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 ,/s;C^i^^»'^^V:=fe«^^«^//^'^'^*^^^ 
 
 LETTERS PATENT FOR 
 INVENTIONS.
 
 THE 
 
 LAW AND PRACTICE 
 
 RELATING TO 
 
 LETTERS PATENT FOR 
 INVENTIONS. 
 
 WITH 
 
 EXAMPLES OF SPECIFICATIONS 
 
 AND A FEW PRECEDENTS 
 FOR THE TRANSFER OF INTERESTS IN LETTERS PATENT. 
 
 THOMAS TERRELL, F.C.S., 
 
 BARRISTER-AT-LAW. 
 
 SECOND EDITION. 
 
 LONDON: 
 
 H. SWEET AND SONS, 3, CHANCERY LANE, 
 
 1889.
 
 T" 
 
 LONDON : 
 BRADBURY, AGNEW, & CO., PRINTERS, WHITEFRIARS.
 
 
 PREFACE. 
 
 In this edition I have cut out a great deal of matter 
 which was strictly speaking irrelevant to the subject of 
 Patent Law, and I have brought the subject up to date 
 by including recent decisions, and the Acts of 1885, 
 1886, and 1888. I have also added a few examples of 
 specifications which have successfully passed the ordeal 
 of litigation, and which may be useful in considering 
 the cases in which l^they were contested, and in drafting. 
 The Precedents for the Transfer of interests in letters 
 patent are limited to the most elementary instances — 
 the valuable work of Mr. Morris on Patent Convey- 
 ancing making it unnecessary to treat the subject at 
 greater length. 
 
 The great increase in commercial importance which 
 was given to Patents by the Act of 1883, has opened 
 the eyes of the legislature to the magnitude of the 
 interests which are entrusted to the profession of Patent 
 Agents, and to the imperative necessity in the interests 
 of the public of ensuring competence and integrity in 
 that profession. It is difficult to conceive any human 
 pursuit which requires greater qualifications than that of 
 
 ^iD 
 
 783143
 
 VI PREFACE. 
 
 a Patent Agent — his legal acquirements must be con- 
 siderable, be must be an expert in mechanics, chemistry, 
 and the whole range of aj^plied science, and he must be 
 capable of applying this varied knowledge to the pre- 
 paration of clear and precise specifications. One day he 
 is engaged on the details of a locomotive, the next on a 
 complex chemical process, and the third on a specifica- 
 tion for electrical transformers. It is not too much to 
 say that the legislature has not stepped in one day too 
 soon in requiring that the profession of a Patent Agent 
 should be placed on a par with the other learned pro- 
 fessions, and that the public should be to some extent 
 assured of reasonable competence in the men that they 
 employ. In future Patent Agents will be registered 
 or enrolled much in the same way that Barristers or 
 Solicitors are, and thus not only will an opportunity be 
 given to the governing body of testing the knowledge 
 of the members which they admit, but a control will 
 1)6 exercised so as to ensure the hioh tone whicl] should 
 
 o 
 
 prevail in the profession. 
 
 Since the issue of the first edition of this work, 
 altliough some changes have been introduced in the 
 Practice, but little alteration has been made in the law 
 <;f Letters Patent. S'uJddl v. VicJccrs may be pointed 
 to as one of tlie most ini})ortant cases, weakening as it 
 docs greatly the importance wliidi lias always been 
 attached to conformity between the provisional and 
 complete specifications, and further, limiting the eflcct of
 
 PREFACE. Vll 
 
 section 5 of the Act of 1883, requiring a claim to the 
 complete specification. 
 
 The personnel of Patent lawyers has l)een somewhat 
 changed, though fortunately no very familiar faces have 
 been removed by death. 
 
 As Attorney-General, Sir Eichard Webster has been in 
 a position to use his great experience in Patent Law in 
 settling upon a safe and reasonable basis the law and 
 practice before the comptroller and the law officers. 
 Mr. Fletcher Moulton has taken, his place as a leader in 
 that branch of law where the attainments of a senior 
 wrangler are of pre-eminent value. Sir Frederick 
 Bramwell, now raised to the dignity of a baronet, 
 Mr. Imray and Dr. Hopkinson still delight us with 
 the ingenious theories l)y which they show with perfect 
 impartiality that either or both sides in a patent action 
 may be absolutely right. The great Author of " The 
 Correlation of Forces " has retired from the bench, re- 
 gretted greatly by his compeers, and by those members 
 of the junior bar Avho had the honour to appear before 
 him, and who will long remember the kindly considera- 
 tion which they always received at his hands. 
 
 THOMAS TERRELL. 
 
 New Coitkt, Temple. 
 8^/t January, 1889.
 
