKI:IN.;K.MI:MS legal proceedings. (any v. If '<*>dhaiut t A I:. I'. ( . 79.) CHEMICAL PEOCBMU AXD PBODftTB. Precisely the same rules of law are applicable to the case of chemical as to the case of mechanical inventions. The chief questions will continue to be, has the new prin- ciple discovered and applied by the patentee, or his new method of carrying out a known principle, or his new com- I'ination of parts or ingredients leeii Injrrowed by the alleged infringer? In Steven* \. K'-ntimj c2 \\ . 1'. ( '. 188), it was a question whether the use of borax (a compound of boracic acid and soda) was not an infringement of a patent, specification of which claimed the use of acids and alkalies in the preparation of cements. Both f^onl ( '<>ttfnham and /W/iu-/,-, ( '. li., held that it was an infringement. In JIancix-l: v. Mmilton (June 1852), an application was made in the Court of Chancery for an injunction to the manufacture by the defendant of vulcanised caoutchouc, alleged to be an infringement of the plaintiff's patent for obtaining a certain product by subjecting a mixture of sulphur and caoutchouc to heat. The defendant subse- quently obtained a patent for the combination of hypo- sulphate of lead and artificial sulphuret of lead with caoutchouc ; that combined mass, acted upon by heat, was alleged by the defendant to produce more beneficial results, but the results were of the same character as those which were produced by the plaintiff's patent. ' Assuming,' said Turner, }'. ('., f the materials thus used by the defendant to be different, the process of the defendant would per e be no infringement of the plaintiffs' patent. The plaintiffs confined their patent to sulphur ; the defendant had used hyposulphate of lead and artificial sulphuret of lead. But it was alleged by the plaintiffs that the materials were not in truth different, or at least that the materials which pro- duce the result are the same. It was said that sulphate INFRINGEMENTS 255 and sulphuret of lead do not of themselves produce the change, but that the change is produced by the sulphur which they contain, and which forms one of their several constituent parts ; and that those parts being decomposed by heat, the sulphur combined with the caoutchouc and left a residuum of lead, which had no operation in the change which was effected. If the qualities conferred upon the caoutchouc by the process were imparted by the sulphur, it would no doubt be an infringement of the plaintiffs' patent.' The judge's opinion, after examining the evi- dence, was, that the evidence preponderated very consider- ably in favour of the plaintiffs. In the case of Talbot v. Laroche (15 C. B. 310), the plaintiff was the inventor of a photographic process, patented in 1841. The specification claimed, amongst other things, the employment of gallic acid or tincture of galls, in con- junction with a salt of silver, to render paper more sensitive to the action of light; and also the making visible photo- graphic images upon paper by washing them with liquids (meaning only, as other parts of the specification showed, gallo-nitrate of silver) which act upon those parts which had been previously acted on by light. Subsequently to the date of this patent the collodion process was discovered, and the defendant having practised it, the plaintiff brought this action, alleging that this process was an illegal copy of his process. It was argued by the defendant firstly, that the plaintiff had claimed only the rendering of paper more sensitive to light ; whereas collodion, the substance he employed, was a different thing, being a solution of gun-cotton in ether ; secondly, that when the collodion was put into the camera it contained no gallic acid, a material essential to the plaintiff's process ; thirdly, that in developing the image he employed pyrogallic acid, and not gallic acid. Several scientific persons gave evidence that collodion was not only a different material from paper, calling into play processes not needed when paper was employed, but that it possessed peculiar photographic properties, as was proved by the fact that gallic acid was 156 I R t RIllOKMKIITo not required t<> n -n.lt r it sensitive, as in the caae of paper; also, that pyin^iillir acid wan much more rapid in its action than gallic acid, and that it was, in many respects, a f silver and iodide of potassium the same as the use of paper prepared with nitrate of silver, iodide of potassium, and gallic acid ? Is pyrogallic acid the same as, or a chemical equivalent for, gallo-nitrate of silver ? The jury returned a verdict imply- ing that, in practising the collodion process, the defendant had not infringed the plaintiff's process. The difficulty that sometimes exists in determining whether one chemical process is, in contemplation of law, distinct from, or an illegal copy of, another is exemplified in the history of the case of Heath v. Umrin. Under a patent for improvements in the manufacture of iron and steel, the patentee claimed ' the use of carburet of manganese in any process whereby iron is converted into cast steel ; ' and his specification stated that the in- vention consisted in adding from one to three per cent, of the carburet to iron or blistered steel whilst in the crucible. The carburet of manganese was separately prepared, by subjecting oxide of manganese and carbonaceous matter to a strong heat, and the resulting carburet was then added to the crucible containing the metal to be converted into cast steel. Upon the trial of an action for an infringement, it appeared that the defendant did not use any single sub- stance answering to the description of carburet of manga- nese ; but he placed in the crucible containing the iron or blistered steel some oxide of manganese and carbonaceous matter. These two substances would form during the process of conversion, and before actual union with the melted iron, carburet of manganese in a state of fusion ; but the quantity of the carburet so formed was less than one per cent, of the weight of iron in the crucible. It was held by the Court of Exchequer, that since the defendant had not contemplated the use of carburet of manganese, INFRINGEMENTS 257 and had not known prior to the investigation that took place in consequence of the action that the result of his adding the oxide and carbon was to produce the carburet since, moreover, the patentee had expressly stated his invention to be the addition of the substance called carburet of manganese to the crucible, there was no infringement on the part of the defendant, for there was no imitation of the patentee's process behind a colourable variation. The specification was construed as claiming the use of one particular combination of carbon and manganese namely, the carburet of that metal ; and a particular mode of using that combination namely, by putting a certain quantity by weight, in an unmelted state, into the crucible. Heath v. Unwin subsequently went before the Court of Exchequer Chamber. A majority of the judges of that Court held that, inasmuch as the plaintiff had not limited his claim to the particular mode of using the carburet described in his specification, the defendant's process was an infringement of the patented invention, since it effected the manufacture of cast steel by the employment of either carburet of manganese or a chemical equivalent. A minority of the judges thought that the defendant had not infringed the patent : for, though he had used a chemical equivalent for the carburet of manganese viz. its component parts it was not known at the date of the patent that such com- ponent parts were equivalent to the carburet, in such special applications of it as were described in the specifica- tion, and for the purpose there mentioned. Moreover, they thought that the defendant's process was an improve- ment upon the plaintiff's, for the same quality of steel was made at less expense, one crucible and one heating effect- ing the desired result. When this extraordinary case came before the House of Lords, the judges were called upon to attend the argu- ment, and give their opinions. Eleven judges attended, seven of whom concurred with the Court of Exchequer Chamber, and four disagreed. Notwithstanding this large majority, the two law lords who heard the case (Lord s 258 Cramrnrth and / gave judgment for the plaintitT in IT. .r, th ivl.v ii.ri.iiii.- th:tt Heath's patent had not been infringed. 1 think.' sni.l / the use of substances thus producing carburet of manganese in a state of fusion was no violation of the patent. The substance for the use of which (int. / ilit />'/' ' , I '. ( '., -aid he was satisfied that the object could not be accomplished by uniting ordinary copper and according to Collins' process. The defendants must, therefore, have originally used, not the ordinary, but tin purest quality of the two metals, or they must have puri- fied them in the course of the process by some mode not suggested in Collins' specification. In one case the invasion of Muntz's invention was plain and direct ; in the other it was colourable and indirect.) Furthermore, witnesses stated that no person could make the compound mat by following Collins' directions. The jury found a verdict for the plaintiff, the judge having taken a favourable view of Munt/'s case in his address to the jury. A man may invent improvements on a patented chemical process, by which improvements he may produce a l> result in a simpler manner at less cost and with less waste, but, if these are effected by equivalent operations known to be equivalent at the date of the patent, he will be deemed an infringer if he puts them in practice. Thus, in the case of the liadische Anilin und Sn, I.. ./., on this case in Anonym ni'ilim.i'.' . < . I., l:. U < i'. I. 1.) Proof of the sale of an article shown to have been made in tin- same way as that for which a patent has been obtained, such sale lx in^ without the leave-, expressed or implied, of tin- patentee, is print" il nee of an in- fringement, lirnml, 1 \V. 1'. C. 630.) But there must be proof that the article was made according to the patented method. Thus, on the trial of an action for an infringement, a candle with a plaited wick, made by the defendant and sold at his manufactory, was produced to the jury as evidence that he had infringed the patent. It held that, as the patent was not for the candle itself, but for the mode of manufacturing it, the mere production of a candle similar to the plaintiffs was no evidence that it had been made by his patented method. It should have been shown how the candle had been made, seeing that it was quite possible the same result had been produced by a different method. (Palmar v. in///xf///, 8 Exch. 840; 9 Exch. 494.) But in JlMtrt v. f /riWmir (1 W. P. C. 91), it was held that the production of pieces of rope having the essential qualities of the patented article was primn evidence of infringement. And in Hall v. Bt (1 W. P. C. 186), it was held that the sale of an nrticlo, which might during manufacture have been improved according to a patented process, coupled with the fact of the necessary machine l>eing in the defendant's possession, was sufficient evidence of infringement. (See8.\sol>rt\.IlicI, 3 L. T. N. s. 504.) The point whether a mere exposure or offering for sale of a patented article amounts to an infringement, in the absence of proof of actual sale, seems to have been decided differently in the cases of Mintcr v. William* (1 \V. P. G. 137) and Oxlty v. HM*n (5 C. B. v. s. 667). In Muntz v. INFRINGEMENTS 263 Foster (2 Web. P. C. 101), Titidal, C. J., held that the making of ten tons of metal sheathing was an infringe- ment, although no sale was proved. In Spcckhart v. Campbell ('Times,' March 13, 1884), it was held by the Court of Appeal that the defendant, who was domiciled in Scotland, had committed an infringement in England of the plaintiff's patent by buying in London articles made in infringement of the patent, and advertis- ing them for sale in Scotland ; and by sending to a Liver- pool firm, in exchange for postage stamps, samples of the article, accompanied by a letter stating the price per gross. INFRINGEMENT BY USER. A patentee may not only obtain compensation from a manufacturer who infringes his patent, but he may pursue the infringing articles into the hands of other persons and recover damages in respect of them without regard to what he recovered from the manufacturer. (Penn v. Bibby, L. E. 3 Eq. 308 ; United Telephone Company v. Walker, 4 E. P. C. 67.) The user in this country of an article made abroad, but which is the subject of a British patent, is illegal, even when such user is merely of a passive nature, and takes place in the course of transit from one foreign country where the articles have been made to another to which they are consigned. (Betts v. Neilson, 6 N. E. 221, affirmed on appeal, ibid. 361; 3 De G. J. & D. 82; L. E. 3 Ch. 431 ; L. E. 5 H. L. 1.) In this case bottles of beer sent from Scotland protected by capsules made in contravention of an English patent were transshipped in an English port for convenience of exportation to India. It w r as held, first by Wood, V. C'., and afterwards by the Court of Appeal and the House of Lords, that, as the capsules were necessary for the preservation of the beer, there had been a user of the invention in England, and an injunction was granted. But his Honour said he could well conceive a case in which there would be no user in England, as, for instance, foreign tools infringing an English patent, packed up in boxes and N4 lying inert. <>r tntns*hippcd in coarse of transit in an ish harbour. (6N. B.ttl 1 -. \ / ! -tirriCo. \.Jone* (L. R. 17 Ch. I>. i'71 . \\ii.-r.- the object of a pa in regard to a preparation of nitro-glycerine was to render it non-explosivt with a vi< \v to its safe conveyance from place to place, it was held ly I . C. />/<. v. Jonct, L. R. 17 Ch. D. 721, affirmed in H. L. 8 App. Cas. 5.) A user of infringing articles by the pupils of the purchaser of the articles renders him liable for an infringe- ment. (I'nited Tfb-ph^m- ('OIHJHIHI, v. Sli *. li I;. 1'. ('. 28.) The possession of articles made in infringement of a patent is sometimes enough to afford ground for an injunc- tion without proving user, if the circumstances are such as to show that user is intended. An injunction was granted by I'. ('. r>l> T> I plume Company (L. R. 26 Ch. D. 766 ; 1 R. P. C. 117). INFRINGEMENTS 265 But where the user of the infringing machines, which still remained in the possession of the defendants, who admitted the validity of the patent, took place only for a short time, four years before the action was brought, and there was no evidence of an intention to repeat the in- fringement, it was held that an injunction ought to be refused. (Proctor v. Bennis, C. of Appeal, 6 B. P. C. 538.) On the general question of infringement by user see The Universities of Oxford and Cambridge v. Richardson (6 Ves. 689) ; Minter v. Williams (1 W. P. C. 137). Where an infringement is committed through an agent both employer and agent are liable ; it being no justifica- tion for the agent to allege that he did the acts complained of by the order of his principal. (Gibson v. Brand, 4 M. & G. 179 ; Betts v. De Vitre, 11 Jur. N. s. 9 ; Sykes v. Hoivarth, L. E. 12 Ch. D. 833 ; Spencer v. Ancoats Vale Rubber Co., 6 E. P. C. 46.) CARRIERS. Steamship carriers may be restrained by interim in- junction from importing or exporting goods alleged to have been made in infringement of a patent and from parting with the possession of them, when the validity of the patent has been proved in an action against another person. In these cases the goods had been manufactured abroad and there had been no user, passive or otherwise, of the goods on board the ships. (Wasliburn, &c., Co. v. Canard Co. and Washburn, d-c., Co. v. Dublin and Liverpool, dec., Co. 6 E. P. C. 398.) FOREIGN VESSELS. By the forty-third " section subs. (1) of the Patents Act of 1883, the use of an invention for the purposes of the navigation of a foreign vessel within the jurisdiction 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, shall not be deemed an infringement of any 266 IKFRIXOEME5T8 -h patent obtained for such invention, unless it in used for the manufacture or preparation of something intended to be sold in or exported from the United Kingdom or Isle of Man. But by subs. (2) the first subsection is not to extend to vessels of any foreign state which does not show similar indulgence to British vessels under like circum- htanrrs. Any case not coming under the protection afforded by the first subsection will be governed by the decision in C.iUn-.U v. I'tin 1 7iW/f//r-n (9 Hare, 415), where an injunc- tion was obtained to restrain the use on board of a Dutch Teasel within British \vat< -rs of certain propelling apparatus made according to a British patent. THE CROWN. It was decided in the case of Feather \. 77 (6 B. & 8. 257) that, as all grants made by the Crown must be construed favourably to the grantor and adversely to the grantee, there was nothing in the ordinary form of Letters Patent in use" up to January 1, 1884, to debar the Crown from using the invention comprised therein, and conse- quently that the Crown had a right, either by itself or by its officers, agents, or servants, to exercise such invention and manufacture the patented object without paying royalties or compensation. However, in Dixon v. Tin' London Si]>lir;iti<>n of a new and rial part of an arrangement to a purpose from that to which it is applied in the patented combina- tion does not infringe the patent. (/,!*/ L. T. N. 8. 766 ; Mc('ni.. 7 II. & N J ton V. ]'. <'. l:i \V. I:. 11), a patent for an invention of improvements in apparatus employed in laying down submarine telegraph cables, which consisted of an internal cone placed in the eye of the coil of cable, an external cylinder round the coil, and rings suspended over it, was held not to have been infringed by an apparatus in which the cable was coiled round a cylinder and pre- vented from slipping by means of a cylinder placed outside, it being found that this had been done before for the purpose of safe carriage, and there being no evidence that the defendants used their apparatus for any other purpose. The mere publication of a specification is not an in- fringement of a prior patent. It is the use of the earlier invention that constitutes the infringement. ' Where the invention is the mode of working or the mode of manu- facturing an engine, there is no infringement until another engine is worked or made in the same way. Upon the question of infringement, the specification of the defendant (the alleged infringer) is of very little importance.' Per L. J. Brett, in Ott v. Lin ford (46 L. T. N. s. 35). The application of a natural mineral substance to effect a given purpose is not an infringement of a patent obtained for the application to the same purpose of an artificial substance having the same chemical constitution. A patent was obtained for a process of purifying coal gas by means of hydrated oxide of iron, and the method of obtaining that material artificially was described in the specification. The use for the same purpose of a natural substance called INFRINGEMENTS 269 bog ochre, containing oxide of iron, was held not to be an infringement of the patent. The specification also described and claimed a mode of revivifying the artificial oxide for subsequent use in the same way. Lord Westbury, C., granted an injunction to restrain the user of the natural substance after it had been revivified by the process de- scribed in the patent. (Hills v. Liverpool Gas Light Company, 9 Jur. N. s. 140.) It is not an infringement of a patent to sell chemical substances, knowing that the buyer intends to use them in infringing the patent. Nor is it an infringement for the seller, in consideration of the purchase, to indemnify the buyer against proceedings by the patentee, if the patent is disputed or likely to be so. If buyer and seller know the patent to be valid, an agreement for indemnity would be void as being against public policy, and the seller would not be guilty of infringement. (Toicnsend v. Haworth, L. E. 12 Ch. D. 826 n., affirmed by the Court of Appeal. Appendix to Higgins's Digest of P. C., 1880, p. 60. And see Sykcs v. Howarth, L. E. 14 Ch. D. 833.) A patent for the United Kingdom will not be infringed by acts done on board a British vessel at Malta or on the high seas. (Newatt v. Elliott, 4 N. E. 429.) Where a foreign sovereign had bought abroad articles made in infringement of a British patent, and they were brought to England to be placed on board a ship of war belonging to the foreign sovereign, it was held that, as the Court had no jurisdiction to interfere with the property of a foreign sovereign, it could not prevent him from removing the articles in question. (Vavasseur v. Krupp, L. E. 9 Ch. D. 351.) INTENTION OF INFRINGER NOT MATERIAL. In determining the question of infringement, the inten- tion of the infringer is immaterial ; if he violate the patentee's rights he renders himself liable to make com- pensation, although he acted in ignorance. In the case of Stead v. Anderson (2 W. P. C. 156), Wilde, C. J., when dt -livi riii^' the judgment of tli- C-urt of Common Pleas, said that, -in the action of /////< v. 1'nn-in, tin ('. Exeln (|it< -r seems to have deemed it material to con the intuition of the defendant in determining whcth* had infringed a patent. Hut in that case tin . \idence negatived any such intention, and the other circumstances of the case were not such as to show an infringement ; so that there was no evidence as to what the effect of intention would he, and we think it clear that the action is maintainable in respect of what the defendant does, not what lie intends.' And Slnnitci-11. }'. <'., said, in IIith v. I'mrin (15 Sim. 553) : ' I am at a loss to see how the want of intention can be any answer where the act complained of is an injury. The party complaining of the act is not the less prejudiced by it because it was committed unin- tentionally, and ray opinion is that if a party has done an act that is injurious to the rights of another (though with- out any intention of doinjj him an injury) he is answerable for the consequences.' In a subsequent stage of the case of Il<-,ith v. I'nirin, it was admitted by Mr. }'imn /'nrt v. Jli/lnml* (L. II. 1 Ch. D. 803); and Yuwi ,i .\V/7x.. v. RoscntJml 1 1 1!. p. C. 39). Nor can a master of workmen protect himself by alleging that the infringement was committed by them against his orders. (Beits v. l>e Vitrc, 8 Ch. D. 480.) But where a retail dealer had, in ignorance of the plaintiff's rights, sold to an agent of the plaintiff an article made in infringe- ment of the patent, and the article itself showed from whom its vendor had bought it, and the Court was satisfied that the infringement was innocent, accidental, and trivial, INFBING EMENT8 271 and not such as to have produced any substantial damage to the plaintiff, James, V. C., dismissed a bill for an in- junction. (Betts v. Willmott, 18 W. E. 946.) The case went afterwards on appeal before Lord Hatlierley, C., who affirmed the decision, but upon other grounds. (L. E. 6 Ch. 239.) See also Upmann v. Elkan (L. E. 12 Ch. 145). 272 ACTIONS FOB INFRINGEMENTS CHAPTER XVIII. THE PRACTICE IN ACTIONS FOR INFRINGEMENTS. SINCE the Judicature Acts of 1873 and 1875 have abolished the distinction between the Courts of Law and Equity, every question of law and fact, or mixed law and fact, arising in any action is now determined wholly in that division of the High Court of Justice in which the action is brought, subject to certain powers of transfer of the action from one division to another, and subject also to the further qualification that trials by jury cannot be had before a judge of the Chancery Division. (If 'arncr v. Murdoch, L. R. 4 Ch. D. 750.) The thirteenth section of the Act of 1888 directs that no proceeding shall be taken in respect of an infringement committed before the publication of the complete specifica- tion. And the fifteenth section provides that an applicant shall not be entitled to institute any proceedings for infringement until a patent has been granted to him. ' A plaintiff is not bound before commencing proceed- ings to apply to the defendant and ascertain whether he will without suit do what is required (Upmann v. I'Ahiu. L. R. 12 Eq. 146). . . . Nor is a plaintiff compelled to rely on the promise of the offending party not to infringe again, but he is entitled to the protection of an injunc- tion ' ' (Geary v. Aorton, 1 De G. & Sm. 9 ; Loth v. Hague, 1 W. P. C. 200.) Interlocutory Injunctions. It has always been the prac- tice of the Court of Chancery, when the plaintiff can make 1 W. N. Lawson : Patents Designs and Trademarks Acts, 2nd ed., p. 109. In this work will be found carefully collected and arranged all the bearing on legal proceedings in patent actions. ACTIONS FOR INFRINGEMENTS 273 out a proper case, to grant an interlocutory injunction, that is, an injunction before the trial of the action, without re- quiring the patent to be established. ' The principle on which the Court acts,' said Lord Eldon, in Hill v. Thomp- son (3 Mer. 622), ' in cases of this description is the follow- ing : Where a patent has been granted, and an exclusive possession of some duration under it, the Court will inter- pose its injunction, without putting the party previously to establish the validity of his patent by an action at law. But where the patent is but of yesterday, and, upon an application being made for an injunction, it is endeavoured to be shown in opposition to it that there is no good speci- fication, or otherwise that the patent ought not to have been granted, the Court will not, from its own notions re- specting the matter in dispute, act upon the presumed validity or invalidity of the patent, without the right having been ascertained by a previous trial, but will send the patentee to law, and oblige him to establish the validity of his patent in a court of law, before it will grant him the benefit of an injunction.' And, again, in Dudgeon v. Thomson (30 L. T. N. s. 244), Sir George Jessel, M. R., said, ' The Court can grant an injunction before the hearing when the patent is an old one, and the patentee has been in long and undis- turbed enjoyment of it, or when its validity has been esta- blished elsewhere, and the Court sees no reason to doubt the propriety of the result, or when the conduct of the defendant is such as to enable the Court to say that as against the defendant himself there is no reason to doubt the validity of the patent.' (See also Renard v. Levinstein, 10 L. T. N. s. 94, affirmed on appeal, ibid. p. 177; Betts v. Menzies, 3 Jur. N. s. 357 ; Clark v. Ferguson, 5 Jur. N. s. 1155 ; Briggs v. Lardeur, 1 R. P. C, 126 ; United Telephone Co. v. St. George, 3 E. P. C. 33.) When it can be shown that the patentee has had undis- turbed possession for many years the Court will grant an interlocutory injunction without requiring the patent to be established, notwithstanding doubts may exist as to its validity. (Losh v. Hague, 1 W. P. C. 201 ; Mantz v. Foster, T U74 ACTIONS FOR INFRINGEMENTS 2 \V. P. C. 98, 95; *, 8 Jur. H. 8. : I It. P. C. 126.) But in <>i,l, r to esta- bli>h u riuht to an interlocutory injunction on thi.*> ground, tin ]>aicntee must show actual public user of the invention (I'liniptmi v. .Vii/iW//x..H, L. It. '20 K'|. :J7>. unfettered by the necessity of obtaining the licence of any prior patentee, i //,// v. / , 12 Bea. 1 ; Jim-ill \ . L. R. 1 Eq. 888.) But delay in taking proceedings may be ex- plained to the satisfaction of the Court, and an injunction granted. (Unitl Til j>)t l-'.^uitall' '/>//////, -Uo- ciation, 5 R. P. C. 288.) If the fact of infringement is matter of doubt, an injunction will be refused until after a trial, and even then if there is ground for supposing that a new trial will be obtained. (Collard v. Allison. 1 My. is? : /;/.-(/;/. T'l'-nrnpli ('. \. \tt, l '2 Coop. C. C. 41, and the other cases collected by the reporter.) In almost all cases, 1 In this case Lord Cottenliam, C., said that the Court will not grant an injunction where the legal right is disputed, unless it is satisfied that the legal right will eventually be established ; nor where the legal right is disputed unless satisfied that the acts complained of are a violation of it. Where, however, the sole question is the validity of the patent, and there has been exclusive enjoyment under it for a reasonable time, the Court will interpose, by injunction, until the invalidity has been established ; but the injunction will be refused if there is conflicting evidence as to the infringement. ACTIONS FOR INFRINGEMENTS 275 however, the Court thinks it right, when it postpones the consideration of the injunction, to order the defendant to keep an account until the plaintiff has had an opportunity of testing the validity of his patent. But if the interlocu- tory injunction be granted, the Court always requires from the plaintiff an undertaking to abide by any order the Court may make as to damages in case it should ultimately be of opinion that the defendant has sustained any by the injunction which the plaintiff ought to pay. (Wakefield v. Duke of Buccleuch, 11 Jur. N. s. 523; United Telephone Co. V. Equitable Telephone Association, 5 E. P. C. 233.) For further statements of the general principles on which the Court acts in granting or withholding interlocu- tory injunctions, see Bacon v. Jones (4 My. & Cr. 434) ; Bridson v. Me Alpine (8 Bea. 229) ; Davenport v. Jepson (4 De G. F. & J, 440) ; Plimpton v. Spitter (L. E. 4 Ch. D. 286) ; Thomson v. Hughes (7 E, P. C. 71). The Court, however, being now empowered to try the validity of the patent, and having the control of the pro- ceedings, and being, consequently, able to prevent any undue delay, is less disposed than formerly to grant an interlocu- tory injunction, especially when the patent is new, but will generally content itself with giving directions to insure an immediate trial of the questions at issue between the parties, and order the motion for the injunction to stand to the hearing of the cause, adding, when necessary, a direction for the defendant to keep an account. The action may then proceed to trial in the ordinary way. (See the remarks of Sir George. Jessel, M. E., in Plimpton v. Malcolm- son, L. E. 20 Eq. 37. See also Lister v. Norton, 1 E. P. C. 114 ; Jackson v. Needle, 1 E. P. C. 174.) But in a case where the patent was only six years old (Rothwcll v. King, 3 E. P. C. 379), and in another where the patent was only two years old (Coles v. Baylis, 3 E. P. t C. 178), injunctions were granted. In the latter case, however, the circumstances were very special. It is a rule of the Court not to interfere until the; patentee's rights have been actually violated. But where T 2 L'TT, ACTIONS FOR T ;i n\. 1 I., i:. -.' ch. l>. i i.. I:. \-i ch. D. 18.) The case of < v,.x.v/, // v. / l \\ . I', c. 1 !'.) shows how far the Court \\ill ^> in aiding a paten toe to repress infringements. It appear* d that the ! i had been secretly manufacturing gas-meters, which were copies of those protected by the plaintiffs patent, their object being to pour thnii into the market as soon as the pat. m expired. A few days before the expiration of the patent, the plaintiff, having discovered what had been done, filed his bill, and obtained an injunction to restrain the using of the arti< 1. s so made even after the patent expired. Co iicitrri nt A<-t iunx (iiiiiinxt ficvcral Infriii'i>rx. When a plaintiff commences several actions at one time against separate infringers, the Court will, on the application of the several defendants, order the validity of the patent and other questions common to all the cases to be tried in one of the actions, and will in the meantime stay proceedings in the other actions ; hut this order will not be made until til-- defendants have given full discovery of the machines used by them and alleged to be infringements. (/'.////// v. \V>l- 2 Dr. & Sm. 250 ; S. C. on appeal, 10 Jur. N. s, 187.)' But the plaintiff is not bound by the result of the trial if it goes against him, and he may proceed against any of the other infringers, unless prevented by the order of the Court. Issues. It is open to either party, at any stage of t In- action, to move that issues may be settled, raising the various questions of fact in the cause. In a patent case the issues usually are, whether the invention is new, whether it is useful, whether it was a new manufacture, 1 It was said by Wood, V. C., in the case of Dot-ill v. Crate (L. B. 1 Eq. 388), that when the infringers are very numerous, the proper course for a plaintiff to pursue before filing separate bills against the infringers is to select one as a defendant, and write to the others, and ask if they object to be bound by the proceedings against that one, and have the case tried once for all. ACTIONS FOE INFEINGEMENTS 277 whether the patentee was the true and first inventor, whether the specification is sufficient, and whether the defendant has infringed ; but, of course, these may be varied as circumstances require. Since the Judicature Acts, however, the practice appears to be not to apply for issues, but to let the action come on for trial generally, upon the pleadings, particulars of breaches, and objec- tions. It is not a matter of course for the Court to grant issues, and they are sometimes refused. (Davenport v. Gold- berg, 2 H. & M. 282 ; Davenport v. Phillips, 5 N. E. 485 ; Bovill v. Goodier, Law Rep. 1 Eq. 36.) The Court will at any time during the progress of a suit allow the defendant to raise a fresh issue on the discovery of facts which could not with due diligence have been previously discovered. (Holste v. Robertson, L. R. 4 Ch. D. 9.) Sometimes one of the parties in an action moves for an order that certain issues of fact should be tried before the other issues. In the United Telephone Co. v. Mottishead (3 R. P. C. 213), on the defendants admitting that the plaintiff's patent was valid, the Court directed the trial by itself of an issue whether the defendants had infringed. Inspection of Machines and Processes. In an action for infringement of a patent, the Court or a judge may, under the thirtieth section of the Patents Act of 1883, and on the application of either party, make such order for an injunc- tion, inspection, or account, and impose such terms and give such directions respecting the same and the proceedings thereon as the Court or a judge may see fit. The following cases were decided under the old law with reference to an inspection of the processes used or the articles made by the defendant in alleged violation of the rights of the plaintiff : Bo vill v. Moore (2 Coop. C. C. 56) ; Brown v. Moore (3 Bligh, 180) ; Morgan v. Seward (1 W. P. C. 169). In the case of The Patent Type Founding Company v. Walter (Johns. 727), the defendant, a printer, who used types alleged to be made in colourable imitation of the type patented by the plaintiffs, was on motion ordered by Wood, L'TM ACTIONS FOB INFRINGEMENTS V. C., to deliver a sample of type to the plaintiffs for analy- sis, although a similar nppli< -ution had been refused by the Court of Exchequer in 7V />any :. \\.\ N. lii-j,. However, by On l.r 1... Kule 8, of the Supreme Court Rules 1H83, the Court or a judge is empowered in any cause or matter to authorise any samples to be taken, or any observation to be made, or experiment to be tried, which may seem necessary or expedient for tin purpose of obtaining full information or evidence. Inspection will not be granted unless the Court is satisfied that there is really a case to be tried at the trial, and that inspection is essential to enable the plaintiff to prove his case. (Vi>jii>,uni \. : ' .268); (.'hrftham v. tn.ih.im. No.a(6B.P.< Cases as to furtlu r particulars of I trenches : A'/*.-// v. Itntl.-r .1 I!. I 1 . . 189 : Til.ihm.n,' ,1 K. r. C, W8) : ftuwll v. //(//././ -j i;. P., i leg v. Pifetorifl iinU,,-,- Co, <: i;. I 1 . ( . :t:,i. : /// .. //.,// , i i;. I 1 . ( . -jo;; : 7.7,/-/,Y/, v. ////.. (6 K. i 87). r,irti< alia timi*. The twenty-ninth section of the Patents Act of 1888, subsections '2 ami :t, requires the defendant to deliver with his statement of defence, or by or.lt r of the Court or a judge at any subsequent time. particulars of any objections on which he relics in support thereof; and if the defendant di>put< .lidity of the patent, the particulars delivered by him inu.st state on what grounds he disputes it ; and if one of these grounds is want of novelty, he must state the time and place of the pre\iou^ publication or user alleged by him. And subsection 5 en- ables the defendant to amend such particulars from time to time by leave of the Court or judge. 1 If a defendant relies as an objection to a patent on general public knowledge of the invention before the date of the patent, he should not mention in his particulars of objec- tion the several books or publications which he takes to be 1 I'pon the corresponding section (41) of the Patents Act of 1852 the following cases have been reported: I'enn v. Dibby (L. R. 1 Eq. 648); Grover A Baker Company v. Wilson (\\. N. H70, p. 78); flower v. Lloyd .(1.. U. G Ch. D. 297) ; Crouley v. Tomey (L. R. 2 Ch. D. 533) ; Plimpton v. Spilltr (20 S. J. 859) ; Morgan v. Fuller, No. 2 (L. R. 2 K.,. 297). It has been held that the objections cannot go beyond the pleas ; they are merely to state more particularly what the pleas state generally. (Mac- namara v. Hulse, 2 W. P. C. 128.) As to other points bearing upon this subject see Palmer v. Wagttaff (8 Ezch. Rep. 840); Palmer v. Cooper (9 Exch. Rep. 231); Hull v. Bollard (1 H. & X. 134); Lister v. leather (3 Jur. s. s. Hlfi) ; Grearts v. Eastern Counties Railway Company (1 Ell. A" Ell. %1 ; S.C.5 Jur. x. s. 733) ; Talbot v. Laroche (15 C.B.310) ; Electric Telegraph Company v. Xott (4 C. B. 462) : Fislier v. Dcwick (1 W. P. C. r>:>\ .); Heath v. Vnicin (1 W. P. C. 551); Jones v. Berger (1 W. P. C. 544 n.) ; Househill Company v. Xcilson (1 W. 1'. C. 552) ; Holland v. Fox <1 C. L. R, 440). ACTIONS FOK INFRINGEMENTS .281 proofs of that knowledge, or which gave to the public the means of acquiring it. General public knowledge must be proved by witnesses in the ordinary way at the trial, and they may refer if necessary to well-known books. In the meantime he may be required to strike out of his particulars those publications which go to prove public knowledge only. On the other hand, if a defendant relies on any publica- tions as anticipations of the invention, he must state in his particulars the nature of the anticipation on which he relies, and what those publications are and where they are to be found ; and must indicate that he relies on them as anticipations, and not as showing the state of public know- ledge. In the case of a specification that part of the claim on which he relies should be shown. Generally speaking, , he need not state particular pages of the books or specifi- cations, unless the matter would be doubtful without that information. (Holliday v. Heppenstall, in the Court of Appeal, L. E. 41 Ch. D. 109; 6 E, P. C. 320.) Previous to this enunciation of the practice a defendant had been ordered to give the pages and lines of the specifi- cations and books to which he referred as anticipating the plaintiff's invention, and to state which of the claims in the plaintiff's specification had been anticipated by the prior specifications. (London and Leicester Hosiery Company v. Higham, Lawson's Patents Acts, 2nd ed. p. 498 ; see also Harris v. Rotlncell, 1 Griff. P. C. 110.) And another defendant, in referring to a book on which he relied as anticipating the plaintiff's invention, was ordered to refer to specified parts thereof, and where there were words in the particulars denoting reliance upon the whole of the various earlier specifications, they were directed to be struck out, leaving him at liberty to refer to pages and lines. (Harris v. Eothwell, 3 E. P. C. 243. And see Fowler v. Gaul, 3 E. P. C. 247.) However, it has not been unusual in practice to refer to the whole specification, and if there was no special complication this was not often objected to. When objection is made in general words to a discon- I'M' ACTIONS FOR INFRINGEMENTS formity !> tt< r particulars may be obtained. 1. !.//.-. I Hi.TiVuM linixli /;/,, vnV I.i-iht Corporation T. Cromp- i i:. I 1 . < . -27.) I'mler an objection that tin- inv. minn is not new : defendant may show the want of novelty of one of two in- ventions described in the specification. L. R. 2 Q. B. 1). 498.) As to tin- terms on which leave to amend particulars of objection are granted under special circumstances, see //>/// (L. R. 1 Eq. 548) ; Wilson v. (ninii (23 W. l;. 546) ; ll> n < . 17 Ch. D. 137). Intfrrtyatoricg. In a suit for an injunction a defendant denying infringement may be compelled to answer whether he used the plaintiff's materials, whether he makes any addition to them, and whether such addition makes any difference. (U<->mr tin ;i U^-oniing the owners of it had in various proceedings disputed or made jn -parations for disputing its validity applied to the Court for an order for the inspection of certain documents r. lilting to those proceedings. It was held hy ional Court that the defendants were entitled to have inspection of all except such as the plaintiffs should state on oath had come into existence merely to he communicated to the soli- citor for the purpose of litigation actual or intended, and tit her as materials for briefs or for his ;ul\i and con- sideration. (Ihitlain ('". \. Hall, :> IS. P. C. 1.) Litigation had taken place between two companies \\ith regard to the validity of a patent belonging to one of them. They afterwards amalgamated and the new company brought an action for infringement against H. It was held hy the Court of Appeal that H. was entitled to administer an inter- rogatory as to the particulars of objections delivered in the ious action between the two companies. (Edison & Sinn, ( ... v. H,,ll,m,l, 5 R. P. C. 213.) M In this case (p. 216), the practice with regard to applications for leave to ad- minister interrogatories having reference to documents supposed to be in the possession of the opposite party, who has already given discovery, is stated. \\here it seems probable from a document produced by one of the liti#itin^ parties that he has in his possession other relevant documents, he may be called upon to make a further affidavit in regard to those supposed documents. (/>'..//// V. ,Sl//KM/;j, 5 R. P. C. 515.) Trial. Under the twenty-eighth section of the Act of 1883 the action is to be tried without a jury unless the Court shall otherwise direct. Trials of patent cases have very seldom taken place before juries since the Act came into operation. By the Arbitration Act 1889 (52 & 53 Viet. c. 49 s. 14) repealing and re-enacting with slight variations the fifty- ACTIONS FOE INFRINGEMENTS 285 seventh section of the Judicature Act of 1873, the judge before whom a case requiring ' scientific investigation ' comes for trial is empowered to send the issues of fact to be tried before a referee. Where a patent case had been so sent for trial before an official referee, it was contended by the plaintiff in the Court of Appeal that the case was not one that required ' scientific investigation ' within the meaning of the Judicature Act, but it was held to be im- possible for that Court to say that an action for the infringe- ment of a patent did not require scientific investigation ; and that, as the judge had decided that it did, the Court would not interfere with his discretion. (Saxby v. Gloucester Waggon Co., W. N. 1880, p. 28.) The referee will make a report as to the issues of fact which were sent to him for trial, and his findings so reported are to be considered equivalent to the finding of a jury. On the trial of an action for the infringement of a patent the Court has power, under the Arbitration Act 1889, re- pealing and re-enacting with variations sect. 56 of the Judicature Act of 1873, to order without the consent of the parties that a competent person should ascertain facts or make experiments, and report the result of his inquiry for the information and guidance of the Court. (See Badischc Anilinund Soda Fabrik v. Levinstein, L. E. 24 Ch. Div. 156 ; Mellin v. Monico, L. E. 3 C. P. D. 142 ; Edison d- Swan Co. v. Holland, 5 E. P. C. 459.) The Court of Appeal some- times thinks fit to exercise this power. (Moore v. Bennett, 1 E. P. C. 129.) By the twenty-eighth section of the Act of 1883 it is enacted that, in an action or proceeding for infringement or revocation of a patent, the Court may, if it thinks fit, and shall, on the request of either of the parties to the proceed- ing, call in the aid of an assessor specially qualified, and try and hear the case wholly or partially with his assistance. Under the third subsection of the same section the remune- ration, if any, to be paid to such assessor shall be deter- mined by the Court and be paid in the same manner as the other expenses of the execution of the Act. ACTIONS FOB INFRINGEMENTS By the nineteenth section of tin- Ait of 1888 the judge is empowered, in an action for infringement or in a oeeding for revocation, to give liberty to the patentee to :i|.|.l\ at the Patent Office for leave to amend bis specifica- tion, and to postpone tin- trial. iS*-. tin? i-hapu-r on Amendments.) As to the trial of causes and issues, see < > Kule "> and Hule 7 (a) of the Supreme Court Rules, 1888. The defendant in an action for the infringt ment of a it for a chemical process set up l>y his d.-f. n- . tliat he had a secret process which was not an infringement. The judge, seeing that irreparable mischief would be done to him if he were called upon to state in open Court \vhat that secret process was, in case it should turn out that tin- patent was bad, allowed him not to answer certain questions which were put to him, hut left him to determine for himself whether he would or not communicate his secret process to the Court, so that the Court might be able to determine whether he infringed the patent or not. The defendant, acting on the advice of his counsel, elected before the termi- nation of the case to disclose his secret to the judge, who heard his description of it with closed doors, no persons _ present except the parties and their scientific assist- ants. (Jitiilixcin- Anilin inul Soda Falril v. Ln-\nst>., I.. 11. 24 Ch. D. 156.) See also Kili*nn v. \\',n,,lh,,n*c (8R. P. C. 172). A model whirh has not bewi put in evidence may be handed up to the Court as an example of a class of machine, in order to explain counsel's argument. (]i<>>i,- rocks, Appeal, 6 R. P. C. 154.) "Win-re a judge at the trial of an action is of opinion that the invention under the patent is good subject-matter and is useful, and accordingly upholds the patent in these respects, his decision will be followed by another judge of co-ordinate jurisdiction in case the validity of the same patent is contested on the same grounds by another defen- dant, -ham, 6 R. P. C. 132; S. C. on appeal, 6 R. P. C. 234.) ACTIONS FOR INFRINGEMENTS 287 Evidence. In regard to the evidence it may be useful to remember that the Court looks with distrust on experi- ments conducted for the express purpose of manufacturing evidence for the cause. (Young v. Fernie, 5 Giff. 577 ; Betts v. Neilson, L. E. 3 Ch. 429, 433.) By the 4th subsection of the 29th section of the Act of 1883, no evidence is to be admitted at the hearing, ex- cept by leave of the Court or a judge, hi proof of any alleged infringement or objection of which particulars have not been delivered. Hence under this clause the Court at the trial has a discretionary power to allow the evidence to go beyond the particulars of breaches or objections. (Britain v. Hirsch, on appeal, 5 E. P. C. 226.) Where particulars of breaches alleged divers sales and specified sales to two persons, evidence of a sale to a third person was allowed where the defendant admitted having had transactions with him. (Sykes v. HowartJi, L. E. 12 Ch. D. 827.) As to the mode of proving the allegation of general public knowledge, see the case of Holliday v. Hcppcnstall, ante, p. 280, under Particulars of Objections. In actions for infringement the onus of proof with regard to want of novelty is on the defendant, and therefore in an uncontested case the plaintiff is not bound to prove the novelty of his invention. (Peroni v. Hudson, I E. P. C. 261.) An offer to execute orders for swivelling pumps in response to applicants, no particular form of swivelling pump being mentioned, was held not to be evidence of an intention to infringe a patent for swivelling pumps where the specification did not claim every kind of that class of pump. It was to be presumed that the offer referred to such pumps as would not be an infringement of the patent. (Gmjnne v. Drysdale, 2 E. P. C. 160; S. C., appeal, 3 E.P.C. 65.) It was said by Lord Herschcll in the House of Lords (Badische Anilin urid Soda Fabriky. Levinstein, 4 E. P. C. ACTIONS FOR I MEKT8 it m ith< r the patentee nor any other \\itn-^ , be called to prove what was tin invrntimi claimed by tin- specification. That question was to be answer, d from a ( i itical examination of the instrument )>y tin- Court. It would Refiu. therefore, that the cases of llatcman (Ma< in. in i ' . Mad-. I are overruled as far as they relate to this point. A patentee who has assigned his pat* tot be re- strained, on the trial of an action for infringement hrougbt 1'Y the assignee against a third party, from giving informa- tion in his possession which might tend to show that tin- it is invalid. (Liuln nml l,tic C,,. \. Thornton (5 R. P. C. 118) ; Britain v. Hirxch (5 R. P. C. 22*. }'. (6 R. P. C. 46) ; 7*/i /./ v. Latham (6 R. I 1 ( . 184). The opinion of scientific witnesses is only admissible as proof of facts. Their opinion whether there has been an infringement or not, though sometimes received in order to save time, is strictly speaking inadmissible, and if objected to ought to be rejected. The Court alone is to decide questions of law. Per /,"/'/ U". //*// ///. ///./.-, in .v. / v. Ili'i'iiit*. s H. I., ('as. 550) 'a ques- tion of fact wholly for the jury \i/. \\hat the defendant* done: and if scientific e\i.l. necessary fill', elucidate the case on either hi no doubt admissil ! : and in determining the question of infringement the j must apply what the jury find to 1)6 tr It is a question for the judge whether. <>n proof of c rtain having been done by a defendant, tin plaintiff has any case to go to the jury. Per L\-<\ rA/////*/../W, in lli : i,iiiu (8 H. L. C. 550). ]) H. L. 1.) In estimating the amount of dani'iges sustained hy a jdaintiff in respect cf an infringement of his patent, the Court adopts a form of inquiry different from that which it employs in the analogous case of an imitation of a plaintiffs trade-mark. In the latter instance the Court will not as- sume in the absence of evidence that the plaintiff would have sold all the articles which the defendant has wi fully sold. (The Leather Clnth ('>. \. Iliwh/.M, L. 1:. 1 Eq. 299.) But every sale without licence of a patent article must be a damage to the patentee, and therefore the inquiry in a patent case will extend to the sale by the defendant of ant/ articles made by him since the infringement was com- menced. (Dar<>rt v. Rylands, 1 L. R. Eq. 308.) The inquiry will extend to the sales by the defendant within six years before the commencement of the proceedings (Da port v. Rylanth, L. R. 1 Eq. 80*2 : r/- /,)/ v. />///// (in* Li'lht Co., 1 W. P. C. 119) ; but if the plaintiff be an assi of the patent the amount will only be taken from the date of the registration of the assignment to him. (Eln-f assessment where tin infringing articles are only partly covered liy the patent, and are let out at a rental, see Unit- if V. /,/.//..//. <:,,,tjHinii v. H'///..r ,( f the Court that his original claim was framed in good faith and with reasonable skill and knowledge. The seventet -nth section of the Patents Act of 188S directs (subsect. 4 b) that if any proceeding shall he t: in respect of an infringement of a patent committed at: failure to make any prescribed payment within t In- scribed time and before the enlargement of the time, tin- 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. /' i-]>. ttuil Injunction*. The plaintiff is entitled to a perpetual injunction to restrain future infringements when the validity of the patent has been conclusively established, and the fact of infringement has been proved. And if tin- defendant chooses to submit the injunction may be obtained without proceeding to trial. Rule 16 of order LVIII. of S. C. R. directs that there shall be no stay of proceedings pending appeal, except so far as the Court appealed from or a judge thereof or the Court of Appeal may order. See J-'li])(i>ii/ v. (.'iinard Sti-mnxhip CIUIIJHIIIII uml I'tirl.- 1 '> 11. P. C. 898). By section 110 of the Act of 1888all parties .shall, notwith- standing anything in the Act, have in Ireland their remedies under or in respect of a patent as if the same had been granted to extend to Ireland only. And by the lllth section the jurisdiction of any court in Ireland in proceed- ings relating to patents is not to be affected l>y the pro- visions of the Act conferring a special jurisdiction on the Court as defined by the Act, except so far as the latter jurisdiction extends ; and with reference to any such pro- ceedings in Ireland, the terms ' the Court ' and ' the Court of Appeal' respectively are to mean the High Court of Justice in Ireland and Her Majesty's Court of Appeal in Ireland. ISLE OF MAX. By the 112th section of the Act of 1883 it is enacted that it shall extend to the Isle of Man, but that nothing therein shall affect the jurisdiction of the Courts in the Isle of Man in proceedings for infringement, or in any action or proceeding respecting a patent competent to those Courts. ACTIONS FOE INFRINGEMENTS 297 COSTS AND CERTIFICATES. 1 The successful plaintiff is entitled to his costs, unless his conduct has been such as to induce the judge to deprive him of them. (Nunn v. Albuquerque, 31 Bea. 595.) In patent actions costs are usually allowed on the higher scale (see E. S. C. 0. LXV. rr. 8, 9) on account of the im- portance or special nature and difficulty of the cases ; and costs as between solicitor and client are obtainable under the 31st section of the Act of 1883. (See post.) The plaintiff will not be deprived of costs because he did not apply to the defendant before taking proceedings (Burgess v. Hatclcy, 26 Bea. 249 ; Upmann v. Forrester, 24 Ch. D. 231), nor because the defendant was unacquainted with the plaintiff's rights, nor because he had no intention to do wrong. (Burgess v. Hills, 26 Bea. 244 ; Cooper v. Whittingham, 24 Ch. D. 231.) After judgment has been delivered the counsel on both sides will at once apply to the judge for the certificates to which they may be respectively entitled. A reasonable time after trial is sometimes allowed to a party for apply- ing on paying the costs of the motion. (Row cliff e v. Morris, 3 E. P. C. 145.) No appeal lies from the grant of a judge's certificate, as it is not a judgment or order within s. 19 of the Judicature Act, 1873. (Haslam Company v. Hall (2), 5 E. P. C. 144.) It is directed by the sixth subsection of the twenty- ninth section of the Act of 1883, that on the taxation of costs, regard shall be had to the particulars delivered by the plaintiff and by the defendant, and they respectively shall not be allowed any costs in respect of any particulars delivered by them, unless the same is certified by the Court or a judge to have been proven, or to have been reason- able and proper, without regard to the general costs of the case. The taxing master has no power without the June's certificate to allow the successful defendant's costs of his 1 See the cases as to costs collected in Mr. W. N. Lawson's cited work pp. 176-189. 