 CONTENTS. 
 
 PAGE 
 
 PREFACE V 
 
 TABLE OF CASES xv 
 
 THE LAW OF PATENTS. 
 
 INTRODUCTION 1 
 
 CHAPTER I. 
 
 The Patentee 5 
 
 (First Inventor ; First Importer.) 
 
 CHAPTER II. 
 
 The Consideration 10 
 
 (The Actual Inventor ; the First Introducer.) 
 
 CHAPTER III. 
 
 The Consideration (continued) 22 
 
 (A New and Useful Invention.) 
 
 CHAPTER IV. 
 
 The Consideration {continued) 56 
 
 (The Specification ; the Title ; the Provisional Specifi- 
 cations ; the Complete Specification ; the Claims.)
 
 X CONTENTS. 
 
 CHAPTEE V. 
 
 PAGK 
 
 Amendment of Specifications 102 
 
 (Memorandum of Alteration ; Disclaimer.) 
 
 CHAPTER VI. 
 
 Opposition to the Grant 116 
 
 CHAPTER VII. 
 
 The Grant 123 
 
 (The Address ; the Kecitals ; the Grant ; the Prohibi- 
 tion; the Conditions; the Construction of the Grant.) 
 
 CHAPTER VIII. 
 
 Tub Devolution of a Patent 134 
 
 (By Operation of Law ; by Assignments ; by the Grant 
 of Licences.) 
 
 CHAPTER IX. 
 
 Extension of Term of Patent 145 
 
 (■fui'isdiction of the Privy Council.) 
 
 CHAPTER X. 
 
 Confirmation 162 
 
 CHAPTER XI. 
 
 Remedies of the Patentee and ok the Puueic 163 
 
 (Action for Infringement; Parties.)
 
 CONTENTS. xi 
 
 CHAPTER XII. 
 
 l-AGE 
 
 The Cause of Action 167 
 
 (Infringement ; by Making ; by Using ; by Selling.) 
 
 CHAPTER XIII. 
 
 The Remedy 193 
 
 (Injunction ; Damages ; Account of Sales and Profits.) 
 
 CHAPTER XIV. 
 
 Revocation 208 
 
 CHAPTER XV. 
 
 International and Colonial Arrangements 213 
 
 PRACTICE. 
 
 » — 
 
 CHAPTER I. 
 
 Action for Infringement 215 
 
 CHAPTER II. 
 
 Parties 216 
 
 CHAPTER III. 
 
 Interlocutory Injunction 218 
 
 CHAPTER rV. 
 
 Statement of Claim 221
 
 XU CONTENTS. 
 
 CHAPTER V. 
 
 PAGE 
 
 Particulars of Breaches 222 
 
 CHAPTER VI. 
 
 Statesient of Defence 227 
 
 CHAPTER VII. 
 
 Particulars of Objections 229 
 
 CHAPTER YIII. 
 
 Interrogatories 239 
 
 CHAPTER IX. 
 
 Inspection 246 
 
 CHAPTER X. 
 The Trim 251 
 
 CHAPTER XL 
 
 Questions for Court and Jury 264 
 
 CHAPTER XII. 
 
 Certificates 269 
 
 CHAPTER XIII. 
 Practice on Petition for Revocation 277 
 
 CHAPTER XIV. 
 Practice on Appeai 280 
 
 CllAl'TER XV. 
 
 Action von Injunction to PiKstuain Tiiiucats 282
 
 CONTENTS. Xlll 
 
 PAGE 
 
 FORMS OF PRACTICAL PROCEDURE 287 
 
 EXAMPLES OF SPECIFICATIONS AND CLAIMS 307 
 
 Provisional and Complete Specification to a Patent for 
 A New Mechanical Appliance and Mode of Operating. — 
 A very general Claim. 1885. No. 6205 .307 
 
 Complete Specification. — Application of an Old Article in 
 aNew Manner. 1876. No. 421G 311 
 
 Complete Specification for a Chemical Invention. — Four 
 Processes.— Two Claims. 1878. No. 786 313 
 
 Complete Specification. — A new Principle, coupled with the 
 method of carrying the Principle into effect — Supported by 
 a Combination Claim. 1882. No, 3660 319 
 
 PRECEDENTS FOR THE TRANSFER OF INTERESTS IN 
 LETTERS PATENT 322 
 
 Sale of Patent Rights to a Proposed Company 322 
 
 1 . Preliminary Agreement with Promoter 322 
 
 2. Agreement to Assign to the Company 323 
 
 Agreement to Obtain and Assign Letters Patent for an 
 Invention in Consideration of a Sum of Money and 
 Delivery of certain number of the Patent Articles... 324 
 
 Agreement between Joint Owners of a Patent for Parti- 
 tion 327 
 
 Agreement for Working and Selling an Invention, in 
 
 RESPECT of which AN APPLICATION FOR A PATENT HAS 
 BEEN MADE, FOR THE JoiNT BENEFIT OP THE InVENTOR AND 
 
 ANOTHER Person 329 
 
 Assignment of a Patent 334 
 
 Non-exclusive Licence to use Patented Invention in Con- 
 sideration of an Annual Pay'ment and the Purchase 
 of the Patented Articles from the Inventor 344 
 
 Exclusive Licence for a District 347 
 
 Mortgage of a Patent 349
 
 XIV CONTENTS. 
 
 APPENDIX. 
 
 PAGE 
 
 Patents, Designs and Trade Marks Act, 1 883 353 
 
 Patents, &c., Act, 1885 378 
 
 Patents, &c., Act, 1886 379 
 
 Patents, &c., Act, 1888 380 
 
 Patents Rules, 1883 383 
 
 Eules Regulating Appeals to the Law Officers 394 
 
 First Schedule, List of Fees, &c 396 
 
 Second Schedule, Forms, &g 398 
 
 Patent Rules, 1885 407 
 
 First Schedule, Fees, &c 408 
 
 Second Schedule, Forms, Arc 409 
 
 Patent Rl^les, 1886 413 
 
 Rules of the Privy Council 415 
 
 INDEX 417
 
 TABLE OF CASES. 
 
 A. 
 
 PAGE 
 
 Adair's Patent, In re (1881), L. R. 6 App. Cas, 176 151, 155 
 
 Adair V. Young (1879), L. R. 12 Ch. D. 13 188, 200 
 
 Adams v. Ni)i-th British Rail. Co. (1873), 29 L. T. R. N. S. 367 217 
 Adamson's Patent, In re (1856), 6 De G. M. & G. 420 ; 25 L. J. 
 
 Ch. 456; 4 W. R. 473 117 
 
 Alcock V. Cook (1829), 5 Bing. 340 126 
 
 Allan's Patent, In re (1867), L. R. 1 P. C. 507; 4 Moo. P. C. 
 
 C. N. S. 443 150 
 
 Allen's Patent, 2 Griffin P. C. 3 107 
 
 Aliens*. Rawson (1845), 1 C. B. 551 (at p. 574) 14, 33 
 
 Ames V. Kelsey, 22 L. J. Q. B. 84 293 
 
 Anderton's Patent, 2 Griffin P. C. 25 395 
 
 Anglo-American Brush Light Co. v. Crompton, 34 Ch. D. 152; 
 
 56 L. J. Ch. 167 238 
 
 Arkwright v. Nightingale (1785), 1 Web. P. C. 60 (at p. 61); 
 
 Dav. P. C. 37 81 
 
 Arnold's Patent, 2 Griffin P. C. 5 106 
 
 Aube's Patent, In re (1854), 9 Moo. P. C. C. 43 158 
 
 Aveling v. Maclaren (1881), L. R. 17 Ch. D. 139, n 234 
 
 Avery's Patent, Inre, 36 Ch. D. 307 8, 211 
 
 Axmann v. Lund (1874), 22 AV. R. 789 ; L. R. 18 Eq. 330; 43 
 
 L. J. Ch. 655; 3 L. T. Rep. N. S. 119 140 
 
 B. 
 
 Bacon v. Jones (1839), 4 My. k Cr. 433 201 
 
 V. Spottiswood (1839), 1 Beav. 382 207 
 
 Badische Aniline Co. v. Levenstein, L. R. 24 Ch. D. 156 81, 82 
 
 L. R. 29 Ch. D. 366 83, 272 
 
 L. R. 12 App. Cas. 723 84 
 
 Bailey's Patent, Griffin P. C. 254, 269, 270 118, 150, 395 
 
 Bailey?;. Roberton (1878), L. R. 3 App. Cas. 1055; 38 L. T. 
 
 Rep. N. S. 854; 27 W. R. 477 68, 179 
 
 Bainbridge v. Wigley (1810), Higgins' Digest, 155 ; Par. Rep. 
 
 Pat. 1829, p. 197; 18 Rep. Arts. 127 ; 1 Carp. P. C. 270; 
 
 Higgins' Digest, 340 63, 127
 
 X\i TABLE OF CASES. 
 
 PAGE 
 
 Baird v Moule's Patent Earth Closet Co. (1881), L. R. 17 Ch. 
 