298 ACTIONS FOR INFRINGEMENTS particular* of objection which he had not been called D to prove at tin- trial, ;t^ the aetimi had Keen dismissed (\\ith 11 tlu- ground that tin- plainti:: '.lionwu not sal >ject- matter. (/, the costs occasioned by the issues raised by those particulars of breaches which the defendant failed to prove. (]>ni]>aii>/ v. Kniaht, <; !;. 1'. C. i!'.i7 : (irimn v. 6 15. P. C. 896.) Where a defendant not only denied infringement but also contested the validity of a patent, and the result was that infringement was proved, but the patent was found to be invalid, the plaintiff was held to be entitled to the costs of the issue in respect of the infringement. (Poo/. /////, 2 H. P. C. 167.) And so when the plaintiffs succeeded on a distinct issue, though defeated in the action generally, they were held to be entitled to the costs of that issue. (I Hank v. ]-'<>.>tinan, 5 R. P. C. 661.) But on the other hand, see (iiiilh.rt-Martin v. Kerr (4 R. P. C. 23); /-.<< ^mj>anii v. 7/.//nm/ (5 R. P. C. 488); Jilal. flmm (6 R. P. C. 88). The plaintiffs sued for the infringement of two patents, but abandoned one at the trial, whilst they succeeded on the other. They were ordered to pay such costs as occasioned by their suing on the abandoned patent. / imj v. l-'raser, 3 R. P. C. 7.) And so where a plaintiff sued on three patents, but only succeeded on one, he was din to pay such costs as had been incurred by including the other two in the claim. (Edison v. }\'<><>(Ut<>usc, 8 R. P. C. 178.) - The proprietors of two patents having brought an action on each against the same defendant, the judge allowed the plaintiffs only such costs as they would have been entitled ACTIONS FOR INFRINGEMENTS 299 to had they joined both patents in one action. (United Telephone Co. v. Sharpies, 2 E. P. C. 28.) If a defendant raises issues which are abandoned at the trial, the unsuccessful plaintiff is entitled to the costs of those issues. (American Braided Wire Co. v. Thomson, 4 E. P. C. 322.) Third parties who appeared in the Court below and in the Court of Appeal, although not made defendants, were ordered to pay costs. (Edison & Swan Co. v. Holland, 6 E. P. C. 243.) As to the proper certificates in cases where judgment is given at the trial for the defendants who are not called upon to go into their defence, see Germ Milling Co. v. Robinson (3 E. P. C. 254) ; Longbottom v. Shaw (6 E. P. C.. 143). At the trial of an action for infringement, the judge found for the plaintiff, but on appeal his decision was reversed, and the Court of Appeal gave the defendant such certificates as to costs as ought to have been given by the judge who tried the case, if his decision had been in con- formity with that of the Court of Appeal. (Humpherson v. Syer, 4 E. P. C. 416 ; Cole v. Saqiti, 6 E. P. C. 45. And see Cropper v. Smith, 2 E. P. C. 61.) When a patent case is carried to the Court of Appeal, and can there be decided at once on one short point, the Court will refuse to go on with it, simply for the purpose of ascertaining how the costs should be apportioned between the parties. (Longbottom v. Shaw, 6 E. P. C. 147 ; Boyd v. Horrocks, 6 E. P. C. 162 ; Blakey v. Latham, 6 E. P. C. 190.) But sometimes the Court of Appeal, on reversing the judgment in the Court below, will refer the case back to the judge who tried the case to deal with the question of costs. (Combined Weighing &c. Co. v. Automatic Weighing Machine Co., 6 E. P. C. 502.) The following cases relating to certificates of proof of particulars of breaches may be referred to : Young v. Ro- senthal (1 E. P. C. 41) ; Germ Milling Co. v. Robinson (3 E. P. C. 260) ; Bray v. Gardner (4 E, P. C. 406). 300 ACT10KS FOJt 1 And as to certificates of proof of partfenlMri "f objections, >t it h (2 R. P. C. ' i / (SB. P. 0.179); Q*rm Mill,' _'.- I : i;..thu;ll v. Kin., c>) tl ll. 1'. '. /././//' < ; i i;. I 1 , c. M ' I M r, I : P. C. 288); o,/,/,/ v. N//M/A .:, ! luMnm v. ,s'W (B l;. I 1 . ( . :.<)2). By the thirty-first section of tin- Art of 1883. it enacted that, in an action for infringement of a patent, the Court or a judge may certify that tin validity of tin- patent came in '|iii stion ; an give a certificate that the validity of the patent had c into question, holding that the section only applied when the patent was established in a case contested in Court, v. ///>', 1 R. P. C. 261.) On the other hand, in k v. liradbitry (4 R. P. C. 74), the judge, under similar circumstances, pave the certificate. In an action for alleged infringement, where the plaintiff proved the validity of the patent, but failed to prove the infringement, the judge gave the certificate. (Aiit'iinati? MY/,//m/// Machine Co. v. A* MI/////, (5 R. P. C. 120.) Judgment was given for the defendant in an action for infringement, the patent being declared invalid by reason of one of the claims having been anticipated. The judge, however, gave the plaintiff a certificate that the validity of the patent had come in question in the action. (Jlaslam v. Hall, 5 R. P. C. 26.) Where the validity of a patent was impeached on grounds different from those brought forward in a former action, in which its validity was established, and the judge's ACTIONS TOE INFRINGEMENTS 301 certificate to that effect was obtained, costs as between solicitor and client were refused, and costs on the higher scale were given to the successful plaintiff in the second action. (Otto v. Steel, 3 E. P. C. 120.) A certificate of validity is not available in an action by the same plaintiff against another defendant, if it was given after the later action was commenced. (Automatic Weighing Machine Co. v. International Hygienic Society, 6 E. P. C. 475.) As to other questions in regard to costs as between soli- citor and client, after the validity of the patent has been established in a previous action, see United Telephone Co. v. Townslicnd (3 E. P. C. 10) ; United Telephone Co. v. St. George (3 E. P. C. 339) ; United Telephone Co. v. Patterson (6 E'. P. C. 140). The Vice-Chancellor of the County Palatine of Lan- caster is not a Court or judge within the meaning of the 31st section, and cannot grant a certificate thereunder. (Proctor v. Sutton Lodge Chemical Co., 5 E. P. C. 184.) In the case of Davenport v. Rylands (L. E. 1 Eq. 308), under the corresponding section in the Act of 1852, Sir W. P. Wood, V. C., decided that a patentee who has ob- tained this certificate may have his full costs in any subse- quent action for infringement, although the validity of the patent may not have been in question in such action. See, however, Automatic Weighing Machine Co. v. International Hygienic Society (6 E, P. C. 475). As to what is a sufficient certificate to enable the Court to direct the costs to be taxed as above mentioned, see Betts v. De Vitre (11 Jur. N. s. 11), Bovill v. Hadley (17 C. B. N. s. 435). Other cases relating to the certificate are Stacker v. Rodgers (1 C. & E. 99) ; Ball v. Lclm (< Times,' April 14, 1881). When directors of a limited company are active parties in an infringement of a patent by the company, they may be made parties to a suit against the company, and may be ordered personally to pay the costs of suit. (Betts v. DC A( VENTS 1'i/r. . 11 .lur. N. s. :, affirmed on appeal, I.. I:. :i Ch. -1*21>. See also Sjn-na-r v. ,4nfoa/ IV / ' . - I;. P.O. fiirtln r as t<> tli luxation of costs in patent suits, Smith v. 7W//T (L. II. I 1 .' l'.|. 173): 1 (L. R. 20 Eq. G8-2); HV-/,//,///;/ \. Corcorm cJT \V. N. 857 - ACTIONS TO RESTRAIN A PATENTEE'S THREATS 303 CHAPTER XIX. ACTIONS TO RESTRAIN A PATENTEE'S THREATS. BY the thirty- second section of the Act of 1883 it was enacted that if any person claiming to be the patentee of an invention, by circulars, advertisements, or otherwise, threatens any other person with any legal proceedings or liability in respect of any alleged manufacture, use, sale, or purchase of the invention, 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 sus- tained thereby, if the alleged manufacture, 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. But this section is not to apply if the person making such threats with due diligence commences and prosecutes an action for infringement of his patent. Previously to the passing of this Act it had been held that it was necessary to show a want of good faith, that is, an absence of reasonable and probable cause, as well as the untruth of his assertions, to render a patentee liable for threatening to take legal proceedings. (Halscy v. Brotherhood, L. E. 15 Ch. D. 514, and 19 C. D. 386 ; Burnett v. Tate, 45 L. T. N. s. 742 ; Societe Anonyme v. Tilyhman's Co., 25 Ch. D. 1 ; Sugg v. Bray, 2 E. P. C. 223.) But now the threatening patentee cannot rely on the absence of proof of mala fides as a good defence, unless by bringing and diligently prosecuting an action for infringement he bars the application of the earlier part of the thirty-second section. Where a patentee did so, and failed to support the validity of the patent at the trial, and then the action 304 ACTIONS TO RESTRAIN A I AT8 to rest ruin the i.ssue of tin cirruUn CfUiit ..n for IK at \\hich evidence of mult n * \\a- not forthcoming, tin- jiid^. .siid, unless there is plain ( vi.l. nc.- of malice- th> no cause of action. The action was th* seed, l.ut \\ithoutcosts. (Slinrj, \. . B I:. I 1 . C. 198. See also Chall'-ifl-r v. ;;,.///,. j 1;. r. < . :i71.) It was at one time supposed that in an action for an injunction to restrain threats under the thirty-second s of the Act the validity of the threatening defend patent could not be impeached ; hut it is now settled that the plaintiff in such an action may j.ro\e, in Cither of two ways, that he has not infringed any legal right of the defendant, the person making the threats. Either he- may show that he has not infringed a valid patent ; or he may prove that the patent is invalid, and then fore that he has not infringed any legal right of the defendant. In the latter case the defendant is entitled to have the same notice of objections, and the same right of beginning and replying at the trial, as if he had been plaintiff in an action for infringement. See ('hull ml r v. /; /// 1 1 l;. 1'. ( '. 863); Kurtz v. S t ,,-nce (4 R. P. C. JiiT : 9. C. > I!, i 161) ; //- ///'// ;v/,r v. Squire (5 B. P. C. 581) ; S. ( '. on aj (6 B. P. C. 164). 1 It may be useful, perhaps, to give in a short anal shape the result of the cases relating to actions to restrain threats by a patentee brought by persons aggrieved under the 32nd section of the Act of 1883. (1.) When the patentee refuses to bring an action for infringement : (a) if the plaintiff shows that the patent is invalid, or that he has not infringed it, he will succeed, without regard to the question of the patentee's bona fides in making the threats. (Kurt: v. >'////-, 5 R. P. C. 161 ; iiiirc, 5 B. P. C. 581.) But (b) if it is 1 Besides the cases cited, the following have a bearing upon minor point- in actions under the thirty-second section : Union Electrical Power and Light Co. v. Electrical Power Storage Co. (5 R. P. C. 329) ; Colley v. Hart (6 B. P. C. 17 ; 7 R. P. C. 101). ACTIONS TO RESTRAIN A PATENTEE'S THREATS 305 shown at the trial that the patent is valid, and that it has been infringed, the plaintiff in the threat action will fail. (Crampton v. Patents Investment Co., 5 E. P. C. 382.) (2.) When the patentee brings an action for infringe- ment, and (a) succeeds at the trial in showing the validity of his patent and its infringement, the action for threats will be decided in his favour (Automatic Weighing Machine Co. v. Combined Weighing Machine Co., 6 E. P. C. 121) ; and (b) even if the patentee fails to establish the validity of his patent, or the fact of its infringement, he will still not be liable in the threat action unless absence of bona fides is shown (as before the Act of 1883). Sharp v. Braucr (3 E. P. C. 193) ; Combined Weighing d-c. Co. v. Automatic d-c. Co. (6 E. P. C. 502) ; Colley v. Hart (7 E. P. C. 101). Threats. The first question to be considered is, has a patentee threatened legal proceedings within the meaning of the words ' circulars, advertisements, or otherwise ? ' A letter from the patentee's solicitor may be a threat for which the aggrieved person may proceed against the client. (Driffield Ac. Co. v. Waterlow & Co., 3 E. P. C. 46 ; Crampton \. Patents Investment Co., 5 E. P. C. 393 ; Combined Weighing d-c. Co. v. Automatic dc. Co., 6 E. P. C. 506.) See, how- ever, remarks of North, J., Barrett v. Day (7 E. P. C. 54). Notices by letters addressed by a patentee to persons who were using an invention of the plaintiff, and so framed as to lead people to believe that the patentee was complain- ing of the plaintiff's invention as being an infringement of the patent, were held to be threats within the meaning of the section. (Burt v. Morgan, 4 E. P. C. 278.) Then letters written ' without prejudice ' may contain threats within the section. (Kurtz v. Spence, 5 E. P. C. 173.) Also a private letter written by the patentee to a customer of the plaintiff. (Walker v. Clarke, 4 E. P. C. 111.) Pending an action for infringement, the plaintiff has no right to advertise a positive statement that the defendant has infringed, and he may be restrained if he does so advertise. (Gaulard v. Lindsay, 4 E. P. C. 189.) But quare whether mere warnings to the public in x 306 ACTIONS TO RESTRAIN A PATENTEE'S THREATS respect of the future are threats within the meaning of the section. (Cluill. ././ v. Rofb, ll;. i' The judges sitting /// lane refused an injunction to re- strain a patentee from sending out circulars containing a verbatim report copied from a newspaper of th<- trial of an action for tin- infringement of bis patent, th trial having terminated in his favour, and the applicants for the injunc- tion 1> ing the defendants in the action, dl-nin-nnl \. Ifamil- Engineer/ vol. xlviii. p. l'28; S. ( '., 1 Griffin P. C. 115.) Injnin'tiniix. An interlocutory injunction to restrain threats must not be moved for . Notice of motion must be given in the iv-jular way. Church 1'Inniiif'riii'i < .... 2 R. P. C. 175.) An interlocutory injunction was refused when the defendant, i ntee, undertook to proceed with due diligence with an action against the plaintiff for an infringement of the patent, but was afterwards granted on his neglecting to perform the undertaking. - Him* fcoU v. F.iirhitnt, 1. R. P.C. Id' 2 R. P. C. 140.) A motion for an interlocutory injunction to restrain the circulation of circulars issued by limited licensees was ordered to stand over until after the trial of an action for infringement brought by a patentee against the plaintiffs in the action for an injunction. (liarn- llnn-ftlx Co., 1 R. P. C. 9, and see Cnmlin>-il U'>-i;ihin < . v. Aiitnnmtir l\',-i : ihin;i Machine Co., 6 R. P. C. 504.) Where a plaintiff, pending an action brought ly him for an infringement, has obtained leave from the Court to amend, but has not yet amended, his specification by dis- claimer, he will not be allowed to issue circulars threatening the customers of the defendant with legal proceedings, and the defendant in the action for infringement may move for an injunction to restrain the issue of the circulars. (Fusee Vesta Co. v. Bryant .( M.III, 4 R. P. C. 191.) In granting or refusing an interlocutory injunction the Court will consider not only the balance of convenience and inconvenience between the parties litigant, but also whether the plaintiff has made out a prinui- facie case, so as to make it seem probable that at the hearing of the action for threats ACTIONS TO KESTKAIN A PATENTEE'S THREATS 307 he will get a decree in his favour on the questions of in- fringement and, if raised, the validity of the patent. (Chal- lender v. Roylc, 4 E. P. C. 372; see also Barney v. United Telephone Co., 2 E. P. C. 173.) The Proviso at the end of the thirty- second section of the Patents Act of 1883 declares that the section is not to apply if the person making the threats with due diligence commences and prosecutes an action for infringement of his patent. It is not required that the action for infringement should be brought against the aggrieved person, that is, the person apply ing for an injunction to restrain threats. ' An action will satisfy the words of the proviso if it is a bond- fide action brought with due diligence and without collusion against a person to whom threats have been addressed in respect of the act to which the threat referred.' Per LL. JJ. Cotton and Boicen, in Challcnderv. Royle (4 E. P. C. 373-5). But it was held by Mr. Justice Kekewich, in The Combined Weighing cC-c. Co. v. The Automatic Weighing Machine Co. (6 E. P. C. 507) that in order to meet the exigency of the proviso, the patentee, if he does not sue the person who has brought an action to restrain threats, must sue a person who has committed an infringement of the same character as the infringement alleged to have been committed by the plaintiff in the threat action. It will not do to bring the action for infringement against a man who is infringing the patent in an entirely different way from that alleged to have been adopted by the man who is sueing for threats. With respect to the words ' due diligence,' they will be interpreted with reference to the time when the threats were made, not with reference to the time when the patentee had notice of what the alleged infringer was doing. Threats being made in March, and an action for infringement having been com- menced in May, that was held to be due diligence. (Chal- lender v. Royle, 4 E. P. C. 376, 372.) And see Combined Weighing &c. Co. v. Automatic Weighing Machine Co. (6 E. P. C. 508) ; Colley v. Hart (6 Times E. 212). For a case in which due diligence was not displayed, see Herrburger v. Squire (5 E. P. C. 594). x 2 ACTIONS TO RESTRAIN A I'ATKXTEfc-8 THRKATS \Vln-ii a threatened action for infringement is com- IIH need and prosecuted \\itli due diligence after l) is no ground upon which an action in respect of such it can subsequently he commenced undo the section. r.ttv.Day,! 1;. L) An ;irti..n |.\ u patentee against licensees, claiming royalties in resnt-rt <>f art \\hu-li the licensees allege are made under anntli. and not under tin- 1! ^ an action for infringement within the proviso. (See Barrett v. />///, fit- d al- Damayes. \Yln n- no special damage was ] suggested, forty shillings damages were awarded. Spcnce, 6 R. P. C. 17 >(//- ,,; }',iliility. In an action to restrain n i toe's threats, where the validity of the patent came into question and was upheld, the judge gave a certificate to that effect under the thirty-first section of the Aet of 1888, but expressed great doubt whether he had jurisdiction to grant it. (Cram}>tn v. l\it<-nt* Inr>'stin<-nt Co., 5 R. I'. < . 404.) In another action to restrain threats, another judge held that he had no power to give such a certificate. \J\rt: v. ,x>-mv, 5 R. P. C. 184.) x. When an action for infringement is brought by a patentee after proceedings to restrain threats have been taken against him, the parties ought to come to some arrangement, so as not to incur unnecessary costs by trying tw<> actions about the same facts. (Court of Appeal : . ' viatic Wi'i'ihiii'i Machine Co. V. Coinl'iiml }]' i : iliin : i Machinr ('., 6 R. P. C. 867. See also Combined W)>j. < tion to a patent on the ground that it comprises more than one invcnti-n.' A petition for the revocation of a patent may be ] sented by (a) the Attorne ;il in England or or by the Lord Advocate in Scotland : (/'> any person autho- rised by these law officers ; (<) any person alleging that the it was ol it aim (1 in fraud of his rights, or of the rights of any person under or through whom he claims ; (d) any "ii alle^'in^ that he. or any person under or through whom he claims, was the tru in\vnt"r ( f any inv : Jin-hided in tin- patentee's claim; (<) any person all* that he, or any person under or through whom he claims an interest in any trade, business, or manufacture, had puhlk-ly manufactured, used, or sold within this realm before the date of the patent anything claimed by the pat* ntee as his invention. That is to say, the persons who, in addition to the law officers and those whom they autho- rise, may present a petition for the revocation of a \>. are persons who allege that they have been defrauded by th grant; or those who claim to be the true inventors of the patented invention ; or those who set up anterior puhlic user by themselves, or by persons through whom they claim. Before a petition can be presented on the ground of prior user by other persons it will l>e necessary to obtain the authority of a law officer. A petition cannot be presented by an agent, although authorised by a power of attorney. i ' / II. 1'. C. 152; S. C. on Appeal, 4 R. P. C. 322.) And all persons beneficially interested in the patent must be made respondents. x . ' . Along with his petition the plaintiff will have to del! particulars of his objections to the patent, and no evidence will be admitted at the trial in proof of any objection not included in such particulars, except by leave of the Court or of a judge ; but the particulars delivered may be from THE REVOCATION OF PATENTS 311 time to time amended by leave of the Court or of a judge. The proceedings at the trial will be similar to the proceed- ings in actions when the validity of a patent is in dispute. The defendant is entitled to begin and give evidence in support of the patent ; and if the plaintiff gives evidence impeaching the validity of the patent, the defendant is entitled to reply. (Sub-ss. 5, 6, 7, sect. 26, of the Act of 1883.) By the nineteenth section of the Act of 1883, the Court or a judge may, in a proceeding for the revocation of a patent, order at any time that the patentee shall, subject to such terms as to costs or otherwise as the Court or a judge may impose, be at liberty to apply at the Patent Office for leave to amend his specification by way of dis- claimer, and may direct that in the meantime the trial or hearing of the action shall be postponed. Leave to disclaim after presentation of the petition was given to the patentee upon the terms of his paying all costs and undertaking to apply forthwith for the disclaimer and prosecute the application with diligence. (Ganlard & Gibbs' Patent, 5 E. P. C. 189.) By the twenty-eighth section of the Act the Court in any proceeding for the revocation of a patent may, if it thinks fit, and shall, on the request of either of the parties, call in the aid of an assessor specially qualified, and try and hear the case wholly or partially with his assistance. The case shall be tried without a jury unless the Court shall otherwise direct. The following cases have been decided by the Courts upon subsection 4 of section 26 in the Act of 1883. In construing clause (<) the word fraud must be con- fined to grave moral culpability, and ought not to be extended to honest mistakes, although the real inventor may have suffered injury. (Arery's Patent, 4 E. P. C. 322.) Cases of alleged prior user under clause (t hi- left at the Patent Office, that an entry may he made in the Register. (Hi, of Patents Rules, 1890.) In Scotland, proceedings for the revocation of a patent are directed by the 109th section of the Act to be 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 concurrence, which concurrence may be given on just cause shown only. Service of all writs and summonses in that action are to be made according to the forms and practice existing at the commencement of the Act. In Ireland, by section 110, all parties are to have their remedies under or in respect of a patent as if the same had been granted to extend to Ireland only. There is no provision in the Act for service out of the jurisdiction of petitions for revocation. Where, however, tin- patentee was resident and domiciled in Scotland, and there was evidence that a copy of the petition and objections had been delivered to him in Scotland, and that he had written to the petitioner's solicitors that he did not intend to appear at the hearing because he was not subject to the jurisdiction of the English Courts, an order nisi was made (on the petitioners applying for directions as to the mode of trial) that unless the patentee should appear before a day named the petition should be tried by rird-vocc evidence ; but if THE REVOCATION OF PATENTS 313 the respondent appeared it was to be open to him to dis- pute the jurisdiction. (Driimmond's Patent, 6 E. P. C. 576.) COSTS. The Act of 1883 is silent as to costs, but the Courts under their general jurisdiction award costs to the petitioner when the patent is revoked. (Haddan's Patent, 2 E. P. C. 218 ; Edmonds' Patent, 6 E. P. C. 358.) At the hearing of a petition for revocation the judge thought that he had no power to give a certificate as to proof of the particulars of objections under the twenty-ninth section, subsection 6, of the Act of 1883. (Gaulard d- Gills' Patent, 5 E. P. C. 537.) 314 OFFENCES AND T1IEIB PENALTIES < HAPTER XXI. OFFKXCKS AXI> TIII-II; IKNALTUCg. Tin: only penalti - imposed b) f the Act of 1888 are those : the offences set forth in the lo.'.th and 106th >ns. By tin lo.'th htc-tion it is enacted that any person who represents that any article sold l>y him is a patt ntetl artii-K' when no patent has been granted for tin- same . . . shall he liable for every offence on summary conviction to a fine not exceeding .">/. And further, that a person shall be deemed for the purposes of the enactment to represent that an artirlr 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 ob- tained for the article stamped, engraved, or impressed on or otherwise applied to the article. According to the case of Chravin v. U'nlb-r (L. R. 5 Ch. D. 862), the use of the word ' Patent, 1 along with a r sentation of the royal arms as a label on an article made according to an invention for which the patent has expin <1, was considered to be a representation that the patent was still subsisting, and was held to disentitle the plaintiff from obtaining an injunction to restrain the wrongful use of the label. The plea of its being a trade-mark was not allowed to be set up. ' It is impossible * (said Sir G. Jesscl, M. * to allow a man who has once had the protection of a patent to obtain a further protection by using the name of his patent as a trade-mark. No man can claim a trade-mark in a falsehood. It is a falsehood in representing the patent as still subsisting/ See also the L'nml, >nn Manufacturing Co. v. Xtiirn (L. R. 7 Ch. D. 834). By the second section of the Merchandise Marks Act, OFFENCES AND THEIR PENALTIES 315 1887 (50 & 51 Viet. c. 28), every person who (1 d) applies any false trade description to goods, and (2) every person who sells or exposes for, or has in his possession for, sale or any purpose of trade or manufacture, any goods or things to which any . . . false trade description is applied, shall be guilty of an offence against that Act, unless he proves that ... he had at the time of the commission of the alleged offence no reason to suspect the genuineness of the trade description, and that on the prosecutor's demand he gave all the information in his power with respect to the persons from whom he obtained such goods or things, or that otherwise he had acted innocently. By the third section (1) of the same Act the expression ' trade descrip- tion ' means any description, statement, or other indication, direct or indirect, (c) as to any goods being the subject of an existing patent; and the use of any figure, word, or mark which, according to the custom of the trade, is com- monly taken to be an indication of the above matter, shall be deemed a trade description within the meaning of the Act. The expression ' false trade description ' means a trade description which is false in a material respect as regards the goods to which it is applied. Persons found guilty of an offence against the said Act are liable to fine and imprisonment and to forfeit any article in relation to which the offence has been committed. (Sect. 2, c.) In the case of Gridley v. Sicinborne (5 Times E. 91), it was held that the sale of packets of gelatine which were marked with the royal arms and bore the words * Under Eoyal Letters Patent. Swinborne's Patent Eefined Isinglass,' was not an offence under the second section of the Merchandise Marks Act of 1887 when there had been a patent for the manufacture of the article, but which patent had expired many years previously. Since no proceedings were taken under sections 105 and 106 of the Patents Act of 1883, it seems to have been conceded that no offence had been committed under those sections. To avoid all difficulty in cases of this kind, and to rebut any possible charge of fraud, manufacturers would do well 316 OFFENCES AND THEIR PENALTIES to add tin nmnbt r ;nul date of the patent to the mark or label art that a provisional specification has been lodged at the Patent Office does not justify the use of the word nt ' a> a label upon aitirl. - made according to tl v. ntion until a patent has been obtained. < / n'rtWx, :\ l\. P. c. 1 ; Tl i>t"n, :\ I;, i By the 106th section of the A. t of 1883 it is enacted that any person who, without the authority of her Majesty or any of the Royal Family or of any Government Departn. assumes or uses in connection with any trade, business, calling, or profession the royal arms, or arms so nearly resembling the same as to be calculated to deceive, in a manner as to be calculated to lead other persons to be '. that he is carrying on his trade, business, calling, or profes- sion, by or under such authority as aforesaid, shall ! lial>lr, on summary conviction, to a fine not exceeding 20/. Many persons engaged in business have been accustomed to make use of the royal arms in one way or anoth< i , and if they continue to do so they should IK? careful not to bring themselves within the purview of this section. By the first section of the Act of 1888 it is enacted that any person describing himself to be a Patent Agent when he is not on the register is liable on summary conviction to a penalty of 20J. (See Chapter XXIV., ' On the Institute of Patent Agents.') In Scotland any offence under the Act of 1883 declared to be punishable on summary conviction may be prosecuted in the Sheriff's Court. (Sect. 108.) In the Isle of Man any offence under the Act which would in England be punishable on summary conviction may l>e prosecuted, and any fine in respect thereof recovered at the instance of the person aggrieved, in the manner in which offences punishable on summary conviction may for the time being be prosecuted. (Sect. 112, subsect. 3.) The ninety-third section of the Act of 1883 enacts that if any person makes or causes to be made a false entry in OFFENCES AND THEIR PENALTIES 317 any Kegister kept under the Act, or a writing falsely pur- porting 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. In the Isle of Man the punishment for a misdemeanor under the Act is imprisonment for any term not exceeding two years, with or without hard labour, and with or without a fine not exceeding 100?. at the discretion of the Court. (Sect. 112, subsect. 2.) NATIONAL CHAPTKi: \\II. INTERNATIONAL AND COLONIAL ARRANGEMENTS. International . [rraiujc incuts* IT is enacted by the 103rd section of t ! t of 1883 that, if the Crown should mak. uiiy arran^-iiK-nt with the rnment or Governments of any fun i^n state or states for the mutual protection of inventions, then any person who has applied for protection for any invention in any such state shall be entitled to a patent for his invention under the Act in priority to other applicants, and sin h patent shall have the same date as the date of the applica- tion in euch foreign state. But the application must be made in this country in the same manner as an ordinary application under the Act, and within M-\VH months from the date of the application for protection in the foreign state. A patentee under this section will not be allowed to ver damages for infringements happening prior to tin- date of the actual acceptance of his complete specification in this country. By the second subsection of the same section it is enacted that the publication in th> ' i Kingdom or the Isle of Man, during the said period of :- months, of any description of the invention, or the use tli. rein during the said period of the invention, shall not invalidate the patent which may be granted for the invention. Thm by the fourth subsection it is directed that these provisions are only to apply to those foreign states with respect to which Her Majesty shall from time to time by < )nler in Council declare them to be applicable, and so long only in the case of each state as the Order in CounciTshall continue in force with respect to that state. INTERNATIONAL ARRANGEMENTS 319 On March 20, 1883, a Convention was signed by repre- sentatives of various Governments, which was afterwards ratified by these Governments. Other Governments after- wards joined the Convention, and at the present time it exists between the following states : Belgium, Brazil, France, Great Britain, Guatemala, Holland and its Indian Colo- nies, Italy, Mexico, Norway, Portugal, Servia, Spain, Sweden, Switzerland, Tunis, United States. By the first article of this Convention it was declared that the said states formed themselves into a Union for the Protection oj Industrial Property, which words were (according to the Protocol accompanying the Convention, 1 and having the same force, validity, and duration as the Convention itself) to be understood in their broadest sense, and to be applicable not only to industrial products properly so called, but also to agricultural products (wines, corn, fruits, cattle, &c.) and to mineral products employed in commerce (mineral waters, &c.). It may here be remarked that neither agri- cultural products nor mineral products are patentable in this country. By the second article of the Convention the subjects or citizens of each of the contracting states are to enjoy in all the other states of the Union the same advantages as re- gards patents of every kind (see the second paragraph of the Protocol) that their respective laws grant to their own subjects or citizens. They are to have the same protection and the same legal ' recourse ' [i.e. remedies] on any in- fringement of their rights, provided they observe the form- alities and conditions imposed on subjects or citizens by the internal legislation [i.e. laws] of each state. With regard to this clause the third paragraph of the Protocol explains that it is not to affect the legislation [i.e. laws] of the con- tracting states relating to legal procedure, jurisdiction, &c. Subjects or citizens of states not forming part of the Union who are domiciled or have industrial or commercial establishments on the territory of any of the states of the Union are by Article 3 of the Convention to be on the 1 The Convention and Protocol will be found reprinted in the Appendix. 320 ARRANGEMENTS same footing as tin- subjects or citizens of the contracting Utes. . by Article I, any person who has duly registered nude] an application for a patent in one of the eon- .MX' states sliull enjoy, as regards registration in the other states, and rest -i-vin^ tin- rights of these parties, a rix'ht of priority for six months, an additional month 1 allowed f.ir countri* * heyond sea. Subsequent registry I pat. nt ol'tain. d on a subsequent application) in any of the other states of tin- I'nion before eipiry of that period Chilli not be invalidated hy any acts done in the interval, either hy registration, by publication of tlie invention, or the working of it by a third party. Article 5 declares that the introduction by the patentee into the country where the patent has been granted of articles manufactured in any of the states of the 1'nion shall not entail forfeiture of the patent as it did in several > before the date of the Convention. But this clause is followed by another which declares that the patentee shall remain bound to work his patent in those states where the law of the country obliges him to do so. It would appear, then-fore, that, although a patentee is entitled to introduce into a country articles made abroad, he must still work the in- vention in that country if there is a regulation to that effect. In this country there is no law of the kind, but under the li'Jnd section of the Act of 1888 patentees who are foreigners may be called upon, like those who are British subjects, to grant licences to work the invention, when the patents were issued under that Act. Temporary protection is to be granted under Article 11 to patentable inventions appearing at official or officially recognised international exhibitions. In order to carry the Convention into full effect, it wa- directed by Article 13 that an International Office should be organised under the name of Bureau Internatint-ti<>n dc la Propriete Industridlr, and that this office should be placed under the authority of the Central Administration of the Swiss Confederation, and worked under its supervision. INTERNATIONAL ARRANGEMENTS It was then agreed by the next Article that the Conven- tion should be submitted to periodical revisions, with a view to improving its provisions, for which end conferences by delegates from the contracting states will be held. It was also agreed that special arrangements for the protection of industrial property might be made separately between any of the contracting states, provided that such arrange- ments do not contravene the provisions of the Convention. By Article 16 it was agreed that states which did not originally take part in the Convention should be permitted to join the Union afterwards by diplomatically notifying their intention to do so to the Government of the Swiss Confederation. And by Article 18 it is provided that any state might retire from the Union by giving notice to that effect to the Government of the Swiss Confedera- tion. At the expiration of one year from the date of the notice the state giving it will cease to be a member of the Union. Great Britain joined this Convention on March 17, 1884, and an Order in Council under section 103 of the Act of 1883 was duly made. The Board of Trade has issued rules as to applications for patents under this Convention, and a copy of them will be found in the Appendix. According to present regulations, ' Patents (International and Colonial Arrangements) Rules 24-29, 1890,' an applica- tion in the United Kingdom for a patent under the Inter- national Convention 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 applica- tion was made. It must be made upon form A 2 (stamped II. , and obtainable upon prepayment of the value of the stamp, through any money order office), and, in addition to the specification, provisional or complete, must be accompanied by (1) a copy or copies of the specification and drawings as filed in the Patent Office of the Foreign State or British Possession in respect of the first foreign application, duly certified by the official chief of such Patent Office, or other- wise verified to the satisfaction of the Comptroller ; (2) a Y INTERNATIONAL ARRANGEMENTS statutory declaration as to tin- identity of the invention in respect of which the application is made with tin- inv. in respect of \vhich the said first foreign application was inado, and if the specification be in a foreign language, a translation thereof must be annexed to and verified by statutory declaration. By the terms of the 103rd section patents under the International Convention can only be granted to the person who has made the foreign application. i.s7//i/A-//'' !////- niHnn. (\ R. P. C. 550 \ .!;;,//, I!. P. C. : The section applies although the state in which the foreign application was made has only acceded to the Con- vention after the date of the foreign application. M l>taling patents. Where any discretionary power is by the Act given to the Comptroller, it is expressly directed by the ninety-fourth section that he shall not exercise that power adversely to THE PATENT OFFICE 325 the applicant for a patent, or for amendment of a specifica- tion, without (if so required within the prescribed time by the applicant) giving the applicant an opportunity of being heard personally or by his agent. As to the procedure, see Rules 11-14 of the Patents Rules 1890. In any case of doubt or difficulty arising in the adminis- tration of any of the provisions of the Act, the ninety-fifth section directs that he may apply to either of the law officers for directions in the matter. The Comptroller is required by the 102nd section to cause a report respecting the execution by or under him of the Act to be laid before both Houses of Parliament, before the first day of June in every year, and to include therein for the year to which each report relates all general rules made in that year under or for the purposes of the Act, and an account of all fees, salaries, and allowances, and other money received and paid under the Act. In case of the absence of the Comptroller, any act or thing directed to be done by or to him may be done by or to any officer authorised in that behalf by the Board of Trade. (Sect. 82, subsect. 4.) GENERAL RULES. The Board of Trade was empowered by the 101st section of the Act of 1883 to make rules for regulating generally the business of the Patent Office and all things placed under the direction and control of the Comptroller or of the Board ; and particularly for regulating the practice of registration ; for making or requiring duplicates of specifications, amend- ments, drawings, and other documents ; for securing and regulating the publishing and selling of copies thereof ; for securing and regulating the making, printing, publishing, and selling of indexes to abridgments of specifications and other documents in the Patent Office, and providing for the inspection of indexes, abridgments, and other documents. Such general rules are to be of the same effect as if they were contained in the Act, and are to be judicially noticed. They must be laid before the two Houses of Parliament, OFFICE either of \\hirh has power within :i limit- > By the eighty-ninth section of the same Act it is enacted that printed or written copies or extracts, purporting to be certified by the Comptroller and sealed with the seal of the 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 and in all proceedings, without further proof or production of the originals. Then by the nim-ty-sixth section a certificate purporting to be under the hand of the Comptroller as to any matter, or thing which lie is authorised by the Act, or any general rules made thereunder, to make or do, shall be pn inn-fade evidence of the entry having been made, and of the contents thereof, and of the matter or thing having been done or left undone. By the twenty-third section of the same Act, it is en- acted that the Register of Patents to be kept at the Patent Office shall be prima-fadc evidence of any matters directed or authorised to be inserted therein. Finally, by the hundredth section of the Act it is directed that copies of all specifications, drawings, and amendments left at the Patent Office after the commencement of the Art, printed for and sealed with the seal of the Patent Office, shall be transmitted to the Edinburgh Museum of Science THE PATENT OFFICE 327 and Art, and to the Enrolments Office of the Chancery Division in Ireland, and to the Eolls Office in the Isle of Man, within twenty-one days after the same shall respec- tively 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 pay- ment 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. REGISTERS. The Eegister of Patents kept at the office and mentioned in the chapter on Eegistration is open to public inspection daily (with certain exceptions mentioned in Eule 78) be- tween the hours of ten and four. Up to the end of 1883 the registers kept at the Patent Office were two. In the one called the Eegister of Patents were recorded, in chrono- logical order and with the dates, all patents granted under the Patents Act of 1852, as well as the deposit or filing of specifications, disclaimers, memoranda of alterations, amendments, confirmations, and extensions, and the ex- piry, vacating, and cancelling of patents. The other register, called the Eegister of Proprietors, contains entries of the assignments of patents, or of any share or interest therein ; and of licences, mentioning the districts to which they relate, with the names of persons having shares or interests in patents and licences, and the dates at which such shares or interests were acquired. PUBLICATIONS AND INDEXES. Besides the Illustrated Official Journal relating to Patents and Eeports of Patent Cases decided in the Courts of Law and directed to be published by the fortieth section of the new Act, several other publications are issued by the Patent Office. A * Circular of Information,' containing sixteen pages, is forwarded to applicants. Printed copies of all the specifications filed under the Patents Act of 1852, and of all 328 PATENT OF! specifications enrolled pn -vioubly t<> ilic passing <>f th. said Act are purchasable for small sum-, at tin ofllc.-, \\ith lithographed copi.s of the drauin^ accompanying such specifications. Tin spet itications under tin- new Act are also printed ami published, but only \\hen thccompl- fications have been filed and ;; Alphabetical in all the sp cifications of i enrolled in Chancery, from ic.17 to the latest available . have been puhli>hed under the authority of the office, as well as an index arranging the spe ilieations according to the subject-matter, and supplemental indexes continue i published annually. Chronological indexes of patents, from the earliest date to the y.-ar IN?"., have also been published. Another index, called the llefen -nee Index of Patents, point* out the office in which each enrolled or filed specification of a patent maybe consulted; the hooks in which specifica- tions, law proceedings, and other subjects connected with inventions have been noticed; also, such specifications as have been published under official authority. These indexes are of great service in tracing the history of inventions. The volumes containing abridgments of specifications arranged chronologically in classes are of immense utility to inventors who wish to discover what has been already done in any particular branch of invention ; but, unfor- tunately, these abridgments are not kept up to date. Copies of the Patent Office publications are presented to the principal public offices, seats of learning, societies, institutions, libraries, British Colonies, and foreign states. PUBLIC LIBRARY. A library has been established in connection with tin- Patent Office, and this is open free to the public. The whole of the publications of the office, and also the lead- ing British and Foreign scientific journals and text-books in the various departments of science and art are in this library. THE PATENT OFFICE 329 k PATENT MUSEUM. The Patent Museum at South Kensington is transferre by the forty-first section of the Act of 1883 to the Depart- ment of Science and Art, which is empowered by the forty- second section to require any patentee to furnish them with a model of his invention on payment of the cost, the amount, in case of dispute, to be settled by the Board of Trade. THE INSTITUTE OF PATENT AOI CHAPTKK XXIV. THE INSTITUTE OF PYTKNT AdKNTS AND I: 1 ER. Is the year 1882 a number of Patent Agents practi.sin^ in London, being of opinion that it was highly desirable on nil grounds to form an association of Patent Agents, and to obtain incorporation for it under the statutes in force, the proper steps were taken, after the memorandum and articles of association had been prepared, to effect the object in view. The Institute, as the association was named, was established to form a representative liody of the Patent Agents of the l"nit <1 Kingdom for the purpose of promoting improvements in the law relating to patents and in tin regulations under which they are administered ; also to frame rules for the observance of Patent Agents in all matters appertaining to their profession and practice. The Institute is composed of Fellows, Associates (who are not Patent Agents by profession), Foreign Members (who are Patent Agents in the colonies or in foreign countries), and Honorary Members. The affairs of the Institute are managed by a Council, consisting of a President, Vice-President, and Past Presidents, together with eight ordinary members selected from amongst the Fellows. The offices of the Institute are at 19 Southampton Buildings, Chancery Lane, London. Here they keep a library, and at stated intervals meetings are held at which papers relating to patent matters are read and discussed. A volume of their Transactions is published annually. Since its incorporation the Institute has been of material assistance to the Board of Trade in shaping some of the provisions in the Acts of Parliament bearing upon patents THE INSTITUTE OF PATENT AGENTS 331 and in framing rules for the regulation of the business of the Patent Office. By the first section of the Patents Act of 1888, it was enacted that after July 1st, 1889, a person shall not be entitled to describe himself as a Patent Agent by advertise- ment, 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 that Act ; and any person knowingly contravening this provision is liable on summary conviction to a fine not exceeding 20/. But every person who proves to the Board of Trade that he had been bond fide practising in the United Kingdom as a Patent Agent prior to the passing of the Act is entitled to be registered. The Board of Trade is authorised to make general rules for giving effect to this enactment, and it has accordingly issued a set of Rules, a copy of which will be found in the Appendix to this work. A register is to be kept by the Institute for the registra- tion of Patent Agents. A copy of the register is to be printed annually and placed on sale. The Institute is to appoint a Registrar to keep the register under the direction of the Board of Trade. A person who desires to be regis- tered on the ground that, prior to the passing of the Act, he had been bond fide practising as a Patent Agent, must satisfy the Board of Trade that this was the fact before his name will be entered on the register. (Rule 5.) With the exception of persons registered on this ground, no person is to be registered unless he has passed and produced to the Registrar a certificate under the seal of the Institute that he had 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. Before any person can present himself for the final qualify- ing examination of the Institute he must have passed one of the matriculation examinations of an English, Scottish, or Irish University, or the Oxford or Cambridge Middle Class Senior Local Examinations, or the Examinations of the Civil Service Commissioners, or such other examinations as 332 Tili OF PATKKT AGENTS ill. Iii-t;tut. shall, with the :ij>prr in the case of persons who havr for seven ru: years been con- tinuously engaged as pupils r assistants to registered Patent Agents. In these cases the final qualifying examina- tion only is required to be passed by candidates for regis- tration. The Institute must hold, at least once in the year, a final qualifying examination, and it is to have the entire manage- ment and conduct of such examination, including the appointment of the examiners. The subjects of examina- tion are () Patent Law ; (b) Patent practice and procedure ; (c) the preparation and interpretation of patent documents ; (: ji j the sole buying, selling, making, working, or using of tiling within this realm, or the dominion of Wales ; or of any other monopolies, or of power, liberty, or faculty to dispense with any others, or to give licence or toleration to do, use, or exercise anything against the tenour or purport of any law or statute ; or to give or make any warrant for any such dispensation, licence, or toleration to be had or made, or to agree or compound with any others for any penally, or forfeitures limited by any statute. any grant or promise of the benefit, profit, or commodity, of any me, penalty, or sum of money, that is or shall be due by any statu judgment thereupon had, and all proclama- tions, inhibitions, restraints, warrants of assistance, and all other matters and tilings whatsoever, any way lending t< instituting, erecting, strengthening, furthering, or countenancing of the same, or any of them, are altogether contrary to the laws of this realm, and so are, and shall be utterly void and of none effect, and in no wise to be put in use or execution. J. And be it further declared and enacted by the authority aforesaid, that all monopolies, and all such commissions, grants, licences, charters, letters patent-, proclamations, inhibitions, restraints, warrants of assistance, and all other matters and things tending, as aforesaid, and the force and validity of them, and every of them, ought to be, and shall be for ever hereafter examined, heard, tryed, and determined by and according to the common laws of this realm, and not otherwise. Aiiiwom 8. And be it further enacted by the authority aforesaid, that mo. all person and persons, bodies politic and corporate whatsoever, which now are, or hereafter shall be, shall stand and be disabled, and uncapable to have, use, exercise, or put in use any monopoly, or any such commission, grant, licence, charter, letters patents, proclamation, inhibition, restraint, warrant of assistance, or other matter or thing tending, as aforesaid, or any liberty, power or faculty, grounded, or pretended to be grounded, upon them or any of them. [Sect. 4 enacts that the party grieved by pretext of a mono- poly, etc., shall recover treble damages and double costs. And sect. 5 refers to letters patent for twenty-one years already granted. The all-important section is the next.] 6. Provided also, and be it declared and enacted, that any declaration before mentioned shall not extend to any letters patents and grants of privilege for the term of fourteen years or under, hereafter to be made, of the sole working or making of any manner of new manufactures within this realm, to the true STATUTES: 46 AND 47 VICT. C. 57 337 and first inventor or inventors of such manufactures, which others at the time of making such letters patents and grants shall not use, so as also they be not contrary to the law, nor mis- chievous to the state, by raising prices of commodities at home, or hurt of trade, or generally inconvenient : the said fourteen years to be accompted from the date of the first letters patents 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. [The remaining sections of the Act have become obsolete or have been repealed.] 46 &^47 VICT. c. 57. An Act to amend and consolidate the Law relating to Patents for Inventions, Registration of Designs, and of Trade Marks. [25th Aiigust 1883.] [The sections relating to the Registration of Designs and of Trade Marks are not here reprinted.] BE it enacted, &c., as follows: PART I. PRELIMINARY. 1. This Act may be cited as the Patents, Designs, and Trade short title. Marks Act, 1883. 2. This Act is divided into parts, as follows : Dmsion of Act into Part I. Preliminary. parts - Part II. Patents. Part III. Designs. Part IV. Trade Marks. Part V. General. 3. This Act, except where it is otherwise expressed, shall commnce- commence from and immediately after the thirty-first day of UR '" tofAet - December 1883. PART II. PATENTS. Application for and Grant of Patent. 4. (1) Any person, whether a British subject or not, may Person., en- make an application for a patent. titu ''' to apply for patent. 338 STATUTES: 4 AND 47 VICT. C. 57 (2) Two or more persons may make a joint application for a patent, and a patent may be granted to them jointly. 1 1 6. (1) An application for a patent most be made in the form set fortli in the First Schedule to this Act. or in such other form as may be from time to time prescribed ; * and most be left at, or sent by post, to the Patent Office in the prescribed manner. (2) An application must contain a declaration * to the effect that the applicant is in possession of an invention, whereof he, or, in the case of a joint application, one or more of the appli- cants, claims or chum to be the true and first inventor or in- \i-ntors. and for which he or they desires or desire to obtain a patent ; and must be accompanied by either a provisional or complete specification. (8) A provisional specification must describe the nature of the invention, and be accompanied by drawings if required. 4 (4) 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 performed, 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 specifica- tion, must end with a distinct statement of the invention churned. .-m 6. The Comptroller shall refer even* application to an ex- anuner, who shall ascertain and report to the Comptroller whether the nature of the invention has been fairly described, and the application, specification, and drawings, if any, have been prepared in the prescribed manner, and the title sufficiently indicates the subject-matter of the invention. er for 7. [As amended by the Patents Act of 1888.] (1) If the ex- aminer reports that the nature of the invention is not fairly described, or that the application, specification, or drawings has K0 ^ or h ave no t f 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 require that the application, 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. 1 See Patents Act, 1883, s. 5. * See Rales 5 and C of Patents Bales 1890. 1 See Patents Act, 1885, s. 2. 4 As to drawings, see Rules 30-33 of Patents Roles 1890. STATUTES: 46 AND 47 VICT. C. 57 339 (2) Where the Comptroller refuses to accept an application or requires an amendment, the applicant may appeal from his decision 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 application shall be accepted. (4) The Comptroller shall, when an application has been accepted, give notice thereof to the applicant. (5) If, after an application for a patent has been made, but before the patent thereon has been sealed, another application for a patent is made, accompanied by a specification bearing the same or a similar title, the Comptroller, if he thinks fit, on the request of the second applicant, or of his legal representative, may, within two months of the grant of a patent on the first application, either decline to proceed with the second appli- cation or allow the surrender of the patent, if any, granted thereon. 8. (1) If the applicant does not leave a complete specification Time for .,,. . , i leaving com- with his application, he may leave it at any subsequent time pietespecm- within nine months from the date of application. 1 (2) Unless a complete specification is left within that time the application shall be deemed to be abandoned. 9. (1) Where a complete specification is left after a pro- comparison visional specification, the Comptroller shall refer both specifica- visional and tions to an examiner for the purpose of ascertaining whether the complete specification has been prepared in the prescribed manner, and whether the invention particularly described in the complete specification is substantially the same as that which is described in the provisional specification. (2) If the examiner reports that the conditions hereinbefore contained have not been complied with, the Comptroller may refuse to accept the complete specification unless and until the same shall have been amended to his satisfaction ; but any such 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 specification shall be accepted. (4) Unless a complete specification is accepted within twelve 1 The Comptroller is empowered to gran further time, not exceeding one month. (See s. 3 of Patents Act, 1885.) z 2 340 STATUTES: 46 AM) 47 Vld months ' from the date of application, then (save in the cue of an appeal having been lodged against the refusal to accept) the application shall, at the expiration of those twelve months, become void. (5) [As amended by the 3rd sect, of the Act of 1888.] Reports of examiners shall not in any case be published or open to public inspection, and shall not be liable to production or inspection in any legal proceeding, unless the Court or officer having power to order discovery in such legal proceeding shall certify that such production or inspection is desirable in the interests of jt and ought to be allowed. AdmtiM. 10. On the acceptance of the complete specification the Comptroller shall advertise the acceptance ; and the application and specification or specifications, with the drawings, if any, shall be open to public inspection. 11. [As amended by the 4th sect, of the Act of 1888. Any person may at any time within two months from the date of the advertisement of the acceptance of a complete specification give notice at the Patent Office of opposition to the grant of the patent, on the ground of the applicant having obtained the inven- tion from him, or from a person of whom he is the legal repre- sentative, or on the ground that the invention has been patented n 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 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 specification and the leaving of the complete specifi- cation, but on no other ground. (2) Where such notice is given the Comptroller shall give notice of the opposition to the applicant, and shall, on the expira- tion of those two months, after hearing the applicant and tin- person so giving notice, if desirous of being heard, decide on tin- case, but subject to appeal to the law officer. (8) The law officer shall, if required, hear the applicant and any person so giving notice, and being, in the opinion of the 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 assistance- of an expert, who shall be paid such remuneration as the law officer, with the consent of the Treasury, shall appoint. 1 The Comptroller is empowered to grant further time, not exceeding three months. (See sect 3 of Act, 1885.) STATUTES: 46 AND 47 VICT. C. 57 341 12. (1) If there is no opposition, or, in case of opposition, if se.uingof the determination is in favour of the grant of a patent, the pat< Comptroller 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. (8) A patent shall be sealed as soon as may be, and not after the expiration of fifteen months l from the date of application, except in the cases hereinafter mentioned, that is to say (a) Where the sealing is delayed by an appeal to the law officer, or by opposition to the grant of the patent, the patent may be sealed at such time as the law officer may direct. {b) If the person making the application dies before the expiration of the fifteen months aforesaid, the patent may be granted to his legal representative and sealed at any time within twelve months after the death of the applicant. 13. Every patent shall be dated and sealed as of the day of Date of the application : Provided that no proceedings shall be taken paten " in respect of an infringement committed before the publication of the complete specification : Provided also, that in case of more than one application for a patent for the same invention, the sealing of a patent on one of those applications shall not prevent the sealing of a patent on an earlier application. Provisional Protection. 14. Where an application for a patent in respect of an inven- Provisional tion has been accepted, the invention may during the period pro1 between 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 pro- visional protection. Protection by Complete Specification. 15. After the acceptance of a complete specification and until Effect of ac- the date of sealing a patent in respect thereof, or the expiration complete of the time for sealing, the applicant shall have the like privi- 8 i )ecificatlOB leges and rights as if a patent for the invention had been sealed 1 A further extension of four months after the fifteen months is allowed for the sealing of the patent by sect. 3 of the Act of 1885. 342 STATUTES: 40 AND 47 VI T. C. 67 on the date of the acceptance of the complete specification : Pro* Tided that an applicant shall not be entitled to institute any proceeding for infringement unless and nntil a patent for the invention has been granted to him. Patent. 16. Every patent when sealed shall have effect throughout the extent of the United Kingdom and the- Isle of Man. T ; ;? 17. (1) The term limited in every patent for the duration thereof shall be fourteen years from its date. (2) But every patent shall, notwithstanding anything therein or in this Act, cease if the patentee fails to make the prescribed payments within the prescribed times. (8) If, nevertheless, in any case, by accident, mistake, or in- advertence, 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. (4) Thereupon the Comptroller shall, if satisfied that the 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. (b) If any proceeding shall be taken in respect of an infringe- ment of the patent committed after a failure to make any payment within the prescribed time, and 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. Amendment of Specification. Amendment lg. (1) An applicant or a patentee may, from time" to time, t. r by request in writing left at the Patent Office, seek leave to amend his specification, including drawings forming part thereof, by way of disclaimer, correction, or explanation, stating the nature of such amendment and his reasons for the same. (2) The request and the nature of such proposed amend- ment shall be advertised in the prescribed manner, and at any time within one month from its first advertisement any person may give notice at the Patent Office of opposition to the amend- ment. STATUTES: 46 AND 47 VICT. C. 67 343 (3) Where such notice is given the Comptroller shall give notice of the opposition to the person making the request, and shall hear and decide the case subject to an appeal to the law officer. (4) The law officer shall, if required, hear the person making the request and the person so giving notice, and being in the opinion of the law officer entitled to be heard in opposition to the request, and shall determine whether, and subject to what conditions, if any, the amendment ought to be allowed. (5) Where no notice of opposition is given, or the person so giving notice does not appear, the Comptroller shall determine whether, and subject to what conditions, if any, the amendment ought to be allowed. (6) When leave to amend is refused by the Comptroller, the person making the request may appeal from his decision tc the law officer. (7) The law officer shall, if required, hear the person making the request and the Comptroller, and may make an order deter- mining whether, and subject to what conditions, if any, the amendment ought to be allowed. (8) No amendment shall be allowed that would make the specification, as amended, claim an invention substantially larger than, or substantially different from, the invention claimed by the specification as it stood before amendment. (9) Leave to amend shall be conclusive as to the right of the party to make the amendment allowed, except in case of fraud ; and the amendment shall in all Courts, and for all purposes, be deemed to form part of the specification. (10) [As amended by sect. 5 of the Act of 1888.] The fore- going provisions of this section do not apply when, and so long as, any action for infringement or proceeding for revocation of a patent is pending. 19. In an action for infringement of a patent, and in a pro- Power to 4; VICT. C. 57 Order (or In- spection, etc., Ui k i .. Certificate O.' v. : . ' . t!.r,-at- '. I-.-..: ;.. oeedioc*. If the defendant disputes the validity of the patent, the vm .1 by him must state on what grounds he dig- it, ami, if one of those grounds is want of novelty, must state the time and place of the previous publication or user alleged by him. At the hearing no evidence shall, except by leave of the : or a judge, be admitted in proof of any alleged infringement or objection of which particulars are not so delivered. (5) Particulars delivered may be from time to time amended ve of the Court or a judge. On taxation of costs regard shall be had to the particulars di-livmnl by the plaintiff and by the defendant ; and they, respect- ively, shall not be allowed any costs in respect of any particular delivered by them unless the same is certified by the Court or a judge to have been proven or to have been reasonable and proper, without regard to the general costs of the case. 30. In an action for infringement of a patent, the Court or a judge may, on the application of either party, make such order for an injunction inspection or account, and impose such terms, and give such directions respecting the same and the proceedings thereon as the Court or a judge may see fit. 31. In an action for infringement of a patent, the Court or a judge may certify that the validity of the patent came in question ; and if the Court or a judge so certifies, then, in any subsequent action for infringement, 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. Where any person claiming to be the patentee of an invention, by circulars, advertisements, or otherwise, threatens any other person with any legal proceedings or liability in respect of any alleged manufacture, use, sale, or purchase of the inven- tion, any person or persons aggrieved thereby may bring an action against him, and may obtain an injunction against the continu- ance of such threats, and may recover such damage, if any, as may have been sustained thereby, if the alleged manufacture, use, sale, or purchase to which the threats related was not hi 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 commences and pro- secutes an action for infringement of his patent. STATUTES: 46 AKD 4? VICT. C. 57 3-1-9 Miscellaneous. 33. Every patent may be in the form in the First Schedule Patent for to this Act, and shall be granted for one invention only, but may tioVoniy!" contain more than one claim ; but it shall not be competent for any person in an action or other proceeding to take any objection to a patent on the ground that it comprises more than one invention. 34. (1) If a person possessed of an invention dies without Patent on making application for a patent for the invention, application ofrepresen- may be made by, and a patent for the invention granted to, his MMedin- legal representative. (2) Every such application must be made within six months of the decease of such person, and must contain a declaration by the legal representative that he believes such person to be the true and first inventor of the invention. 35. A patent granted to the true and first inventor shall not Patent to be invalidated by an application in fraud of him, or by pro- Tenter not visional protection obtained thereon, or by any use or publication HyappHo*. of the invention subsequent to that fraudulent application onlim fraud during the period of provisional protection. 36. 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 iar places?" patent were originally granted to extend to that place or part only. 37. If a patent is lost or destroyed, or its non-production is LOSS or de- accounted for to the satisfaction of the Comptroller, the Comp- pa r tent. n ' troller may at any time cause a duplicate thereof to be sealed. 38. The law officers may examine witnesses on oath and ad- Proceedings minister oaths for that purpose under this part of this Act, and beforelaw may from time to time make, alter, and rescind rules regu- cer ' lating references and appeals to the law officers and the practice and procedure before them under this part of this Act ; and, in any proceeding before either of the law officers under this part of this Act, the law officer may order costs to be paid by either party, and any such order may be made a rule of the Court. 39. The exhibition of an invention at an industrial or inter- Exhibition national exhibition, certified as such by the Board of Trade, or winter-" 8 the publication of any description of the invention during the hTbition'not period of the holding of the exhibition, or the use of the inven- p^nt 1 "' 6 rights. 1 1 As to the extension of these provisions, with certain modifications, to industrial and international exhibitions held out of the United Kingdom, see sect. 3 of the Act of 188G. 31 : 4 AND 47 VICT. C. 47 JovMi.ii> ' MUM.-UIII. Power to if, .. model* on F. r. ._:. *;u w.:..r.- .; for tli.- |>ur|)o.si> of the exhibition in the place where the exhibition is held. or the use of .lion i luring the period of the holding of the exhibition by any person elsewhere, without the privity or consent of the inventor, shall not prejudice the right of the inventor or his legal personal representative to apply for and obtain provisional protection and a patent in respect of tin invention or the validity of any patent granted on the appli- cation, provided that both the following conditions are complied with, namely: (a) The exhibitor must, before exhibiting the invention, give the Comptroller the prescribed notice of his intention to do so ; and (b) The application for a patent must be made before or within six months from the date of the opening of the exhibition. 40. (1) The Comptroller shall cause to be issued periodically an illustrated journal of patented inventions, as well as reports of patent cases decided by courts of law, and any other infor- mation that the Comptroller may deem generally useful or important. 1 Provision 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 accom- panying drawings, if any. (8) 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, catalogues, and other works relating to inventions, as he may see fit. 41. The control and management of the existing Patent Museum and its contents shall, from and after the commence- ment of this Act, be transferred to and vested in the Department of Science and Art, subject to such directions as her Majesty in Council may see fit to give. The Department of Science and Art may at any time require a patentee to furnish them with a model of his invention 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. 48. (1) A patent shall not prevent the use of an invention for the purposes of the navigation of a foreign vessel within the jurisdiction of any of her Majesty's Courts in the United King- STATUTES: 46 AND 47 VICT. C. 57 351 dom 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. (2) But this section shall not extend to vessels of any foreign state of which the laws authorise subjects of such foreign state, having patents or like privileges for the exclusive use or exercise of inventions within its territories, to prevent or interfere with the use of such inventions in British vessels while in the ports of such foreign state, or in the waters within the jurisdiction of its 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. 44. (1) The inventor of any improvement in instruments or Assignment munitions of war, his executors, administrators, or assigns (who fo r S war'of y are in this section comprised in the expression ' the inventor ') may y^-^j 11 " (either for or without valuable consideration) assign to her Majesty's Principal Secretary of State for the War Department (hereinafter referred to as the Secretary of State), on behalf of her Majesty, 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 valuable consideration), and may be enforced accordingly by the Secretary of State for the time being. (8) Where any such assignment has been made to the Secre- tary of State, he may at any time before the application for a patent for the invention, or before publication of the specification or specifications, certify to the Comptroller his opinion that, La 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 and specification or specifications, with the drawings, if any, and any amendment of the specification or specifications, and any copies of such documents and drawings, shall, instead of being left in the ordinary manner at the Patent Office, be delivered to the Comptroller in a packet sealed by authority of the Secretary of State. 3.VJ SI.'. 57 (') Such packet shall, until the expiration of the term OT ided term during which a patent fur tin- in\> iy be in fa,-,-. he Kept sealed b\ :ptroll. r. and shall not be opened save under the authority of an order of the Secret" State or of the law offic (G) Such sealed packet shall be delivered at any time during the continuance of the patent to any person authorised by writing under the hand of the Secretary of State to receive the same, and -hall if n turned to the Comptroller be again kept sealed by him. (7) On the expiration of the term or extended term of patent, such sealed packet shall be delivered to any person authorised by writing under tin hand of the Secretary of State 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, tho 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 foregoing provisions respecting a packet scaled by authority of the of State. (9) No proceeding by petition or otherwise shall lie for r. cation of a patent granted for an invention in relation to which the Secretary of State has certified as aforesaid. (10) No copy of any specification or other document or draw- ing, by this section required to be placed in a sealed packet, shall in any manner whatever be published or open to the inspection 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. (11) The Secretary of State may, at any time by writing under his hand, waive the benefit of this section with respect to any particular invention, and the specifications, documents, and drawings shall be thenceforth kept and dealt with in the ordinary way. (12) The communication of any invention for any improve- ment in instruments or munitions of war to the Secretary of State, or to any person or persons authorised by him to iir. gate the same or the merits thereof, shall not, nor shall anything be 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. STATUTES : 46 AND 47 VICT. C. 57 ' 353 Existing Patents. 45. (1) The provisions of this Act relating to applications Provisions for patents and proceedings thereon shall have effect in respect existing only of applications made after the commencement of this Act. r " t( (2) Every patent granted before the commencement of this Act, or on an application then pending, shall remain unaffected by the provisions of this Act relating to patents binding the Crown, and to compulsory licences. (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 application 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. Definitions. 46. In and for the purposes of this Act Definition* 4 Patent ' means letters patent for an invention ; patentee,' 4 Patentee ' means the person for the time being entitled to tkm! m ' the benefit of a patent ; 4 Invention ' means any manner of new manufacture the subject of letters patent and grant of privilege within section six of the Statute of Monopolies (that is, the Act of the twenty-first year of the reign of King James the First, chapter three, intituled 4 An Act concerning monopolies and dispensations, with penal laws and the forfeiture thereof), and includes an alleged invention. In Scotland ' injunction ' means ' interdict.' [Sections forty-seven to sixty-one relate exclusively to the Eegistration of Designs, and sections sixty-two to eighty-one exclusively to the Eegistration of Trade Marks.] PAKT V. GENERAL. Patent Office and Proceedings thereat. 82. (1) The Treasury may provide for the purposes of this Patent Act an office, with all requisite buildings and conveniences, which shall be called, and is in this Act referred to as, the Patent Office. A A STATUTES: 46 AND 47 VICT. s. . , I-..-. ) M Tru-t n-.t to be entered Reftmlto k-r.il:! ;M'. I:'. tc^ in cer- and trmn- mteloii< in regUten. (2) Until a new Patent Office is provided, the offices of the Commissioners of Patents for inventions and for the registration of designs and trade marks existing at the commencement of Act shall be the Patent Office within the meaning of (8) The Patent Office shall be under the immediate control of an officer called the Comptroller-General of Patents, Designs, and Trade Marks, who shall act under the superintendence and direction of the Board of Trade. (4) Any act or thing directed to be done by or to the Comp- troller may, in his absence, be done by or to any officer for the time being in that behalf authorised by the Board of Trade. 88. (1) The Board of Trade may at any time after the passing of this Act, and from time to time, subject to the approval of the Treasury, appoint the Comptroller-General of Patents, Designs, and Trade Marks, and so many examiners and other officers and clerks, with such designations and duties as the Board of Trade think fit, and may from time to time remove any of those officers and clerks. (2) The salaries of those officers and clerks shall be appointed by the Board of Trade, with the concurrence of the Treasury, and the same, and the other expense? of the execution of this Act, shall be paid out of money provided by Parliament. 84. There shall be a seal for the Patent Office, and im- pressions thereof shall be judicially noticed and admitted in evidence. 85. There shall not be entered in any register kept under this Act, or be receivable by the Comptroller, any notice of any trust expressed, implied, or construct! 86. The Comptroller may refuse to grant a patent for an in- vention, or to register a design or trade mark, of which the use would, in his opinion, be contrary to law or morality. 87.' Where a person becomes entitled by assignment, trans- mission, or other operation of law to a patent, the Comptroller shall, on request, and on proof of title to his satisfaction, 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 to any rights appearing from such register to be vested in any other person, have power 1 Sections 87, 88, and 90 are here given as amended by sections 21, 22, and 23 of the Act of 1888. STATUTES: 46 AND 47 VICT. C. 57 355 absolutely to assign, grant licences as to, or otherwise deal with, the same, and to give effectual receipts for any consideration for such assignment, licence, 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. 88. ' Every register kept under this Act shall at all convenient inspection of times be open to the inspection of the public, subject to the pro- fronfre^ visions of this Act and to such regulations as may be prescribed ; gisters * and certified copies, sealed with the seal of the Patent Office, of any entry in any such register shall be given to any person requiring the same on payment of the prescribed fee. 89. Printed or written copies or extracts, purporting to be Sealed copies certified by the Comptroller and sealed with the seal of the Patent cli^LHn Office, of or from patents, specifications, disclaimers, and other evidence - 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. 90. 1 (1) The Court may, on the application of any person nectmcatio. aggrieved by the omission without sufficient cause of the name by'c^StT* of any person or of any other particulars from any register kept under this Act, or by any entry made without sufficient cause in any such register, make such order for making, expunging, or varying 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. (2) 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. (3) Any order of the Court rectifying a register shall direct that due notice of the rectification be given to the Comp- troller. 91. The Comptroller may, on request in writing, accompanied Power for 1,1 ., i f Comptroller by the prescribed iee to correct (a) Correct any clerical error in or in connection with an e application for a patent ; or (b) Correct any clerical error in the name, style, or address of the registered proprietor of a patent. 1 See note on previous page. A A 2 STATUTES: 46 AND *; \i (c) Cai. utry or part of the entry of a trade mark ou the register : applicant aocomj request by a statutory declaration made by himself, stating his name, address, and calling, and that he in the person whose name appears ou the register as the proprietor of the said trade mark. [Section 92 relates to the alteration of a registered trade mark.] riiftiuoB 98. If any person makes or causes to be made a false enti 1 any register kept under this Act, or a writing falsely purp to be a copy of an entry in any such register, or produces or rs, or causes to be produced or tend* red. m \; , writing, knowing the entry or writing to be false, he shall !>< guilty of ft misdemeanor. Where any the Comptroller, or to any other person under this Act may 1 it- sent by a prepaid letter through the post ; and if so sent shall !> 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 the post. Pmruion M 98. Whenever the last day fixed \>\ this Act, or by any rule for the time being in force, for leaving any document or paying JE3J U any fee at the Patent Office shall fall on Christmas day, Friday, or on a Saturday or Sunday, or any day observe*; holiday at the Bank of England, or any day observed as a day STATUTES: 46 AND 47 VICT. C. 57 357 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. 99. If any person is, by reason of infancy, lunacy, or other Decoration inability, incapable of making any declaration or doing anything uinuticfctc. required or permitted by this Act or by any rules made under 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 - ' J string for Legi ' ' '*! P time, by Or ' iicil, to apply the provisions of the last preceding B- \vith such \uriations or additions. if any, as to her Majesty in Council may seem fit, to such British Possession. An Onl .cil undi-r this Act shall, from a date to i for the purpose in the Order, take effect as if its is had been contained in tl. ut it shall be law- ful for her Majesty in Council to revoke &\ ' <-partment, assumes or uses in connection with any trad*-, business, calling, or profession, the royal arms, or arms so nearly resembling the same as to be calculated to deceive, in such a manner as to be calculated to lead other persons to believe that he is carrying on his trade, business, calling, or profession by or under such au- thority as aforesaid, shall be liable on summary conviction to a fine not exceeding twenty pounds. Scotlawl, Ireland, dc. 107. In any action for infringement of a patent in Scotland the provisions of this Act. with respect to calling in the aid of an assessor, shall apply, and the action shall be tried without a 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. STATUTP:S: 46 AND 47 VICT. c. 57 361 108. In Scotland any offence under this Act declared to be summary punishable on summary conviction may be prosecuted in the ^"s^otiand! Sheriff Court. 109. (1) Proceedings in Scotland for revocation of a patent Proceedings shall be in the form of an action of reduction at the instance of tion'of 00 " 1 the Lord Advocate, or at the instance of a party having interest scothm'i! with his concurrence, which concurrence may be given on just cause shown only. (2) 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. 110. All parties shall, notwithstanding anything in this Reservation Act, have in Ireland their remedies under or in respect of a in iroumd. patent as if the same had been granted to extend to Ireland only. 111. (1) The provisions of this Act conferring a special juris- General diction on the Court as denned by this Act shall not, except so j^Juftion far as the jurisdiction extends, affect the jurisdiction of any Court 1Court3 - in Scotland or Ireland in any proceedings relating to patents, or to designs, or to trade marks ; and, with reference to any such proceedings 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 Court ' and ' the Court of Appeal ' respectively mean the High Court of Justice in Ireland and her Majesty's Court of Appeal in Ireland. (2) If any rectification of a register under this Act is required in pursuance of any proceeding in a Court in Scotland or Ireland, a copy of the order, decree, or other authority for the rectifica- tion shall be served on the Comptroller, and he shall rectify the register accordingly. 112. This Act shall extend to the Isle of Man, and isieof Man. (1) Nothing in this Act shall affect the jurisdiction of the Courts in the Isle of Man, in proceedings for infringe- ment, or in any action or proceeding respecting a patent, design, or trade mark competent to those Courts ; (2) The punishment for a misdemeanor under this Act in the Isle of Man shall be imprisonment for any term not exceeding two years, with or without hard labour, and with or without a fine not exceeding one hundred pounds, at the discretion of the Court ; STATUTES: 46 AM> 47 VICT. C. 47 (8) Any offence under this Act committal in the Isle of Man winch would in England be punishable on summary nmvii -tion may be prosecuted, and any fine in respect thereof recovered, at tin- instance of any person aggrieved, in the manner in which offences punish* able on summary conviction may for the time being be prosecuted. taring for E22KT ncfatento I.. ,..::.. 1 Sarim? for rxiting rule*. Saving for prerogatire. sal ; Transitional Provision* ; Savings. 118. The enactments described in the Third Schedule to this Act are li. r.-l.y repealed. But this repeal of enactments shall not (a) Affect the past operation of any of those enactments, or any patent granted, or application pending, or ap- pointment made, or compensation granted, or order or direction made or given, or right, privilege, obliga- tion, or liability acquired, accrued, or incurred, or any- thing duly done or suffered under or by any of those enactments before or at the commencement of thi- Act; or (b) Interfere with the institution or prosecution of any action or proceeding, civil or criminal, in respect thereof, and any such proceeding may be carried on as if this had not been passed ; or (<) Take away or abridge any protection or benefit in relation to any such action or proceeding. 114. The registers of patents and of proprietors kept under any enactment repealed by this Act shall respectively be deemed parts of the same book as the Register of Patents kept under this Act. 115. All general rules made by the Lord Chancellor or by any other authority under any enactment repealed by this Act, and in force at the commencement of this Act, may at any time after the passing of this Act be repealed, altered, or amended by the Board of Trade, as if they had been made by the Board under this Act, but so that no such repeal, alteration, or amend- ment shall take effect before the commencement of this Act; and, subject as aforesaid, such general rules shall, so far as they are consistent with and are not superseded by this Act, continue in force as if they had been made by the Board of Trade under this Act. 116. Nothing in this Act shall take away, abridge, or preju- STATUTES: 46 AND 47 VICT. C. 57 363 dicially affect the prerogative of the Crown in relation to the granting of any letters patent or to the withholding of a grant thereof. General Definitions. 117. In and for the purposes of this Act, unless the context General de- ,1 . fruitions. otherwise requires ' Person ' includes a hody corporate ; ' The Court ' means (subject to the provisions for Scotland, Ireland, and the Isle of Man) her Majesty's High Court of Justice in England ; 'Law officer' means her Majesty's Attorney- General or Solicitor- General for England ; ' The Treasury ' means the Commissioners of her Majesty's Treasury ; ' Comptroller ' means the Comptroller-General of Patents, Designs, and Trade Marks ; ' Prescribed ' means prescribed by any of the schedules to this Act, or by general rules under or within the meaning of this Act; ' British Possession ' means any territory or place situate within her Majesty's dominions, and not being or forming part 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 denned, 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 Possessions ; and where there are local Legislatures, as well as a central Legislature, means the central Legislature only. In the application of this Act to Ireland, ' summary convic- tion ' means a conviction under the Summary Jurisdiction Acts, that is to say, with reference to the Dublin Metropolitan Police District, the Acts regulating the duties of justices of the peace and of the police for such district, and elsewhere in Ireland the Petty Sessions (Ireland) Act, 1851, and any Act amend- ing it. STATUTES: 40 AND 47 V - TO I: 1888. TH: or APPLICATI otto i. ; the Forms A, 15, and C the Patents Rules have substi- tuted the Forms A, Al, A2, B and C (sc 7 . totton II Form D. '>nt. YICTOKIA, by tin- ^ace of God, of the I'nited Kingdom ..f Great in and Ireland, Queen, Defender of the Faith: To nil to those presents shall come greeting : Whereas John Smith, of % 2'. 1'crry Str .i. Feet. tliis scluduh- ti. Schedule to the Patents Rules K) has been substituted. (See p. 801.) Mlta 111. Ill): THIRD SCI! Enactment* licpeu The Statute of Monopolies. In part; namely Sections ten, eleven, and twch . The Statutory Declarations Act, 1885. In part ; namely >n eleven. Will. IV. c. s:;. An Act to amend the law touching letters _' 1 James I. c. 8. [1628.] Will. IV. [1885.] In part. [1885.] Viet. c. 67. 1889, 7 Jc 8 Viet. c. 69. (a) [1844.] In part. patent f>r inventions. An Act to amend an Act of the fifth and sixth years of the reign uf King William the Fourth, intituled ' An Act to amend the law touching letters patent fur inven- tions.' An Act for amending an Act passed in the fourth year of the reign of his late Majesty, intituled ' An Act for the better adminis- tration df justice in his Majesty - I'rhv Council, and to extend its jurisdiction and powers.' In part ; namely Sections two to five, both included. 15 & 1C Viet. c. 88. [1852.] 16 4 17 Viet. c. 5. [181 The Patent Law Amendment At t. An Act to substitute stamp duties for fees on passing letters patent for inventions, and to provide for the purchase for the public use of certain indexes of specifications. (a) NOTE. Sections six and seven of this Act are repealed by the Statute Law Revision (No. 2) Act. 1874. STATUTES: 46 AND 47 VICT. C. 57 367 16 & 17 Viet. c. 115. [1853.] 22 Viet. c. 13. [1859.] 28 & 29 Viet. c. 3. [1865.] 33 & 34 Viet. c. 27. [1870.J 43 & 44 Viet. c. 10. [1880.] An Act to amend certain provisions of the Patent Law Amendment Act, 1852, in respect of the transmission of certified copies of letters patent and specifications to certain offices in Edinburgh and Dublin, and otherwise to amend the said Act. An Act to amend the law concerning patents for inventions with respect to inventions for improvements in instruments and munitions of war. The Industrial Exhibitions Act, 1865. The Protection of Inventions Act, 1870. The Great Seal Act, 1880. In part ; namely Section five. PATENTS ACT, 1885. [48 AND 49 VICT. CH. 63.] An Act to amend the Patents, Designs, and Trade Marks Act, 1883. A.D. 1885. BE it enacted by, &c., as follows : 1. This Act shall be construed as one with the Patents, construc- Designs, and Trade Marks Act, 1883 (in this Act referred to as luJ^utie. the principal Act). This Act may be cited as the Patents, Designs, and Trade Marks (Amendment) Act, 1885, and this Act and the principal Act may be cited together as the Patents, Designs, and Trade Marks Acts, 1883 and 1885. 2. Whereas subsection two of section five of the principal Amendment Act requires a declaration to be made by an applicant for a & 47 Viet.* 5 patent to the effect in that subsection mentioned, and doubts c- 57> have arisen as to the nature of that declaration, and it is expedient to remove such doubts : Be it therefore enacted that : 168 13: 48 AN . 61 4 6 \V. 4. c. ej. M. 8, . * II of 44*47 cfpccuica- te, not to be I .'.I:-''.! m - Power to KTnt \ - juiutly. Amendment Tin declaration n.- I section two of section five of :inri|>al A -t ma\ !>< eith.r a statutory declaration under tho i orations Art, 1H85, or not, as may be from time to time prescribed. 8. Whereas under the principal A plete specification is required (by section l>c left within nii and (by section nine) to be accepted \\ul.in tv. from the date of application, and a patent i* i by section t to be sealed within fifteen month- from the date of applic and it is expedient to empower tin- Comptroller to . certain cases the said times: IV it therefore enacted as fol- lows : A complete specification may i 1 accepted within extended times, not exceeding one month and three months respectively, after the said nine and twelve months r as the Comptroller may. on payment of the prescribed fee, allow, and where siu-h extension of time has been allowed extension of four months after the -aid fiftem months si.:. allowed for the sealing of the patent ; and the principal Act shall have effect as if any time so allowed were added to the said periods specified in the principal Act. 4. \Vhere an application lor a patent has Ixcn abandoned, or become void, the specification or specifications and dra any. accompanying or left in connection with such applies shall not at any time he open to public inspection or be publ by the Comptroller. 5. Whereas doubts have arisen whether under the principal Act a patent may lawfully be granted to several persons jointly, some or one of whom only an or is the true and first inventors or inventor : Be it therefore enacted and declared that it lias been and is lawful under the principal Act to grant such a patent. G. In subsection one of section one hundred and three of the principal Act, the words ' date of the application ' shall be sub- stituted for the words ' date of the protection obtained.' STATUTES: 49 AND 50 VICT. C. 37 369 PATENTS ACT, 1886. [49 AND 50 VICT. c. 87.] An Act to remove certain doubts respecting the construction of the Patents, Designs, and Trade Marks Act, 1883, so far as respects the drawings by which specifications are required to be accompanied, and as respects exhibitions. Whereas by section five of the Patents, Designs, and Trade Marks Act, 1883, specifications, whether provisional or com- plete, must be accompanied by drawings if required, and doubts have arisen as to whether it is sufficient that a complete speci- fication refers to the drawings by which the provisional speci- fication was accompanied, and it is expedient to remove such doubts :- Be it therefore enacted by, &c., as follows: 1. This Act may be cited as the Patents Act, 1886, and shall be construed as one with the Patents, Designs, and Trade Marks Acts, 1883 and 1885, and, together with those Acts, may be cited as the Patents, Designs, and Trade Marks Acts, 1883 to 1886. 2. The requirement of subsection four of section five of the Patents, Designs, and Trade Marks Act, 1883, as to drawings shall not be deemed to be insufficiently complied with by reason only that instead of being accompanied by drawings the complete specification refers to the drawings which accompanied the provisional specification. And no patent heretofore sealed shall be invalid by reason only that the complete specification was not accompanied by drawings, but referred to those which accompanied the provisional specification. 3. Whereas by section thirty-nine of the Patents, Designs, and Trade Marks Act, 1883, as respects patents, and by section fifty-seven of the same Act as respects designs, provision is made that the exhibition of an invention or design at an industrial or international exhibition, certified as such by the Board of Trade, shall not prejudice the rights of the inventor or proprietor thereof, subject to the conditions therein mentioned, one of which is that the exhibitor must, before exhibiting the invention, design, or article, or publishing a description of the design, give the Comptroller the prescribed notice of his intention to do so : And whereas it is expedient to provide for the extension B 46 & 47 Yict. c. 67. Short title; and con struction 46 & 47 Viet. c. 57. 48 A- 49 Viet. c. 63. The same drawings may accom- pany both specifica- tion*. Protection of patents and desifrn.s exhibited at interna- tional exhibitions. 370 STATTTIX: 49 AND .V) VICT. C. 7 of the said sections to industrial and mt. i national exhibitions hild out of tin t'iiit..i Kingdom: Ik- it therefore enacted as follows : It shall be lawful for her Majesty, by Order in C<>nn< -il. from to time to declare that sections thirty-nine and fifty-seven of the Patents, Designs, and Trade Marks Act. 1888, or either of those sections, shall apply to any exhibition mentioned in the Order in like manner as if it were an industrial or inter- national inhibition certified l>y tin- Hoard of Trade, and to pro- u exhibitor shall be relieved from the conditions, :ied in the said sections, of giving notice to the Compti of his intention to exhibit, and shall be so rel. her abso- lutely or upon such terms and conditions as to her Majest Council may seem fit. PATKXTS ACT, 1888. .'.1 & r>2 VICT. CH. 50.] * n. i8. An Act to amend the Patents, Designs, and Trade Mark* Act, 188f , Whereas it is expedient to amend the Patents, Designs, and 4* 47 via. Trade Marks Act, IHNH, hereinafter referred to as the principal r. 47. . it therefore enacted, Ac., as follows : K -- : 1. (1) After the first day of July one thousand eight hun- ;, '_ dred and eighty-nine a person shall not be entitled to describe himself as a patent agent, whether by advertisement, by de- - ription on his place of business, by any document issued by him, or otherwise, unless he is registered as a patent agent in pursuance of this Art. (2) The Board of Trade shall, as soon as may be after the passing of this Act, and may from time to time, make such general rules as are in the opinion of the Board required for giving effect to this section, and the provisions of section one hundred and one of the principal Act shall apply to all rules so made as if they were made in pursuance of that section. (8) Provided that every person who proves to the satisfaction of the Board of Trade that prior to the passing of this Act he had been bond fide practising as a patent agent shall be en- titled to be registered as a patent agent in pursuance of this Act. STATUTES: 51 AND 52 VICT. C. 50 371 (4) If any person knowingly describes himself as a patent agent in contravention of this section he shall be liable on sum- mary conviction to a fine not exceeding twenty pounds. (5) In this section ' patent agent ' means exclusively an agent for obtaining patents in the United Kingdom. 2. For section seven of the principal Act the following section Amend- shall be substituted, namely : ST; TO* c. ' 7. (1) If the Examiner reports that the nature of the inven- 57- s 7 &s to tion is not fairly described, or that the application, specification, applications. or drawings has not, or have not, been prepared in the prescribed manner, or that the title does not sufficiently indicate the subject- matter of invention, the Comptroller may refuse to accept the application, or require that the application, 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. ' (2) Where the Comptroller refuses to accept an application or requires an amendment, the applicant may appeal from his decision 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 application shall be accepted. ' (4) The Comptroller shall, when an application has been accepted, give notice thereof to the applicant. ' (5) If, after an application for a patent has been made, but before the patent thereon has been sealed, another application for a patent is made, accompanied by a specification bearing the same or a similar title, the Comptroller, if he thinks fit, on the request of the second applicant, or of his legal representative, may, within two months of the grant of a patent on the first application either decline to proceed with the second application or allow the surrender of the patent, if any, granted thereon.' 3. In subsection five of section nine of the principal Act the s. 9, as to words ' other than an appeal to the law officer under this Act ' reports of , ,, , .,, j examiners. shall be omitted. 4. In subsection one of section eleven of the principal Act s.n, as to the words from ' or on the ground of an examiner ' to ' a previous SninTof 0a application,' both inclusive, shall be omitted, and there shall be pat< added in lieu thereof the following words, namely, ' or on the ground that the complete specification describes or claims an "invention other than that described in the provisional specifica- II B 2 ND 52 VICT. C. M ft. U, M I. i v ' tton*. -i rrrtiflrath-ii tion, and that such other invention forms f an application made by the opponent in the interval between the ng of the provisional specification and tin I* iving of the complete specification.' 5. For subsection ten of section eighteen of th< principal Act tin- following subsection shall be substituted, namely : ' (10) The foregoing provisions of this section do not at \\l.'ii and so long as any action for infringement or proceeding for revocation of a patent is pending.' [Sections to 20 relate to Designs and Trade Marks.] Jl. In section eighty-seven of the principal Act, after the words ' subject to,' shall be added the words * the provisions of this Act and to.' -2. In section eighty < i-Jit of the principal Act, after the words subject to,' shall be added the words ' the provisions of this Act and to.' ion ninety of the principal Act. after the words ' of the name of any person,' shall be added the words ' or of any other particulars.' [Section 24 relates to Designs and Trade Marks.] >, After section one hundred and two of the principal Trade. the following section shall be added, and numbered 102A ; nn (1) All things required or authorised under tin's Act to be done by, to, or before the Board of Trade may be done by, to, or before the President or a secretary or an assistant-secretary of the Board. 2) All documents purporting to be orders made by the Board of Trade and to be sealed with the seal of the Board, or to ly signed by a secretary or assistant-secretary of the Board, or by any person authorised in that behalf by the President of the Board, shall be received in evidence, and shall be deemed to be such orders without further proof, unless the contrary is shown. 4 (8) A certificate, signed by the President of the Board of Trade, that any order made or act done is the order or act of the Board, shall be conclusive evidence of the fact so certified.' [Section 2G relates to Trade Marks.] ;ti. n 27. The principal Act shall, as from the commencement ot this Act, take effect subject to the additions, omissions, and sub- stitutions required by this Act ; but nothing in this Act shall affect the validity of any act done, right acquired, or liability incurred before the commencement of this Act. STATUTES: 61 AND 52 VICT. C. 50 373 28. This Act shall, except so far as is by this Act otherwise commence- 11 -J J j i x- ii meutofAct. specially provided, commence and come into operation on the first day of January one thousand eight hundred and eighty- nine. 29. This Act may be cited as the Patents, Designs, and .short title. Trade Marks Act, 1888, and this Act and the Patents, Designs, and Trade Marks Acts, 1883 to 1886, may be cited collectively as the Patents, Designs, and Trade Marks Acts, 1883 to 1888. INTERNATIONAL CONVENTION AND PROTOCOL. ARTICLE I. The Governments of Belgium, Brazil, Spain, France, Guate- mala, Italy, Holland, Portugal, Salvador, Servia, and Switzer- land constitute themselves into a Union for the protection of industrial property. 1 AETICLE II. The subjects or citizens of each of the contracting states shall, in all other states of the Union, as regards patents . . . enjoy the advantages that their respective laws now grant, or shall hereafter grant, to their own subjects or citizens. Consequently, they shall have the same protection as the latter, and the same legal recourse on any infringement of their rights, provided they observe the formalities and conditions im- posed on subjects or citizens by the internal legislation of each state. 2 ARTICLE III. Subjects or citizens of states not forming part of the Union, who are domiciled or have industrial or commercial establish- ments on the territory of any of the states of the Union, shall be assimilated to the subjects or citizens of the contracting states. ARTICLE IV. Any person who has duly registered an application for a patent ... in one of the contracting states shall enjoy, as 1 Vide paragraph 1 of Protocol. 