 D. 139, n 234, 299 
 
 Bamlett v. Pickslej, Griffin P. C. 42 31 
 
 Bancroft v. Warden (1873), Roniillj's Notes to Cases, 103 170 
 
 Barber v. Walduck (1823), 1 Carp. P. C. 438 ; 1 C. & P. 567, 
 reported under name of Barber v. Shaw ; Holroyd Pat. 60 ; 
 
 1 Web. P. C. 126 11 
 
 Barker v. Grace (1847), 1 Ex. 339 ; 17 L. J. Ex. 122 79 
 
 Bai-low V. Baylis, Griffin P. C. 44 43, 1 7 I 
 
 Ban-ett v. Ban-ett Screw Stopper Co., Limited, 1 P. 0. Pi. 9 284 
 
 V. Yeraon (1876), 4.5 L. T. Eep. X. S. 755 ; 25 W. R. 343 179 
 
 Batemant'. Grav (1853), Mac. P. C. 93 181 
 
 Bate's Patent, In re (1836), 1 Web. P. C. 739, n 153 
 
 Bates & Redgate, £x 2xirte (1869), L. R. 4 Ch. 577 ; 38 L. J. 
 
 Ch. 501; 17 W. R. 900; 21 L. T. Rep. N. S. 410 16, 17 
 
 Batley v. Kynock (1874), L. R. 19 Eq. 91 (at p. 231)... 222, 248, 293 
 Beard v. Egerton (1846), 3 C. B. 97 ; 10 Jnr. 643 ; 15 L. J. C. 
 
 P. 270 •... 20 
 
 (1849), 19 L. J. C. P. 36 (at p. 38); M. Dis. 
 
 75; 8 C. B. 165; 13 Jur. 1004 74, 267 
 
 Beck r. Justice, 2 Griffin P. C. 10 106 
 
 Bentley v. Keighlev (1844), 7 M. k G. 652 ; 1 D. ct L. 944 ; 8 
 
 Scott, X. R. 372 ; 13 L. J. C. P. 167 2.30, 232 
 
 Bessemau v. Wright (1858), 6 W. R. 719 138 
 
 Betts' Patents, hi re (1862), 1 Moo. P. C. C. X. S. 49 ; 9 Jur. 
 X S. ; 137 ; 11 W. R. 221 ; 7 L. T. Rep. X. S. 577 ; 1 X. R. 
 
 137 150, 152, 15.5, 158 
 
 Betts V. De Yitre (1864), 11 L. T. Rep. X. S. 533; 11 Jur. X. 
 
 S. 9; 5 X. R. 165; 34 L. J. Ch. 289 204, 
 
 215, 276 
 
 . Y.-C. W. (1865), A. 119 202 
 
 (1865), 12 L. T. Rep. X. S. 51 ; 34 L. J. Ch. 
 
 291 202 
 
 (1868), L. R. 3 Ch. 429 ; 37 L. J. Ch. 325 ; 
 
 18 L. T. Rep. N. S. 165 ; 16 W. R. 529 ... 43, 
 
 166, 217 
 
 (1873), L. R. 6 H. L. 319 (at p. 321); 21 
 
 W. R. 705 203,215 
 
 V. GaUais (1870), L. R. 10 Eq. 392 ; 18 W. R. 945 ; 22 
 
 L. T. R. N. S. 841 206 
 
 r. Mcuzies(1857), 3 Jur. X. S. 357 42, 195 
 
 (1859), 1 Ell. ct Ell. 990; 28 L. J. Q. B. 361 ; 
 
 5 Jur. N. S. 1164 37 
 
 (1862), 10 H. L. Cas. 1 17 ; 31 E. J. Q. B. 233 ; 
 
 9 Jur. X. S. 29; 11 W. R. 1 ; 7 E. T. 
 Rep. X. S. 110 42, 4.3, 77, 80 
 
 V. Neilson 
 
 (1868), E. R. 3 Ch. 429 ; 37 E. J. Ch. 321 ; 
 is E. 'I'. Rci). X. S. 159; 16 W. R. 521 ... 40, 
 
 43, 88 
 (1865), 6 X. R. 221 ; 12 L. T. Rep. X. S. 
 489; 13 W. R. 804 183, 217
 
 TABLE OP CASES. XVll 
 
 VAOE 
 
 Betts V. Neilsou (1871), L. R. 5 H. L. 1 ; 40 L. J. Ch. 317 ; 19 
 
 W. R. 1121 256 
 
 V. Wilmott (1871), L. R. 6 Ch. 239 ; 19 W. R. 369 ; 25 
 
 L. T. Rep. N. S. 188 142, 170, 191, 192, 200, 220, 258 
 
 Bewley v. Hancock (1856), 6 De G. M. & G. 391 (at p. 402) ; 2 
 
 Jur. N. S. 289; 4 W. R. 334 26 
 
 Bickford v. Skewes (1837), 1 Web. P. C. 21 1 196 
 
 (1841), 1 Q. B. 938 ; 1 G. 1- D. 736 ; 6 Jur. 
 
 167 ; 10 L. J. Q. B. 302 ; 1 ^Yeb. P. C. 214 (at p. 218) 74, 
 
 94, 267 
 
 Binney v. Feldtman, Griffin P. C. 50 75 
 
 Birch V. Mather, 22 Ch. App. 629 299 
 
 Bircot's case (15 Eliz.), 3 Inst. 184; 1 Web. P. C. 31, n 27 
 
 Blake's Patent, In re (1873), L. R. 4 P. C. 535 ; 9 Moo. P. C. 
 
 C. N. S. 373 158 
 
 Bloxham v. Elsee (1825), 1 C. k P. 558; Ry. c^^ Moo. 187; 1 
 
 Carp. P. C. 434 55,267 
 
 (1827), 1 Web. P. C. 132, n. ; 6 B. & C. 169 ; 
 
 9 Dow. eb Ry. 215 ; 1 Carp. P. C. 440 11, 60, 135, 165, 216 
 
 Bodmer's Patent, hi re (1853), 1 Moo. P. C. C. 469; 8 Moo. P. 
 
 C. C. 282; 6 M. D. 114 158 
 
 Booth V. Kennard (1856), 1 Hurl. & Norm. 527 ; 26 L. J. Ex. 
 23; 3 Jur. N. S. 21; 28 L. T. Rep. 160; 
 
 5 W. R. 85 25 
 
 (1857), 2 Hurl. & Norm. 84; 26 L. J. Ex. 
 
 305 ; 5 W. R. 607; 29 L. T. Rep. 163 80 
 
 Boulton V. Bull (1795), 2 H. Blac. 463 (at p. 491) ; Dav. P. C. 
 
 162; 1 Carp. P. C. 117 19, 23, 40, 53, 87 
 
 V. Watt (1795), 2 H. Bl. 468 26 
 
 V. Key worth (1857), 7 Ell & Bl. 725 ; 3 Jim N. S. 817; 
 
 5 W. R. 686; 29 L. T. Rep. 194 33 
 
 Bovill^. Crate (1865), L R. 1 Eq. 388 202 
 
 V. Smith (1866), L. R. 2 Eq. 459 242 
 
 V. Goodier (1866), L. R. 2 Eq. 195; 35 Beav. 427; 35 
 
 L. J. Ch. 432 263 
 
 V. Hadley (1864), 17 C. B. N. S. 435 ; 10 L. T. Rep. N. S. 
 
 650; 4 N. R. 464 270 
 
 V. Moore (1816), Dav. P. C. 361, 400; 2 Coop. C. P. 5C:>, n. 92, 
 
 95, 179, 246 
 
 . V. Pimm (1856), 11 Ex. 740 27, 264 
 
 Bower V. Hodges (1853), 22 L. J. C. P. 194 (at p. 198); 13 C. B. 
 
 765; 17 Jur. 1057; 1 Ch. R. 807 142 
 
 Bowman v. Taylor (1834), 2 A. & E. 278 ; 4 N. & M. 264 137 
 
 Bramah v. Hardcastle (1789), Holroyd, 81; 1 Carp. P. C. 168; 
 
 1 Web. P. C. 44, n 51 
 
 Branden's Patent, L. R. 9 App. Cas. 589; 53 L. J. P. C. 84 145 
 
 Bray v. Gardner, 34 Ch. D. 668 Ill 
 
 Breretou v. Richardson, 1 P. 0. R. 166 171 
 
 Bridson's Patent, Lire (1852), 7 Moo. P. C. C. 499 161 
 
 ^. Benecke, 12 Beav. 1 ; 34 Lond. Jour. 295 201, 219 
 
 V. M'Alpine (1845), 8 Beav. 229; L. R. 4 Ch. 289. ..196, 219 
 
 T. ^
 
 XVIU TABLE OF CASES. 
 
 I'AGE 
 
 Brook V. Aston (1857), 8 El. & Bl. 478 (at p. 485) ; 4 Jur. X. S. 
 
 279; 27 L. J. Q. B. 145; 6 W. R. 42 30, 31 
 
 Brooks V. Ripley (1831), 2 Loud. Jour. C. S. 35 ; Web. P. C. 102 258 
 
 Browu's Pateut, 2 Griffin P. C. 1 104 
 
 Brunton v. Hawkes (1821), 4 B. & Aid. 541 (at p. 550) ; 1 Carp. 
 