2 Vide paragraph 3 of Protocol. :i7 1 IN n i;v\ i IN M. <\\ j \ regards registration in the other states, and reserving the rights of third parties, a ri-ht of |>ii .rr reinafter stated. Consequently, subsequent registration in any of the other states of the Union before expiry of them periods shall not be invalidated through any acts accomplished in tin- interval, eitln -r. for instance, by registration, by publication of the iim-ntion, or tin working of it by a third partv . The above-mentioned terms of priority shall be six months for patents and three months for designs, models, and trade- marks. A month longer is allowed for countries beyond ?. The introduction l>\ the patentee into the country where tin- patent has been granted of objects manufactured in any of tin states of the Union shall not entail forfeiture. Nevertheless, the patentee shall remain bound to work (exploiter) his patent in conformity with the laws of the country into which he introduces the patented objects (ou il introduit let objets brevetes). [Articles VI. X. relate exclusively to Designs and Trade Marks.] ARTICLE X I . The high contracting parties agree to grant temporary pro- tection to pateutable inventions, ... for articles appearing at official or officially recognised International Exhibitions. Aimn.r. XII. Each of the high contracting parties agrees to establish a special government depart im-nt for industrial property, and a central office for communication to the public of patents. . . . ARTICLE Xin. An international office shall be organised under the name of Bureau International de 1' Union pour la Protection de la Pro- pri6t Industrielle.' (International Office of the Union for the Protection of Industrial Property.) This office, the expense of which shall be defrayed by the Governments of all the contracting states, shall be placed under the high authority of the Central Administration of the > Confederation, and shall work under its supervision. Its func- tions shall be determined by agreement between the states of the Union. INTERNATIONAL CONVENTION 375 AETICLE XIV. The present Convention shall be submitted to periodical revisions, with a view to introducing improvements calculated to perfect the system of the Union. To this end conferences shall be successively held in each of the contracting states by delegates of the said states. The next meeting shall take place, in 1885, at Borne. ARTICLE XV. It is agreed that the high contracting parties respectively reserve to themselves the right to make separately, as between themselves, special arrangements for the protection of industrial property, in so far as such arrangements do not contravene the provisions of the present Convention. ARTICLE XVI. States which have not taken part in the present Convention shall be permitted to adhere t6 it at their request. This adhesion shall be notified diplomatically to the Govern- ment of the Swiss Confederation, and by the latter to all the others. It shall imply, de jure, accession to all the clauses, and admission to all the advantages stipulated by the present Con- vention. ARTICLE XVII. The carrying out of the reciprocal engagements contained in the present Convention is subordinated, in so far as necessary, to the observance of the formalities and rules established by the constitutional laws of those of the high contracting parties who are obliged to elicit their application, which they engage to do as early as possible. ARTICLE XVIII. The present Convention shall come into operation within one month after exchange of ratifications, and shall remain in force for an unlimited time, till the expiry of one year from the date of its denunciation. This denunciation shall be addressed to the Government commissioned to receive adhesions. It shall only affect the state which shall have denounced the Convention the Convention remaining intact for the other contracting parties. ARTICLE XIX. The present Convention shall be ratified, and the ratifications of it exchanged in Paris, within one year at the latest. 376 HOCOL In witness whereof the respective Plenipotentiaries hav signed it, and thereto affixed their seals. I h. 1888. The pi- of tli' i<; states, when sign- ing the accompanying ( 'onvention. at tin- same time signed an explanatory Protocol, the substance of which is as follows : 1. The word rial property 'are to be understood in tli.ir broadest sense ; tl t to apply simply to industrial pio- - properly so called, but also to agricultural products (wines, corn, fruits, cattle, dr.). and to mineral products employed in commerce (mineral waters, . J. Under the word ' patents ' are comprised the various kinds of industrial patents recognised by the legislation of the contract- ing states, such as improvement patents, etc. 3. The last paragraph of Article II. does not affect the legis- lation of the contracting states, relating to legal procedure, juris- diction, etc. 4. Paragraph 1 of Article VI. is to b understood as meaning that no trade-mark shall he excluded from protection in any state of the Union, becar.se it does not satisfy, in regard to tin- - composing it, the conditions of the legislation of that state, provided that on this point it comply with the legal requirements of the country of origin, and that it had been properly registered in said country of origin. With this exception, which relates only to the form of the mark, and otherwise reserving the clauses of the other articles of the Convention, the internal legislation of each state remains in force. To avoid misconstruction, it is agreed that the use of pub- lic armorial bearings and decorations may be taken to be con- trary to public order in the sense of last paragraph of Article \ I 5. Each country of the Union shall publish, if practicable, an official newspaper, in connection with the special government department mentioned in Article XII. C. This paragraph relates to the working of the International ( )ffice at Berne, the expense of which is to be divided in a g proportion amongst the several states forming the Union. 7. The present Protocol, which shall be ratified along with the Convention, shall have the same force, validity, and duration as the Convention itself. PATENTS EULES, 1890 377 PATENTS EULES, 1890, RELATING TO APPLICA- TIONS FOE PATENTS FOE INVENTIONS AND PEOCEEDINGS THEEEON, AND EEGISTEATION OF PATENTS, WITH LIST OF FEES. BY virtue of the provisions of the Patents, Designs, and Trade Marks Acts, 1883 to 1888, the Board of Trade do hereby make the following Rules : Short Title. 1. These Eules may be cited as the Patents Eules, 1890. short title. Commencement. 2. These Rules shall come into operation from and imme- commence diately after the 31st day of March 1890. Interpretation. 3. In the construction of these Rules, any words herein used J" t ,f Treta " defined by the said Act shall have the meanings thereby assigned to them respectively. Fees. 4. The fees to be paid under the above-mentioned Acts shall fees. be those specified in the list of fees in the First Schedule to these Rules. Forms. 5. The Forms A, B, and C in the First Schedule to the Act Forms, of 1883 shall be altered or amended by the substitution therefor '* of the Forms A, Al, A2, B, and C in the Second Schedule to these Rules. 6. (1) An application for a patent containing the declaration Application. mentioned in the subsection 2 of section 5 of the Act of 1883, and section 2 of the Act of 1885 shall be made either in the Form A or the Form Al, or the Form A2, set forth in the Second Schedule to these Rules as the case may be. (2) The Form B in such Schedule of provisional specification specifica- tion. PATENTS RULES, IWO otter famt I' SIM, t<-., of rarcbeof ~ Form C of complete specification shall respectively be used. (8) The remaining forms other than A, Al, A2, B, and C, nli in the Second Schedule to these Bales, may, as far as they are applicable, be used in any proceedings under these Rules. General. 7. The Patent Office shall be open to the public every week- day between the hour- of U-n and four, except n the days and times following: Christmas day. Good Friday. The day observed as her Majesty's birthday. days observed as days of public fast or thanks- giving. or as holidays at the Bank of England. 8. An application for a patent must be signed by the appli- 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 authorised to the satisfaction of the Comptroller, and if he so require, resi- dent in the United Kingdom. 9. The application shall be accompanied by a statement of an 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 tin- Tinted Kingdom. 10. All documents and copies of documents except Statutory Declarations and affidavits sent to or left at the Patent Office or otherwise furnished to the Comptroller or to the Board of Trade shall be written or printed in large and legible characters and, unless otherwise directed, in the English language, upon strong wide ruled paper (on one side only), of a size of 13 inches by 8 inches, leaving a margin of 2 inches on the left-hand part thereof, and the signature of the applicants or agents thereto must be written in a large and legible hand. Duplicate docu- ments shall at any time be left, if required by the Comptroller. 11. Before exercising any discretionary power given to the Comptroller by the said Acts, adversely to the applicant for a patent or for amendment of a specification, the Comptroller shall give ten days' notice, or such longer notice as he may PATENTS RULES, 193 379 think fit, to the applicant of the time when he may be heard xoticc of personally or by his agent before the Comptroller. Statutory hcaring - declarations and affidavits shall be in the form for the time being in use in the High Court of Justice. 12. Within five days from the date when such notice would Notice by be delivered in the ordinary course of post, or such longer time as 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. 1 13. Whether the applicant desires to be heard or not, the Comptroller Comptroller may at any time require him to submit a statement statement, in writing within a time to be notified by the Comptroller, or to attend before him and make oral explanations with respect to such matters as the Comptroller may require. 14. The decision or determination of the Comptroller in the Decision to IT , f -, i 11 i be notified exercise oi any such discretionary power as aforesaid shall be to parties, notified by him to the applicant, and any other person affected thereby. 15. Any person desirous of exhibiting an invention at an industrial or industrial or international exhibition, or of publishing any de- tionai scription of the invention during the period of the holding of the exhibition, or of using the invention for the purpose of the exhibition in the place where the exhibition is held, shall, after the Board of Trade have issued a certificate that the exhibition is an industrial or international one, give to the Comptroller notice 2 in writing 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 in- vention, accompanied, if necessary, by drawings, and such other information as the Comptroller may in each case require. 16. Any document for the amending of which no special pro- power of vision is made by the said Acts may be amended, and any irregu- t I c l f nd enfc ' larity in procedure, which in the opinion of the Comptroller may be obviated without detriment to the interests of any person, may be corrected, if and on such terms as the Comptroller may think fit. 16A. Any application, notice, or other document authorised or required to be left, made, or given at the Patent Office or to the Comptroller or to any other person under these Kules, may be 1 As to this notification see Form E . 2 The form of this notice is given in Form 0. 380 Xanoorln which, aii'l 1-.T- - i- ' n -,\ : . > a pr. paid letter through the poet, and if so sent shall be deemed to have been left, made, or given at the time when the letter containing the same would 1 I in the ordinary . In proving such sen-ire or sending it shall be siiflicieni to i -.he letter was properly addressed and put into tin- ] 17. MM .statutory I > durations required by the Raid Acts and these KuK s, or UM .1 in any proceedings Uiereonder, shall be made an these Boles, and in addi- tion to the specification, provisional or complete, left with such application, must be accompanied by (1) A copy or copies of tli- sj* rifuMtion ami drawings or docn- im-nts corn >|>onding thereto, tiled or deposited by tin- applicant in tlu- Patt-nt Office of the Korei-n St:it- or I'.riti-h Possession in respect of the first foreign application duly certified by the official chief or head of the Pat, of -ncli Foreign State or liritish Possessions as aforesaid, or otherwise verified to the satisfaction of the Comptroller ; (2) A statutory declaration as to the identity of the invention in respect of which the application is made with the invention in respect of which the said first foreign application was made, and it' the specification or document -nding thereto be in a foreign language, a translation thereof shall he annexed to and verified by such statutory declaration. 11. ( hi receipt of such application, together with the prescribed .Mcation and the other document or documents accompanying the same, required by the last preceding rule, and with such other proof, if any, as the Comptroller may require of or relating to such foreign application or of the official date thereof, the Comp- troller shall make an entry of the applications in both con: and of the official dates of such applications respectively. J*v All further proceedings in connection with such application shall be taken within the times and in the manner prescribed by the Acts or Rules for ordinary applications. J!t. The patent shall he entered in tin of Patents as dated of the date on which the first foreign application was made, and the payment of renewal fees, and the expiration of the patent, shall be reckoned as from the date of the first foreign application. ..'.< and methods of preparing Diaii-inys accomjxniij Provisional or Compl, nations. 80. The provisional or complete specification need not l>e ac- companied by drawings if the specification sufficiently describes the invention without them, but, if drawings are furnished, they should accompany the provisional or complete specification hich they refer, except in the case provided for by Rule 88. To face. page. 382. Specimen drawing for Specifications. Border line z an. inch ir-om, eaLge. of paper. Ror'eLer lint. S fin. inch, from ?aUf, of paper Sixa of paper for f ^ inches by 8 inches. or 13 .. .. 1G inches PATENTS RULES, 1890 383 No drawing or sketch such as requires a special engraving for letterpress should appear in the specification itself. 81. 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 Require- calendered drawing paper of smooth surface and good quality, 1 paper, etc. and where possible without colour or Indian-ink washes. They must be on sheets of one of the two following sizes size of (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 half an inch wide. If there are more figures than can be shown on one of the smaUer-sized sheets, two or more of these sheets should be used in preference to employing the larger size. When an exceptionally 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. To insure their satisfactory reproduction, the drawings Quality of 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. Eeference figures and letters must be bold, distinct, not less than of an inch in height ; and the same letters should be used in different views of the same parts. In cases of complicated drawings, the reference letters must be shown outside the figure, and connected with the part referred to by a fine line. The scale adopted should be large enough to show clearly scale of wherein the invention consists, and only so much of the appa- drawings - ratus, machine, etc., 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 must bear the name of the applicant (and in the Drawings to case of drawings left with a complete specification after a pro- of^ppUcaut visional specification, the number and year of the application) in etc> the left-hand top corner ; the number of sheets of drawings sent and the number of each sheet in the right-hand top corner ; and 1 As the drawings are copied at the Patent Office for publication by the process of photo-lithography, this rule must be strictly observed in order that correct copies may be made. 3S4 -K5, 1890 v. M to wood ' ' < r ".' Hon. ; -. ' .; ' - . Partira'mrt ' r ' patent. Applicant'* mence. reply. the signature of the applicant or his agent in the right-hand bottom corner. No written description of th< . should appear on the IV. .':/-. Wood engravings, or representations of the inven than the drawings prepared as above described, will not be received, unless of such a character as to be suitable for repro- >n by tlie process of photo-lithography. :vj. A facsimile of the original drawings, but without colour MI- Indian -ink washes, and prepared strictly in accordance with ill*- regulations prescribed in Kule 81, must accompany tli. originals, and be market! trut copy.' 83. If an applicant desires to adopt the drawings lodged with his provisional specification as the drawings for his com specification, he should refer to them as those 'left with the pro- visional specification.' Opposition to Grants of Patent*. :> I. A notice of opposition to the grant of a patent shall I Form D, and shall state the ground or grounds on which Un- person giving such notice (hereinafter in Hules 87, 88, 41, and 43 called the opponent i intends to oppose the grant, and must .iied ly him. Such notice shall *tatr his address for service in the United Kingdom, and shall be accompanied by an un- stamped copy. Q h notice the copy thereof shall be trans- mitted by the Comptroller to the applicant. 86. Where the ground or one of the grounds of opposition that the invention has been patented in this country on an ap- plication of prior date, the number and date of such prior application shall be specified in the noti<-.-. Within 14 days after the expiration of two months from the date of the advertisement of the acceptance of a complete specification, the opponent may leave at the Patent Office statu- tory declarations in support of his opposition, and on so leaving shall deliver to the applicant a list thereof. 88. Within 14 days from the deliver}- of such list the appli- cant may leave at the Patent Office statutory declarations in answer, and on so leaving shall deliver to the opponent a list thereof, and within 14 days from such delivery the opponent may leave at the Patent Office his statutory declarations in reply, and on so leaving shall deliver to the applicant a list thereof. Such last-mentioned declarations shall be confined to matters strictly in reply. PATENTS RULES, 1890 385 Copies of the declarations mentioned in this and the last pre- ceding Rule may be obtained either from the Patent Office or from the opposite party. 39. No further evidence shall be left on either side except by closing of leave of the Comptroller upon the written consent of the parties duly notified to him, or by special leave of the Comptroller on application in writing made to him for that purpose. 40. Either party making such application shall give notice thereof to the opposite party, who shall be entitled to oppose the application. 41. On completion of the evidence, or at such other time Notice of as he may see fit, the Comptroller shall appoint a time for the hearing of the case, and shall give the parties ten days' notice at the least of such appointment. If the applicant or opponent desires to be heard he must forthwith send the Comp- troller an application on Form E. The Comptroller may refuse to hear either party who has not sent such application for hear- ing. If neither party applies to be heard, the Comptroller shall decide the case and notify his decision to the parties. 42. On the hearing of the case no opposition shall be allowed in respect of any ground not stated in the notice of opposition ; opposition in and where the ground or one of the grounds is that the invention c.iscl m lias been patented in this country on an application of prior date, the opposition shall not be allowed upon such ground unless the number and date of such prior application shall have been duly specified in the notice of opposition. 48. Where the ground of an opposition is that the appli- cant has obtained the invention from the opponent or from a person of whom such opponent is the legal representative, unless evidence in support of such allegation be left at the Patent Office within the time prescribed by these Rules, the opposition shall be deemed to be abandoned, and a patent shall be sealed forthwith. 44. The decision of the Comptroller after hearing any party Decision to who applies under Rule 41 shall be notified by him to the parties. Certificates of Payment or Benewal. 45. If a patentee intends at the expiration of the fourth or Pin-mont of eighth year from the date of his patent to keep the same in force, ^ '!oo/ 0/ for he shall, before the expiration of such fourth or eighth year, as o^ 08 the case may be, subject as hereinafter provided, pay the pre- scribed fee of 501. or 100/. as the case may be. 46. In the case of patents granted before the commencement AS to of the said Acts, the above Rule shall be read as if the words granted c c PATENTS RULES, 1890 (.::; seventh year ' were therein written instead of the words ' < \. .1!.' IT. If the patentee intends to pay annual fees in lien of tho above-mentioned fees of 50/. and 100/., lie shall, before the ex- piration of tli.' fourth and each succeeding year daring the term of the patent, until and inclusive of the thirteenth year thereof pay the prescribed fee. Tin Form .1 in the second Schedule, duly stamped, should be used for the purpose of this and the payment referred to in Huh- l"i. On due compliance with these Rules, and as soon as may be after such respective periods as aforesaid, or any enlargement thereof respectively duly granted, the Comptroller shall issue a certificate that the preserilx-d payment has been duly made. Enltirijcmcnt of 7 ,.:.,... I'-'. An application for an enlargement of the time formal. mu a prescribed payment shall state in detail the circumstances in 1 which the patentee by accident, mistake, or inadvertence has failed to make such payment, and the Comptroller may require the patentee to substantiate by such proof as he may think neces- the allegations contained in the application for enlarges 50. An application for enlargement of time for leaving or accepting a complete specification shall state in detail in what circumstances, and upon what grounds, such extension is applied for, and the Comptroller may require the applicant to sub- stantiate such allegations by such proof as the Comptroller may think necessary. 51. The time prescribed by these Rules for doing any act, or taking any proceeding thereunder, may be enlarged by the Comp- troller if he think fit, and upon such notice to other parties, and proceedings thereon, and upon such terms, as he may direct. I \-> :. ' :.-, - leaving ud .- ooaakto meiftc*. :. ,. ' . -. : H*ino*t for leave to \ mcut. N . f 1 i'i" "' ; A incndment of Specification. 52. A request* for leave to amend a specification must be signed by the applicant or patentee (hereinafter in Rules 54, 55, and 58 called the applicant) and accompanied by a duly cei printed copy of the original specification and drawings, showing in red ink the proposed amendment, and shall be advertised by publication of the request and the nature of the proposed amend- ment in the official journal of the Patent Office, and in such other manner, if any, as the Comptroller may in each case direct. 53. A notice of opposition 3 to the amendment shall state the 1 See Form K. * See Form F. * The form of this notice is given by Form G. PATENTS RULES, 1890 387 ground or grounds on which the person giving such notice (hereinafter called the opponent) intends to oppose the amend- ment, and must he signed hy him. Such notice shall state his address for service in the United Kingdom, and shall be accom- panied by an unstamped copy. 54. On receipt of such notice a copy thereof shall be trans- Copy for th applicant. mitted by the Comptroller to the applicant. 1 55. Within 14 days after the expiration of one month from Opponent's 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, 56. Upon such declarations being left, and such list being Further delivered, the provisions of Eules 38, 39, 40, 41, and 44 shall pru< apply to the case, and the further proceedings therein shall be regulated in accordance with such provisions as if they were here repeated. 57. Where leave to amend is given the applicant shall, if Require- the Comptroller so require, and within a time to be limited by tuereon. him, leave at the Patent Office a new specification and drawings as amended, to be prepared in accordance with Eules 10, 30, and 31. 58. Where a request for leave to amend is made by or in Leave by " . order of pursuance of an order of the Court or a judge, an official or Court. verified copy of the order shall be left with the request at the Patent Office. 69. Every amendment of a specification shall be forthwith Advertise- advertised by the Comptroller in the official journal of the amendment. Patent Office, and in such other manner, if any, as the Comp- troller may direct. Compulsory Licences. 60. A petition to the Board of Trade for an order upon a Petition for patentee to grant a licence shall show clearly the nature of the J^t o7 ry petitioner's interest, and the ground or grounds upon which he u claims to be entitled to relief, and shall state in detail the cir- cumstances of the case, the terms upon which he asks that an order may be made, and the purport of such order. 61. The petition and an examined copy thereof shall be left T 9 i . bc le . ft * * with evi- at the Patent Office, accompanied by the affidavits or statutory aence at . _ . . , Patent declarations, and other documentary evidence, if any, tendered office. by the petitioner in proof of the alleged default of the patentee. 1 Applications to be heard by the Comptroller must be in Form E. c c 2 NTs WLEB, 18*0 62. Upon peru and evidence, nnleei the * Board of Trade shall be of opinion that the order should be at 2S"rJ?u^i. once reft* 8 ^. 'hey may require the petitioner to attend before the Comptroller, or other person or persons appointed by them, to receive his or their directions at to further proceedings upon the petition. 68. If and when a primd-facit case for relief has been made out to the satisfaction of the Board of Trade, the petitioner shall upon their requisition, and on or before a day to be named by them, deliver to the patentee copies of the petition, and of the affidavits or statutory declarations and other documentary dence, if any, tendered in support thereof. 64. Within 11 days after the day of such delivery the patentee shall leave at the Patent Office his affidavits or statutory decla- rations in opposition to the petition, and deliver copies the i the petitioner. 65. The petitioner within 11 days from such deliver)- shall leave at the Patent Office his affidavits, or statutory declarations in reply, and deliver copies thereof to the patentee ; such last- mentioned affidavits or declarations shall be confined to matters strictly in reply. Further 66. Subject to any further directions which the Board of '"?- Trade may give, the parties shall then be heard at such time, before such person or persons, in such manner, and in accordance with such procedure as the Board of Trade may, in the circum- stances of the case, direct, but so that full opportunity shall be given to the patentee to show cause against the petition. Register of Patents. Eutry ..( 67. Upon the sealing of a patent the Comptroller shall cause to * r * ut " be entered in the register of patents the name, address, and de- scription of the patentee as the grantee thereof, and the title of the invention. &qnet f..r 68. Where a person becomes entitled to a patent or to any share I."|Ii! '-n't' * ul> " or interest therein, by assignment, either throughout the United pn.pri.t r- Kingdom and the Isle of Man, or for any place or places therein, or by transmission or other operation of law, a request ' for the entry of his name in the register as such complete or partial proprietor of the patent, or of such share or interest therein, as the case may be, shall be addressed to the Comptroller, and left at the Patent Office. if 69. Such request shall in the case of individuals be made and signed by the person requiring to be registered as proprietor, 1 See Form L. I PATENTS EULES, 1890 889 or by liis agent duly authorised to the satisfaction of the Comp- troller, and in the case of a hody corporate by their agent, authorised in like manner. 70. Every such request shall state the name, address, and Particular* to be stated * description of the person claiming to be entitled to the patent, hi request ' or to any share 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. 71. Every assignment and every other document containing, Production giving effect to, or being evidence of, the transmission of a patent mentsof or affecting the proprietorship thereof as claimed by such request, other proo^ except such documents as are matters of record, shall be pro- duced to the Comptroller, together with the request above prescribed, and such other proof of title as he may require for his satisfaction. As to a document which is a matter of record, an official or certified copy thereof shall in like manner be produced to the Comptroller. 72. There shall also be left with the request an attested C P' S tor- copy of the assignment or other document above required to be office. produced. As to a document which is a matter of record, an official or certi- fied copy shall be left with the request in lieu of an attested copy. 73. A body corporate may be registered as proprietor by its ^ ly cor . corporate name. iwrate. 74. Where an order has been made by her Majesty in Council Entry of for the extension of a patent for a further term or for the grant i4ivy S of a new patent, or where an order has been made by the Court ^the Court, for the revocation of a patent or the rectification of the register 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. 75. Upon the issue of a certificate of payment under Eule 48, try of the Comptroller shall cause to be entered in the Register of Patents tees on issue a record of the amount and date of payment of the fee on such cat rtl1 certificate. If a patentee fails to make any prescribed payment within ; '...'. tin- prescribed time, or any enlargement thereof duly granted, such failure shall be duly entered in the register. ' - 77. An attested copy of every licence granted under a patent shall be left at the Patent Office by the licensee, with a request 1 that a notification thereof may be entered in the register. The licensee shall cause the accuracy of such copy to be certified as the Comptroller may direct, and the original licence shall at the same time be produced and left at the Patent Office if required for further verification. Boon o The Register of Patents shall be open to the inspection of !, V'.'. : the public on every week day between the hours of ten and four, ft on the days and at the times following: (a) Christmas day, Good Tri-lay. ih- day observed as i Majesty's birthday, days observed as days of public fast or thanksgiving, and days observed as holidays at the Bank of England ; or (b) Days which may from thin- 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. certified 79. Certified copies of any entry in the register, or certified document*, copies of, or extracts from, patents, specifications, disclaimers, 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 pre- scribed fee. Power to dispense with Evidence, etc. 80. Where under these Rules any person is required to do any act or thing, or to sign any document, or to make any declar- ation 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 law- ful 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 cv tli in?, document, declaration, or evidence. 1 See Form M. PATENTS RULES, 1890 391 Eepeal. 81. All general rules heretofore made by the Board of Trade under the Patents, Designs, and Trade Marks Acts, 1883 to 1888, and in force on the 81st day of March, 1890, shall be and they are hereby repealed as from that date, without prejudice, never- theless, to anything done under such rules or to any application then pending. Dated the 31st day of March, 1890. M. E. HICKS-BEACH, President of the Board of Trade. FIEST SCHEDULE. List of Fees Payable on and in connection with Letters Patent. Up to Sealing. s. d. a. d. 1. On application for provisional protection .1 00 2. On filing complete specification . .300 400 or 3. On filing complete specification with first application 400 4. On appeal from Comptroller to law officer. By appel- lant 800 5. On notice of opposition to grant of patent. By oppo- nent 10 6. On hearing by Comptroller. By applicant and by opponent respectively . . . . . . 100 7. On application to amend specification : 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 30 12. On application to the Board of Trade for a compulsory licence. By person applying . . . . . 500 13. On opposition to grant of compulsory licence. By patentee . . . .. . .. . 500 14. On certificate of renewal : Before end of four years from date of patent . 50 15. Before end of seven years, or in the case of patents granted under the ' Patents, Designs, and Trade Marks Act, 1883,' before the end of eight years from date of patent 100 3 '.'_' LIST OF FEES Or in lieu of the fees of Ml. and 100/. the following annual fee*: Id. Before the expiration of the 1th year from the date i.f the patent ........ 10 17. . .. 5th . 10 18. . f.th , . 10 19. 7th . 10 20. Hih . 15 lil. .. ltli . 1 O J-J. 10th llth . 90 Jl .. . 12th . 20 2.V . .. i:ith ..... 20 On enlargement of time for i>n\meiit of renewal fees : 26. Not exceeding 1 month ...... 800 JT. .. 2 months ...... 700 ML . 8 months ...... 10 29. For everyentryof an assignment, transmission, agree- ment, licence, or extension of patent . . . 10 80. For duplicate of letters patent, each . . . . 200 HI. On notice to Comptroller of intended exhibition of a patent under section 89 ...... 10 82. Search or inspection fee ..... each 010 88. For office copies every 100 words (but never less than one shilling) ....... 004 84. For office copies of drawings, cost according to agree- ment. .'!.".. l-'i.r certifying office copies, MS. or printed .each 010 8C. On request to Comptroller to correct a clerical error : Up to sealing ...... 050 After sealing ...... 100 1 "or certificate of Comptroller under section 96 . . 050 88. For altering address in register ..... 050 For enlargement of time for filing complete specifica- tion, not exceeding one month . . . . 200 40. For enlargement of time for acceptance of complete specification : Not exceeding 1 month ...... 200 2 months ...... 4.00 ,, 8 months ...... 600 81st March, 1890. M. E. HICKS-BEACH, President of the Board of Trade. Approved, B. E. WELBY, For the Lords Commissioners of Her March, 1S90. Majesty's Treasury. PATENTS RULES, 1890 THE SECOND SCHEDULE. Forms. PAGK A. Form of Application for Patent 893 Al. communicated from abroad . 895 A2. under international and colonial arrangements ...... 396 B. Provisional Specification 396 C. Complete 397 D. Opposition to Grant of Patent 397 E. ,, Application for hearing by Comptroller . . . 398 F. to amend Specification or Drawings . 398 G. Opposition to Amendment of Specification or Draw- ings 898 H. Application for Compulsory Grant of Licence . . 399 HI. Petition for Compulsory Grant of Licences . . 399 1. Opposition to Compulsory Grant of Licences . . 400 J. Application for Certificate of Payment or Renewal . 400 K. Application for Enlargement of Time for Payment of Renewal Fee .401 L. Bequest to enter Name upon the Register of Patents 401 M. Bequest to enter Notification of Licence in Register 402 K Application for Duplicate of Letters Patent . . 402 O. Notice of intended Exhibition of Unpatented Inven- tion 402 P. Bequest for Correction of Clerical Error . . . 403 Q. Certificate of Comptroller 403 B. Notice for Alteration of an Address in Register . 403 S. Application for Entry of Order of Privy Council in Register 403 T. Appeal to Law Officer 404 U. Application for extension of time for leaving a com- plete Specification 404 V. Application for extension of time for acceptance of complete Specification 405 SECOND SCHEDULE. 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 FOR PATENT. [Here insert name and full address and calling of applicant or applicants], do hereby declare that in possession of an inven- tion the title of which is [Here insert title of invention] that [In the 3'J4 SCHEDULES cote of more than one r the said invention. Dated day of 18 . [To be tigned by applicant or appli- cant*. In the COM of a firm each member of thf firm mutt ion.] 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 Build ingt. Chancery Lane, London, W.C. For the convenience of applicants, suggested forms of authorisation to an Agent and statement of address respectively arc printed below. (1.) Where application if 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 communications relating thereto may be sent to such Agent at the above address. day of 18 . [To be signed by applicant or appli- cant*.] (2.) Where application it made without an Agent (Itule 9l. hereby request that all notices, requisitions, and commu- nications in respect of the within application may he sent to at day of 18 . [To be tigned by applicant or appli- oantt.] PATENTS RULES, 1890 395 Form Al. [To be accompanied by two copies of Form B. or of Form C.] Application for Patent for Invention communicated from Abroad. I, [Here insert name and full address and calling of applicant] of in the county of do hereby declare that I am in possession of an invention the title of which is [Here insert title of in- vention] which invention has been communicated to me by [Here insert name, address, and calling of communicant] that I 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 pray that a Patent may be granted to me for the said invention. Dated day of 18 . [To be signed by applicant or applicants.] NOTE. Where application is made through an Agent (Rule 8), the authorisation on the back, if used, should be signed by the applicant o l' applicants. To the Comptroller, Patent Office, 25 Southampton Buildings, Chancery Lane, London, W.C. For the convenience of applicants, suggested forms of authorisation to an Agent and statement of address respectively are printed below. (1.) WJiere 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 communications relating thereto may be sent to such Agent at the above address. day of 18 . [To be signed by applicant or appli- cants.] (2.) Where application is made ivithout an Agent (Rule 9). hereby request that all notices, requisitions, and commu- nications in respect of the within application may be sent to at day of 18 . [To be signed by applicant or appli- cants.] r\i. moo Form AS. I I A 1 i Am&uranm i Hi i, t ni-i-t mi. n, n ml full addrrtt mid ,-tll, H,J cm-It .-/ lite jilii-ii,i(ii_ (In In ; ;il I i,ir \v-i ha\e nuulc ii applications fur protection <>f n itmrrt tit: . m the following Fureign Slate* and en the following official date, \ i/. : II, re inner! the name* of each Foreign l,ij tin official dat> lively], and in tli< f..ll,,\\ h PoOMHMMM tad OH tiM feDowiQf official dates. \: intert (hi- name* uf ,-arh Ilritith /'/> fallowed Inj tin- iij.j.ln iitioii in each renpertirely], That the said invention was nut in u-o uitliin tin- I'nitod Kin^il.m of Great Britain and Ireland and tin- Isle ..1 Man hv anv other lnon or persons bet /'/-/- itiaert flic nffu-inl ,l,ifr ,>f thr rnrlient ft" 'icutimi to the IK st of knowledge, information, and belief, and huniMy prav that a patent in:t\ l granted to for the said invention in priority to other applicants, and thatsm-h patent shall have the dat* nsert the official date of the earliett foreign appUeatitm^. [Signal art of nj>j,licnii ' - To the Ctwij>trlli-r, J'ntcnt Office, 25 Sontliat>iptii Huildinyt, Chancery Lane, L<>mln, H'.C. mxiHil it-Hit Form A. Al. / A2. Form B. I'KOVISIONAL Si I (III- \TIOX. (To be furnished in Duplicate.) [Here insert title at in declaration] [Here intert name, anil full addrct* and calling of applicant < plicantt at in dn-lnrafion] do hereby declare the nature of this in- vention to be as follows : [Here insert thort deteription of invention. 1 i K.- Ko 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 In-t sheet, the date being first inserted as follows: ' Dated this daj of 18 .' To the Comptroller, Patent Office, 25 Southampton liuiltlingi, Chancery TMne, London, W.C. PATENTS KULES, 1890 397 Form C. Where provisional specifi- cation lia.s l)foii left, quote No. and date. No. Date. COMPLETE SPECIFICATION. (To be furnished in Duplicate one unstamped.) [Here insert title as in declaration.] [Here insert name, and full address and calling of applicant or applicants as in declaration] 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 state- ment : [Here insert full description of invention, which must end with a distinct statement of claim or claims, 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 ivhat I claim is : ' Here state distinctly the features of novelty claimed. 1, 2, 3.] 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. Form D. FORM OF OPPOSITION TO GRANT OF PATENT. [To be accompanied by an unstamped copy.] I [Here 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 upon the ground [Here state upon ivhich of the grounds of opposition permitted by section 11 of the Act the grant is opposed]. (Signed) [Here insert signature of opponent] To tlw Comptroller, Patent Office, 25 Southampton Buildings, Chancery Lane. London, W.C. . Form E. KM or APPLICATION FOB HEARING BY THE COMPTROLLER. V8K8 OF REFUSAL TO ACCEPT, OPPOSITION, OR APPLICATION!* FOR AMENDMENT*, ETC. Eta* <>f [Here i inert address] hereby apply to be heard in reference to nntl request that I may receive clue notice of the (lay fixed for the hearing. Sir, Servant, To the Comptroller, Patent OjKce, 25 Southampton Building*, Chancery Lane, London, Form F. FORM OF APPLICATION FOB A s OR DRA\\ r [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 tin ri-py of tlie original specification here- unto annexed. My reasons for making this amendment are a follows : [Here state reasons for seeking amendment ; and where the applicant is not the fee, state what interest he possesses in the Letters 2' Snthamptim Htiildingt, Chancery Lone, London, W.C. Form J. AITI.I. ui"s K.-I: CKI:TIKH-ATK OK PAYMENT OB RKNMVU.. hereby transmit the fee prescribed for the continua- tion in force of Here intert name of patentee] Patent ' , of 18 for a further period of Name [Here intert name and full AddroM To the Comptroller. Patent Office, 25 Southampton BuiMingt, Chancery Lane, London, W.C. (This part of the form to be filled in at the Patent Offico.t OF PAYMENT OR RENEWAL. Letters Patent No. of 18 . 18 . This is to certify that did tin- 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 Patentee remain in force. [See tertian 17 of the Patentt, Derigm, and Trade Mnrt;9 Act, 1883.] Patent Office, London. PATENTS EULES, 1890 401 Form K. FORM OF APPLICATION FOR ENLARGEMENT OF TIME FOR PAYMENT OF EENEWAL FEE. SIR, I HEREBY 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 follows [See Rule 49.] I am, Sir, Your obedient Servant, [Here insert full address to which receipt is to be sent.] To the Comptroller, Patent Office, 25 Southampton Buildings, Clumcery Lane, London, W.C. Form L. FORM OF REQUEST TO ENTER NAME UPON THE EEGISTER OF PATENTS. I [or we. Here insert name, full address, and description] hereby request that you will enter [my or our] name [or names] in the Register of Patents : [7 or we] claim to be entitled [Here insert the nature of the claim] of the Patent No. of 188 , granted to [Here give name and address, etc., of patentee or patentees] for [Here insert title of the invention] by virtue of [Here specify the particulars of such document, giving its date, and the parties to the same, and showing hoiu the claim here made is substantiated]. And in proof whereof I transmit the accompanying [Here insert the nature of the document] with an examined copy thereof. [Where any document which is a matter of record is required to be left, a certi- fied or official copy in lieu of an attested copy must be left.] I am, Sir, Your obedient Servant, To the Comptroller, Patent Office, 25 Southampton Buildings, Chancery Lane, London, W.C. D D 1ATKNTS RULES, KM r\ on Form M. FOB* or REQUEST TO KXTKB NOTIFICATION or LICENCE is* THE REGISTER or PATENTS. SIB, I HKRKDY transmit an attested copy of a licence granted to me under Patent N <>f 188 , as well as the original licence for verification, and I have to request that a notification thereof may be entered in the Register. I am. Your obedient Sen-ant, [Here insert ftt II address.] To the Comptroller, Patent Office, 25 Southampton Buildings, Chancery Lane, London, W.C. Form N. APPLICATION FOB DUPLICATE OF PATENT. Date. SIR, I REGRET to have to inform you that the Letters Patent, dated [Here insert date, No., name, and full address of Patentee] No. granted to for an invention of [Here insert title of invention] have been [Here insert the word ' destroyed ' or ' lost,' as the ease may be]. I beg therefore to apply for the issue of a duplicate of such Letters Patent [Here state interest possessed by applicant in the Letters Patent.] [Signature of Applicant.] To the Comptroller, Patent Office, 25 Southampton Buildings, Chancery Lane, London, W.C. Form O. NOTICE OF INTENDED EXHIBITION OF AN UNPATENTED INVENTION. [Here state name and full address of Applicant] hereby give notice of my intention to exhibit a of at the Exhibition, which [State ' opened ' or ' is to open '] of 18 , under the provisions of the Patents, Designs, and Trade Marks Act of 1888. [Insert brief description of invention, ttrith drataings if necessary] herewith enclose (Signed) To the Comptroller, Patent Office, 25 Southampton Building*, Chancery Lane, London, W.C. PATENTS EULES, 1890 403 PATBKT. PATENT. PATENT. Form P. FORM OF BEQUEST FOR CORRECTION OF CLERICAL ERROR. SIR, I HEREBY request that the following clerical error [or errors] in the [Here state whether in application, specification, or register} No. of 18 , may be corrected in the manner shown in red ink in the certified copy of the original [Here state whether in appli- cation, specification, or register] hereunto annexed. Signature Full Address To the Comptroller, Patent Office, 25 Soutliampton Buildings, Clianccry Lane, London, W.C. Form Q. CERTIFICATE OF COMPTROLLER-GENERAL. Patent Office, London, 188 . I, , Comptroller-General of Patents, Designs, and Trade Marks, hereby certify To [Here insert name and full address of pcrson^reguiring the informa- tion]. Form R. FORM OF NOTICE FOR ALTERATION^OF AN ADDRESS IN REGISTER. SIR, [Here state name or names and full address of applicant or appli- cants], hereby request that address nowjipon the Register may be altered as follows : [Here insert full address^ Sir, Your obedient Servant, To the Comptroller, Patent Office, 25 Soutliamptnn Buildings, Chancery Lane, London, W.C. Form S. FORM OF APPLICATION FOR ENTRY OF ORDER OF PRIVY COUNCIL IN REGISTER. [Here stale name and full address of applicant] [hereby transmit an office copy of an Order in Council with reference Jto [Here state the purport of the order], Sir, Your obedient* Servant, To the Comptroller, Patent Office, 25 Southampton Buildings, Chancery Lane, London, W <7 p D 2 404 PATENTS RULES, 1WO PATENT. Form T. FORM or APPEAL TO LAW OFFICER. I, [Here insert name and full address of ajytelltint] hcrebx notice of my inu -ntion to appeal to the Law Officer from (Here insert the tlcciiiun ' or that jmrt of the derision,' a* the ease may be] of the Comptroller of the day of 18 , whereby ho [Here inter! ' refuted Or allowed] application f< or * refuted [or allowed] aj>j,Iir,ttinn for leave to amend 1 otherwise at Hie case may be] No. [Insert number and yr> ar 18 . Signature N.li. This notice has to be scut to the- Comptroller-General at the Patent Ofticr. I.mlnn, W.C., and a copy of same to the Law Officer*' Clerk at 1; Hoyul Courts of Justice, London. Form U. Farm r their agent.] To the Comptroller, Patent Office, 25 Southampton Duildingt, Chancery Lane, London, H'.C. PATENTS RULES, 1890 405 Form V. Form of Application for Extension of Time for Acceptance of a Complete Specification. SIR, 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 is applied for are as follows : [See Eule 50.] Sir, Your obedient Servant, [To be signed by applicant or applicants or his or their agent.] To the Comptroller, Patent Office, 25 Soutliampton Buildings, Clumcery Lane, London, W.C. 81st March, 1890. M. E. HICKS-BEACH, President of the Board of Trade. 400 RULES REGULATING THE PRACTICE AND PRO- CEDURE ON APPEALS TO THE LAW OFFICERS. I. When any person intends to appeal to the law officer from a decision of the Comptroller in any case in which such appeal is given by the Acts, he shall within 14 days from the date of the decision appealed against file in the Patent Office a notice of such his intention. II. 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. III. 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, Royal Courts of Justice, London ; and when there has been an opposition before the Comptroller, to the opponent or opponents ; and when the Comptroller has refused to seal a patent on the ground that a previous application for a patent for the same invention is pending, to the prior applicant IV. Upon notice of appeal being filed, the Comptroller shall 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. V. No appeal shall be entertained of which notice is not given within 14 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. VI. Seven days' notice, at least, of the time and place ap- pointed 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. VII. Such notice shall in all cases be given to the Comp- troller and the appellant; and, when there has been an oppo- sition 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. VIII. The evidence ueM on appeal to the law officer shall be LAW OFFICERS KULES, 1888 407 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. IX. 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 declaration 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. X. Any person requiring the attendance of a witness for cross- examination shall tender to the witness whose attendance is required a reasonable sum for conduct-money. XI. Where the law officer orders that costs shall be paid by any party to another, he may fix the amount of such costs, and if he shall not think fit to fix the amount thereof he shall direct by whom and in what manner the amount of such costs shall be ascertained. XII. If any costs so ordered to be paid be not paid within 14 days after the amount thereof has been so fixed or ascertained, 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. XIII. All documentary evidence required, or allowed by the law officer to be filed, shall be subject to the same regulations., in all respects, as apply to the procedure before the Comptroller, and shall be filed in the Patent Office, unless the law officer shall order to the contrary XIV. Any notice or other document required to be given to the law officer's clerk, under these Kules, may be sent by a pre- paid letter through the post. HENRY JAMES, A.G. FAERER HERSCHELL, S.G. [Not dated, but issued in 1888.] 40* PRIVY <<>r\VlL. RULES IN i '.\rr.\r < HE S TO BE OBSEKVKI) IN IV < ,8 BP.FORE JUDICIAL COMMITTEE OF THK Pi:n\ < THE ACT OF THK flTH ii of per*m !... '. CMtta prior tothepiuM- - Fliwl qiull- I.Miik- rxmni- iMUiim for registration. !' : M&tanU, olid ton ii.M || agent*, from ITrli: examination. Qnalifioa- ttoniof ptrton* general! T for Nflftntion. the Register in accordance v, ith tin- provigions of the Act and Unit's, and, subject th- '1 art under the directions of the Institute and the Board of Trade. A person who is desirous of being registered in pursuance of the Act on the ground that prior to the passing of the Act In- had been bond fide practising as a patent agent, -in II produce or ii.niMiiit to the Hoard of Trade a statutory declaration it I'.. mi -J in Appendix A.; provided that the Board of Trade may in any case in which they shall think fit, require further or proof that the person had prior to the passing of the Act been Itondfiile practising as a patent agent. Upon the n < -ipt of -u.-h statutory declaration or of such further or other proof to tln-ir iction as the case may be, tli. Hoard of Trade shall transmit to the Registrar a certificate that the person tL named is entitled to be registered in pursuance of the Act, and the Registrar shall on the receipt of such certificate cause the name of such person to be entered in the Register. '-. Subject to the provisions of the Act in favour of person who proves to the satisfaction of the Board of Trade that prior to the passing of the Act he had been !><>n>i fidt 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 nnd.-r the seal of the Institute that he has passed, such final examination as to his knowledge of paunt law and practice and of the duties of a patent agent as tlu Institute shall from time to time prescribe. 7. Any person who has been for at least seven consecutive continuously engaged as a pupil or assistant to one or more ered patent agents, and any person for the time being entitled to practise as a Solicitor of the Supreme Court of Judicature in England or Ireland, or as a law agent before the Court of Session in Scotland, shall he entitled to be registered without passing any examination other than the final examination provided for in the last preceding Rule. Th 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 order to be entitled to present himself for the final qualifying examination, be PATENT AGENTS RULES, 1889 413 A person \vlio lias passed one of the preliminary examinations mentioned in Appendix B., or such other examination 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- rinai quaii- mencing with the first day of July 1889, and in every other sue- imtlon^tobe ceeding year, a final qualifying examination, which shall be the Institute! 16 final qualifying examination required under Rules 6 and 7 ; and the Institute shall, subject to these Eules, have the entire manage- ment and control of all such examinations, and may from time to time make regulations with respect to all or any of the follow- ing matters, that is to say, (a) The subjects for and the mode of conducting the exami- nation of candidates ; (&) The times and places of the examinations, and the notices to be given of examinations ; (c) The certificates to be given to persons of their having passed the examinations ; (d) The appointment and removal of examiners, and the remuneration, by fees or otherwise, of the examiners so appointed ; and (e) 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 corrections Register any alteration which may come to his knowledge in the ."na*" 1163 name or address of any person registered. toaster* "* 11. The Registrar shall erase from the Register the name of Erasure of any registered person who is dead. Sensed* 12. The Registrar may erase from the Register the name of P ersous - any registered person who has ceased to practise as a patent uameJof agent, but not (save as hereinafter provided) without the consent hav^clase'd* of that person. For the purposes of this Rule the Registrar may to P ractise - send by post to a registered person to his registered address a notice inquiring whether or not he has ceased to practise or has changed his residence, and if the Registrar does not within three months alter 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 4)4 PATKJiT AGENTS RULES, 18M i. ' MS &. : foe*, ful iv: receives the second notice back from that office, or does not within three months after tending the second notice receive any answer thereto from the said person, thai person shall, for the purposes of this Rule, be deemed to have ceased to practise, and his name maybe erased accordingly. If any registered person shall not, within one month from the day on \\hi.-li his annual registration fee becomes payable, pay suc h f ee> the Registrar may send to such registered person to his registered address a notice requiring him, on or before a day 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 regis- t ration 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 l>y direction of the Institute or the Board of Trade on payment Ity such person of the fee or fees due from him, together with such further sum of money, not exceeding in 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 to these Rules, in each case act on such evidence as appears to him sufficient. 1 ". ''le Board of Trade may order the Registrar to erase from t" e Register any entry therein which is proved to their satisfac- t j on t h ave been incorrectly or fraudulently inserted. 1 (I. If any registered person shall be convicted in her Majesty's dominions or elsewhere of an offence which, if committed in I'-n.^'land, would be a felony or misdemeanor, or, after dm- inquiry, is proved to the satisfaction of the Board of Trade to have been guilty of disgraceful professional conduct, or, having been entitled to practise as a Solicitor or Law Agent, shall have ceased to be so entitled, the Board of Trade may order the Registrar to erase Irom 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 apportunity of defending himself from, any charge brought against him. 17. (1) Where the Board of Trade direct the erasure from the Register of a name of any person, or of any other entry, the 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 PATENT AGENTS EULES, 1880 415 fit restore to the Eegister any name or 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 application and on payment of such fee, not exceeding the registration fee, as the Institute shall from time to time fix. 18. For the purpose of exercising in any case the powers, inquiry by of erasing from and of restoring to the Register the name of a Trade before person, or an entry, the Board of Trade may appoint a com- ^1^^^ mittee consisting of such persons as they shall think fit. Every K^ter. application to the Board of Trade for the erasure from, or restora- tion to, the Register of the name of any patent agent shall be re- ferred for hearing and inquiry to the committee, who shall report thereon to the Board of Trade, and a report of the committee shall be conclusive as to the facts for the purpose of the exercise of the said powers by the Board of Trade. 19. Any person aggrieved by any order, direction, or refusal Appeal to of the Institute or Registrar may appeal to the Board of Trade. Trade. 20. A person who intends to appeal to the Board of Trade Notice of under these Rules (in these Rules referred to as the appellant) shall within 14 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 Case on 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 Transmis- notice of appeal at the Institute send by post a copy thereof, with notice of a copy of the appellant's case in support thereof, addressed to Board 1 o? the Secretary of the Board of Trade, 7 Whitehall Gardens, Trade - London. 23. The Board of Trade may thereupon give such directions, Directions if any, as they may think fit for the purpose of the hearing of of appeaf. mg the appeal. 24. Seven days' notice, or such shorter notice as the Board Notice of 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. 416 1-3, 1889 A::.r,r. rtffuUtioo*. I;. ;- Bnanl of . Commence- ment. j:>. The appeal i !..-unl by th. I'n -,id nt. a Secretary, or an Assistant- Secretary <>f ti..- Hoard <>f Trad. . and th-d-< and order thereon of id. nt, & .\HsisUnt- Secretary, as the case may be, shall be the deci.-ion of the Hoard of Trade on MI. ) i appeal. On theappcal -u.-h di>i those Rules shall be paid in respect of the several matters, and at the linn s and in the manner therein mentioned. The Board of Trade may from time to time, by orders signed by tin Secretary of the Bon Trade, alter any of, or add to, the fees payable und. r these Rules. 11. Any regulation made hy : -e Roles may be altered or revoked by a subsequent regulation of all regulations made by the Institute under 1. s -hall, within tv. i days of the date of their being made, be transmitted to the Board of Trade, and if within t\v. days after a copy of any regulation has been so transmitted, the Hoard of Trade hy an order signify their disapproval thereof, such regulation shall be of no force or effect ; and if, after any regula- tion under these Rules has come into force, the Board of Trad.- signify in manner aforesaid their disapproval thereof, such regula- tion shall immediately cease to be of any force or effect. Js. The Institute shall once every year in the month of :abir transmit to the Board of Trad- a ivp.rt statin number of applications for registration which have been mad* in tin- preceding \. -ar, the nature and results of the final examina- tions which have been held, and the amount of fees received by the Institute under these Rules, and such other matters in r< lation to the provisions of these Rules, as the Board of T may from time to time, by notice signed by the Secretary of the Board of Trade and addressed to the Institute, require. J'.'. In these Rules, unless the context otherwise requires 'The Act' means the Patents, Designs, and Trade Marks Act, 1888. ' The Institute ' means the Institute of Patent Agents act- ing through the Council for the time being. 4 The Registrar ' means the Registrar appointed under ti Rules. ' Registered patent agent ' means any agent for obtaining patents in the United Kingdom whose name is registered under the Act and these Rules. 80. These Rules shall commence and come into operation on the 12th day of June 1889, but at any time after the making PATENT AGENTS RULES, 1889 417 thereof any appointment or regulations may be made and things done for the purpose of bringing these Eules into operation on the said day. 81. These Eules may be cited as the Eegister of Patent Agents Eules, 1889. By the Board of Trade, COUETENAY BOYLE, Assistant- Secretary, Eailway Department. The llth day of June, 1889. APPENDIX A. Form i. FORM OF EEGISTER. Name. Designation. Address. Date of Registration. Form 2. FORM OF STATUTORY DECLARATION. Register of Patent Agents Eules, 1889. I, A.B. [insert full name, and in the case of a member of a firm add, ' a member of the firm of ' ], of , in the county of , Patent Agent, do solemnly and sincerely declare as follows : 1. That prior to the 24th December, 1888, I had been bond fide practising in the United Kingdom as a patent agent. 2. That I acted as patent agent in obtaining the folio wing 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 pursuance 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 Decla- rations Act, 1835. Declared at E UTKNMX B. I'VKII. fLABS OF PRKUXIXAKY 1. The Matriculation Examination at any University in England Scotland, or Ireland. 2. The Oxford or Cambridge Middle CUu Senior Local Examina- tions. 8. The Examinations of the Civil Service Commissioners for a . sion to the Civil Service. 1 AITKNMX C. r> t -. Nature of Fee. When U> be pai country into which he introduces the patented object. 1 'mirth, tin- several states agree to grant temporary pro- tection to patentable inventions for articles appearing atofli< recognised 1 1: 1 ,. i national K \hihitions. The states which are parties to this Convention are indicated by an asterisk : 1 1 Brazil. The following summaries of Foreign Patent Laws have been carefully revised by patent agents and lawyers pra* D the respective states. UNITED STATES OF AM The existing laws of patents in the United States, comprising various Acts of Congress passed from time to time, have been collected and embodied in the Revised Statutes, approved Jr. 1874. There is now no difference in fees paid by citizens and ners. Probably in no country in the world are the rights of inventors lore cherished than in the United States, and the number of patents issued there annually fur exceeds that granted in any >ther country. The facilities for obtaining patents have been largely increased of late years, and no application for an invention possessing any features of novelty and utility is refused, if perseveringly and skil- fully prosecuted. Kvery original and first inventor, whether native or foreign, may obtain a patent for his invention, provided only it has not been in public use or on sale in the United States for more than two years previously to his application. The application must be in the name of and be executed by, the inventor himself, and must be confined strictly to a single invention. Patentable invention includes new and useful arts, new machines and implements, m w chemical compounds, and new manufactures, but mere applications involving no new results cannot be patented. By executing and recording in the Patent Office an assign- ment, the patent may be issued to an assignee. The petition to the Commissioner of Patents must be accom- panied by the first fee of 15 dollars, a specification fully explaining the nature of the invention and the best mode known to the in- ventor of carrying the same into effect; drawings, if the invention be susceptible of such illustration, and an oath in the prescribed form. The requirement of a model is now practically abolished, being only insisted on in cases where, by reason of its compli- UNITED STATES OF AMERICA 423 cated nature, the invention cannot be understood without such aid. The prosecution of cases hefore the United States Patent Office is conducted under a complex system of rules, constantly revised by the Secretary of the Interior and Commissioner of Patents, which renders such prosecution difficult and uncertain, and re- quires the exercise of great care and skill on the part of applicants and their attorneys. In the order of their filing applications are taken up for ex- amination by one of a corps of thirty skilled examiners, each of whom has under him four assistants and a number of clerks. Precedence is given to applications for inventions that have been patented abroad. A thorough investigation is then conducted to ascertain the novelty of the invention claimed, the search extending through domestic and foreign patents, and the scientific and industrial publications of different countries bearing on the invention under examination. If the invention is found to be wholly or partly wanting in novelty, or if the application includes more than one invention, or if any formal defects are discovered, the application is rejected, the reasons therefor being clearly pointed out. The application may be again presented, either with or without amendment, and a reconsideration obtained. If the applicant is dissatisfied with the final action of the examiner he may appeal upon the points of disagreement to the Board of Examiners-in- Chief. From their decision appeal lies to the Commissioner of Patents in person, and from his to the supreme court of the dis- trict of Columbia. For such appeals additional fees are required. It often happens that two or more applicants before the Patent Office claim the same invention, or that an applicant claims to be the prior inventor of a thing already patented to another. In such case the Commissioner declares an interference, which is a proceeding to determine which of the rival claimants is in law the prior inventor of the thing in dispute. This question is deter- mined, from proofs taken in writing, in the first instance by the Examiner of Interferences. Appeals may be taken the same as in uncontested cases, except that no appeal lies to the supreme court of the district. Provision is made by law for the reissue of a patent in case of an insufficient or defective specification, or where the patentee has claimed more than is new. Owing to abuse of this privilege, whereby patents have been unduly expanded and made to cover 424 iKD STATES OF AMEl different inventions from that originally patented, the court* have of late yean been very severe in dealing with reissued patents, invariably declaring invalid all those that appear to have been unwarrantably broadened in scope, i issues are now looked upon with distrust and disfavour, and it becomes of great importance to the inventor that his patent should be taken out in the first instance in such shape as to fully protect the invention, thus avoiding the necessity of a reissue. The protection afforded by caveats is now generally regarded as of little importance, and is seldom sought. The protection is only open to All patents are issued for a term of seventeen yean, but if the invention has been previously patented abroad, the patent expires with the foreign patent, or if there be more than one, with that having the shortest term. I'mler this provision an m v. -utor suffers great disadvantage by delaying his I'nited States application. The practice prevails in America, when an invention is to be patented in several countries, to first file the United States application and prosecute it to allowance. The day for issue of the patent can then be definitely fixed, and the patents in other countries are so obtained as to bear the same date with the I'nited States patent. By this simultaneous issue the inventor may enjoy the full term of all his patents. This course of proceeding is not generally pursued by foreign inventors, who naturally apply in the first instance for the home patent as being of most consequence to them. It has been recently decided by the Supreme Court U. 8. that i uited States patent continues in existence during the whole original term of the foreign patent, although the foreign patent may have lapsed. Upon allowance of a patent the final fee of 20 dollars must be paid. Applications not prosecuted for two years become abandoned. No prolongations of patents can be obtained except by special Act of Congress. Improvements upon the original invention must be protected by new patents. After issue of the patent there are no further taxes required, and no conditions are imposed upon the inventor as to working of his invention. As the novelty of a patented invention has been established by the Commissioner of Patents after a searching investigation, the presumption of law is that the patent is valid, and the courts, will so construe it as to sustain it if possible. ARGENTINE REPUBLIC 425 Patents will, however, be declared void 1. If the specification was made misleading for the purpose of deceiving the public. 2. If the thing patented were really the invention of another than the patentee. 3. If the invention had been patented or described in a printed publication before the invention by the patentee. 4. If the invention had been in public use or on sale in the United States^for more than two years previously to the filing of the application. Goods made abroad according to the invention can be im- ported into the United States without invalidating the patent. All articles made under the patent must be marked ' patented,' with the date of the patent. ARGENTINE REPUBLIC. This republic has established a Patent Office on the model of that of the United States, by a law dated October 11, 1864, and decrees and regulations of October 10, 1864, and November 8, 1866. Patents are granted for terms of five, ten, or fifteen years for all new and useful inventions and discoveries excepting pharma- ceutical compositions, providing that such inventions or dis- coveries have not been previously published in the republic. Patents are granted to the inventor or to the assignees of his rights. The Government fees on a patent are 80, 200, or 350 piastres (pesos fuertes], according to its term (in addition to sundry petty stamp duties), one-half of which amount has to be paid at the time of the application, and the remainder after the grant. Certificates of addition or improvement are also granted both to the original patentee and to others. In the former case one-fourth of the fees required for an original patent have to be paid, and in the latter case one-half of the said fees. Provisional patents are also granted for one year, the payment for which is 50 piastres. These patents are renewable at the expiration of each year. Applications for patents are to refer to a single chief object with its accessories and applications. Patents may be assigned. A patent is invalid if the drawing or specification is incorrect or incomplete. It also becomes void if not worked within two years from the date of issue, or if the working has been interrupted for a similar period, except by AM cm- u instances beyond control or accident. In either case no special judicial decree is required to render the patent null and Proceedings may be taken for infringement. Articles made abroad according to the patent can be ira- ported into the n -puMii- without invalidating the grant. The patent law of this empire, which has been in force since August 15, 1852, for Austria- Hungary and the principality of i Germany), has been extended by additional decree* of June 27, 1878, and December 20, 1879, to Bosnia and 1 ! gowina, and establishes the following regulations throughout the cmpi Patents are not allowed for alimentary preparations, bever- ages, and medicines, nor for discover!. -. inventions, or improve- ments which are contrary to public health, public welfare, morality, or the interest of the state. Scientific principles or purely scientific theories cannot be patented. With these an tions, patents are granted for every new discovery, invention, or improvement, having for its object (a) a new industrial product, new means of producing, or (c) a new method of producing that is to say, new within the empire. An invention is deenu <1 new when it has not been put into operation or been made public in the empire before the appli 11 for the patent is m;i Foreigners, as well as Austrian subjects, may be patentees ; but with regard to inventions made by foreigners not resident in Austria, patents are only granted when a patent has been previously obtained in a foreign country for the same object, and then only to the original patentee, or his legal assignee, during the term of his foreign patent. Two or more inventions cannot be included in a single patent, unless they refer to the same subject-matter, as essential parts of it. The petition for a patent may be made either by the inventor, if he is a resident of the empire, or by his legal attorney. Foreigners not residing must have a legal attorney. It must state the exact title of the invention, and the number of years for which it is desired to pay the patent tax, as the maximum duration of all patents is fifteen years, provided the tax is paid at once for the entire number of years or by instalments ; the term cannot be exceeded except by special imperial authority. AUSTEIA , 427 The amount of Government tax is as follows : For each of the first five years, 21. 12s. Qd. ; sixth year, 3Z. 18s. 9d. ; seventh year, 41. 12s. Qd.; eighth year, 51. 5s. Qd.; ninth year, 51. 18s. Qd.; tenth year, 6Z. lls. 3d.; eleventh year, 71. 17s. Qd. ; twelfth year, 9Z. 3s. 9rf. ; thirteenth year, 10Z. 10s. Qd. ; fourteenth year, 111. 6s. Qd. ; fifteenth year, 13Z. 2s. 6d., or for the entire fifteen years, 918 florins (92Z.). In addition to these taxes there are also stamps upon petitions, upon each sheet of the specification, draw- ings, &c. A description must accompany the petition, and this must contain a full, clear, and minute explanation of the invention and claims, so as to enable all competent persons to manufacture the article according to that specification ; if drawings, samples, or models are required for the full comprehension of the descrip- tion, they must be supplied in duplicates, one for Austria, one for Hungary. A patentee is entitled to establish workshops or factories, to employ the workpeople he may find requisite to carry out the object of the patent to its fullest extent, and consequently to form establishments, stores, and warehouses for the manu- facture, within the entire empire, under the existing legal pre- scriptions. He may sell and dispose of the proceeds, and license others to use his invention, take partners, and dispose of his patent right by assignment or in any way whatsoever. A patent will be cancelled on proof that the legal requisites for a patent do not exist, or that the description does not fulfil the prescribed conditions, or that the invention is not new, or, being an importation from abroad, that the patentee is not the real owner of the foreign patent, or that the object of the patent is contrary to law, or to the health or morality of the public, or the interest of the state. A patent will expire not only by efflux of the term, but also in case the patentee has not begun to work his invention in the empire with native materials within a year from the date of the patent, or in case he should not work the patented invention to its whole extent during every two years following the first begin- ning of working. Articles made abroad according to the patent can be imported into the empire without invalidating the patent. Patents are invalidated if it is proved (a) that the description of the patent is insufficient ; (&) that the patented invention, before the date of the official certificate, was not novel in the empire, or that the invention had been imported without having been patented abroad, or that the Austrian patent has not been granted to the proprietor of the foreign patent or to his legal assignee ; the proprietor of a valid patent proves that the . patented at a later period is 1 with his own discover}* or invention previously patented. BELGIUM. An Act bearing date May -j i. 1854, and a royal decree of the same date, and an amending law of March 27, 1857, determine the law of patents in this kingdom. tents are granted without previous examination, at the sole risk of the applicants. They may be obtained by the inventor or by any other person with his consent, or by one of several in- ventors having a foreign patent. They may be obtained in the name of a firm or company. Patents of importation can be obtained for inventions previously patented abroad although the inv- ntion may have been published in specifications, Ac., accord- ing to legal prescriptions. The duration of patents is fixed at twenty years, except in the case of inventions previously patented in some other country, when the Belgian patent expires with the prior foreign patent having the longest term. Patents are subject to an annual and progressive tax, viz. : first year, 10 frs. (8*.) ; second year, 20 frs. (16*.) ; third year, 80 frs. (24s.) ; and so on till the twentieth year, when the tax will be 200 frs. (8/.). Each annual tax is to be paid in advance. No tax is payable on patents for improvement when delivered to the original patentee ; specifications can be amended by- patents of addition ; such patents expire with the original patent, and patents also expire with the term for which a prior patent having the longest term has been granted. Patents confer on their owners or assigns the exclusive right of working the invention for themselves, or having it worked by persons authorised by them. Articles made according to the patent can be imported from abroad without invalidating the patent so long as the principal manufacture is in Belgium. Pro- ceedings for infringement may be taken before the Belgian tribunals, where the patentee's rights are infringed either by the manufacture, holding, selling, or exposing for sale the patented articles. Applicants for patents are required to lodge at the proper office, in duplicate, a full description of the invention, with draw- BOLIVIA 429 ing, models, or samples, when necessary. The first annual tax is paid when the documents are lodged. Specifications of patents are published three months after the grant. The annual tax can he paid within one month after the date when it is due without fine, and can be paid within five months after the expiration of the one month on payment of 10 frs. besides the annual tax. The owner of a patent must work the invention in Belgium within one year from its having been worked abroad ; otherwise the Government will, on presentation of a petition to that effect, declare the patent to be void, and this will be the case if a sus- pension of the working of the invention for one year takes place, unless good reason can be given. Patents will become void if the invention is destitute of novelty, either by reason of having been previously worked in Belgium or of having been published in a printed work (unless the publication be entirely the result of legal requirement) : if the specification is not full and complete ; or in case the invention has been previously patented in Belgium or abroad, the patentee not being the proprietor of the foreign patent, or having his authorisation. BOLIVIA. A law of May 8, 1858, gives protection to inventors and to importers of new inventions for not less than ten or more than fifteen years, but the protection to importers of inventions known abroad is limited to the locality in which the imported invention is worked. The State is authorised to buy the secret of any invention which, being useful to industry, may be for the general benefit. The applicant for protection for inventions or improvements must lodge a specification, explaining them, and must also lodge a specimen of the manufacture or product of the invention. When the applicant is an importer he must furnish drawings or models or a detailed description of the principles, methods, and processes of the industry as well as of the product. A commission is then appointed to examine into the subject of the application and to report to the Secretary of the Interior thereon, and within three months of the report the patent, if allowed, is issued ; the patent does not guarantee the merit or utility of the invention. A patentee may vary the description of his invention either before or after the grant of a patent. All transfers of the privileges must be by registered assignment. 430 Articles made abroad according t< ntion emu be im- ported into Bolivia without risk of invalidating the patent. The privileges lapse if the inventor has concealed the true methods of working his invention, or if the inventor uses secret methods not detailed in his description, or if tin- invention has been published, or if tin invention is not fully worked witi year and a day from the date of the grant. The law X. < >ctober 1 4 , 1882, regulates the gran of patents in Brazil. Patents are granted in Brazil for the term of a years, and patents of addition are also granted expiring with tht original patent. Foreigners having obtained patents abroad, and applying for their patents in Brazil within seven months from the date of the grant of their foreign patent, are not then prejudiced by any other application, or by the publication of the imvntiim in ]>ra/.il in the meantime. Inventors can also publicly exhibit their inventions in Brazil prior to their applications for patents, on obtaining the necessary permission for the purpose. An inventor desiring to obtain a patent in Brazil must deposit in duplicate a specification in Portuguese, together with drawings of the invention. The appli- cation must be limited to one invention only ; if the invention has for its object chemical, pharmaceutical, or alimentary pro- ducts. the (iovernwent will order an examination of samples; hut if it involves none of these things the patent will issue as of course. During the first year of the patent only the inventor can obtain a patent for improvement ticates of improve- ments are given to the original inventors and appended to the patents. Goods made according to the invention can be imported from abroad without injury to the patent. The patent will continue valid so long as the previous foreign patent remains in force, on payment of a duty of 2/. Is. 9d. for the first year, 8/. 10s. 10<7. for the second year, 41. 14*. &/. for hird, and so on, increasing II. 8s. 1\\ the invt-ntor, imiort-r, or bolder of a fort-ign patent for any invention or imj>ro\i -im-nt of inecbanical apparatus, combination of materials or process, and for making and sale of any manufacture or industrial prodtu t, hut not for tbe importation of foreign productions, whetber natural or manufactured. Tin duration of a patent cannot exceed twenty nor be leas than five years, and in the case of an invention previously patented abroad such duration is subject to tbe earlier expiration of tbe prior foreign patent. Th inventor is required to present a petition to the executive power setting forth Die nature of his invention or improve! and statin- the number of years for which a patent is desired ; and if the decision be favourable, he must furnish within forty days a full description of the invention, accompanied by drawings or models if necessary. A patent will then be issued without any previous examination as to the novelty or utility of the invention. I'pon the grant of the patent a fee varying from ten to twenty dollars for every year of the patent is payable, and a sum of twenty dollars must be paid on presenting the petition. A patent is refused when the invention endangers public salubrity or security, or encroaches upon proprietary rights already acquired, and a grant may be subsequently revoked if it is found to violate existing rights. A patent also becomes void if during a whole year the invention is not worked, unless it be from unavoidable circumstances, but the importation from abroad of articles made according to the invention does not invalidate the patent. The descriptions furnished by the inventor are pub- lished only on the expiration of the grant. Infringers may be prosecuted in accordance with the penal laws of the state. CONGO FREE STATE. A law of October 29, 1886, provides for the protection of in- ventions within this state. Every discovery and improvement capable of being worked as an object of industry or commerce is patentable. Patents of invention, importation, and improvement are granted without COSTA RICA- DENMARK 433 previous examination at the risk of the applicants and without guarantee. Patents of inventions are granted for twenty years ; patents of importation are limited to the term of the foreign patent ; and patents for improvements expire with the original patent. The Government fee for each patent is 100 francs paid in advance. No duty is payable on patents for improvements. Patentees have power to prosecute and recover damages from infringers, and to obtain confiscation of the infringing articles. All applications for patents must be signed by the applicant or his attorney, and the application must be accompanied by a specification and by drawings, models, or specimens of the invention. Patents may be assigned, and notice of the assignment must be given to the Department for Foreign Affairs. COSTA EICA. There is no special law relating to the grant of patents, but the republic is authorised by the Constitution to grant patents for terms fixed by Congress. The application for a patent is attended with considerable expense, and the terms of patents granted are similar to the other South American Kepublics. DENMABK. No laws have been passed in Denmark for the protection of inventions, but inventors, whether natives or foreigners, as well the first importer, may obtain patents. All inventions or improvements are patentable. The patent dates from the day of the signature of the King to the patent. Patents of invention and of importation are granted. Im- provements can be protected by new patents. The term of patents of invention is fixed by the Government,, and cannot exceed fifteen years ; patents are granted to foreigners for five years only. A uniform tax of 34 kroner ( = 60 francs) is required for each application for a patent. Over and above these sums are stamp duties to be paid in advance. Prolongations are not usually granted beyond the term fixed by Government for the duration of the patent. A slight examination of the invention is made before granting the patent. 131 ECUADOR Patents are not published, and information respecting them cannot be obtained without the t ion of the Ministry of the Interior, to whom a demand, with the special motives for the same, must be presented. The working of the invention must be proceeded with daring the first year of the patent, and continued without intemii during the whole term. The patent does not prevent the introduction into the country of similar products manufactured abroad. Assignments of patents are not authorised ; they may, how- ever, be accomplished by the joint demand of the proprietor and of the assignee for a new patent in the name of the latter. The petition to the King must indicate the object of the in- on. The patent becomes void if the invention is not new, or if it has not been worked within the given time. ECUADOR. The law for the protection of inventions within this State is dated October 18, 1880. Inventions are protected for not less than ten or more than fifteen years. Importers of machinery or of new methods of manufacture not previously known in the republic are entitled to exclusive privileges. If the establishment of the machine or industry imported requires an outlay of twenty- five thousand dollars protection is granted for three years, if fifty thousand dollars for six years, and if a hundred thousand or more for ten years. The applicant for any of the classes of privilege must petition the executive power, explaining in what the invention consists, and delivering a specimen of the manufacture, also a specification of the invention ; the Government thereupon appoints a Commission of three persons to examine and report thereon to the Minister of the Interior, who presents the papers to Congress, and Congress after examining the same will grant or refuse the patent. All assignments must be made by public instruments. \Vhere there are conflicting applications priority is decided by the certificate of the Under Secretary of the Interior. Papers relating to patents are registered in a special register at the Ministry of the Interior. The grant of privileges is communicated by the Ministry of the Interior to the Provincial Governors, and FINLAND 435 published in the official journal. On the expiration of the privilege, the petition, description, and other papers are to be published and deposited in the public library of the capital of the republic. The Act contains provisions for enabling the patentee to take proceedings against and recover damages from infringers. The privilege lapses when the invention is declared as contrary to the laws of the state, to public safety, or to the police regu- lations, and also if the inventor is convicted of having omitted from his description the true method of carrying his invention into practice, or of using secret methods not detailed in his description, or if the invention has been described and published in the press within or without the republic ; or if the invention is not put into complete practice within a year and a day from the grant, or if the obligations of the patent are not complied with. FINLAND. Russian letters patent do not cover the Grand Duchy of Finland. Patents have been granted in Finland since the year 1842 ; a patent law was passed March 30, and came into operation on June 1, 1876. Patents are granted for inventions or improvements in arts and manufactures. Medicines and inventions contrary to morals or public safety are not patentable. Patents are granted only to the true inventor, whether native or foreigner. As long as the ownership of the invention is not contested, the person to whom the privilege is granted has a right 1. To the absolute property in the invention for the time specified in the letters patent. 2. To use the invention himself, and to sell its results to the public, or to transfer the patent to another person. 3. To prosecute persons infringing the patent in the courts of law, and to recover an indemnity for the loss sustained by the infringement. 4. To treat as an infringement the making of articles in a similar manner with unessential differences. The person applying for a patent must deliver to the Govern- ment an exact description of his invention, with all essential details and the mode of carrying it into effect, and also the necessary plans and drawings, and models, if deemed necessary, not keeping back anything requisite to be known. The inventor has also to state in what respects his invention is new, or whether F F 2 436 1 INLAND it is an improvement upon an invention already oaed ; the novelty of tlu iimntiou or improvement moat be specified in the claims. Inventions made in foreign countries may be patented m l-'inland when no detailed description has been published, and when they have not been already introduced into the Grand Ihichy. Where an inventor has a patent for his invention in a foreign country, and has been compelled to publish a specification showing the mode of carrying his invention into effect, such publication does not prejudice the granting of a patent in Finland. If the invention has been previously patented abroad, an au- thenticated statement must be given as to when the patent was issued and for what term. In such a case the duration of the Finnish patent cannot extend beyond the expiration of the patent taken out abroad by the inventor. Patent applications are subject to an investigation into the novelty and merits of the invention. Patents are granted for the terms of from three to twelve years (the extreme limit). The duration of the patent is fixed by the Government in accordance with the state of that part of Finnish industry to which the invention appertains or with which it is most nearly connected. No prolongation of the term origi- nally grunted can be obtained. The Government tax is 20 Finnish marks (1 Finnish mark = 1 franc) for each year of the duration of the patent, but there are extra charges of the Finnish Senate to be paid, for registering the application, the issue of the certificate of application, stamps, poor rates, the "^'"p. Ac., amounting to some hundred marks. The patentee is bound, within two months from the date of issue of the letters patent, to publish the specification of his patented invention in two Finnish newspapers, in the Swedish and Finnish languages. The time prescribed within which the patented invention must IK? worked is generally two years, but this time may be reduced to one year, or extended, by application, to a period not exceeding four years. After this, proof of the working must be given every year. The patent will be annulled if the patentee has not published the specification of his patented invention, or proved the working of it within the time prescribed ; if it should be proved by verdict of a jury that the same invention or improvement for which a patent has been granted was already in use in Finland or else- FRANCE 437 \vhere, or patented by another person before the application was made ; or if it should turn out that the patent is contrary to morals or public safety. In case of the absence of the inventor, the person applying for the patent must be duly authorised by power of attorney. For improvements in a patented invention a new patent must be applied for. *FEANCE. As the country nearest our own shores, and with which our intercourse is so close, it is desirable all inventors should be well informed on the subject of the French laws. Letters patent for inventions (brevets d' invention) are princi- pally regulated in France by a law bearing date July 5, 1844, the material parts of which are as follows : Every new discovery or invention in any branch of industry confers upon its author, under the conditions and for the time hereafter mentioned, the exclusive right of working the same for his own benefit. Such right is constituted by the documents issued by Government denominated brevets d'invention, or brevets d' importation. The following cannot be patented : (1) Pharmaceutical compounds, or medicines of any kind, these being governed by special laws and regulations, principally by a decree of August 18, 1810 ; (2) schemes and projects of credit and finance. The duration of patents is fifteen years ; the payment in respect of a patent for fifteen years is 1,500 francs. This sum is to be paid by yearly instalments of 100 francs, and the patent will expire if default is made in payment of any one instalment. The duties may all be paid up in advance when desired. Foreigners may obtain patents in France ; and persons who have patented inventions abroad may obtain patents for them in France, the French patent expiring when the foreign patent expires. Persons desirous of obtaining a patent must apply by peti- tion to the Minister of Agriculture and Commerce, and give a description of the discovery, invention, or application forming the subject of the proposed patent, accompanied, when needful, by drawings. The petition must be in the French language, and must be restricted to a single principal object, with the necessary details and its proposed applications. It must mention the duration 438 h the Applicant desires for the pat* ust also give n title, comprehending a summary and precise designation < : subject of the inv ntion. No documents will be received except on production of a re- proving payment of a sum of 100 francs (4/.), on account of the tax on the pa The patents which have been applied for in due form are
  • r accuracy of the description. Tlit- patentee or the person entitled to the patent has the ri-lit. during the currency of the patent, to make alterations, additions, or improvements in tin im< ntimi. and the proceed- ings for their protection are similar to those required to be taken in applying for an original patent. The petition is subjected to a tax of 20 francs only. T icates of addition obtained by any one person entitled under the patent accrue to the benefit of all.' A patentee who, in respect of an alteration, addition, or im- provement, desires in place of a certificate of addition expiring with the original patent to take out a principal patent must pay the annual tax levied on original patents. ( >nly the patentee and those claiming under him can, dur- ing a year, obtain a valid patent for an alteration, improvement, or addition to the invention forming the subject of the original patent ; nevertheless, every person wishing to obtain a patent for an alteration, improvement, or addition to a discovery already patented may in the course of the said year make a formal appli- cation to the Minister of Agriculture and Commerce, which is to be transmitted to him. and remains deposited under seal. At the expiration of the year the seal is broken and the patent issued ; but the original patentee always has the preference in respect of alterations, improvements, and additions for which he himself shall during the year have demanded a certificate of addition or patent. A patentee may assign the whole or part of bis'property under a patent. The entire or partial assignment of a patent, whether as a gift or for valuable consideration, can only be made by a notarial act, and after payment of all the instalments of the tax. No assignment is valid with r. spect to third parties until after registration, but it is not necessary to register a simple licence to manufacture. FRANCE 439 The descriptions, drawings, specimens, and models of patents issued remain deposited, until the expiration of the patents, with the Minister of Agriculture and Commerce, where they may be inspected by any one, free of charge. After their expiration patents can be inspected gratuitously at the Conservatory of Arts and Commerce. Patents are null and of no effect in the following cases, viz. : (1) If the discovery, invention, or application is not new ; (2) if the discovery, invention, or application is not patentable ; (3) if they refer to principles, methods, systems, discoveries, and theo- retical or purely scientific conceptions, the industrial applications of which are not shown ; (4) if the discovery, invention, or appli- cation is contrary to the order, safety, morals, or laws of France ; (5) if the title under which the patent has been applied for fraudulently indicates something which is not the true subject- matter of the invention ; (6) if the description annexed to the patent is insufficient for carrying the invention into effect, or if it does not completely and fairly state the real methods adopted by the inventor. No discovery is held new which, previously to the date of the deposit of the petition, has received publicity in France, or in a foreign country, sufficient to enable anyone to execute it, except in the case of an application made within the terms of the Inter- national Convention. A patentee will be deprived of his rights under the following circumstances : (1) If he should fail to pay the annual payment before the commencement of each year of the term of the patent ; (2) if he does not put his invention or discovery into execution in France within two years from the date of the signature of the patent, or if he shall cease for the space of two consecutive years to work the patent unless, in either case, he can justify his inaction ; (3) and, in the case of patents applied for before the International Convention came into force, if he introduces into France objects made in a foreign country similar to those protected by his own patent. This did not apply to models introduced by the patentee with the permission of the Government. Whoever, in his trade inscriptions, advertisements, prospec- tuses, marks, or stamps, shall assume the title of patentee, with- out possessing a patent issued according to law, or after the ex- piration of a patent ; or who, being a patentee, shall describe himself as a patentee, or refer to his patent, without adding thereto the words ' sans garantie du gouvcrnement ' (without the guarantee of the Government), or the letters S. G. D. G., is liable 410 <;I:KMANY to a penalty of from 50 to 1,000 francs. In case of a repetition of the offence the penalty may be doubled. The patent covers all the French colonies. GBRMAXT. The law of the Empire of Germany with respect to patents is regulated by an Act which was passed May 25, 1877, and came into operation July 1, 1877. By this law patents are granted for new inventions which admit of industrial use, with the exception of: (1) Inventions the use of which would be incompatible with tin laws or the public morals ; i : ana relating to articles of food (for nourishment or luxuries), of medicines, and of sub- stances produced by chemical process, so far as the invention does not relate to the method of producing such articles. An invention is not regarded as new if it has already been described in a printed publication in any country, or publicly used ; many at the time of application for a patent. The first applicant for a patent of invention is entitled to the gram. The claim of the petitioner to the grant of a patent is void if -sential contents of his application have without permission been taken from the descriptions, drawings, models, implements, or arrangements of another person, or from a method of manufac- ture used by the same, and if such person raises opposition on that account. The patent has no effect against a person who, at the time the patentee made his application, had already been using the inven- tion in Germany, or who had made the necessary preparations for using the same ; neither has it any effect in so far as the in- vention is intended to be used for the army or navy or in the in- terest of public welfare. In such a case the patentee is, however, entitled to an adequate compensation by the empire or the state in whose special interest a limitation of the effect of the patent has been applied for. The amount of such compensation is fixed by a court of law in case an agreement cannot be arrived at. The patent does not affect means of conveyance coming tempo- rarily within the empire. Patents are granted for fifteen years, commencing with the day following the day of application. If an invention is an im- provement upon an earlier invention patented by the applicant, he may apply for a supplementary patent, which expires with the original patent. GERMANY 441 A fee of 30 marks is to be paid on the issue of the patent, and a further fee must be paid for each patent at the commencement of the second and every subsequent year, amounting in the first instance to 50 marks, and increasing by 50 marks per annum for the time of duration of the patent. The patent expires if the patentee resigns the same, or if he fails to pay the fees within three months at the latest after they have become due. Patents are to be annulled if it is found that the invention was not patentable according to the law, or if the essential con- tents of the application have, without permission, been taken from the descriptions, drawings, models, implements, or arrange- ments of another person, or from a method of manufacture used by another. The patent can be revoked after the expiration of three years if the patentee fails to carry out his invention in Germany to a suitable extent, or at least to do everything that he can to carry it out, or if the grant of licence to others for using the invention appears to be in the interest of public welfare, but the patentee refuses to grant such licence upon an adequate compensation. Persons not residing in the empire can only claim grants of patents on the appointment of a representative resident in Germany. The granting, annulment, and revocation of patents is vested in the Patent Office, which has its seat at Berlin. The decisions of the Patent Office are subject to appeal. At the request of the law courts the Patent Office is bound to give opinion in all questions concerning patents. A register is kept at the Patent Office, in which the subject- matter and the duration of granted patents will be entered, as well as the names and addresses of the patentees and of the repre- sentatives appointed by them on presentation of their applications. The commencement, the termination, the expiration, the decree of annulment, and the revocation of patents must be entered in this register, and simultaneously published in the ' Reichsan- zeiger.' The essential parts of specifications and drawings, so far as their inspection is permitted to the public, will be published by the Patent Office in an official paper. The application for the grant of a patent for an invention must be made in writing to the Patent Office. For each inven- tion a separate application is required. The application must contain tlfe petition for the grant of a patent, and must point out 442 01 in a precise manner the subject-matter which is to be patented. It must also be accompanied by drawings or other representa- tions, models, and samples, where necessary. 1 A fee of 20 marks must be paid on filing the application. \\ Inn tin- invention is approved by the Patent Office, the subject-matter of the application will be provisionally protected in favour of the petitioner, and a notification of the same will be officially published. If the Patent Office is of opinion tli.it the invention cannot be considered as patentable, the application will be rejected. The applicant can, however, make one appeal from such a decision. After expiration of eight weeks from the day of publication the Patent Office has to decide as to granting the patent. I' mil that date objections against the granting can be lodged with the Patent Office. They must be made in writing and be accompanied by arguments. Before finally deciding, the Patent Office may summon both parties to attend and be heard ; it may also cause the objections to be examined by suitable persons skilled in some branch of technical science, and otherwise institute inquiries for elucidating the matter. Against a decision by which an application is rejected, the petitioner may appeal within a stated time, usually four or six weeks after its notification, and against the decision concerning the granting of the patent OR opposition, the petitioner or the opponent may appeal within a similar stated time. On filing the appeal 20 marks must be paid. As soon as the granting of a patent has been decided upon, the Patent Office will cause a notice to that effect to be published, and then issue the patent. If a patent is refused, this will also be publicly notified. Upon the refusal, the provisional protection shall be considered as not having taken effect. No action will be taken upon applications which are not written in the German language. The term within which an action may be brought for an in- fringement of patent right is limited to three years with regard to any single case by which such action may be supported. 1 In the case of applications for hand fire-arms, skates, and for spindles for spinning-machines, models are always required, and samples of the product and intermediate products in chemical process cases ; if the pro- duct is a tar dyestuff, samples of dyed material in three shades must also be filed ; they may be demanded in other casm GUATEMALA 443 The question whether damage has been caused, and to what amount, will be decided by the court after due consideration of all circumstances. Sentence will be passed for payment of a fine not exceeding 150 marks or imprisonment : 1. On any person placing on articles, or their packing, any designation calculated to cause the erroneous impression that such articles are protected by a patent in accordance with this law. 2. On any person who in public advertisements, on sign-boards, on business cards, or in similar notifications, employs a designa- tion calculated to cause the erroneous impression that the articles thus mentioned are protected by a patent in accordance with this law. The requirements of the Patent Office are so stringent, espe- cially in respect to ' subject-matter,' that only about 40 per cent, of the applications are granted. Patents are frequently refused on most inadequate grounds, and the procedure of the office frequently entails great and unnecessary expense upon the appli- cant. The German mark is about equal to the British shilling. * GUATEMALA. The Eepublic of Guatemala has by a law of May 21, 1886, defined the rights of inventors. Patents are granted for terms of from ten to fifteen years to natives of Guatemala or to domiciled foreigners, 1 or persons who have applied for patents in other countries of the International Convention. For these patents application must be made to the Ministry of the Interior, explaining the invention or improvement, and soliciting the privilege. When the patent is granted, one exact drawing of the machine, or a detailed description of the process, with a specimen of the manufacture or product, must be fur- nished. Patents will be void when they have been issued prejudicially to the rights of a third party, when the invention is not put into practice within a year from the date of the grant, or when aban- doned for more than a year, or when the products are inferior to the specimens lodged. Every person has the right of improving the invention, but 1 A Bill was presented in Congress to modify this disposition. 