 P. C. 405 33, 51, 61, 62, 126 
 
 Buluois V. Mackenzie (1837), 4 Bing. N. C. 132 231 
 
 Burney v. United Telephone Co., L. R. 28 Ch. D. 394 285 
 
 Bush V. Fox (1852), Macrory's P. C. 152 (at p. 164); 23 L. J. 
 
 Ex. 257 30 
 
 - (1856), 5 H. L. Cas. 707; 2 Jur. N. S. 1029; 25 
 
 L. J. Ex. 251; Macrory's P. C. 178 30, 80 
 
 Butler s case (about 1680), Vent. 344 210 
 
 C. 
 
 Caldwell v. Vanvlissiugen (1851), 9 Ha. 415 ; 16 Jui*. 115 ; 21 
 
 L. J. Ch. 97 166, 171, 187, 192 
 
 Campion v. Benyon (1821), 6 B. Mo. 71 ; 3 B. & B. 5 60 
 
 Canham v. Jones (1813), 2 Ves. & B. 218 129 
 
 Cannington v. Xuttall (1871), L. R. 5 H. L. 205 ; 40 L. J. Ch. 
 
 739 34, 177 
 
 Cardwell's Patent, In re (1856), 10 Moo. P. C. C. 488 (at p. 490) 149 
 Carpenter v. Smith (1841), 1 Web. P. C. 530 (at p. 538)... 33, 37, 50 
 
 . V. Walker (1842), 1 Web. P. C. 268, n 233 
 
 Carr's Patent, In re (1873), L. R. 4 P. C. 539 153 
 
 Challender v. Royle, 36 Ch. D. 425 282, 283, 284, 285 
 
 Chambers v. Crichley (1864), 33 Beav. 374 140 
 
 Chandler's Pateut, Griffin P. C. 270, 271 388, 394, 395 
 
 Chanter v. Dewhurst (1844), 12 M. k W. 823; 13 L. J. Ex. 198 
 
 135, 142 
 
 V. Johnson (1845), 14 M. c^- W. 408 (at p. 411) ; 14 L. J. 
 
 Ex. 289 136 
 
 V. Lease (1838), 1 Web. 295 ; 4 M. & W. 295 ; 1 H. & 
 
 H. 224 138, 142 
 
 Cheeseborough's Patent, Griffin P. C. 303 108 
 
 Chollett V. Hoffman (1857), 7 Ell. k B. 686 ; 26 L. J. Q. B. 249 ; 
 
 3 Jur. N. S. 935 ; 5 W. R. 573 ; 29 L. T. Rep. 158 144 
 
 Church's Patent, Griffin P. C. 256 145 
 
 Clarke's Patent, In re (1870), 7 Moo. P. C. C. N. S. 255; L. R. 
 
 3 P. C. 421 155 
 
 Clarke v. Adie (1875), L. it. 10 (Jh. App. Cas. 667; 45 L. J. Ch.228 173 
 
 (Hrst appeal), 33 L. T. Rep. N. S. 295 173 
 
 (1^77), L. ]{. 2 App. Cas. 315 ; 46 L. J. Ch. 585 ; 
 
 36 L. T. Rep. N. S. 923 ; 26 W. R. 45 ... 80, 101, 
 
 176, 257 
 
 (second appeal) (1876), L. R. 3 CIi. D. 134 (at 
 
 p. 144); 24 W. R. 1007 138 
 
 (1877), L. R. 2 App. Cas. 423 : JC L. J. Ch. 598 ; 
 
 37 I.. 'I'. I!.'!'. N. S. 1 ; 46 W. 1{. 47 76, 138
 
 TABLE OF CASES. ' xix 
 
 PAGE 
 
 Clarke v. Ferguson (1859), 1 GifF. 184 219 
 
 Clothworkers of Ipswich case (1615), Godbolt R. 252 (at p. 253) ; 
 
 1 Roll. R. 4; 1 Web. P. C. 6 6, 18 
 
 Cochrane's Patent, Griffin P. C. 304 395 
 
 Cochrane v. Smethurst (1816), Davy's P. C. 354 j 1 Stark. 205 . 60 
 
 Cocking's Patent, 2 P. 0. R. 151 145 
 
 Codd's Patent, Griffin P. C. 307 107—110, 390 
 
 Codd V. Bratby, Griffin P. C. 56 110 
 
 Coles V. Baylis, 3 P. 0. R. 178 71 
 
 Collard v. Allison (1839), 4 My. & Cr. 433 219 
 
 Cookv. Pearce(1844),8Q.B.1054; 8Jur.499; 13 L. J.Q.B. 189 61 
 
 Cooper and Ford's Patent, Griffin P. C. 275, 276 388, 394 
 
 Cornish v. Keene (1835), 1 Web. P. C. 501 (at p. 507) ; 2 Carp. 
 