444 HAWAII HOLLAM) not of using the original invention, and the original inventor cannot use the improvements made by another except by agree- ment. Articles made abroad according to the invention can be imported without rendering the patent invalid. When the term fixed by the grant lias expired the specifica- tion is published. A tax is reserved by the patent of from five to fifty dollars for each year of the grant, payable in advance. The same law also provides for making grants in favour of undertakings of public utility in < i uutemala or in favour of th<- establishment of new industries or improvements upon those already existing. \l\\\ All. An Act of August 29, 1884, regulates the granting of patents, sects. 258 and 256 of the Civil Crtes have by decree been declared in force in this republic. I'.;. \ rttt ' ' rson who invents, imports, or introduces an invention may, by ap- plication to the prefect of the department or tin- muni. ipalit\ , obtain a certificate granting him an right to such in- Minion. The duration of tin- privilege is to an inv-nt<>r t-n years, to an improver seven years, and to an intnNlucer five years. Tin so U-rms may be extended by tin- in\t ntion must be worked in the republic within two years or the privilege will cease. In practice, however, the rules of the decrees are not closely followed, hut mi urhitrary power is vested in Congress, which grants a patent or withholds it as it sees tit. NORWAY. Patents for new inventions beneficial to industry are granted in Norway under a law of June 16, 1885. An invention is not considered to be new if before the application for a patent it H already so far known that it can be carried out by experts, hut publication in print or by puhlic exhibition for a period not exceed- ing six months before the application will not prevent the grant. The applicant must be the first inventor, or a person who has obtained the right from him. The proprietor of a patent has for a period of two years from the date of his application the sole right to obtain a patent for improvements or additions to the invention. Patents are granted for fifteen years from the date of the appli- cation. Improvements or additions may be protected either by in- dependent patents or by patents of addition expiring with the original grant. A fee of 80 crowns ( = II. 13s. Id.) is to be paid on lodging any application, and an annual tax is also payable of 10 crowns ( = lls. ) for the second year, and increasing 5 crowns ( = 5s. Gd.) each year. The patent has no effect against persons who have used the invention or have made the necessary preparations for the use of the same before the application. ORANGE FREE STATE 453 A patented invention may be used for the service of the Government without consent of the patentee, but in that case the patentee is entitled to compensation, to be paid by the Govern- ment, the amount of which, in case of dispute, is settled by arbitra- tion ; and a patented invention of essential value to any particular trade or industry may be appropriated to private use, but the patentee is entitled to compensation, to be paid by the person using the invention, the amount of which, in case of dispute, is settled by arbitration. The examination of, and decision upon, applications rests with a Patent Commission, consisting of a president qualified for the bench, and five members (at least) experts in technical pur- suits. Applicants must lodge with the Patent Commission a petition and description and drawings (in duplicate) of the invention ; if the applicant is not resident in Norway he must appoint a resident attorney to represent him. The specification must con- clude with a definite statement of what the applicant considers to be his invention and wishes to protect. If the application is approved it is advertised ; the papers are open to the public inspection during eight weeks, and any person may lodge an opposition to the grant ; the Commission then decides upon the application, and if the applicant is dissatisfied with the decision he may apply for the reconsideration of the matter, and may also appeal to a superior Patent Commission of seven members appointed for that purpose. The invention must be put into operation in Norway within three years from the date of the grant, and the working must not be afterwards discontinued for one year. A register of assignments is kept in which all the dealings with patents must be entered. Actions may be brought for the repeal of the patent, and against infringers, from whom damages may be obtained by the patentee as well as penalties by the Crown. Articles made abroad according to the patent can be imported without invalidating the grant. ORANGE FREE STATE. The Legislative Council have, by an Ordinance No. 10 of 1888, repealed the Ordinance No. 12 of 1884, and have established a law of patents similar to that of the Transvaal. (See page 464.) 454 PARAOUAY-PERU The fees for obtaining patents are also similar, except that the fee payable on sealing the patent is not less than more than 601. All documents most be in the Dutch language, and applications have to be advertised at the applicant's expense. PAJUOUAY. There is no special law enabling inventions to be patented in this country, but patents can be obtained by inventors whether rin/.-ns or strangers, and also by the first introducers of i: tions from abroad. Patents can be assigned in whole or in part. All new discoveries and improvements are patentable, and no examination is instituted prior to the grant. Patents date from the day of the grant. The term fixed varies from five to ten years, and is fixed by Government decree. Prolongations of the original terms can be obtained where the i i iv umstances justify such prolongations. Legal proceedings can be taken against the persons infringing the patent. PEBU. Article 27 of the Constitution declares useful discoveries to be the property of the authors, and that introducers may enjoy like privileges for limited periods granted to them. The Law of January 28, 18G9, repeats the same declaration, but enacts that the right must be established by a certificate or patent. The duration of patents is not to exceed ten years, and a fee of about 20/. per annum is payable to the fund of public works of the province in which the invention is exercised or established. The application must comprise a description of the invention, with plans or models, and a clear statement of the principal ob- ject, with details and an explanation of the application, the term sought for, and the nature of the security offered for the realisa- tion of the project. If a foreigner is an applicant, he must renounce all diplomatic intervention and submit himself absolutely and irrevocably to the laws of the republic. An official inquiry is made in each case, and the Ministry will grant or refuse the patent upon the result. Prolongations and modifications or alterations can only be granted by legislative resolution. The patents are null : If the discovery, invention, or applica- POKTUGAL 455 tion is not new, or the application is not for new industrial pro- ducts or new applications of those already known ; if based upon theoretical or scientific principles, methods, systems, or disco- veries, the industrial application of which is not indicated ; if the discovery appears to be contrary to law or order ; if the appli- cation was fraudulent ; or if the invention cannot be carried out according to the description lodged. The invention is not to be deemed new if it had sufficient publicity to be put in practice in Peru or abroad prior to the date of application. The patentee will lose his rights if the annuity is not paid, if he does not work the invention within two years from the date of the grant, and if he imports from abroad articles made accord- ing to the patent. Persons interested may demand the nullity or cessation of the patent, and such demands will be considered by the Ministry. * PORTUGAL. Eoyal decrees, dated December 31, 1852, and March 17, 1868, regulate the law of patents in Portugal, including the Portuguese possessions abroad. Their principal provisions are to the follow- ing effect : Authors of new inventions, whether native or foreign, are entitled to secure an exclusive right to them by patent ; but the patent will be no guarantee of the reality, priority, or merit of the invention. An invention can be patented, though in use in foreign countries, if it be new in Portugal. The duration of a patent privilege cannot exceed fifteen years ; but the inventor may obtain it for a less period, from one year upwards. To inventors who have already obtained a patent in a foreign country, no longer term will be granted than is sufficient to make up fifteen years from the date of the foreign patent. The importer of an invention (not being the inventor himself) can only obtain a patent for five years. Prolongations are granted when demanded within the term of the first demand. On applying for a patent, an inventor must deliver to the proper office an exact description, under seal, of the principles, means, and processes which constitute the invention, with the necessary plans in duplicate, sections, and drawings. A patent will not be allowed to comprise more than one sub- ject-matter of invention. 456 nmu Articles nude abroad, according to the invention, can U> portal \\ith. -tit invitliduting the grant, but patentee* are required to work tli. ir patents officially in Portugal w ithin two yean from the date of the patent, and t!. working mast not cease ft)! yean. Th. law .I.* - not. ho\\ >. > . actual const: the country. An iinjx <1 by an inde- pendent person as being made in accordance with the specification is considered to be a sufficient working, whilst advertisements in the newspapers are held to be nufli. nee of subsequent workings. A tax of 5,000 reis (about 28*.) is imposed in respect of each year of the patent, and is paid in adv nt rights pass by assignment or by will. A patent becomes void if the invention In- not carried into effect within two years, or if the manufacture IK? adjudged a nuisance by a competent tribunal. RUSSIA. The law as to privileges for inventions in Russia, including Poland and Siberia, but excluding Finland, was declared by an imperial decree of June 17, 1812. On November J. 1838, the of this decree were altered, and amendments were made : iiber 2. IKMU; JulyS, 1887; October:?:;. 1MO; Augu- 1H45; July 7, Is.V-i: May -J-. 1-..-J : .July 11. 1-,,| ; ( i, i . 18GI .i*r 20, 1864 ; Februar 7 : Aj -ill i. 1868; March 80, 1870 ; June 7, 1H7 - 1 N inber 80, 1872 ; January 10, 1878 ; October 20, 1874; and April 27, 1- The privilege granted for discoveries, inventions, or improve- ments in arts and manufactures is founded upon the letters patent and a certificate (obtained on presenting a petition to Government accompanied by a full description of the invention, with the drawings belonging to it, and paying the Government tax), which certificate states that the invention therein mentioned was presented at such a date and hour to the Government, and that the Government tax has been paid. The term of the patent begins from the day of issue of the letters patent, but infringen may be prosecuted from the date of the certificate of application. Patent applications are subject to an investigation into the novelty, and partly into the merits of the invention. No patents are granted for munitions of war (as, for instance, guns, projectiles, torpedoes, etc.) unless adapted to other purposes (as, for instance, sporting fire-arms, metallic cartridges, etc.), when, EUSSIA 457 the grant will be made subject to the rights of the Government to use the same without compensation. The Government does not guarantee that the invention belongs to the person who makes the application ; it only certifies that for the same invention no privilege has been granted to anybody in Eussia before. The privilege granted by the Government does not prevent the true inventor from proving, in legal form, that the invention does not belong to the person who obtained the patent of in- vention. Until the ownership of the invention is contested the person to whom the privilege was granted has a right : 1. To the absolute property hi the invention for the specified time. 2. To use the invention himself, and to sell its results to the public, or to transfer the privilege to another person. 3. To prosecute persons infringing the privilege in the courts of law, and to recover an indemnity for the loss sustained by the infringement. 4. To treat as an infringement the making of articles in a similar manner, even with improvements upon them, as long as the essential parts of the first discovery are copied. The applicant for a patent privilege must deliver to the Gov- ernment an exact description of his invention, with all essential details, and the mode of carrying it into effect ; and also furnish the necessary plans and drawings, not keeping back anything requisite to be known to enable the invention to be carried out. The inventor must state what he claims as novel. If the invention relates to sporting fire-arms, or surgical instruments, a model or specimen will be required in most cases. Inventions made in foreign countries may be patented in Eussia when no detailed description has been published, and when the inventions have not been already introduced into the Eussian Empire and the foreign patents have not expired. A patent for an imported invention has the same validity as one granted for an invention made in Eussia, until it is shown that the invention had been brought into use before the grant or that it had been described in published books or papers in such a way that it could have been carried into effect without the patentee's description. Patent privileges for original inventions, whether made in Eussia or in a foreign country, patented or not patented abroad, are granted to the Eussian or foreign inventor, or his assignee, for 1 Vs SAN SALVADOR three, five, or ten yean (the extreme limit), at the option of the applicant. Patent privileges applied for by the mere importer for inventions still remaining under patent protection abroad are granted for one, two, three, four, five, or six yean (the extreme limit), at the option of tin applicant, but cannot endure beyond the expiration of the patent taken out abroad by the inv< himself. The Government charges amount on patents of inven- tion for three years to 00 roubles, for five years to 150 roubles, and for ten years to 450 roubles ; whilst for patents of importa- tion the Government charges GO roubles for each year of the duration of the patent. If the application be refused the Govern- ment tax is refunded, with the exception of from 11 to 15 roubles for the advertisements of the application in the newspapers. A patent will be void when it is shown to the proper tribunal that a patent of invention has been applied for without the con- sent of the true inventor, or that tin- invention has been already practised in Russia, or that, at the time of the presentation of a petition fora patent, tin* invention had been previously described in books or periodicals published in Russia or elsewhere, so that it might have been carried into effect without further descrip- tion. It will also be void where it is impossible to arrive at tin- promised result by following the directions of the patentee, or if tin- certificate of working has not been filed within the time pre- scribed. > power of attorney is required for the person applying for the patent in case of the absence of the inventor or importer. No prolongation of the term originally granted can be ob- tained. For improvements in a patented invention a new patent must be applied for. An invention for which a patent has been obtained must be carried into effect in Russia within one quarter of the term for which the patent was granted, and within six months after this a certificate of working from some local autho- rity must be filed at the Ministry which issued the patent. To prove the working of the patented article, it may, if it be a machine, be imported, but if the patent is for a process, the manufacture must be carried out in Russia. SAX SALVADOR (CKXTRAL AMERICA). The Constitution gives power to the executive to grant privi- leges to the authors of useful inventions, but no special law exists for regulating the grant of such privileges. It is customary, SPAIN 459 however, for the executive in the exercise of its prerogative to follow the practice of civilised Governments. * SPAIN. INCLUDING THE SPANISH COLONIES OF CUBA, POETO EICO, AND THE PHILIPPINE ISLANDS. A greatly improved law with respect to patents for inventions came into operation on August 1, 1878. Under this law facilities are afforded for the introduction into Spain of numerous inventions which the restrictions and cost of obtaining patents under the old law precluded. A valuable feature of the present law is, that one patent includes not only Spain, but the colonies of Cuba, Porto Eico, and the Philippine Islands, for each of which a separate and most costly patent was formerly requisite. To render the patent valid in the Spanish colonies it must be registered in the Colonial Office at Madrid. The rights of foreigners as regards obtainment of patents are the same as those of natives. Two classes of patents are granted, one to inventors, and another to those who, without being inventors, introduce or import a new industry into Spain or the colonies. The proprietorship of a patent is hereditary, and can be sold or negotiated, just as any other property, according to the existing laws in Spain. Patents are granted to one or more individuals, or to a society or company. Patents of invention are granted to all who solicit them, without previous examination as to the novelty or usefulness of the invention. Applicants for full-term patents in Spain must file their petition before their inventions are published or made known elsewhere, so that the invention may be considered new in Spain ; in such cases the patent will be granted for twenty years. But if the application be delayed until after the publication has taken place in any other country the applicant is still entitled to a ten years' patent in Spain, provided that two years have not elapsed since such publication. Should more than tioo years have elapsed he is then in the same position as an importer or intro- ducer of the invention, and can only obtain a five years 1 patent. The introducer not being the inventor is not entitled to a grant for more than five years. I Gil UN If the applicant obtains a longer time than he is legally entr to, he incurs the risk, on the intervention of a third person, of tin- Courts declaring the patent, ip$o facto, null ami v.,i.|. 15m the patentee would be entitl. .1 to present a fresli application for the term then open to him under the law, pmvi.lt .1 n <>thi-r appli- cation had been filed in the meantime. The annual taxes are 10 pesetas (10 francs) for the first year ; 20 pesetas (20 francs) the second year ; 80 pesetas (80 francs) the third year, and so on successively, each year 10 pesetas (10 francs) more than the previous year. The following documents are needed on application for a patent : 1st. A power of attorney in Spanish, indicating the name and residence of the person in whose name the patent is to be granted. lind. A complete specification, explaining tin- invention and the points claimed. The patent will be granted on the point or points specified in the claims. The references to weights or measures in the specifications must be made in accordance with the French metrical system. 3rd. The drawings must be on tracing cloth, in black ink. without colours or colouring, on the French metrical scale, and in duplicate. If, on the Patent Office authorities examining the documents and papers, it should be found that they are incomplete, or not presented according to this law, two months will be allowed to the applicant to correct the error if the inventor resides in Europe ; four months if he resides in America ; and eight months if he resides in Asia. No secrecy will be observed, as formerly, with regard to the patents granted. The specifications and drawings are open to the public in the Patent Office after the grant has been made. Certificates of addition are granted. During the whole term of a patent, the owner, his heirs, or the person representing his rights can obtain protection for improvements on or additions to his original patent. No annuities are payable on certificates of addition, but the further improvements protected must be put into working in the same way as the original patent, and either at the same time or separately. The certificates of addition will be granted and considered as parts of the original patents. They are solicited in the same manner as the patent, and terminate when it terminates. In- stead of soliciting a certificate of addition, a new patent, inde- SPAIN 461 pendent of the principal one, can be obtained for improve- ments. The sale, cession, or negotiation of patents can be made before a notary in any country. If the cession is made in Spain a special power must be sent for it. If the cession is made before a foreign notary, out of Spain, the document or contract must be made directly in Spanish, or must be officially translated at the Spanish Legation or Consulate. All documents sent to the Patent Office department must be legalised at the Spanish Legations or Consulates of the places whence they come. In the contracts of sale or cession, a certifi- cate from the Patent Office of Spain must be transcribed to prove that the annual taxes on the patent are paid up to the date of the contract, and that the patent is in full force, and that the patentee has not disposed of his interest. The sale or cession of the patents, with all the requisite formalities, must be registered in the Gobierno-Civil at Madrid. Two years are allowed for the official working of the patent in Spain, but this term can be prorogued by a special law passed in the Cortes to that effect ; this can only be obtained under very exceptional circumstances, with much difficulty and at great cost. Patents will be declared void when their owner ceases to pay the annual charges, or when he has not proved officially that he has worked the patent within the two years. Patents may be annulled at the instance of a third person and by the sentence of a Spanish court in case it is proved the invention was not within the terms of the law when applied for, or if the specification does not sufficiently describe the manner in which the invention is to be worked. A patent may also be annulled at the instance of a third person if it can be proved that the invention has not been put into operation within a year and a day from the date of the patent. Advertisements of the invention inserted in local newspapers are, however, sufficient to prove that the invention had been intro- duced. Where the invention is in actual operation in Spain or its colonies a certificate attested by a notary must be obtained from the seller or manufacturer. The infringement of a patent is punishable with a fine. All articles wrongly manufactured under the patent infringed are to be delivered to the rightful owner of the patent, and the patentee has a right, besides, to claim damages. If the infringer is not able to pay the fine, he will be imprisoned for a proportionate length of time. 462 >\VI-:M-:N Counterfeiters of patents will be alto punished according to the Spanish Criminal Code. Governors of the Spanish colonies can no longer grant p:it lit-. SWEDEN. Patents for new inventions of industrial products or for special in. thol- for tin- munufacturc of such products are granted in Sweden under a law of May 16, 1884. An invention is not con- sidered to be new if, before the application for a patent, the in- \t ntion is already by publication or working so far known that it can be worked by experts, but publication in print or by exhil in an international exhibition will not for a period of six months before the lodging of the Swedish application prevent the grant of a patent. The applicant must be the first inventor, or a person who has properly obtained the rights from him. Patents of addition are granted. Patents are granted for fifteen years from the date of the ap- plication. A fee of 50 crowns (2Z. 15*.) is to be paid on lodging the application and a fee of 25 crowns (II. Is. 6d.) at the grant. Annuities must also be paid : 25 crowns (II. Is. 6d.) during each of the 2nd, 3rd, 4th, and 5th years, 50 crowns (21. 15s.) during each of the next five years, and 75 crowns (4/. 2s. 9d.) during each of the last five years. The patent has no effect against persons who have used the invention or have made the necessary preparations for the use of the same before the lodging of the application. A patented invention may be used for the public service or Government without the consent of the patentee, but in that case the patentee is entitled to full compensation, which, in case of dispute, is settled by arbitration. The examination and decision upon applications rests with the Patent Office, consisting of a commissioner, a chief-engineer, and a number of engineers. Applicants must lodge with the Patent Office a petition, specification with claims and drawings, in duplicate. If the applicant is not resident in Sweden he must appoint a resident attorney to represent him. If the application is approved it is advertised and the papers are open to the public inspection during two months, and any person may lodge an opposition to the grant ; the Patent Office then de- SWITZEKLAN1) 463 cides upon the application. If the application is rejected, the applicant may appeal to the King. The patented invention must be commercially worked in Sweden within three years from the grant of the patent, and this working must not he afterwards discontinued for one year. The time for the working may, upon application to the Patent Office, be prolonged to four years. Assignments must be registered. Actions may be taken for the repeal of the patent and against infringers, from whom damages may be recovered by the patentee as well as penalties by the Crown. Articles made abroad according to the patent can be imported without invalidating the grant. * SWITZERLAND. The Swiss Confederation has, by a law which came into force Nov. 15, 1888, provided for the grant of patents for inventions. Patents are granted for fifteen years from date of application, subject to the payment in advance of annuities of 20 francs for the first year, 30 for the second, 40 for the third, and so on up to the fifteenth year. Patents of addition are granted upon payment of a single tax of 20 francs. Patents are forfeited if the annual taxes are not paid within three months from their falling due, and are liable to forfeiture if the invention is not carried into practice in Switzerland within three years from the grant, or if the patented article is imported from abroad, the patentee having refused equitable offers for Swiss licences. Patents will also be declared null if the invention is not new or cannot be carried into effect, if the patentee is not the inventor or his successor, if the title of the patent is misleading with fraudulent intent, and if the specification is not sufficient or does not accord with the model. Any interested person can bring an action for annulment. Applicants for patents not residing in Switzerland must appoint an agent of Swiss domicile. A patentee finding he cannot work his invention without using a previously patented invention may obtain a licence if three years have lapsed since the lodging the application for the first patent ; if such licence is granted the proprietor of the first patent may also obtain a licence to use the improvement. If, I \Vli, 11 tin- pulilic interest requires Federal Assembly . ut the request of the Federal Council or of a Canton, decree CM 'priation of a patent at the expense of the Confederation <>r of u Canton se of the republic, upon payment t tin- patentee of an inl iiuiity fixed by th<- F.d.ial tnlninal. Application for tin- patent must be made to the Federal Office of Industrial Pro)* r ; plication nm rman.Fn or Italian, and must U- limited to a tangle principal with details, ami must be accompanied by a specification. drawings, if necessary, and proof that a model of the invention or the article -ts, ami tin- application fee of -10 francs, together with 1<> francs for the examination if no pro- 1 Council may also require a nWi. 1. A provisional patent for two years may be obtained. The complete patent must be obtained within the term of provisional pa: A register of patents granted is kept in which all changes relating to the existence, ownership, and enjoyment of the patent are entered, and a note is also made in the register of the lapsing, nullity, and appropriation of the patent, as well as of all < pulsory licences grunted. Articles manufactured under the patent, or the packages containing the articles, are to be marked with the Federal Cross and the number of the patent. The Federal Office publishes the descriptions and drawings annexed to applications ; this publication may be postponed for MX months to allow of taking out foreign patents. Civil or criminal proceedings may be taken against infringers and against persons assisting infringers, against persons who have refused to disclose the origin of infringing articles found in their possession, and against persons who have wrongfully put upon their commercial papers, notices, or products indie;; tending to cause belief in the existence of a patent when none exists. Provision is made for placing Switzerland under the terms of the International Convention, and for the protection of inventions exhibited in national or international exhibitions in Switzer- land. TRANSVAAL (SOUTH AFRICAN REPUBLIC). Letters patent for this state are granted under a law of June 1, 1887. All persons, whether citizens or aliens, can obtain letters patent TKANSVAAL 465 for new industrial inventions. Corporations and companies of which the inventor is a member have the same rights. Application may be made in general terms at the office of the Attorney-General in the language of the Act, and must be accom- panied by a description of the invention La Dutch and by payment of the fee undermentioned. Upon this application being accorded provisional protection is obtained for six months, or the applicant may lodge a detailed description, upon which he may also obtain provisional protection. The applicant cannot take any proceed- ings until the patent is sealed. When the applicant is desirous of completing his patent he must give notice of his intention to proceed : this notice is ad- vertised, and persons desirous of opposing can then do so. Oppo- sitions are heard by the Attorney-General, who can call in expert assistance. The Attorney- General then issues his certificate, upon which the letters patent are sealed. The sealing will be refused if the application for it is made more than three months after the date of the Attorney-General's certificate, or if the application is made after expiration of the term of provisional protection. Patents are granted for fourteen years, subject to the payment of additional duties at the end of three and of se\en years. The patent will cease with the expiration of any prior foreign patent for the same invention. Alterations in specifications by way of effacing, improving, or adding thereto may be made on application to the Attorney- General for that purpose. Proceedings may be taken to obtain grants of compulsory licences where the patent right is not used in the state, or where the ordinary demand for the patented article cannot be supplied, or where anyone is prevented from deriving the full benefit of an invention in his possession. The Act gives power to grant prolongations for additional terms (not exceeding fourteen years) if applied for six months prior to the expiration of the original term. Kegisters of patent deeds and of proprietors of patents are kept, and all transfers, licences, etc., must be entered therein. Applications to the High Court may be made by the Attorney- General and by persons interested for the cancellation of a patent upon the usual grounds. A penalty not exceeding 2,51. is imposed upon any person selling an article as patented which has not been patented, and a penalty not exceeding 501. is imposed upon any person Belling H H an article as having a patent right : hen another person has the patent right. Actions for infringements must be taken in the High Court, and tin- Act irh - full directions as to pleadings and the cor ich proceedings. The lawful representatives of a deceased inventor may ol a patent ri.i,'ht for the invention on making application within six months of tin- death. lection for inventions shown at international or industrial exhibitions is provided for. The (lovernment may demand from the inventor a of his invention at any time on i me. The fees payahle for patents are: On the deposit of tlie application . *.\ It. . issuing of certificate . 11 .. .. sealing the patent . . 11 I 1 ., fore the expiration of three years . 5 .. ten 10 Ti The Law of December 26, 1888, provides for the protection of inventions by patents for terms of five, ten, or fifteen years, subject to an annual tax of 100 piastres. Petition must be made to the Prime Minister, accompanied by a specification in French, and drawings (in duplicate), together with 100 piastres. Notice of the application is then published, and oppositions can be entered within two months. The specifi- cations, drawings, and models are open to public inspection. Alterations, improvements, and additions may be made by the patentee or person entitled to the patent during its whole term. Certificates of addition are given subject to payment of a fee of 20 piastres. None but the patentee or persons interested through him can, during the first year, legally obtain patents for alters? additions, or improvements, the original patentee having the preference for that year. Patents may be assigned in whole or in part by notarial deeds, and all assignments must be registered. Licensees of the original patent have the benefit of all certificates of addition. Protection is given to inventions exhibited at public exhibi- tions. Foreigners may obtain patents, but where a patent has been TUEKEY 467 already granted abroad, the duration of the Tunis patent must not exceed that of the foreign patent. Patents are null if the invention is not new, if the title of the patent is fraudulent, and if the specification is insufficient. No invention is considered new which has been published hi Tunis or abroad before the date of the application, sufficiently to enable it to be worked. The patentee is deprived of his rights : On non-payment of the annuity before the beginning of each year ; if the invention is not worked within two years from the date of the patent, or has ceased to be worked for two consecutive years, or where the patentee has introduced into Tunis articles manufactured in foreign countries similar to those which are protected by the patent ; but authority may be obtained for the introduction of models or of articles intended for public exhibitions or for trials. Whoever calls himself patentee having no patent, or who, being a patentee, mentions his patent without the words ' without guarantee of the Tunisian Government,' is liable to a fine. Action can be taken for the annulment of the patent by any person interested, Infringers can be prosecuted and punished by fine, and, in the case of a workman or an associate of a workman of the patentee, by imprisonment. TURKEY. The Ottoman Government grants patents to natives or foreigners for five, ten, or fifteen years, subject to an annual tax of two Turkish pounds, but the Turkish patent will expire with the termination of any earlier foreign patent. Pharmaceutical compounds or medicines and financial combinations are not patentable, and the inventions must not have been published in Turkey or abroad. The applicant for a patent must supply a petition, a description and drawings, or samples to explain the invention. The petition must be limited to a single object, with the details which form part of it, and must indicate the term for which the patent is solicited. The term of the patent is reckoned from the date of filing the application. Patents are granted without examination and at the inventor's own risk. Inventions relating to instruments of warfare are submitted to the Wai- Department, and such as are approved by the department are bought by the State. Inventions of this kind which are not favourably reported upon are rejected. H H 2 AY The term of the patent can only be prolonged by special legislation. Certificates of alteration, addition, or improvement are granted. The patentee is, h..\\.-\. r. alone entitled to receive a :icate of addition di. first year of his pat. nt. If applications are made by others they will be kept secret unt first year of the patent has expired, and will tin u be granted. Patents may be assigned in whole or in part by a de< assignment, \\hirh must be registered with ti r of Com- in. iv,-; anil the SJH rifiratioiis, < uinds. The Law of November 12, 1885, authorises the executive to- p-ant patents for inventions for terms of three, six, or nine years at the applicant's option, and subject to an annual payment of J~> dollars. After the grant is made the executive fixes a period within which the patented invention must be worked in Uruguay. Application for the patent must be made by petition to the Minister of the Interior, stating the term desired, accompanied by a specification and specimens, drawings, or models. The Patent Office is to publish even" two years all the privileges granted, with the specifications and drawings. Patents of addition may be obtained. Patents may be assigned by public deed. Provision is made for nullity and forfeiture of patents, and for the protection of patentees against infringements. A register of patents is kept. VENEZUELA 469 VENEZUELA. A law of May 25, 1882, provides for the grant of patents for five, ten, or fifteen years for inventions not already known and used in the country, or patented or described in a printed publi- cation in the republic or abroad, or having been in public use for more than two years prior to the application, unless such use has been abandoned. Applications for patents must be addressed to the Federal executive power through the Minister of the Interior. The applicant must declare on oath that he is the inventor. The patent for an original invention is subject to payment of about 80 francs per annum for the whole term of the patent. Persons who have obtained patents in foreign countries can obtain patents for Venezuela, but such patents are only granted for the number of years the foreign patent has to run. The description of the invention patented is published in the Official Gazette after the expiration of the patent, or after the patent is declared null. Actions for infringements may be tried before the Federal tribunals. 1'ATENT LAWS Ol' T1IK /;/,'/ 77.s7/ I'f HO AD. : the Inn .nniiciit dec-lined in the year 1H52 to issue any grants of :ost of our possessions abroad have tl . tatiiahed patent laws, !y framed upon the Hi-it i>!i la\\ . The nmnhor of patents granted in Canada, liuliii. ami the Atistraliun colonies is large and is increasing. I: will he seen from tin- following abstracts that there is now no important colony in which inventions cannot be protected. r.yan Order in Council dated February 8, 1890, New 7. aland is made a party to the International Convention for the Protec- tion of Industrial Property. Victoria, Queensland, Tasmania, and Natal arc the only other colonies which have at present passed the necessary laws to enable them to join the convention. THE BAHAMA ISLANDS. The Colonial Act, 62 Viet. cap. 28, assented to May 28, 1889, makes provision for protecting inventions in these islands. cry person desirous of obtaining letters patent must file a complete specification in the office of the Registrar of Records, and must pay to the registrar 37. Persons residing abroad must file with the specification a certified copy of any letters patent which they have obtained abroad for the same invention. The applicant must, within ten days after filing his complete specifica- tion, present a petition to the Governor, accompanied by a copy of the specification, praying for the grant. The Governor will there- upon issue letters patent for the invention for the term of seven years, unless he is of opinion the invention is not new, is not patentable in law, is already in the possession of the public, been previously described in a printed publication, or has already been patented in the colony. Specifications are open to the public in the office of the Registrar of Records. Legal proceedings for infringement may be taken in the Courts of the islands, the remedies being similar to those given by the English law, and the defendant may plead any matter which can be pleaded in English Courts. BARBADOS 47 1 Where the invention is not brought into operation within three years after filing the specification, the exclusive privilege is forfeited and ceases to exist. Patents are assignable, in whole or in part, by instruments in writing, which must be registered in the office of the Kegistrar of Records. Upon application to the Governor in Council patents may be renewed for a further term of seven years on payment of 10Z., and for a third term of seven years on payment of 2(K. Registers of patents and of proprietors are kept at the office of the Registrar of Records, in which the grants of patents, assignments, and licences are entered. Writs of scire facias to repeal patents may be issued to the Provost Marshal if the grantee resides in the colony ; if not resident, such writs are to be filed in the office of the prothonotary of the General Court, and notice thereof in writing is to be served at the last known residence or place of business of the grantee. BABBADOS. An Act dated December 12, 1888, amended by an Act of 1888, provides for the grant of privileges to inventors. Every person filing a complete specification of his invention, with a copy, in the Colonial Secretary's Office of the island, and paying a fee of 31. 6s. 8d., is entitled to the exclusive right of the invention for a term of seven years. The privileges may be protected from infringement by proceed- ings taken in the courts of the island, the pleadings and proceed- ings being similar to those taken in the High Court of Justice in England. The exclusive privilege will be void unless the invention is new, in case the applicant is not the first and true inventor, or if at the time the specification was filed the invention was well known elsewhere, and also known to some other person or persons in the island. The exclusive right will cease if the invention is not brought into operation in the island within three years after filing the specification. The privilege may be renewed for two additional terms of seven years each on application being made before the expiration of the original or renewed privilege, and on payment of 101. for the second term, and 20/. for the third term. J7L' BORNEO (BRITISH NORTH)- BRITISH GUI Articles made abroad according to the invention protected can be imported without invalidating the privilege granted. BORNEO (Bum^i N..I. Tin- (iovrnior of British North Borneo, by Proclamation 1 of 1887, enacted that the < >nliimnr<- of the Legist Straits Settlements nu in lr< d Xll.<>t "1^71 .. nMl.-.l -An Ordinance for granting exclusive privileges to inventors/ was adopted as the law of British North Bumrn. ;n ; ,-u to persons, places, or subjects in the said Ordinance should be taken as r> ring to corn -ponding or analogous persons, places, or subjects within British North Borneo. (The Straits Settlements Law is given at p. : The law relating to patents is governed by an ordinance dated July 12, 1861, No. 18. Kvt-ry imvntor desirous of obtaining a patent must the Governor for the grant. The form of the documents is similar to those in use in Great Britain, and the proceedings under the petition are also similar, there being a reference to the Attorney-General, whose duties in respect to patents nearly resemble those of the same officer at home. Provisional protec- tion is granted for twelve months. The patent expires with \piration of an earlier patent for the same invention else- where. The conditions of the patents granted are nearly, if not precisely, similar to those of the British grants. A duty of 100 dollars is payable in the seventh year of the term. The patent is granted for fourteen years, and the Governor has power to prolong the patent for a term not exceeding seven years. A further duty of 100 dollars is payable on sealing a patent for a prolongation. The ordinance also contains provisions as to disclaimers similar to those in operation at home. Proceedings for infringement must be taken in the Supreme Court of the island, or before the Chief Justice. Confirmation of a patent can be obtained when the patentee is proved not to be the first inventor, though he believed himself to be so. The letters patent will not prevent the use of the invention in foreign ships resorting to the ports of the colony. BRITISH HONDURAS CANADA 473 BRITISH HONDUEAS. Patents are granted for this colony, under the Act for amending the law for granting patents for inventions, dated September 10, 1862, now chapter 74 of the consolidated laws of British Hon- duras. The provisions of this Act bear a general resemblance to those in the British Patent Law Amendment Act of 1852. Commis- sioners of patents for inventions are appointed, who have power to make rules regulating grants. Every applicant must petition the Commissioners, and the petition and accompanying specifi- cation are referred to the Attorney-General for the colony. The applicant can lodge either a provisional or a complete specification in the first instance. The Attorney- General grants a certificate of allowance, which certificate is filed in the office of the Colonial Secretary, whereupon the invention is protected for six months. This protection is advertised, and the applicant is at liberty to give notice to proceed ; and, on the expiration of the time allowed for oppositions, letters patent are granted for fourteen years. The letters patent are void unless duties are paid at the expiration of three and seven years from the grant. The letters patent expire on the determination of any earlier patent granted for the invention in Great Britain or in any foreign country or British colony. The letters patent will not prevent the use of the inven- tion in foreign ships within the ports of the colony. This Act also provides for a ' Eegister of Patents ' and a ' Eegister of Proprie- tors ' being kept. All assignments and licences must be registered. Patentees may also enter disclaimers or memoranda of alteration. The Commissioners of Patents are authorised to grant prolonga- tions of the original term not exceeding fourteen years. Actions for infringements must be brought in the Supreme Court of the colony. The Government fees are : Dollars On sealing letters patent ... 30 Third year's duty .... 50 Seventh year's duty . . . . 100 CANADA. The Law of Patents for the Dominion of Canada is regulated by the Patent Act No. 61 of 1886. This Act provides for the constitution of a Patent Office and 171 ADA .'pointment of a Commissioner of Patents, who is the Minister tor tin- tinii being, also for a deputy commissioner and such clerks any inventors or their assignees, or, ->e of death, their le^al r. prescntative, for all invention known or used by other persons before the invention thereof, and which have n< puhlic use or on sale with th- consent of the inventor for more than one year previous to the application "la. It' the inventor In- alive lie must himself sign the. applicatioTi paper-*, as the applicant is 1 to make oath that he is tin- inventor, or. if the inventor is dead, that the applicant helie\vs the person whose assignee or legal representative he is was the inventor, and must mention as his domicile some known and specified place in Canada. Where a foreign patent exists the Canadian application must be made before the foreign patent has been in existence for twelve months, and any person who has commenced the manufacture during such twelve months has the right to continue notwithstanding the patent ; the Canadian patent expires at the earliest date at which any foreign patent for i me invention expires. Improvements upon original pa may he patented giving the inventor no r; the original imention, nor does the original patent give any right to use the patented improvement. A specification of the invention, accompanied hy drawings where neOMHaiy, must be lodged in duplicate with the petition for the patent, and tin-; specification must clearly d.'-<-ril the in- vention and state clearly what is claimed as new. A working model, or specimens of the ingredients and of the composition of matter, sufficient for experiments, must also be furnished, unless specially dispensed with. The Commissioner may refuse patents : (a) When he is of opinion that the invention is not patentable in law. (b) When he is of opinion that the invention is already in possession of the public with the consent of the inventor. (c) When he considers there is no novelty ; (d) Or that the invention has been described in a printed book or publication before the application, or is otherwise in the possession of the public. (e) When the invention has already been patented in Canada or elsewhere, unless the Commissioner has doubts whether CANADA 475 the previous patentee or the second applicant is the first in- ventor. The applicant is at liberty to appeal to the Governor in Council from an adverse decision of the Commissioner. Conflicting applications are submitted to three arbitrators, one to be chosen by each party and the third by the Commissioner. The term of each patent is fifteen years, and the full fee may be paid on application for the whole term, or for five or for ten years only ; and if a partial fee only is paid the patent will expire at the termination of the term for which the fee is paid, unless the fee for the further term is paid before the expiration of the term for which the fee is originally paid, and a certificate of such further payment obtained from the Patent Office. Patents may be surrendered and new patents issued with amended specifications where it appears there has been an in- sufficient description or specification, or the patentee has claimed more than was new, if such error has arisen from inadvertence, accident, or mistake, and separate patents may be issued for dis- tinct and separate parts of the invention patented. The patentee, his assignee, or legal representatives may dis- claim anything included in the patent by mistake, but such dis- claimer will not affect pending suits. Patents are assignable as to the whole or any part, and assign- ments must be registered in the Patent Office. The patent will be held void if any material allegation in the application is untrue, or if the specification contains more or less than is necessary, when such addition or omission is wilfully made ; but if it appears to the Court that such omission or addition was involuntary, and it is proved that the patentee is entitled to the remainder of his patent pro tanto, the Court will hold the patent valid for such parts as the patentee is entitled to. Bemedies are given for the recovery of damages for infringe- ment, and patentees may obtain injunctions to restrain infringe- ments and orders for accounts, etc. Where the plaintiff fails to sustain his action because his specification and claim are too wide, whilst the defendant is found to have infringed a part of the patent which is properly specified and claimed, the Court may discriminate and give judgment accordingly. Proceedings to repeal patents may be taken by action of scire facias. Patents granted are void unless the construction or manu- facture of the patented invention is commenced in Canada within two years from tin .Uv of tin- | henceforward con* tiiniously carried on. Tin pat. nt will aim be void if the patentee imports articles made according to the invention into Canada ition of twelve months from the date of the grant ; the term for manufacture in Canada may be extended for a for term of two years if the patentee can prove that for reasons beyond his control he was prevented from complying with the above conditions. Tin t. mi tor importations may also be extended for an additional term of one year on satisfactory cause being *ho\vii. All intending applicant not having |M-rfected his hm i may file a description of it in t! Office, and is th. entitled to receive, during c : : om the date of his filing. notice of all applications of a conflicting nature. The fees payable to the Commissioii ure : For the full term of fifteen years, 60 dollars ;*for ten years, 40 dollars ; for five years, 20 dollars ; for a further term of ten years, 40 dollars; for a further term of five > dollars; and for lodging a caveat, 5 dollars. The Government of Canada may use any patented invention, paying to the patentee such sum as the Commissioner reports to be a reasonable compensation ; the use of the invention in any foreign ships is not prevented by the patent. All patented articles, or the package containing them, must be stamped or marked with the word ' Patented,' and with the year of the grant : the patentee is liable to a fine of 100 dollars for selling or offering for sale any patented article not so marked. Marking an article Patented ' which is not patented is a misdemeanor, and persons so offending are liable to fine and imprisonment. All patents issued prior to the Act for any province now forming part of Canada remain in force for the residue of the term granted, and any patent previously granted for any pro- vince may, if the patent has not been known or used, or has not been on sale with the consent of the patentee in the other pro- vinces, be extended over the whole of Canada for the remainder of the term mentioned in the provincial patent, and every patent previously issued upon which the fee required for the whole term has been paid shall be deemed to have been issued for the term of fifteen years, subject to its ceasing on the same conditions as those on which patents thereafter issued are to cease uader this Act. CAPE OF GOOD HOPE CEYLON 477 CAPE OF GOOD HOPE. This Colonial Legislature has adopted a system very similar to that of 1852 of the mother country, governed by an Act passed in 1860 (No. 17). The applicant for a patent must deposit at the office of the Colonial Secretary a specification of his invention, which is re- ferred to the Attorney-General, who reports upon it and issues a warrant for the grant. A writ of scire facias may be sued out for the repeal of the patent. The letters patent are void unless a stamp duty of 10Z. is paid before the expiration of the third year, and of 20L before the expiration of the seventh year of the grant. Confirmation of a patent can be obtained when the patentee is proved not to be the first inventor, although he believed himself to be so. Extensions for a term not exceeding fourteen years may be obtained. Letters patent for foreign inventions expire with the foreign grant. The grant does not prevent the use of the invention in foreign ships resorting to ports in the colony. The regulations as to disclaimers and legal proceedings are similar to those of the home patents. A register of patents and of proprietors is kept, and all assignments and licences must be registered. There is a penalty of 100Z. for the unauthorised use of the word ' Patent.' Particulars of breaches and of objections are to be given in patent actions. CEYLON. The Inventions Ordinance No. 6 of 1859 governs the law of patents in this colony. The inventor of any new manufacture may petition the Governor for leave to file a specification thereof ; such petition must be in writing, and be signed by the petitioner or his agent, and must state the name, condition, and place of residence of the petitioner, and the nature of the invention, upon which the Governor may order the petitioner to file a specification. The specification must be filed within six months from the date of the order, upon which the Governor may grant to the inventor the sole and exclusive privilege of making, selling, and 478 FIJI using the said invention in ' r the u-nn of fourteen yean from the time of filing such spe and for a further not exceeding fourteen years, upon petition to be presented by .tor, not more than one year and not less than six in before the expiration of the exclusive privilege granted. The s] ii must IK- in writing, and Designed by the petitioner, and must particularly describe and define the nature of Uu invention, and the manner in which tin- same is to be if d out. The use of an B in public by the inventor, his servants, agents, or licensees is not deemed a public use within the meaning of the onlin. \rlu-i\v privilege will cease if tin- invention or the mode in which it is exercised is declared by the Governor to be mischievous to the State, or generally prejudicial to the pul No specification can be lil.-d until the petitioner has paid all fees. The fee on filing a specification is 101. FIJI. The legislation with respect to the protection of inventions by : s patent is comprised in the Ordinances No. 3 of 1870 and No. 7 of 1882. The inventor, his heirs, executors, administrators, or assigns can obtain letters patent for the term of fourteen years by tiling in the office of the Colonial Secretary a petition accom- panied by a specification and declaration. Provisional protection is granted for six months. The rights granted in the colony will cease with :. ration of any earlier patent obtained elsewhere. All letters patent and assignments are to be registered in the office of the Registrar General. Letters patent may be conceded or revoked by order of 'the Supreme Court or a judge if the invention is of no utility, if tin- invention was not new at the time of presenting the petition, if the petitioner is not the true and first inventor, or if the petition or specification contains a wilfully false staten. The Supreme Court has power to order any specification or petition to be amended. The fees payable are : On depositing petition and specification . 5 5$. For certificate of provisional protection . 8 8 For obtaining letters patent . . . 10 10 Filing memorandum of alterations in amendment of specification . .11 IIOSG KOXG IXDIA 479 HONG KONG. The Ordinance for this colony is No. 14 of 1862, by which all British patents can be extended to Hong Kong. A petition, specification, and declaration are to be filed in the office of the Colonial Secretary, and notice thereof and of the intention to apply for letters patent and of the time of the sitting of the Executive Council, before whom the matter of the petition will come for discussion, together with such other particulars as the Governor shall require, must be inserted twice in the Hong Kong Government Gazette. The Governor will either grant or refuse the patent according to the advice of the Executive Council. The letters patent, when granted, are directed to be in the form pre- scribed by the Patent Law Amendment Act, 1852, for British letters patent, and the letters patent, if granted, confer privileges similar to those granted by British letters patent and for the term of that patent. The letters patent can be extended in cases Avhere the British patent has been extended. The petitioner must, in all cases, be either the patentee or the owner by assignment of the patent in Great Britain. INDIA. The law of patents in India is now governed by the Inventions and Designs Act, 1888. The inventor of a new manufacture desirous of obtaining pro- tection in India must apply in writing to the Governor- General in Council for leave to file a specification thereof. He must state his name, occupation, and address, and, if a patent has been ob- tained in England, the date of the patent, and must also furnish a specification and drawings, and state the particular novelty whereof it consists. A model may also be required. The Governor-General may, after such inquiry as he sees fit (including, where he thinks it necessary, a reference, at the cost of the applicant, to some person named by him), authorise the appli- cant to file a specification. If two or more inventors apply on the same day to file specifications of identical inventions, the Governor- General may authorise both or all the applicants to file specifications : if they apply on different days, the first applicant has a preference. If the applicant causes a specification of his invention to be filed, and pays the required fee within six months from the date 480 INDIA of the ": specification must distinguish explicitly between what is old and what is 111 W. ir copies (at least) of the specification and drawings an nquiivd. one for the Secretary and the others for the Governors of Fort George, Uombay, and the Chief Commissioner of Burma ; and tin specifications are to be open for inspection at places to be appointed by these authorities. The Secretary is to keep a book, called the ' Register of In- ventions,' in which is entered every application for leave to file a specification, any order made thereon, any specification filed, and any subsequent proceeding relating to the invention. The Secretary is also to keep an address book, where any per- son interested in any application or privilege may cause to be stated some place in British India where notice of any role or proceeding relating to the privilege may be served upon him. The inventor of a new manufacture may, at any time not more than one year and not less than six months before the time limited for the expiration of an exclusive privilege, apply t Governor General for an extended term, and the Governor- General may, if he is of opinion that the inventor has not been adequately remunerated, make an order extending the term for a further term not exceeding seven or, in exceptional cases, fourteen years, and upon payment of prescribed fees. The exclusive privilege has the like effect against her Majesty as against a subject, but the officers of her Majesty may use the invention on terms to be agreed upon with the inventor, or, in de- fault of such agreement, on such terms as may be settled by the Governor in Council. Defective or too extensive specifications may be amended. The exclusive privilege will not be granted : (a) If the invention is of no utility, (6) if it is not new, (c) if the applicant is not the inventor, (d) if the specification does not fulfil the requirements of the Act, (c) if the application contains a wilful or fraudulent misstatement, (/) if the application is made after the expiration of INDIA 481 a year after the acquisition of a foreign patent for the same invention. The invention will be deemed new if it has not before the application been publicly used in British India or the United Kingdom, or publicly known there by means of a written publi- cation ; but the public use or knowledge is not deemed so within the meaning of the Act if the knowledge has been obtained surrep- titiously or communicated to the public in fraud of the inventor or in breach of confidence, provided the inventor has not acquiesced in the public use, and that he has applied for leave to file a specification within six months after commencement of that use. The use of the invention in public by the inventor or his licensee for a period not exceeding one year prior to his application is not deemed a public use within the Act. If a British patentee makes an application in India within a year of the sealing of the British patent the invention shall be deemed new if the invention was not publicly used or known in India before the application, notwithstanding it may have been known or used in India or the United Kingdom before the date of the Indian application ; and the same protection is given to the inventor where the invention may have become known or used during a pending application in the United Kingdom, provided that there is not more than twelve months' interval between the British and Indian applications. The inventor is also pro- tected against an exhibition of his invention at an industrial or international exhibition certified as such by the Governor- General. The exclusive privilege will cease if it is declared to be mischievous to the State, or prejudicial to the public, or upon the revocation or expiration of the British or any foreign patent obtained for the same invention. The Act also contains a series of provisions relating to the proceedings which may be instituted for infringements. The exclusive privilege may be declared void on proceedings being taken, resulting in declarations of the Indian High Court that the invention is of no utility or not new, that the applicant was not the inventor, that the specification is insufficient, or contains wilful or fraudulent misstatements, or that the invention is injurious to the public. If the actual inventor proves to the Court that the applicant was not the actual inventor and that the privilege was obtained in fraud of the inventor, the Court may make a decree vesting the exclusive privilege in the actual inventor, and may require the 1 1 Ml \ applicant to pi' > the actual ii I profits derived bj him from tin- invention. On petition of any person interested, and proof thai the ex- elusive privilege is not worked in India, or that the reasonable requirements of the put. lie cannot be supplied, or that any person is prevented from using or working an in\. ntion of which he is possessed, the Governor-General may order, or may himself grant, : ices in such terms as he may deem just Assignments may be made for any local area. The fees payable unvernor is empowered to grant prolongations of the original term not exceeding fourteen years. The law provides that a ' Register of Patents ' and a ' Register of Proprietors ' shall be kept. All actions for infringements are to be brought in the Supreme Court. The fees for sealing the letters patent are 1 10s. Third year's duty . . . . . f Seventh year's duty . . . . 10 Xi.WFOUSDLAXD. The ?aw of patents for this colony is di -fined by the Consoli- dated Statutes XV., chap. 54, sect. 1. Inventors desirous of obtaining patents in Newfoundland must present a petition to the (iovernor for the grant, and must deliver into the office of the Colonial Secretary a specification of the invention, and, in case of a machine, a model also. The patent is granted upon this petition, after a reference to the Attorney- General. The patent is granted for fourteen years, but may be extended for a further term of seven years. The invention must be worked in the colony within two years from the date of the grant. The patent expires with the determination of any earlier patent elsewhere. Ni:\v SOUTH WALES. The Acts of the Colonial Legislature relating to patents are dated December 6, 1832, June 19, 1879, and July 8, 1887. Every person who, upon claiming to be the author or designer of any invention by his agent or assignee, shall be desirous of obtaining letters patent, shall pay to the Colonial Treasurer the NEW ZEALAND 487 sum of 51., and shall, after such payment, lodge a petition to the Governor setting forth that he is the author or deviser of such invention, or the agent or assignee of the author or deviser, and specifying the particulars of such invention, and that he has paid to the Colonial Treasurer the sum of 51., whereupon, if the applica- tion is approved by the Minister of Justice, the Governor may grant letters patent. Certificates of provisional protection may be obtained for twelve months, on payment to the Colonial Treasurer of 2Z. The Governor will grant letters patent to the holder of a certifi- cate of provisional protection on a complete specification being filed, and on further payment of SI. to the Treasurer. Letters patent are dated and sealed as of the day of the deposit of the application for provisional protection, but no action can be taken in respect of any infringement committed before the deposit of the complete specification. Patents are granted for not less than seven or more than fourteen years. Certificates of provisional protection and letters patent are assignable. Every assignment and licence must be registered in the office of the Examiner of Patents. Assignments executed in the United Kingdom or elsewhere (not being within the Australian colonies) must be registered within ninety days from the date of execution. The Governor may appoint an examiner of patents, who, under the direction of the Minister of Justice, shall examine and report to that officer upon all petitions for letters patent. The Act gives no power to amend specifications after the patent is issued, and there are no provisions for compulsory working. *NEW ZEALAND. The law of patents for this colony has been consolidated by Act No. 12 of 1889, upon the lines of the British Patents Act, 1883. The Governor is empowered to appoint a Registrar and deputy Registrar of Patents, a place to be the Patent Office, and local offices, and Patent Office agents. Any person may make application for a patent, and a patent may be granted to several persons jointly, of whom one only is the inventor. Patents may be obtained by the representatives of deceased inventors, if such applications are made within six months of the decease of the inventor. Mere importers cannot obtain patents. 488 NEW ZEALA Applications arc to be made in the form act the schedule to the Act, and most be left at or sent by post to the t ( )ffice, or left at a local Patent < : Tlit- application must be accompanied by the declaration of the inventor, and by either a provisional or complete specifica- tion signed by the inventor ; the specification mast be limited to one invention. The Registrar must examine every application, to ascertain whether the nature of the invention is described, that the papers are prepared as prescribed, and that the title sufticimtly describes the subject mutter of the invention. The Registrar has power to refuse the application, or to require its amendment. If a provisional specification has been first deposited, the complete specification must be lodged within nine months from the date of acceptance of the application, the Registrar must ex- amine both specifications for the purpose of ascertaining that tlu complete specification has been prepared as prescribed, and that the invention is substantially the same as that described in the provisional specification. If the conditions have not been complied with, the Registrar may refuse to accept the complete specification until it is amended to his satisfaction, but such re- fusal is subject to appeal to the Court. The application is void if the specification is not accepted within twelve months from the date of application. The acceptance is advertised in the Gazette, and oppositions may be entered, notice being lodged within two months of the advertisement. The Registrar is empowered to hear the applicant and the opposer, and to determine whether the grant shall be made or not ; this decision is subject to an appeal to the Court. On the expiration of two months from acceptance, if there is no opposition, or, in case of opposition, if the determination is in favour of the grant, the Registrar is to seal the patent with the seal of the colony. Ever}' patent is to be sealed as of the date of acceptance, but no proceedings can be taken in respect of an infringement committed before the publication of the specifica- tion. The patent when sealed covers the entire colony and its dependencies for fourteen years, unless the patentee fails to make the prescribed payments within the prescribed times. Every patent is to be granted for one invention only, but may contain more than one claim ; but no objection can be taken to the patent on the ground that it covers more than one invention. Power is given to the Registrar to allow enlargement of the NEW ZEALAND 489 terms (not exceeding three months) for making the prescribed payments, where not made by accident, mistake, or inadvertence. Inventions may be used during the term of provisional pro- tection, without prejudice to the patent to be granted. Amendments of the specifications may be made by leave of the Eegistrar subject to appeal to the Court, and applications for amendments may be opposed by any person. No amendment is to be allowed that will make the specification, as amended, claim an invention substantially larger than, or substantially different from, the invention originally claimed. Leave to amend is conclusive as to the right of the party to make the amendment allowed, except in case of fraud. Amendments may, by leave of the Court or a judge, be made during actions. The Governor is empowered to order the patentee to grant licences, on such terms as he may think right, where it is proved that, by the default of the patentee to grant licences on reasonable terms, the patent is not being worked in the colony, or the reasonable requirements of the public are not supplied, or where any person is prevented from working to the best advantage an invention of which he is possessed. The Governor may grant extensions of the term of patents for terms not exceeding seven, or, in exceptional cases, fourteen years, upon the report of the Court that the patentee has not been adequately remunerated. Eevocations of patents may be obtained on petition to the Court. The proceedings with respect to revocations are sub- stantially similar to those contained in the British Act. The proceedings with respect to infringements are also substantially the same as in the English Courts. A Eegister of Patents is to be kept, containing the names and addresses of grantees of patents, notifications of assignments and licences, and of extensions, amendments, and revocations. Patents may be assigned or licensed for the whole colony, or for any particular part of it. The exhibition of any invention at industrial or intercolonial exhibitions will not prejudice the patent right on the prescribed proceedings being taken. The Eegistrar may require the patentee to furnish a model, on payment to the patentee of the costs of its manufacture. A patent will not prevent the use of an invention for the navigation of a foreign vessel within the colonial jurisdiction ; but this protection does not extend to vessels of any foreign state having patent laws which prevent the use of such inventions in 490 ' /K -i-U iii waters within tlie jurisdiction of such foreign The Governor has power to deal with applications for patents for improvements in instruments or munitions of war, so thai the same may be kept secret, pending a reference to her Majesty's Principal Secretary of State for Departm- I ' y an Order in Council the provisions of sect. 108 of the British Patents Act, 1888, is applied to New Zealand, and any person who has applied for protection in Kngland or in any foreign state a party uternational < tied to a patent in the colony in priority to other applicants, and such patents shall take effect from the same date as the application in England or such foreign state, provide* 1 that the application in the .y is made within twelve month* from the date of the English or foreign application ; and th-- benefit of the same provision is extended to all other colonies brought within the same provisions. The registers under the Act are open to public inspection, and extracts may be obtained of all entries therein. K nines in the registers may be corrected by the Court. Appeals from the Registrar are heard before the Court sitting at Wellington. 1-1 very person making false writing in registers is guilty of a misdemeanor. The Registrar has power to correct clerical errors, to call and examine witnesses on oath, papers and documents, to require the parties to make deposits to meet costs, to order payment of costs, and to adjourn hearings ; in opposed cases he must have the applicant and the opposer and their witnesses. The Registrar is required to make an annual report. No person is entitled to call himself a patent agent unless registered as a patent agent in pursuance of the Act, under a penalty of 201. The Governor in Council is empowered to make general rules, as to publishing copies of specifications, drawings, amend- ments, and other documents ; and as to publishing and selling indexes and abridgments of specifications, providing for the inspection of Patent Office documents, the registration of patent agents, and generally for regulating the business of the Patent Office, and all tilings placed under the direction or control of the Registrar. No provisions for compulsory working are imposed. Penalties are imposed on persons falsely representing articles to be patented. QUEENSLAND 491 The fees prescribed on applications for and renewals of patents are : On lodging application with provisional or with complete specification . . 10s. On filing complete specification . . 10 On application to amend . . . 10 On obtaining letters patent ... 2 On or before the expiration of the fourth year 50 On or before the expiration of the seventh year 10 On presenting petition for extension of term 2 QUEENSLAND. The law of patents for this colony is defined by Acts No. 13 of October 13, 1884, and No. 5 of September 4, 1886. The Act of 1884 established a Patent Office for the colony under the control of a Eegistrar of Patents. The provisions of the Act are to a great extent similar to those of the British Act of 1883, and the applications and proceed- ings thereunder bear a strong resemblance to those of the mother country. When an inventor is out of the colony, application for the patent may be made by his assignee. Applications may be made, accompanied by either provisional or complete specifications ; these applications are referred to ex- aminers, who report thereon to the Eegistrar, and the Eegistrar may upon this report either refuse applications or require them to be amended. The complete specification must be left within nine months from the application. The examiner compares the complete with the provisional specification and reports to the Eegistrar thereon. Unless the complete specification is accepted within twelve months from the date of application the application becomes void. These dates can, however, be extended on applica- tion and payment of prescribed fees. The grants may be opposed, the Eegistrar hearing and decid- ing on oppositions subject to appeals to the law officers. Patents are dated as of the day of application. No proceed- ings for infringements can be taken until after the grant of the patent. The patent is granted for the term of fourteen years, subject to the payment of the duties mentioned below ; the times for making the payments may be extended for three months. l''l' QUEEN8LAN Powers are given for amending specifications and for disclaim- ing any actions, and for the grant of compulsory licences, and for the revocation of patents similar to thone in force at home. A register of patents is kept, in which all deeds, licences, most be enter. The Governor in Council has power to grant extensions of the terms of patents for terms not exceeding seven or, in exceptional caeoo, fourteen years, the powers given being very similar to those of tin Privy Council with respect to Hritish patents. < nts l.iinl the Crown, but officers of the Crown may use the invention for the Crown service on terms to be agreed on with the approval of the Minister, or, in default of agreement, terms settled by the Minister after hearing the parties. Provision is made for the protection of patentees by legal proceedings, and remedy is given to persons aggrieved by groundless threats of legal proceedings The representatives of a deceased inventor may obtain patents. The exhibition of an unpatented invention at industrial or international exhibitions will not prejudice patents subsequently obtained in due time. The Minister has power to compel the patentee to furnish a model of his invention on payment to the patentee of its cost. The patent will not prevent the use of an invention for the purposes of the navigation of foreign vessels in Queensland waters. In case her Majesty makes an Order in Council to apply the provisions of the 108rd section of the liritish Act of 1888 to Queensland, the international arrangements for the protection of the inventions are adopted, and similar arrangements are made with respect to India or any other liritish possession where pro- visions exist for protecting inventions patented in Queensland. The Governor in Council has power to make general rules for the regulation of the business of the Patent Office. Persons falsely representing articles to be patented are liable to fines not exceeding 52. in each case, and there is also a penalty (not exceeding 20/.) imposed on an unauthorised assumption of the royal arms. No conditions for compulsory working are imposed. The fees to be paid are as under : On application for provisional protection . '2 0*. On tiling complete specification . . .30 or On filing complete specification with first application 5 ST. HELENA SOUTH AUSTRALIA 493- Before the end of four years . . .50 Before the end of eight years . . . 10 Or in lieu of the 51. and 10L fees : Before the expiration of each of the 4th, 5th, 6th, and 7th years 10 Before the expiration of each of the 8th and 9th years 1 10 Before the expiration of each of the 10th, llth, 12th, and 13th years . . .20 ST. HELENA. Under Ordinance No. 3 of 1872, British letters patent may be extended to this island. The patent right is only granted to grantees of a British patent, his executors, administrators, or assigns. The duration of the patent is limited to that of the British patent. To obtain protection the applicant must deposit certified copies of the British patent and specification in the Eegistry of the Supreme Court of the island. These documents are open to public inspection. A fee of 1Z. Is. is payable on filing the specification. It is provided that all cases of doubt or difficulty not pro- vided for by the ordinance shall be guided and governed by the English law. SOUTH AUSTEALIA. The patent law of this colony is now embodied in several Acts, namely, ' The Patent Act, 1877 ' (which was passed December 21, 1877), and the Acts No. 101 of 1878, No. 201 of 1881, and No. 421 of 1887. Every applicant for letters patent must present a petition and declaration, together with specification and drawings in duplicate. These must be signed by the applicant, who may be either the inventor or his assignee, or legatee or executor of a deceased inventor; the declaration being made before any competent authority, and the specifications and drawings attested by two witnesses. The place and date of signature must also be stated in every case. The documents may be signed under power of attorney from the applicant. The exhibition of an invention within six months of the date of filing the petition is not a ground for the refusal of a patent. Provisional protection can be obtained for twelve months Patents are granted for fourteen years, and expire with the de- STRAITS SETTLEMENTS nation of any earl :n patent. Extensions may be obtained for any term not exceeding seven yean. A fee of 20/. is payable upon such extension . >tected may be used in foreign vessels navigating the colonial waters, notwithstanding the patent 'I ninent may use the patented invention on payment of an agreed royalty. In case of difference the amount to be paid is settled by arl When a patent is deemed defective in consequence of the specification being insuffick-i .0 patentee having claimed more than he had a right to claim, tli.- Commissioner may, on being satisfied that the error arose from inadvertence, accident, or mistake, and was not fraud and upon the surrender of the patent and the filing an amended specification, grant a new patent for the unexpired term of the original grant. A fee of 101. is payable upon such a grant. Disclaimers or memoranda of alteration may also be filed, a fee of 22 105. being payable on each application. Confirmation of an invalid patent may be obtained when it is proved, or has been found by the verdict of a jury, that the patentee was not the true and first inventor by reason of some other person having invented the same prior to the date of the patent. A fee of 507. is payable for such confirmation. A caveat may be filed, and the person filing the same will be entitled to notice of any applica- tion being made for a patent for a similar invention, within twelve months from the date of filing. There is a fee of I/, payable upon each caveat. Patents may be revoked by the Governor if, after three years from the date of the patent, it is proved that neither the patentee nor his assignee or licensee has used the patented invention to a reasonable extent for the public benefit. No revocation under this clause has up to this time taken place. Proceedings may also be taken to revoke a patent by scirc facia*. All assignments and licences must be registered in Register of Proprietors. The registration fee is 11. in each case. Penalties are imposed for unauthorised use of the name of a patentee, or for counterfeiting his stamps, mark, or devices. Fees of 21. 10s. each have to be paid at or before the expira- tion of the third and seventh years respectively. STBAITS SETTLEMENTS. The ordinance for granting exclusive privileges to inventors is No. 12 of 1871, dated November 15, 1871. TASMANIA 495 Exclusive privileges may be obtained by actual inventors or first importers of inventions not publicly used or known in the colony. An invention shall be deemed new if it shall not, prior to the time of applying for leave to file a specification, have been publicly used by other than the inventor in the United Kingdom or the colony ; but inventors having obtained British or British- colonial patents may obtain exclusive privileges during the remainder of the term for which such British or British -colonial patents may have been granted. Exclusive privileges are obtained by inventors petitioning the Governor in Council for leave to file a specification, whereupon the Governor may make an order authorising the petitioner to file a specification. If the specification be filed within six months after the date of the Governor's order, the Governor may grant the petitioner an exclusive right to use the invention in the colony for the term of fourteen years, and for such further term, not ex- ceeding the term of fourteen years, as the Governor may direct, upon petition presented to him at any period not more than one year, and not less than six months, before the expiration of the original term of the exclusive privilege. Errors, defects, or in- sufficiency in specifications may be corrected by disclaimers or by filing amended specifications. Actions for infringement of the exclusive privileges may be maintained in the Supreme Court of the colony ; and the rules regulating such proceedings appear to be greatly in favour of the holders of exclusive privileges. Appeals from the Supreme Court may be made to her Majesty in Privy Council. The stamp on a petition for the grant of an exclusive privilege is 50 dollars. No further duties are payable. TASMANIA. The law of patents in this colony was established by an Act passed November 5, 1858, amended by an Act passed in 1883. Patents are always granted for fourteen years. They expire with the determination of any earlier foreign patent for the same invention. They will not prevent the use of the invention in foreign ships resorting to the colony. There is no provision for compulsory working. Although the law provides for the grant of provisional protection, it is only granted on very full specifi- cations. The proceedings to obtain patents are very similar to those at home, and the provisions with respect to actions, disclaimers, 496 TRINIDAD etc., are also much the same. Patents may be repealed by action of scirc facia*. The (iovcrniiient fees are about 11. 105. on application, and a stamp duty of 1 5/. is to be paid at the expiration of the third year, and 20/. at the expiration of the seventh year of the grant By law No. 2 of October 20, 1884, after reciting section 104 < : Patents Act (United Kingdom), 1888, it is enacted that any person who has applied for protection for any invention in the United Kingdom shall be entitled to a patent for his invention in pri- ority to other applicants, and such patents shall have the same date as the protection obtained in the United Kingdom, provided the colonial application is made within seven months from the application for protection in the United Kingdom ; publication in Tasmania within that period shall not invalidate the patent. TRINIDAD. The ordinance for granting exclusive privileges to inventors is No. 25, dated September 2, 1867. On application to the Registrar- General of the island, and on delivery to him of a declaration, accompanied by a specification, he will issue a certificate, which must be advertised in the Official Gazette. The specification may be delivered open or in a sealed envelope. In the latter case the Registrar-General will, at the end of six calendar months from the date of the certificate, or at an earlier day at the request of the patentee, break the seal of the i-m elope and register the specification. The certificate vests in the applicant the exclusive right to the invention within the island for fourteen years ; but if at any time during that term it shall be made to appear that the in- vention is not new as to the public use and exercise thereof in the island, or that the invention is prejudicial or inconvenient to the public, then the applicant's exclusive privileges will become void. The fees payable to the Registrar- General on leaving the declaration and specification, and for publication of same in Gazette, amount to 10/. 10s. Disclaimers may be entered, a fee of 22. being payable on each entry. The patentee has the like remedies against infringers as the grantee of any letters patent would be entitled to in the like case in England. VICTOKIA 497 VlCTOEIA. The Act 53 Viet. cap. 84, passed November 25, 1889, coming into operation March 1, 1890, consolidates the law of patents in this colony and repeals all former Acts. This Act is, in most respects, similar to the British Patents Act, 1883, but there are differences which will be mentioned. The Governor in Council is empowered to appoint and remove a Commissioner of Patents, and also as many examiners as may be necessary. The Commissioner is to have a seal with which all patents are to be sealed. Any person, whether a British subject or not, may apply for a patent. The applicant may be the actual inventor ; or his assigns ; or the actual inventor jointly with the assigns of a part interest in the invention ; or the legal representatives of a deceased inventor, or his assigns ; or (where the inventor is not resident in the colony) any person to whom the invention has been commu- nicated by the actual inventor, his legal representatives, or assigns. The application must be made in the form given, and must be accompanied by either a provisional or complete specification. The application is referred by the Commissioner to an examiner, who must ascertain and report whether the nature of the inven- tion is fairly described, and whether the application, specification, and drawings are prepared in the prescribed manner, and whether the title sufficiently indicates the subject-matter of the invention, and whether, to the best of the knowledge of the examiner, such invention is not novel, or is already in the possession of the public, with the consent of the inventor, and upon such matters as the Commissioner may require. On the report of the examiner, the Commissioner may refuse the appli- cation, or require its amendment. The applicant has power to appeal from any adverse decision to the Law Officer, who is required to hear the applicant and the Commissioner, and to decide whether the application shall be accepted or not. If a complete specification is not left with the application, it may be left any time within nine months from the application ; if not so left, the application is deemed to have been abandoned. The Commissioner has power to extend the time for leaving the complete specification for one month. The complete and provisional specifications are referred by the Commissioner to an examiner, who is to ascertain whether K K YICTO! the complete specification is prepared in the prescribed manner, ami v he complete specification describes substantially the same invention as that described by the provisional specific;. Tin- Commissioner may refuse the application upon report, but such refusal is subject to appeal to the Law Officer. The examiner's reports are not to be published or open to public inspection. Tin- Commissioner must advertise the acceptance of the com* plete specification, and the application is then open to public inspection, and any time within two months from the date of the advertisement any person may give notice of opposition to the application, on the ground of the applicant having fraudu- lently, or without his authority, obtained the invention from him, or from a person of whom he is the legal representative or assignee; or on the ground that the invention has not been communicated to the applicant by the actual inventor, his legal representative, or assigns (if not resident in Victoria) ; or on the ground that the invention has been patented in Victoria on an application of prior date ; or on the ground of want of no or of the invention having been already published or publicly used, or that the complete specification describes 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 and complete specifications, but on no other ground. The opposition is heard and determined by the Commissioner, there being an appeal from his decision to the Law Officer. If the Commissioner is satisfied with the novelty of the invention, and there is no opposition, or, in case of opposition, if the deter- mination is in favour of the applicant, the Commissioner issues a warrant for the sealing of the patent, and the patent is sealed as soon thereafter as may be. The patent is sealed as of the day of application, but no legal proceedings can be taken in respect of any infringement committed before the publication of the com- plete specification. Inventions are protected from the consequences of use and publication, between the date of application and the date of seal* ing the patent. No proceedings can be taken for infringement until the patent has been granted. Every patent covers the entire colony, and is for fourteen years, subject to payments of 21. 10s. before the expiration of the third and of the seventh years of the term. An applicant or patentee is empowered to amend the specifi- VICTOKIA 499 cation, and the amendment may be opposed, these proceedings being similar to those in force in England. A patentee can also apply to amend during the progress of legal proceedings for infringement or revocation. Where an applicant, patentee, petitioner, or objector is dis- satisfied with the decision of the Law Officer, he can appeal to the Supreme Court. A Kegister of Patents is to be kept, containing in chronological order a statement of all patents granted, with the names and addresses of the grantees, notifications of assignments and licences, memoranda of the deposit, and filing of specifications, and disclaimers, of amendments of patents, and specifications, and of the expiry, revocation, or other determination of patents. Prolongations may be obtained of patents for inventions of merit which have not been remunerative, for a term not exceed- ing fourteen years. Confirmation of invalid patents may also be obtained, in cases where it has been found by a court of law that a portion of the invention was, unknown to the patentee, old at the date of the application. Proceedings may be taken in the Supreme Court for the revocation of patents, upon grounds similar to those of the British Patents Act of 1888, with the additional ground, in the case of patents for communications, that the invention was not communicated by the actual inventor or his assignee. Patent rights are good against the Crown, but may be used for the public service on terms agreed upon or settled by arbitration. The proceedings and pleadings in actions for infringements, or revocation, are very similar to the British proceedings. Kemedy is given to any person aggrieved by groundless threats of legal pro- ceedings. The Act contains clauses for enabling the Governor in Coun- cil to make arrangements for the mutual protection of inventions with any of the other Australian Colonies, New Zealand, or Fiji, and also for the purpose of applying the provisions of sect. 103 of the British Patents Act of 1883 to the colony. Patents for foreign inventions may be granted at any time within one year of the date of the foreign patent, notwithstanding prior use in Victoria during that period, providing such use has not been with the consent of the inventor. A patent may be obtained by the representatives of a deceased inventor, if the application be made within twelve months of the death of the inventor. K K 2 \i.i.\ exhibition of inventions tit industrial or mil exhibition* will not prejudice patent rights, if the exhibitor glTM tin- ('"iiiiiu i.in. i HIM- month's notice of his intention to C-M ami application for tin- pat ..il- within twelve months from the opening of the exhil>itiou. The patent will not prevent the use of tin in\. ntion ii ships in the colonial waters, but this provision does not :i'i-ly to the protection of subjects of foreign states not conferring recipro- cal advantages. Penalties are imposed on persons marking goods with the name of a patentee, without leave in writing of the patentee ; or who mark goods Pati-nt ' with the intention of imitating the stamps or marks of the patentee ; or who put to sale as patented in Victoria any article not patented there, for the purpose of deceiving tin- public. \Yr~ -TKALM. The law of patents in this colony is comprised in an Act to amend and consolidate the law relating to patents for invei. which passed the Colonial Legislature, November i?>. 1^*>. The Patent Office is attached to the department of the Registrar- General. Any person may apply for a patent, and a person not the inventor may join in the application and be a co-patentee. A patent will also be granted to the legal representatives of a deceased inventor. The application must be accompanied l>y cither a provisional or complete specification. The application is referred to an examiner, and upon his report the Registrar will acceptor refuse the application. The complete specific must be left within nine months from the date of application. Persons interested may oppose the grant on the ground of the opposer being interested in an application of prior date, or that the examiner has reported that the specification compris. same invention as is described in a previous application. The proceedings before the Registrar are subject to appeal to the Attorney-General. Specifications are not published unless the applications are accepted. Provisional protection is granted for the period between the date of application and the sealing the patent. Patents are granted for fourteen years, but cease in case the prescribed payments are not duly made. The Registrar has power to grant leave to amend specifica- tions, and his decision in applications for amendments is subject to appeal to the Attorney-General. WESTEEN AUSTRALIA 601 The Governor in Council can grant licences in cases where he is satisfied that by the patentee's default to grant licences the patent is not worked in the colony, or that the reasonable require- ments of the public are not supplied, or where any person is pre- vented from working or using to the best advantage any invention of which he is possessed. A Kegister of Patents is kept, and all assignments, licences, etc., must be registered therein. The Governor in Council may prolong the term of the patent for a further term not exceeding seven or, in exceptional cases, fourteen years. Proceedings may be taken for revocation of patents, the pro- ceeding by scire facias being abolished. A patent is valid against the Crown, but the Crown officers may use the invention by agreement, or, failing agreement, on terms to be settled by the Court. The proceedings relating to infringement are similar to those in force at home. Kemedy is granted against patentees in case of groundless threats of legal proceedings. Provision is made for the protection of unpatented inventions at industrial or international exhibitions. No person can receive a patent for an invention which has been previously patented in Great Britain or any other country, but the Governor is empowered to grant letters of registration to the holder or assignee of any such patent upon payment of 15Z., and such letters of registration shall be deemed to be letters patent issued under the Act, and shall have the same force as letters patent. The law does not compel any working of the invention. The fees payable before the expiration of four years and of seven years are 41. in each case, and a fee of 20Z. is payable on every extension beyond fourteen years. INDEX. ACCOUNT OF PKOFITS in action for infringement, 292. See DAMAGES before filing of bill, not ordered where unnecessary delay, 293 in taking, plaintiff entitled to know defendant's profits prior to use of his invention, 293 ACCOUNTS necessary on petition for extension of patent, 199. See EXTENSION, etc. ACTION FOE INFRINGEMENT, 272. See INFRINGEMENT may be brought in any division of High Court of Justice, 272 cannot be brought before patent has been granted, 105, 272 or for infringements committed before publication of complete specifi- cation, 272 or in interval between expiration of patent and grant of new term, 206 plaintiff cannot have both damages and account of profits in, 292 may lose damages for infringements committed while fees unpaid, 294 who may bring unregistered assignee cannot, 216, 230 except against licensees from assignor subsequent to and with notice of assignment, 216, 230 assignee of separate part of a patent may bring separate, 218 survivor of two assignees may, 218 exclusive licensee cannot, without joining patentee, 225 unregistered owner may, where name on register is that of trustee for him, 232 particulars of breaches to be delivered in, 279. Sec PARTICULARS several, by one plaintiff may be consolidated, 276 but not until each defendant has given full discovery, 276 defence to, 4 invention of improvements is not, 246 common dilemma, 247 particulars of objections to be delivered with, 280. See PARTICULAKS secret process set up as, 286 every ground for repealing patent by scirc facias is, 309 issues in, 276. See ISSUES inspection in, 277. Sec INSPECTION of documents, 283 interrogatories, 282, 284 production of models before trial of, refused, 283 trial of, to be without jury unless otherwise ordered, 234 of issues of fact in, may be before a referee, 285 whose report equivalent to finding of a jury, 285 assessor may be called in on, 285 i VORMKXT - continufd competent penon should ascertain fact* 01 n Court may allow patentee in, to apply to amend specification, 986 experiment* nin-li f"i , ilmtrusted by < of infringement ..r . nlcM -( Ige, 880 of ai:' onus of proof. of patentee, how fui ti.lmisHible, 288 further, on appeal, 888 scientific witnetaes. 888 functions of ju.lp- ami jury at trial of, 889 damages, 299. v, IUMAUBM account of pi U-COCNT or Paorm injunction*. '.'. delivery up or destruction, 896 in general, no stay of proceedings pending appeal, 294 in Scotlan.i. -".'. in Irelun.i. in Isl> of MUM, L".ir. provision as to leave to serve writ in Scotland or Ireland, 296 certificates and costs, '-".iT < . ;n< \TK ; COHTB Ini^ an. ]>laintitT may be restrained from advertising positive state- ment that ilct. inhiiit has infringed, and \\ln-ic lie has obtained leave to amend specification maybe ini.l fiom issuing threatening circulars to defendant's customers, :un; TO RESTRAIN THREATS, 303 may IK* brought under section 32 of the Act, 303 unless person tlm iit-nin^ commences and prosecutes with due diligence action for infringement, 803 which includes action for royalties on articles alleged to be out>i7 interpretation of words ' due diligence/ 307 plaintiff in, must show non -infringement or that patent invalid, 304 if the latter, defendant entitled to particulars of objections and other rights as if plaintiff in action for infringement, 304 result of cases relating to, 304 threats : letter from patentee's solicitor, 305 notices by patentee to users of plaintifT's invention, 305 letter written -without prejuii private letter to customer of plaintiff, 305 interlocutory injunctions in, 306 must not be moved for cr parte, 30C refused where defendant undertakes to bring with due diligence action for infringement, 306 but granted if undertaking not performed, 306 granted to restrain threats by plaintiff in pending action for in- fringement after leave to apply for disclaimer obtained, 306 INDEX 505 ACTION TO EESTRAIN THREATS continued damages in, 303, 308 no certificate in, that validity of patent came in question, 308 costs, 308 ADVERTISEMENT of acceptance of application, 95 of complete specification, 104 of application for amendment, 178 of amendments made, 180 of application for extension, 193 AGENTS. See PATENT AGENT may act for applicants, 378 may not sign applications, 378 may not apply in name of owner for injunction, 225 for infringers liable for infringements, 265 cannot present petition for revocation, 310 AMENDMENT OF SPECIFICATION, 178 might be by disclaimer under old law, 178 but now under Act of 1883 by disclaimer, correction, or explana- tion, 178 meaning of ' explanation,' 183 where action for infringement or proceeding for revocation of patent pending, leave of Court must be obtained to apply for, 179, 184 and must be by way of disclaimer, 184 terms upon which leave given, 185 discretion of the Court is absolute, 185 office-copy of judge's order must be left at Patent Office, 184 writ of prohibition to prevent comptroller proceeding, refused, 184 after judgment, leave of Court unnecessary, 184 where several proceedings pending, unnecessary to apply for leave in all, 184 after specification becomes public must be under section 18, 179 other amendments must be under sections 7 and 9, 179 procedure as to, under section 18 : request in writing for leave for, to be made, 178 and to be advertised, 178 any person may give notice of opposition to, within one month, 178 comptroller to notify opposition to, to applicant, 178 and hear and decide case, subject to appeal to law officer, 178 law officer, if required, to hear applicant, and opponent if entitled to be heard, 179 and decide if, and on what conditions, to be allowed, 179 where no opposition, or opponent does not appear, comptroller to decide if, and on what conditions, to be allowed, 179 if leave refused applicant may appeal to law officer, 179 law officer, if required, to hear applicant and comptroller, and may decide if, and on what conditions, to be allowed, 179 when made, to be advertised, 180 rules as to, 377, 391 form of application for, 386, 398 not allowed to substantially enlarge or alter invention claimed, 179, 186 no prohibition lies to law officer, 180 but amendment allowed by comptroller or law officer may be questioned in court of law, 180 ought to be allowed at patentee's peril, when question doubt- ful, 186 INDEX AMEXUMEXT or 8ronoA.Tio nmtttuud allowed (or insertion of correct description of drawing, 184 leave for, conclusive as to right of party to make, 179 except in case of fraud. 179 when allowed, deemed to form part of the specification. 179 opposition to: opponent most have interest, 180 grounds of, 1M comptroller may impose conditions on giving leave for, 180 but cannot give costs, 180 conditions under old law, 181. 188 the Act of 1888, 188 restriction on recovery of damages for use of invention before, 188, 894 by disclaimer : may reject claim to any of the parts where both combination and subordinate parts claimed, 186 may not strike out whole of claim and insert claim to subordinate part, 186 should leave sufficient to support patent, 187 may cut down claim for all methods to particular method de- scribed. 