 P. C. 314 12, 13, 38, 51, 55, 267 
 
 (1837), 2 Ring. N. C. 570; 4 Scott, 337; 2 
 
 Hodges, 281 ; 6 L. J. C. P. 225 ; 1 Web. P. C. 513 ; 2 Carp, 
 
 P. C. 371 ; 6 Rep. Arts. 4th Series, 102 37, 267 
 
 Crane v. Price (1842), 1 Web. P. C. 393 ; 4 Y. & G. 580 ; 5 Scott, 
 N. R. 338 ; 12 L. J. C. P. 81 ; 2 Carp. P. C. 669 ; 18 Rep. 
 
 Arts. 4th Series, 102 33, 54 
 
 Croll V. Edge (1850), 9 C. B. 479 ; 14 Jur. 553 ; 19 L. J. C. P. 
 
 261; M. Dig. 194 63, 170 
 
 Crompton v. Anglo-American Brush Light Co., 35 Ch. D. 283 ; 
 
 56 L. J. Ch. 802 238 
 
 . V. Ibbertson (1828), 1 Web. P. C. 83 ; Dan. & Lloyd, 
 
 33; 1 Carp. P. C. 460 94 
 
 Cropper v. Smith, Griffin P. C. (at p. 62) 75 
 
 L. R. 28 Ch. D. 148 109 
 
 L. R. 26 Ch. D. 700 136,280 
 
 L. R. 10 App. Cas. 249 137, n. 
 
 Crosskillv. Evory (1848), 10 L. T. R. 459 195 
 
 Crossly v. Beverley (1829), 9 B. & C. 62 ; 1 Web. P. C. 106, 112, 
 119 ; 3 C. & P. 513 ; Mo. & Mai. 283 ; 1 Russ. & 
 
 My. 166 72,84,92 
 
 V. Derby Gas Co. (1834), 4 L. J. Ch. 25 ; 1 Web. P. C. 
 
 119 202, 206 
 
 V. Dixon (1863), 10 H. L. Cas. 293 ; 9 Jur. N. S. 607 ; 
 
 11 W. R. 716 ; 8 L. T. Rep. N. S. 260 ; 1 N. R. 540 ; 
 
 32 L. J. Ch. 617 139,142 
 
 V. Potter (1853), Macrory, P. C. 240 63, 88 
 
 'y. Stewart (1863), 1 N. R. 426 239 
 
 V. Tomey (1876), L. R. 2 Ch. D. 533; 34 L. T. R. N. S. 476 240 
 
 Croysdale v. Fisher, 1 P. 0. R. 17 31, 37 
 
 Cummings' Patent, Griffin P. C. 277 1 18, 395 
 
 Curtis V. Piatt (1863), 3 Ch. D. 135, n. ; 19 Newt. Lond. Jour. 
 
 N. S. 44; 8 L. T. Rep. N. S. 657 32, 181 
 
 (1864), 11 L. T. Rep. N. S. 245 169 
 
 (1866), 35 L. J. Ch. 852; L. R. 1 H. L. 337 ... 168, 
 
 177, 179, 268 
 Cutler t'. Bower (1848), 11 Q. B. 973; 12 Ji;r. 721; 17 L. J. 
 
 Q. B. 217 139 
 
 b 2
 
 XX TABLE OF CASES. 
 
 D. 
 
 PAGE 
 
 Dangerfield v. Joues (1865), 13 L. T. Rep. X. S. 142 33 
 
 Dai-c-y V. AUiu (1602), 1 Web. P. C. (at p. 6) ; Noy R. 173 (at 
 
 p. 182) G, 18, 36, 52 
 
 Dart's Patents, Griffin P. C. 307 106 
 
 Davenport v. Goldberg (1865), 2 Hem. & M. 282; 5 X. R. 584 195 
 
 V. Jepson (1862), 1 X. R. 173, 307 195, 249 
 
 V. Richards (1860), 3 L. T. Rep. X. S. 503 216, 256 
 
 David & Wodlev's Patent, 2 Griffin P. C. 26 118 
 
 Daw V. Eley (1865), 2 H. & M. 725 242, 244 
 
 (1865), L. R. 1 Eq. .38 ; 13 L. T. R. X. S. 399; 14 
 
 W. R. 48 235 
 
 L. R. 1 Eq. 38 235 
 
 2 H. ct M. 725 242, 244 
 
 (1867), L. R. 3 Eq. 496 ; 36 L. J. Ch. 482 ; 15 L. T. 
 