1-7 cases under the old law, 187-189 powers of the Master of the Rolls as to, 189 as to clerical errors, 190 costs of, 190 AMENKMENT of documents by comptroller, 324 AMERICA, UNITED STATES, patent laws of, 421 ANTICIPATION. Sec 1'rni.ic.vTiox; USER APPEAL from comptroller to law officer, 95, 103, 159, 178 none from law officer in cases of opposition to grant of patent or of amendment of specification, 161, 180 none from Board of Trade in cases of compulsory licences, 886 rules on appeals to law officers, 406 form of notice of, 404 APPLICANT. See APPLICATION FOB PA; for letters patent must be inventor or inventors, 86, 30 but non-inventors may join in application, 86 who may be, 86-88 any person, British subject or not, 86. See FOREIGN PATEKTS body corporate, 86 first importer, 86. See COMMUNICATION, etc. but must reside in United Kingdom, 87 infants and women, 88 legal representative of deceased inventor, 88 on death of, patent may be granted to legal representative, 88 who may perhaps leave complete specification, 104 and patent may be sealed within twelve months after, 171 APPLICATIONS, patents for SI-BJECT-MATTEB cases as to, 77-85 APPLICATION FOB PATENT, who may make, 86-88. Sec APPLICANT joint applications, 86 INDEX 507 APPLICATION FOR PATENT continued may be opposed, 159. See OPPOSITION TO GRANT to be made in prescribed form, 89 and left at, or sent by post to Patent Office, 89 with specification, provisional or complete, 89. See SPECIFICATION to be referred to examiner together with specification, 89 on whose report comptroller may require amendment, 89 subject to appeal to law officer, 95 acceptance of, to be notified to applicant and advertised in official journal, 95 if, after being made, another application with similar title is made, comptroller may decline to proceed with latter, 95 rival applications, 164-166 if abandoned or become void, specification not to be published, 96 deemed abandoned, if complete specification not left within due time, 103 becomes void unless complete specification accepted within due time, 104 by representative of deceased inventor, must be within six months, 96 form of, 393 form of, on communication from abroad, 395 rules regulating procedure on, 380, 381 ARGENTINE KEPCBLIC, patent laws of, 425 ASSESSOR Judicial Committee in extension cases may call in the aid of, 195 may be called in in an action or proceeding for infringement or revoca- tion of a patent, 285 ASSIGNEE OF LETTERS PATENT. See ASSIGNMENTS may disclaim, 181 of part may bring separate action for infringement, 218 of share of profits may call on licensee for account, 218 of original assignee takes subject to covenants if he has notice, 218 survivor of two, may sue for an infringement committed during life of the other, 218 for valuable consideration, in infringement action against patentee assignor, defence of want of novelty not available, 219 unless patent made invalid by assignee's disclaimer, 219 or assigned to him by trustee of bankrupt patentee, 219 position of, before registration of assignment, 230 ASSIGNMENTS OF LETTERS PATENT, 216-219. See ASSIGNEE should be registered, 216 rules as to registration of, 216 registry of, 216, 228 ought to be by deed, 216 proper covenants in, 216 if patent obtained under Act of 1852, 217 for a place or district, 217 no implied warranty of the patent on contract for, 217 purchaser should, prior to entering into contract for, have search made as to novelty of patent, 217 joint patentee can only assign his share, 218 co-owner of patent may sue alone for recovery of profits, 218 by partner to third party with notice of partnership, 219 may include contract to assign future patents relating or similar to assigned patent, 219 body corporate may take, and be registered as proprietor in corporate name, 219 by executors good, though probate registered after it, 231 508 INDEX or LBTTBM T \nirt continued where two or more conflicting, registered, 281 to Secretary of War for certain invention case* on, 216-219 ACHTRALIAV COLONIES, patent laws of. See under namet of the different eoloniet. A -II.M. patent law* of, 426 BAHAMA ISLAND*, patent laws of, 470 BARBADOS, patent laws of, 471 BELGIUM, patent laws of, 428 BOARD or TMADE, power to order patentee to grant licences, 226. See LICENCES, COM- PULSORY no appeal from such order, 226 no power to award costs, 226 power to make rules, 825, 331 appoints officers of the Patent Office, 323 Bourn, patent laws of, 429 BORNEO (BRITISH NORTH), patent laws of, 472 BRAZIL, patent laws of, 430 BREACHES. See PARTICULARS or, etc. BRITISH (Ji UN\, patent laws of, 472 BRITISH II. .\i- CRAB, patent laws of, 473 CANADA, patent laws of, 473 CAPE or GOOD HOPE, patent laws of, 477 CARRIERS, of infringing articles, 265 CASKS, amendments of specifications, 179-190 amount of invention required to support patent, 67-76 applications, patents for, 77-85 assignments and licences, 216-225 chemical processes and products, 19, 254-2CO combinations, 70-75 claims, 140-151, 157, 158 drawings, 106, 107 INDEX 509 CASES continued extension of patent, 192-215 infringement, 234-302 injunction, 272-276 inventor, true and first, 29-33 licences, 220-225 novelty, 27-65 oppositions to grant of patents, 160-169 patentee, who may be, 86-88 partnership, 225 principles, 6-11 processes, 11-13, 254-260 prior user by inventor, 45, 58 experiments, 62 public user, 34-51 publication in printed books, 51-53 publication in specification under prior patent, 54-58 registration, 229-232 revocation of patents, 309-313 specification, provisional, 97-99, 107-112 complete, 103-151 ,, interpretation of, 152-158 subject-matter, 6-20 threats, 303-308 title of patent, 91-93 utility, 21-26 Eeports of Patent, to be issued, 324 CAVEAT against extension of patent, 194 as to grants of patents and amendments, 104 CERTIFICATE in action for infringement, 297, 299 when given to entitle plaintiff to full costs in future actions, 300 not available in action, begun before certificate given, 301 what is sufficient, 301 whether given in action to restrain threats, 308 not given on petition for revocation, 313 Vice-Chancellor of County Palatine of Lancaster, 301 under hand of comptroller, primd-facie evidence, 326 of payment or renewal, 385 form of application for, 400 form of, 400 CEYLON, patent laws of, 477 CHANNEL ISLANDS, not now included in patent, 171 CHEMICAL PKOCESSES, when patentable, 19 and products, cases as to infringement of patents for, 254-260 CHILI, patent laws of, 431 CLAIMS. See SPECIFICATION, COMPLETE complete specification must contain, 102 suggestions as to preparing, 140 interpretation of, 157. See CoNSTBUCTioN 510 INDEX CLAIM** or PATEXTABLB IxTExnoxa, 14. Stt Hciuecr-MArnui .ICAL KHKOHM. correction of, i ; 1 7 1 form of request for correction of, 408 in *|>ecifications, etc., 105, 100, 824 COLOMBIA, patent laws of, 432 COLONIAL ARRAXOKMENTH, 822, 850 COLONIES (BRirnui). patent laws of, 470 CoilM T- MATTE R of known parts are patentable. 16 how to be treated in specifications, 181 caws on, 70-75 cases as to infn f patents for, 248-254 propositions as to, 250 if patent is solely for, nothing can be infringed bat the use of lh> combination, '2~. patent for invention which in, may be obtained, 86 but applicant must be resident in United Kingdom. 87 no patent for communication by British subject residing in ' Kingdom to another, 88 form of application for patent for, 395 COMPANY. See CORPORATE BODY COMPTROLLER-GENERAL or PATENTS, duties of, 323 may require amendment of documents, 95, 102, 103 appeal lies to law officer from, 95, KM. 1 ' 17- may require statement in writing from applicair can authorise amendment of specification, 17'.' may refuse patent if contrary to law or morality, 324 may correct clerical errors, 106, 324 other powers of, 324 discretionary power of, not to be exercised adversely to applicants with- out giving them opportunity of being heard, 324 decisions of, to be notified to parties, 379 general powers of amendment by, 324 power of, to dispense with evidence, 324 may apply to law officers for directions, 325 certificate of, to be evidence, 326 is to issue Illustrated Journal of Patented Invention-. and reports of patent cases, 324 and other publications, 324 to make annual report, 325 if absent, Board of Trade may appoint officer in his place, 325 INDEX 511 COMPULSOBY LICENCES, 225. See LICENCES, COMPULSORY CONGO FREE STATE, patent laws of, 432 CONSTRUCTION OF SPECIFICATION, 152 specification to be construed according to ordinary meaning, 153 and with reference to state of knowledge when it was prepared, 156 benevolent construction, 153 both words and drawings looked at, 106 prior specifications as showing anticipation, 154 evidence to explain technical terms, 155 patentee's evidence as to meaning of specification inadmissible, 155 claims, construction of, 157 with reference to whole context, 142, 157 when two meanings possible, 157 construed as merely appendant, 157 cases as to, 158 CONVENTION, INTERNATIONAL, 373. See FOREIGN PATENTS; INTERNATIONAL CONVENTION COPIES OF PATENT OFFICE DOCUMENTS, certified and sealed, receivable in evidence, 326 to be furnished on payment of fee, 327 sent to Scotland, Ireland, and the Isle of Man, 326 and to be evidence in courts there, 327 CORRECTION. See AMENDMENT OF SPECIFICATION CORPORATE BODY ; and inventor may apply jointly for patent, 86 may take assignment of patent, 219 may be registered as proprietor by its name, 219 COSTA EICA, patent laws of, 433 COSTS, comptroller no authority to award, 169 Board of Trade no power to award, 226 law officer may order, in any proceeding before him, 169, 349, 407 on oppositions to patents, 169 on amendments of specifications, 180, 190 on application for extension of patent, 208 on revocation of patent, 313 in action for threats, 308 in actions for infringement, 297 directors of limited company infringing, may be ordered to pay personally, 301 if court certifies that validity of patent came in question, plaintiff may have full costs in subsequent actions, 300 though patent not contested in subsequent action, 301 but if contested on different grounds, full costs refused, 300 CROWN, THE, power of, to grant patent, 1-3 does not guarantee the validity of letters patent, 5 must be supplied with invention if required or patent becomes void, 173 letters patent obtained under Patent Act, 1883, of same effect against, as against subject, 175, 267 /ill' IM Ciiowx. T officers of departments in ncrviee of, may use invention on tana approved may use inv< miti \\iih.. where patent applied for before com- BMOMBMI patent ~ i>f munition* of war, right* of a* t may oppoce extension of | KaviiiK for en i >;,. it i\ i <>f, 868 if misled at to imvrlty nf invcnti-m. j>at< nl void, 98 CUBA, patent laws of. .SV<- B is KOH Ixritix<;r\ir.N how estimate! : cannot be granted in addition to account of profits, 29S but where separate proceedings against manufacturer and user, plaintiff may have account of profits against former and damages against bttar,S9l inquiry as to, 292 plaintiff not compelled to accept same royalty from litigant as from others, 293 in estimating, material question is patentee's actual loss, not infringer'i profit for use of invention before amendment, 294 for infringement committed while duty overdue on patent, 294 DATE or LETTERS PATKXT, 171 PKATII of inventor before applying for patent, legal representative may apply within six months, 88 of applicant, legal representative may obtain patent, 88 and may perhaps leave complete specification, 104 patent may be sealed within twelve month of patentee, probate of his will or letters of administration should be registered, 229 UUTKMB, how to be made, 380, 393, 395 on application for patent, 89 evidence taken by, in opposition to patents, 160, 384 and to amendments of specifications, 386 nee may be by, in compulsory licences, 887 l>i HMii.'xs or TERMS IN PATENTS ACT, 1883, 353, 363 ri- AXI> DE8TBCCTION of infringing articles may be ordered in action. practice as to, when patent is for combination, 295 1>I \MUIK. patent laws of, 433 DISCLAIMER. See AMENDMENT or SPECITICATION DISCOVERT. See IXVKXTIOX when several concurrent actions, actions not consolidated till all defen- dants have given, 276 DOCUMENTS, size, etc., of, 378 amendment of, 324 INDEX 513 DOCUMENTS -continued may be sent by post, 356, 379 certified copies of, 355, 390 DRAWINGS to accompany specification, if required, 94, 106 but complete specification may refer to those in provisional, 106, 369 not to be referred to as descriptive of part not described in letterpress of specification, 107 omitted by inadvertence cannot be supplied, 107 erroneous, will not in all cases vitiate patent, 130 amendment of, 102, 178 rules as to, 382 DUPLICATE OF PATENT, if original lost or destroyed, may be granted, 174 form of application for, 402 DURATION OF PATENT, 170 may be extended by petition to the Queen in Council, 191. See EXTEN- SION OF LETTERS PATENT ECUADOR, patent laws of, 434 ENACTMENTS BEPEALED, 362, 366 ENLARGEMENT of time for paying fees, 342, 386 for leaving specification, 102, 404 for accepting specification, 104, 405 for sealing patent, 170 forms of application for, 401, 404, 405 ERRORS. See CLERICAL ERRORS EVIDENCE, in opposition to grant of patents, 160, 384 to amendments of specifications, 387 on applications for compulsory licences, 387 on applications for extensions, 195-197 on actions for infringement, 287. See ACTION FOR INFRINGEMENT official documentary, 326 certified copies of specifications, etc., to be, 326 EXAMINERS, reports of, 105 duties of, 95, 102, 103 EXHIBITION, PUBLIC, protection to unpatented invention exhibited at, 65 under International Convention, 320 form of notice to comptroller, 402 EXISTING PATENTS. See LETTERS PATENT not affected by provisions of new act binding Crown, or as to compul- sory licences, 175 how far affected by 25th section of Act of 1852, 176 EXPERIMENTS abandoned, do not avoid subsequent patent, 36, 46-49 by inventor, not publication, 62 made to procure evidence for trial distrusted by Court, 287 Court may direct, to be made for its guidance, 285 may authorise, to be tried, 278 L L 5U Exrtuunov. S* AxinurT or SrtcmcATio* ExTwatoK or Lrmtms PATBVT, 191 first provided for by 6 * 6 William IV. e. 88, 191 now by section 25 of the Act of 1888. 191. 845 is nutter of favour, not of right, 802 and may be granted subject to conditions, S06 patentee may present petition to Queen in Council (or. 194, 844 definition of patentee.' 88, 868 assignee is not in as favourable position as inventor, 198 but his baring asristid inventor is regarded. 192 procedure on applying for. 198. 408 patentee's intention to apply to be advertised, 198 petition to be presented six months before expiration. 191 or at any time before expiration where patent existed before 1884, 192. most set forth all material facts, 193. 194 parties to, 198 oaveat against, any person may enter, at Council Office, 194 and is then entitled to notice from petitioner of any special application and of hearing, 194 and may be heard before Judicial Committee, 194 as to right of alien abroad to be heard, 194 caveat most be entered in name of actual opponent, 194 within fortnight after service of petition opponent most lodge notice of grounds of objection, 194 copies of specification and of accounts to be filed, 194 formal proofs may be taken by clerk of Privy Council, 196 rules regulating proceedings, 408 hearing of petition, 195 assessor may be called in by Judicial Committee, 195 petitioner and opponents may appear in person, 195 Attorney-General appears for the Crown, 195 and may adduce evidence against patent irrespective of objec- tions, 194 as to evidence petitioner should produce, 195, 196 merit and substantial utility to be shown, 196 invention not brought into use. presumption against utility, 196 but this may be explained or rebutted, 196 as to evidence opponents may produce, 197 no objection that others have improved patentee's invention since his patent, 197 or that manner of working has been varied, 197 patent assumed to be valid, unless clearly not so, 198, 199 accounts, 1%, 202 must be full, clear, unreserved and properly proved, 199 what profits must be shown, 200, 201 what deductions may be made, 201, 202 deductions claimed should appear in petition or accounts, 909 wounds for granting, or for refusing, petition, 197-199, 201 Judicial Committee to have regard to nature and merits of inven- tion in relation to public, 192 to profits made by patentee as such, 192 and to all the circumstances of the case, 192 agreement by patentee to grant exclusive licence, and obtain extension, contrary to policy of Act, 199 grounds of decision upon the merits, 202 question not simply what patentee has received, but what patent has, or ought properly to have, gained, 208 amount of inventive power and of time and trouble in experiment' ing to be considered, 203 INDEX 515 EXTENSION OF LETTERS PATENT continued smallness of improvement may be no measure of merit, 203, 204 benefit conferred on public to be regarded, 203 where patent is for invention imported from abroad, but also patented in foreign country, 205 decides nothing as to validity of patent, 198 grant of, to be considered as grant of new patent, 198 usually effected by grant of new patent, 206 the new patent, 206 is dated day after expiration of original term, 206 is subject to all provisions of the Act of 1883, 206 will be invalid if original patent found invalid, 198 term of, 204, 209 may be for fourteen years, 192, 206 but to justify more than seven, invention must have excep- tional merit and public usefulness, 204, 214, 215 Crown may recall warrant for, at any time before sealing, 205 use of invention after expiration of original term, and before grant of, not infringement, 206 and parties investing capital in the interval in working it, may oppose or claim protection, 206 restrictions, conditions and provisions may be inserted, 206 may be granted for one head only of invention, 206 may provide for payment by assignee to patentee of annual sum or share of profits, 206, 213 instances of other conditions and provisions in, 207 when once granted, committee's jurisdiction exhausted, 207 office copy of order for, must be left at Patent Office, 208, 389 costs of proceedings for, 208 selected decisions of the Privy Council, 209-215 EXTENT OF PATENT, 171 does not include Channel Islands, 171 FEES, 173, 391 non-payment of, within prescribed time, renders patent void, 172 but in certain cases comptroller to enlarge time, 173 may be paid in certain cases on day following due date, 174 rules as to payment of, for continuance of patent, 385, 389, 390 list of, 391 FIJI, patent laws of, 478 FINLAND, patent laws of, 435 FOREIGN APPLICATION FOR PATENTS, 381. See INTERNATIONAL CONVENTION FOREIGN PATENTS, laws of foreign states, 421 right of priority of foreign applicant under International Convention, 87, 318 international arrangements as to, 318 publication of complete specification in England may bar right to, 101 FOREIGN VESSELS, use of invention on board of, in British waters, 265 FORMS issued by the Patent Office, 377, 393 L L 2 616 INDEX FBAJCCE. latent law* of, 486 GERMANY, patent law* of, 440 GUATEMALA, patent laws of. 443 GUIANA (BamsH), patent laws of, 472 HAWAII, patent laws of, 444 HKARINUS BETOBE COMPTROLLER, notice of, 885 form of application for, 896 HOLLAND, patent laws of, 444 patent laws of, 445 HONDURAS (BRITISH), patent laws of, 472 HONG Koso, patent laws of, 479 ILLUSTRATED JOURNAL or PATENTED INVENTIONS, IMPORTER or INVENTION. See INVENTION, COMMUNICATION FROM ABROAD entitled to a patent, 86 may obtain extension, 192, 205 IMPROVEMENTS, whether result of sufficient invention to support patent, 68 on existing patents, 21, 85, 246 quantum of, not material, 28 where patent is for, in complicated machine, specification should distinctly point it out, 184 in known process, applied to same process as subsequently altered will be protected, 288 in old machine and no novelty in result, patentee held strictly to his description, 248 INCORPORATED COMPANY. See CORPORATE BODY alphabetical and subject-matter of specifications, 828 of patents, chronological and reference, 828 INDIA, patent laws of, 479 INDUSTRIAL OR INTERNATIONAL EXHIBITIONS, protection of inventions at, 65, 820 \NT may be grantee of patent, 88 INFRINGEMENT, 233. See ACTION ros INFRINGEMENT modes of, 283 substantive law of. 234-271 INDEX 517 INFRINGEMENT continued substituting chemical or mechanical equivalent for some part of patented invention is, 234, 245 where equivalent is known to be such at date of patent, 258, 260 colourable alteration is, 234 immaterial alterations in order to evade a patent, 237 substantial similarity is, 237, 240 when principle is new, 238 where patent is for new result and process for arriving at it is described, different process for same result is, 240 where principle is not new different method of applying it is not, 242 in cases of interfering patents, 245 patenting improvement on existing patent is not, 246 but using it is, 246 using substantial part of existing patented invention in carrying out new invention is, 246 of part of process actionable if that part might itself be subject- matter, 250, 253 on question of, essential nature of invention will be regarded, 253 manufacture and export of parts of patented combination, 253 of any one head of an invention actionable, 253 of patents for combinations, 247-254. See COMBINATIONS if substance of combination is borrowed there will be, 252 of patents for chemical processes and products, 254-260 by dealing in articles made by infringing patent, 261 by user, 263 user of patented article made abroad is, 263 as to liability even when user is passive, 263 where committed through agent, both employer and agent liable, 265 by the Crown, 266 user by foreign vessels in British waters, 265 construction as an amusement or model not, 267 cases of non-infringement, 267-269 use of new and material part of an arrangement for a purpose different from that in patented combination not, 268 use of natural substance in place of artificial substance of same chemical constitution not, 268 acts done on British vessel at Malta or on high seas not, 269 sale of chemicals to be used in infringing a patent is not, 269 neither is indemnity to buyer against proceedings, 269 use of invention after expiration of patent and before extension granted is not, 206 intention of infringer not material, 269-271 practice in cases of, 272-302. See ACTION FOB INFRINGEMENT question of, one of mixed law and fact, 291 may be tried by itself, 277 INJUNCTION, plaintiff is entitled to protection of, 272 granted to restrain sale after patent expired, of articles made before 276 licensee may not apply in name of owner for, 225 neither may agent of patentee, 225 bill for, dismissed where infringement innocent, accidental and trivial, and no substantial damage, 270 interlocutory, 272 rules as to, 273 granted in proper cases before trial of action, 273 granted if patent established in other actions, even though fresh facts against patent brought forward, 274 518 INDEX if not granted, defendant usually order*! to keep an account. J75 if granted, plaintiff most give undertaking as to damage*. 276 granted where defendant intends and claim* right to infringe, 97 mew general offer held no eridenoe of intention under the I! ' ']!!!' I 1 !. . L'-T to restrain threats, 808. See ACTION TO RBSTBAXX THREAT* plaintiff entitled to perpetual, when validity of patent has been established and infringement proved, 994 if defendant submits may be obtained without trial, 994 cannot be enforced against infringer, if patentee afterwards enters cases on, 979-976 LvsMcnox n PATXT Acnoxs. 977 ordered by the Court, 978 includes analysis, 977 licensee not a party not compelled to give, in action against bin licensor, 279 of documents, 288 communications between inventor and his patent agent not privi- !,,,.!. HI INSTITUTE or PATENT AOEXTS, 330. See PATENT AOENT rios of infringer immaterial, 909 INTERNATIONAL ABBANOKXENTS, 318, 359. Set INTERNATIONAL CONVENTION I'oNVKXTiox, 319, 373. See FOREIOX PATI parties to. rights of subjects of state in union under, 317, 373 protection to inventions at exhibitions, 320 international office, 320-322 monthly periodical, 322 rules as to applications for patents under, 321, 381 patents under, only granted in England to person making foreign application rights of priority of foreign applicant, 318, 373 Act applies although foreign state has only acceded after date of foreign application, 322 INTERPRETATION or SPECIFICATIONS, 152. Set CONSTRUCTION IxvmsnoN. See also INVENTOR not every kind patentable, 3, 5, 14 what is patentable, 5. See SUBJECT-MATTER classes of patentable inventions, 14-20 amount of, required to support patent, 67 very small may be sufficient, 70 canes where invention insufficient, 72-76 by two persons, patent must be taken out in both names, 30 must be useful, 21. See UTILITY must be new, 27. See NOVELTY if several heads included in one patent, one useless or old invalidates the whole patent, 21, 27 importer of, to this country from abroad can apply for patent, 86 should be disclosed in general terms in title, 89 question of what is the. claimed by specification, is for Court, 288 INDEX 519 INVENTION contimied one invention, patent to be for, 96 alternative devices to effect same object are, 97 if Crown misled as to extent of, patent void, 27 relating to munitions of war, 175 definition of, as used in Patents Acts, 353 science and art department may require model of, for Patent Museum, on payment, 329 cases on, 67 INVENTOR, true and first inventor, 29, 30 a patentee must be, 4 first importer of new foreign invention is, 29., 86. See COM- MUNICATION FROM ABROAD he who first produces in commercial quantities substances only pre- viously produced in small quantities, is, 20 where joint inventors, all should apply for patent, 30 and may each work invention independently of the other, 176 notwithstanding assistance of workmen, employer may be sole, 30-32 but he must be more than mere employer, 33 as to verbal information received from another person, 33 publication of patented invention by, before date of grant, 58. See PUBLICATION does not lose his right to patent by keeping invention to himself pro- vided he makes no profitable use of it, 58, 62. See USER two independent first patentee held to be true and first, 30 patentee may be, though another had previously made, but not published, same experiments, 36 legal representative of, may obtain patent if inventor dies before applying, 88 or after applying but before patent sealed, 88 must apply within six months, 96 where rival inventors, patent may be vested in trustees, 164 patent to true, not invalidated by application in fraud of him, 175 communications between, and his patent agent not privileged, 283 cases as to, 29-33 IRELAND, 296, 312, 327, 361 patent extends to, 172 ISLE OF MAN, 296, 316, 317, 327 patent extends to, 172 ISSUES of fact may be granted in actions, 276 and tried before a referee, 285 whose report is equivalent to the finding of a jury, 280 not granted as a matter of course, 277 what are usual, 276 ITALY, patent laws of, 445 JAMAICA, patent laws of, 482 JAPAN, patent laws of, 448 JOINT INVENTION. See INVENTOR JOINT PATENTEES, 176. See PATENTEES, PARTNERSHIP each may use invention, 176 INDEX Jontr PATBXTua contmtttd one granting Uoanoat must aoooont to other for royalties. 888 inventor and non -inventor may be, 86 one of, cannot assign more than his share. 217. 218 JUDICIAL COMMITTEE. Stt Ernuraox, etc. rn W, 408 JCRT question whether specification describes material with nafflcient accuracy is for. 1 '-' 1 so also in its identity with old prior apeeifleatioi question of utility in for them to decide, 22 but they have not to consider it* extent, S3 trial by. cannot be in Chancery Division. 272 trial to be without, unless Court otherwise direct*. 884, 311 functions of, on action for infringement, 889 LAW Omens, rale* regulating proceedings on appeals to, 406 appeals to, from comptroller, 95, 103, 160, 180 no appeal from decision of, 161, 180 no prohibition lies to, 180 may make rules, S49 may examine witnesses on oath, 180 may order costs in any proceeding before him, 349. 407 definition of, 368 LEEWARD ISLANDS, patent laws of, 483 LEGAL PaocnDnoa. See also ACTIONS. REVOCATION for infringement, not to be taken until patent granted, 105 not to be taken for infringement committed before publication of com- plete specification, plaintiff need not apply to defendant before commencing. I nor rely on promise not to infringe again . for infringement, particulars of breaches and of objections must be delivered in, 279, 280 which may be amended, 279, 280 amendment of specification may be made during progress of, 184, and aw Annan reports of, to be published by comptroller, 324 action to restrain threats of, SOS LETTERS PATENT, are taken out at risk of inventor, 5, 172 requisites to being held valid in court of law, that invention possess utility, 4, '21. See UTILITY display novelty, 4, 27. See XOVELTT show some measure of ingenuity, 4, 67. See INTENTION that patentee be true and first inventor, 4, 29, 86. Set INVENTOR. unless communicated from abroad, 4, 86. See Cow TION, etc. that Specification be sufficient, 4, 94, 100. See SPECIFICATION. COMPLETE, PROVISIONAL. for what inventions obtainable, 5. See SCBJECT-MATTER by whom obtainable, 86. Ste APPLICANT how obtained, 89. See APPLICATION FOR PATENT title of, 90. See TITLE or PATENT opposition to grant of. 159. See OPPOSITION TO, etc. amendment of, 178. Sec AMENDJH INDEX 521 LETTERS PATENT continued assignment of, 216. See ASSIGNMENTS licences under, 219. See LICENCES registration of, 228. See REGISTRATION infringements of, 233. See INFRINGEMENTS, ACTION FOR INFRINGEMENTS revocation of, 309. See REVOCATION sealing of, 170, 171 extend throughout United Kingdom and Isle of Man, 171 but not the Channel Islands, 171 duration of, limited to fourteen years from date, 171 dated and sealed as of day of application, 171 extension of, 191. See EXTENSION form of, 172, 364 Board of Trade has power to alter, 172 become void if patentee does not pay fees, 172, 173 or if service of the Crown not supplied with invention if required, 172 and only special Act of Parliament can restore validity, 174 fees on, payment of, 173, 391. See FEES clerical errors in, may be amended, 174 if lost or destroyed duplicate may be sealed, 174 form of application for duplicates, 402 rights of the Crown as to, 174. See CROWN for munitions of war, may be acquired by Secretary of State, 175 granted or applied for before 1884, not subject to compulsory licences, 175 provisions respecting, 175, 353 granted before 1884, effect on, of lapse of foreign patent for same inven- tion, 175, 176 obstructive, not permitted, 21 may be had for improvements on previous patent, 85 may be refused for invention contrary to law or morality, 171 to be for one invention only, 172 but no objection can be taken in a proceeding on ground that it comprises more than one, 172 not invalidated by application in fraud of inventor, 175 rival applications for, 164-167 partnership in, 219. See PARTNERSHIP joint grantees of, may each use invention independently of the other, 176 where vested in trustees for two or more as tenants in common, 177 one co-owner of, may sue alone for recovery of profits, 218 interest of intestate patentee under, passes to personal representative, 177 of bankrupt vest in trustee, 177, 218 who may sue for previous infringements, 218 foreign laws of, 421 colonial laws of, 470 indexes and abridgments of, published, 324, 328 illustrated journal of, published, 324 reports of cases on, published, 324 LIBERIA, patent laws of, 449 LIBRARY, PUBLIC, AT PATENT OFFICE, 328 LICENCES, 216, 219-227. See also LICENSEE should be registered, 216 rules as to registration of, 216, 389 Board of Trade may order patentee to grant, 225. See below. exception as to patents granted before commencement of Act, 226 various forms of, 219 exclusive licence, what, 220 registration of, for a district is not notice to the world, 232 1M.FX oaual consideration for, 990 may unintentionally create partnenhip, 910 proper oovenanU in. 990 effect of recitals by way of estoppel, 990 where terms of, broken, licensor may determine. 291 not assignable to third person in the absence of express or implied money paid for, recoverable where consideration fails, 999 bat annual payments not recoverable if patent void, 998 during continuance of, licensee may not dispute validity of pau but may have limits of patentee's rights ascertained, 998 to be in writing and under seal, 925 stamp on, 925 patentee not allowed to publish advertisements calculated to deter public from dealing with his licensee, 925 as to, 990-995 LICESCKH, CoMPCLHORY, 295, 890 order of Board of Trade for, absolute and final, 996 petition for, and procedure, etc., 387 form of application for, 399 form of petition for, 399 form of opposition to, 400 provisions to apply only to patents under Act of 1888, 996 LICENSEE. See alto LICENCES during the licence may not dispute validity of patent, 228 even where no formal licence, if royalty paid, 928 but may after licence determined, 224 must pay royalties, although patent found invalid in suit against other parties, 223 has a right to have the patentee's invention denned, 228 exclusive, for certain district cannot restrain use, by persons without notice, of articles bought outside district, 224 exclusive, may not bring infringement action without joining patentee, 224 may not apply in name of owner for injunction to restrain infringe- ments, 225 assignee of share of profits may call on, for account, 218 LOST PATENT, replacement of, 174, 349-402 LUXEMBOURG, patent laws of, 449 MALTA, patent laws of, 483 interpretation of the legal term. I- MAURITIUS. patent laws of, 484 MEXICO, patent laws of, 450 MISTAKES. See CLERICAL ERRORS MODELS, power of science and art department to require, 829 order for production of, before trial of action, refused, 283 not in evidence, may be used to explain argument, 286 INDEX 523 MONOPOLIES, power of Crown to grant, 1, 2 statute of James I. against, 2, 335 MUNITIONS OF WAR, patents for, 175 MUSEUM, PATENT, 329 NATAL, patent laws of, 485 NEWFOUNDLAND, patent laws of, 48G NEW SOUTH WALES, patent laws of, 480 NEW ZEALAND, patent laws of, 487 NICAEAGUA, patent laws of, 452 NORWAY, patent laws of, 452 NOTICES, may be sent by post, 356, 379 NOVELTY. See INVENTOR. PUBLICATION. USEK necessary element of patentable invention, 27 if any part claimed as invention not novel, patent void, 27 head of, includes questions whether patentee true and first inventor, 28 29-33. See INVENTOB whether invention new to public at date of patent, 28. See PUBLI- CATION. USER defeated by prior public user, 34, 63. See USER by secret user by inventor for profit, 45 by publication in printed books, 51. See PUBLICATION in prior specifications, 54 by inventor, 58 by other persons, 63 not defeated by application in fraud of inventor, 45 by abandoned experiments of others, 36, 46 by prior imperfect machines, 49 by earlier inventions having similar object, 49 by confidential communications, 60 by experiments by inventor, 62 by authorised use, &c., at exhibitions, 65 of combination will support a patent, 15. See COMBINATIONS onus of proving want of, is on defendant, 287 OBJECTION that patent comprises more than one invention cannot be taken, 172 particulars of, in patent action, 280. See PARTICULARS to grant of patent, 159. See OPPOSITION TO, etc. OFFENCES AND PENALTIES, 314. See PENALTIES OFFICIAL DOCUMENTARY EVIDENCE, 326 OFFICIAL REFEREE, 285 to amendment of specification. 180. SM Amnrmaorf to compulsory grant of licence, 888, 400 to extension of patent, 194. Stt Kmcxaov to grant of patent, 169. SM OrmsanoM TO GBAXT Orroamo* TO GRAXT or PATKXT, 159 procedure on notice of, to be given within two months of date of advertiacnMBt of aooeptanoe of specification, 169 and to state grounds of opposition, 169 form of, 897 comptroller to give notice of, to applicant. 169 t<> hear applicant and opponent if desired, 169 may allow amendment in notice of opposition, 1GO roles regulating proceedings before, 886 evidence to be by statutory declarations, 160 onus of proof lies on opponent. 160 at hearing of, parties may appear in person or otherwise, 160 notice of appeal to law officer to be filed, 160 law officer to hear parties if required, 340 may obtain assistance of expert, 840 no appeal from decision of, 161 rules regulating proceedings before, 406 costs of, can only be had before law officer, 109 grounds of, three only, 159 (1) that applicant obtained invention from opponent, or from person of whom he is legal representative, 162 (2) that invention patented in this country on application of prior date, 162 that complete specification describes or claims invention other than that in provisional, and that such other invention is subject of application by opponent in the interval, 159 As to first ground of opposition, assistance of workmen, 162 meaning of ' legal representative,' 162 As to second ground of opposition. opponent must have interest, 162, 163 may be founded on expired prior patent, 163 but invention is not patented if only described, and not claimed, in prior patent, 163 invention only provisionally protected, no ground, 163 person, whose complete specification accepted, may oppose. 163 disclaiming clauses may be required, 163, 164 rival applications, 164 joint inventors, 164 one applicant inventor of part, and other of other part, 165 mala fides, 167 in cases of doubt, patent granted, 161 ORAXOK FREE STATE, patent laws of, 453 PARAGUAY, patent laws of, 454 PARTICULARS OF BREACHES AXD or OBJECTIONS, defendant, in action for threats, may be entitled to, 304 required in action for infringement, 279, 280 INDEX 525 PARTICULARS OF BREACHES AND OF OBJECTIONS contimied may be amended, 279, 280, 282 insufficient, better may be required, 279, 282 costs of, 297 certificate by Court or judge as to, 297 cases as to, 279-282 except by leave of Court, evidence not admitted outside of, 287 PARTNERSHIP. See ASSIGNEE, ASSIGNMENT, JOINT PATENTEES co-owner of patent may sue alone for recovery of profits, 218 licence may unintentionally create, 220 at will for working invention, patent becomes partnership assets, 218 and each partner acquires right to work, 219 which not taken away by registered owner assigning to third party with notice of partnership, 219 cases, 225 PATENT. See LETTERS PATENT penalty for describing goods as patented when no patent has been granted for same, 314 filing of provisional specification does not justify use of word on label, 316 use of word on label when patent expired, 314 how affected by Merchandise Marks Act, 1887, 315 PATENTABLE INVENTION. See INVENTION, SUBJECT-MATTER PATENT ACT, 1852 effect of repeal of, 175, 176 assignment of patents obtained under, 217 PATENT AGENT. See AGENTS communications between inventor and, not privileged, 283 person describing himself as, when not on register, liable to penalty, 316 Institute of, 330 to keep register of, 331 who may be registered as, 331 rules, 411 PATENT OFFICE, 323 is open to the public, 323 comptroller-general, powers and duties, 323. See COMPTROLLER general rules, 325. See KULES the Patent Office seal, 326 official documentary evidence of, 326 registers, 327. See EEGISTRATION publications and indexes of, 327 public library of, 328 PATENT MUSEUM, 329 PATENTS, ETC. ACTS, 1883 to 1888. See STATUTES commencement of Act of 1883, 337 PATENTS BULES, 1890, 377 PATENTEE. See INVENTOR, JOINT PATENTEES who may be, 86. See APPLICANT definition of word, as used in the Act, 88 may assign and license, 216 if joint, cannot assign more than his share, 217 526 isi'K.x on assigning patent, may contract to assign tutors patent* rakting or iMErftoil El cannot allee want of novelty in action for infringMMBft after ioripiing for valuable consideration, 819 unless patent made invalid by assignee 1 ! disclaimer. 319 and otherwise whm patent assigned by trustee under hi* bank ruptcy, 219 may be required to famish model of invention to Patent MuMOm on payment, 899 on death of, patent vests in personal representative. 177 who mast register his title, M9 PAYMENTS. See Pus PENALTIES, 814 for sale of article as patented when not patented, 814 under Merchandise Marks Act, 1887, 816 for use of royal arms without special authority, 816 may be sued for in Sheriff's Court in Scotland, 816 in Isle of Man, 816, 317 for falsification of register, 817 for person describing himself as patent agent when not on register, 816 PERU, patent laws of, 454 PKTmox FOR REVOCATION, 309. See REVOCATION PHILIPPINE ISLANDS, patent laws of. See SPAIN PORTO Rico, patent laws of. See SPAIN PORTUGAL, patent laws of, 455 POST, applications, notices, etc., may be sent by, 856, 879 PRINCIPLES, bare principles not patentable, 6-11 unless embodied in concrete form, 6 but inventor having discovered one mode of carrying a new principle into effect, is protected against all other modes of carrying the same principle into effect, 388 when the principle is not new, a patent should be confined to the par- ticular mode of carrying it into effect, 242 eases on, 6-11 PRIOR PUBLICATION. See PUBLICATION PRIOR USER. See Usn PRTTY COUNCIL. See EXTENSION orders of. to be entered in Register of Patents, 207-8 rules of Judicial Committee of, 408 are patentable, 11-13 on. 11-13, 254-260 INDEX 527 PROPRIETOES, register of, 228. See EEQISTKATION PROTECTION, provisional, 99 gives applicant no rights against public, 99 does not justify use of word ' patent,' 316 by complete specification, 104-5 PROVISIONAL PROTECTION. See PROTECTION PROVISIONAL SPECIFICATION. See SPECIFICATION, PROVISIONAL PUBLICATION OF INVENTION. See USER, NOVELTY in printed book, 51 will vitiate patent, though patentee did not derive his knowledge from book, 53 foreign book in British Museum or public library, 52 circulated in England, 52 question of evidence whether the description has become part of public knowledge, 53 published drawing may avoid patent, 53 in prior specification, 54 specification under worthless patent may avoid subsequent patent, 55 meaning of terms of art in, to be ascertained with reference to date of, 57 what antecedent description will avoid patent, 55-58 by inventor, 58 sale, 59 manufacture and offer for sale, 59 of results aimed at no publication of invention to obtain such results, 60 experiments by patentee, 62 confidential communications, 60, 65. See WORKMEN, NOVELTY prior use by inventor not necessarily, 58 by others, 63. See USER deposit of machine in public room for testing its qualities, 58 public user for testing, 63 by publication of material made abroad, 40, 44 by earlier inventions having similar object, 49 effect of International Convention on, 54 prior use of invention in colony is not, 44 extent to which experiments may be made without, 36, 46-49, 62 PUBLIC USER. See USER PURCHASE OF PATENT. See ASSIGNMENT QUEENSLAND, patent laws of, 491 REFEREE, issues of fact in patent cases may be tried by, 285 Court may appoint, to ascertain facts or make experiments, 285 REGISTER OF PATENTS. See REGISTRATION REGISTRATION, 228 of patent agents, 331. See PATENT AGENT before 1884 two registers, of patents and of proprietors, were kept, 327 now deemed parts of register kept under Act of 1883, 230 SSI continued register to be kept, 898 what particular* to be entered in, 888 U primd-facit evidence, 888 notice of trust not to be entered in. 889 probate, and letters of administration, must be entered in, 889 jurisdiction of Court as to entries in, 889, 881 is subject to appeal, 880 jurisdiction of Master of the Bolls, 881, 888 rectification of, on application of person aggrieved, 889 correction of clerical error in. 880 falsification of entries in, a misdemeanor, 880, 817 open to inspection of the public, 880, 887 certified copies of entries in, may be had, 880, 886 Forms, of request to enter name in, 401 for notification of licence in, 408 for alteration of address in, 408 for entry of Order of Privy Council in, 403 procedure as to, 229 rules as to, 888 fee payable on, 889 refused until patent sealed, 329 deeds left for, must be duly stamped, 889 of assignments, necessary to enable assignee to maintain infringement action, 230 relates back to date of assignment, 231 of two or more conflicting assignments, _'" 1 of exclusive licence for a district is not notice to the world, 888 cases on, 389-832 RENEWAL, certificate of, 353, 400 REPEAL or FORMER ACTS, 862 REVOCATION or PATENTS, 309 proceedings by scire facias abolished, 809 but every ground for repealing by, still a ground for, 309 obtained on petition, 309 grounds for, 309, 311 by whom petition for, may be presented, 310 all persons beneficially interested in patent to be respondents to petition for, 310 service of petition for, out of the jurisdiction, 312 proceedings at trial for, similar to those in action where validity of patent in dispute, 311 plaintiff to deliver particulars of objection, which may from time to time be amended, 310 in proceeding for, Court may call in the aid of an assessor, 285, 311 may allow patentee to apply to amend specification, 311 order for, must be registered, 312 Scotch proceedings for, 312 in Ireland, 312 when patent revoked on ground of fraud, new patent may be granted to true inventor, 312 costs, 313 RIVAL APPLICATIONS FOB PATENT, 164-167 ROYAL ARMS, penalty on unauthorised assumption of, 316 INDEX 529 RULES, Board of Trade may make, 325, 331, 357 which are of same effect as if contained in the Act, 325, 358 but either House of Parliament may annul within limited time, 32G patents rules, 1890, 377 patent agents rules, 411. See PATENT AGENT international and colonial arrangements, 321, 373. See INTERNATIONAL CONVENTION law officers may make, 349 of law officers, 406 of judicial committee, 408 RUSSIA, patent laws of, 456 ST. HELENA, patent laws of, 493 SALE OF PATENT. See ASSIGNMENT SAN SALVADOR, patent laws of, 458 SCIENTIFIC INVESTIGATION, in cases requiring, issues of fact may be sent for trial before a referee, 285 SCIRE FACIAS, action of, abolished, 309 SCOTLAND, patent extends to, 172 as to action for infringement in, 295 transmission of specifications to, 326 legal proceedings in, 295, 312, 316, 327 revocation of patent in, to be by action of reduction, 312 although patentee in, petition for revocation can be presented in England, 312 order of Courts as to rectification of registers, 361 SEAL OF PATENT OFFICE, 170, 326 patent to be sealed within fifteen months from application, 170 except when delayed by appeal or by opposition, 170 or death of applicant within that period, 170 in which case twelve months from his death allowed, 170 but time extended by four months where time for leaving and accepting specification has been enlarged, 170 to be dated and sealed as of day of application, 171 more than one patent for same invention may be sealed, 171 sealing of official documentary evidence with, 326 SECOND PATENTS, 22, 85 SECRET PROCESS, course when infringement alleged to be, 286 user of, may render subsequent patent invalid, 34, 45 SIZE of documents, 378 SOOTH AUSTRALIA, patent laws of, -lii.'f SPAIN, patent laws of, 459 M M IM of. | tililished, 884, 818 an >> m to Edinburgh Mu warn of Science nri.i tied copies of, or extract* from, may be hit Hii'l will be evidence in the renpective Court*, 3517 printed copies of may be purchased, 897 not to be published onleM application accepted, 105 COMPLETE, 100 procedure as to, to be left with application. 101. S,-f Arn.ii ATIOX FOB P* or within nine months after its dat unless comptroller in of appli 104 if not left within due time, application deemed abandoned if applicant diet* before leaving, effect uncertain will U- referred to examiner, 102, 103 on whose report comptroller ma; require amendment, 10.' subject to appeal to law olliccr, 103 his report not to be open to public inspection. 105 unless accepted within twelve months of application (save in case of appeal), application to become void, 104 but comptroller may extend time, 104 form of application for, 405 acceptance of to be advertised and notice given to applicant. IM and application and specifications then to be open to public, 104 and applicant then to have certain rights, 104 form of, 397 must commence with title, 102. See TITLE must end with statement of invention claimed, 102. Sft below must be accompanied by draw in^s if r- intKt particularly describe and ascertain nature of in\> ntii.n, and in \\liut manner to be performei which invention must be substantially same aa that dew in provisional specification, I' 1 "- >n of. to provisional specification, 107 may drop some features > : ,il specification, 107 within certain limit-. must not materially add to, or deviate from, invention in pro nal specificatioi: but developments within its scope allowed, 108, 109 if invented since, 1 11 provisional specification may not be read to supply defect in, 1 1 - .tration of, rules to be observed in, 1 1 -. 388 security of patentee's privileges lar. is on shape of, 100 imrmi<>n as described in, mu.-t fall within title, 111 good faith must be observed, and full disclosure of invention made, 112 definition of invention to be accurate, that reader may understand of what it consists, 11'-' when patent is for improvements on earlier patent, they must be clearly distinguished, 113 if invention is partly communicated from abroad, this should be distinguished, 113 where invention imported, if specification in fact insufficient, it i - no an swer that patentee has stated all that was communicated to him from abroad, 1 1 I INDEX 531 SPECIFICATION, COMPLETE-- continued but if sufficient, it is no objection that foreign inventor pos- sessed information not set forth, 114 must fully describe the means of carrying the invention into effect, 114 description must not be vague and general, 117 must precisely describe all materials and ingredients, 118 must describe the best method of operating, 121 must communicate the latest information, 110, 123 need not set forth every application, 125 must be intelligible to workmen of ordinary skill, 125 combinations, 131 must point out the novelty otherwise than by general descrip- tion, 131 limits of this rule, 132 all parts old only combination should be claimed, 143 ambiguity to be eschewed, 135 must not set forth two methods when only one is effective, 136, 148 must not contain misdirections or misrepresentations, 137 technical and scientific terms, 139 simple mistakes, 139 must end with distinct statement of invention claimed, 140. See belmv, CLAIMS IN this requirement only directory, 141 claims in, 140 large number of, dangerous, 141 everything not claimed is impliedly disclaimed, 141 ought to show clearly what is claimed, 142 but not intended to aid the description, 143 if all the parts old, only combination should be claimed, 143 new parts and minor combinations must be expressly claimed, 145 must not cover too much, 145 vague, speculative claims to be avoided, 149 drawings in, 106. See DRAWINGS interpretation of, 152. See CONSTRUCTION amendment of, 178. See AMENDMENT OF SPECIFICATION SPECIFICATION, PROVISIONAL, 94 to accompany application for patent unless complete specification does, 94 must describe nature of invention, 94 must be accompanied by drawings if required, 94 must begin with title, 94 ought not to comprise more than one invention, 94, 96 if it does, may be amended, 94 and separate patents had for other inventions, 94 examiner to report on, 95 comptroller may require amendment of, 95 but applicant may appeal to law officer, 95 acceptance of, how notified, 95 after acceptance of, invention may be used and published without pre- judice to patent, 99 general description of invention enough for, 97, 98 office of, 97, 98 may be abandoned and another lodged, 98 its relation to complete specification, 107 form of, 396 cases on, 96-98 ST. HELENA, patent laws of, 493 4f * 47 Vic KM L8M Ml ,870 51 A 52 Vic. c. 50 (1888 8num SETTLEMFXTH, patent laws of, 494 SUBJECT-MATTER OF LKTTEM PATTST. 5-80. must be tome ' manner of new manufacture*,' 6 vide interpretation of these words. :, bare principles are not, 6. 8ft PvnciruM genera! principles applied to a manufacture for the first time, 10 manufacture of old substance by new process, 12. 14 new contrivances applied to new objects or purposes. 1 1 new contrivance to effect old object, 14 known purpose effected by new materials, 15 direct instead of indirect method of making known prodor new combination of known parts or old processes pro result, 15. 70 or an old result more economically or more perfectly, 15, 70 new shape of old elements of old combination invoking physical law otherwise left on one side, 16, 70, 71 new mode of applying a known thing where novelty in application, 16. 'M'lvW, AlTLlCATIOXa chemical processes, sometimes in combination with mechanical con- trivances, ID production as a merchantable commodity of substance already produced in laboratories as a chemical curiosity, 20 applications, 76 application of known machines to analogous purpose, 77, 80 unless application is out of the track of the former use and requires invention, 82 application of known article to produce another known article, 78 or of new material to produce known article, 78 rule as to applications docs not necessarily apply to chemical oases, 84 of better mode of using known machines not sufficient. 7-J. 71 nor mere combination of two old apparatus, means of combination being obvious. 7 > nor mere substitution of one material for another in a known article, 76, 81 improvements on invention subject of existing patent, 85 - patent laws of, 462 patent laws of, 463 patent laws of, 495 TKKM or PATENT, 171 THBKATS or LEGAL PKOCEK may be restrained if action not brought, 303. Sec ACTIOX TO KK.-,TRAJV THREATS INDEX 533 TITLE OF PATENT, 90 specification (provisional and complete) must begin with, 89 to be reported on by examiners, 89 what it is, 90 Comptroller may require amendment of, 89 directions as to and illustrations of, 90 invention and specification must fall within, 90, 111 title and specification read together, 93 cases on 91-93 TRANSVAAL. patent laws of, 464 TKINIDAD, patent laws of, 496 TKUE AND FIRST INVENTOR. See INVENTOR cases on, 29-33 TRUSTS, not to be entered in registers, 229 TRUSTEE, where rival inventors, patent may be vested in, 164 rights of parties where patent vested in, 177 of bankrupt patentee, patent vests in, 218 and he may sue for infringements, 218 rights of assignee from, 219 TUNIS, patent laws of, 466 TURKEY, patent laws of, 467 UNITED STATES OF AMERICA, patent laws of, 421 URUGUAY, patent laws of, 468 USER, PRIOR. See PUBLICATION what will avoid patent, 34-36 prior to application by inventor, 34-36 in colony does not affect patent subsequently obtained for same inven- tion in United Kingdom, 44 meaning of ' public use,' 38 user in public avoids patent, 34, 36, 37 manufacture and sale of article, 35, 40, 59 even if to be sent abroad, 39 public exhibition of article, 38 sale of articles made abroad, 44 actual sale not necessary if article in public use, 42, 44 need not be continuous up to date of patent to avoid patent, 45 mere experimental, does not avoid patent, 36, 46-49 / nor prior imperfect machine for same object, 49, 50 secret user by inventor, 43-45 confidential communications, 60 under provisional protection obtained in fraud of true inventor, 45 UTILITY, necessary incident of patentable invention, 21 ' does not mean abstract utility,' 22 patent for useless invention void, 21 HMB ntinufd also if a material part U osele* but UM!MIIM of part will not vitiate the patent onleM that |rt i !. . i . . . i a question for a jury, 23 slightest amount of, is sufficient, 28, 96 most be in invention, not merely in the thing produced. 18 improvement in trade, in consequence of invention, good tart, 24 public use of invention, a test . patent for an invention not commercially useful is not naeamrily bad. quantity of, not important, 23 invention not meeting with public acceptance U ton* preemption against its, 25 most be judged by reference to state of things at date of patent, 25 that invention is not worked by inventor U primd-facic evidence of want of. 26 cases on, 21-26 ITT or LETTERS Pmtsrr, requisites to, 4 certificate in action for infringement that the, came in question, 800 \ . } ./: '} I. v, patent laws of VCSSBXR, FORE i use of invention in, in British water VICTORIA, patent laws of WAR, SECRETARY FOR, empowered to purchase inventions for munitions of war, 175, 351 KS ACSTRAIJA, patent laws of, 500 \v ma v suggestions and assistance of, will not invalidate a patent, 38 roTTiawooii). 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