 Rep. X. S. 559 202 
 
 De la Rue v. Dickenson (1857), 7 E. i B. 738; 3 Jur. X. S. 841 ; 
 
 5 W. R. 704 ; 29 L. T. R. 194 167, 267 
 
 Denlev v. Blore (1851), 38 Lond. Jour. 224 165, 166, 217, 276 
 
 Dent V. Turpin (1861), 2 J. & H. 139 164 
 
 Deriug's Patent, In re (1880), 13 Ch. D. 393 17 
 
 Derosne's Patent, /n re (1844), 2 Web. P. C. 1 : 4 Moo. P. C. C. 
 
 416 148, 151 
 
 Derosne v. Fairie (1835), 1 Web. P. C. 154 ; 1 Mo. 6z Rob. 457... 165 
 De Vitre v. Betts (1873), L. R. 6 H. L. 319 ; 21 W. R. 705... 203, 215 
 
 Dircks V. Mellor (1845), 26 Lond. Jour. 268 219 
 
 Dixon V. London Small Arms Co. (1875), L. R. 10 Q. B. 130; 
 L. R. 1 App. Cas. 632 ; 31 L. T. Rep. X'. S. 
 
 830; L. R. 1 Q. B. D. 384 132, 133, 185 
 
 (1876), L. R. 1 App. Cas. 632; 46 L. J. Q. B. 617; 
 
 35 L. T. R. X. S. 559; 25 W. R. 142 185 
 
 Dollond's Patent (1758), 1 Web. P. C. 43; 2 H. Bl. 469, 470, 
 
 487 ; Dav. P. C. 170, 171, 172, 199 ; 1 Carp. P. C. 28 11, 40 
 
 Downton's Patent, In re (1839), 1 Web. P. C. 565 161 
 
 Di-ake V. Muntz Metal Co., 3 P. 0. R. 43 249 
 
 Driffield, ic. Pure Linseed Cake Co. v. Waterloo Mills, ttc, Co., 
 
 31 Ch. D. 6.38 283 
 
 Dudgeon v. Thompson (1874), L. R. 3 App, Cas. 34 ; 22 W. R. 
 
 464 ; .30 L. T. Rep. X. S. 244 76, 114, 178, 219, 291 
 
 Duncan i Wilson's I'atent, 1 P. 0. R. 257 152 
 
 Dundon's Patent, Griffin P. C. 278 118 
 
 Dunnicliff v. Mallett (1859), 7 C. B. N. S. 209 ; 1 L. T. Rep. X. S. 
 
 514 ; 6 Jur. X. S. 252 ; 29 L. J. C. P. 70 ; 8 W. R. 260. ..163, 216 
 
 E. 
 
 Eadie's P.mknt, (Jrillin P. C. 274 .388 
 
 p:ast India Co. v. Kynaston (1820), 3 Bl. App. Cas. 153 247 
 
 V Sandys (172S), Skin. 225 123
 
 TABLE OF CASES. XXI 
 
 PAGE 
 
 Edgeberry v. Stevens (1691), 1 Web. P. C. 35 ; 2 Salk. 447 ; 
 
 Comb. 84 ; Dav. P. C. 36 ; 1 Carp. P. C. 35 7, 19, 52 
 
 Edison & Swan Electric Light Co. v. Woodhouse, 32 Ch. D. 520 70 
 
 Griffin P. C. 90, 95... 51, 72 
 
 Edison & Swan United Electric Light Co. v. Holland, L. R. 
 
 33 Ch. D. 497 227 
 
 Edison Telephone Co. v. India Rubber Co. (1881), L. R. 17 Ch. D. 
 
 137 234 
 
 Edmund's Patent, Griffin P. C. at p. 283 117 
 
 Ehrlich V. Ihlee, 56 L. T. N. S. 819 234 
 
 W. N. 3 March, 1888 55 
 
 Electric Telegraph Co. v. Nott (1847), 4 C. B. 462 ; 11 Jur. 590 ; 
 
 16 L. J. C. P. 174 ; 2 Coop. 41. ..200, 224 
 V. Brett (1851), 10 C. B. 838 j 20 L. J. 
 
 C. P. 123; 15 Jur. 579 163, 181, 216 
 
 Elliott V. Aston (1840), 1 Web. P. C. 222 267 
 
 Ellwood V. Christy (1864), 10 Jur. N. S. 1079 ; 17 C. B. N. S. 
 
 754 ; 34 L. J. C. P. 130 ; 13 W. R. 54 ; 11 L. T. Rep. N. S. 
 
 342; 5 N. R. 12 140 
 
 Elmslie v. Boursier (1869), L. R. 9 Eq. 217 ; 39 L. J. Ch. 328 ; 
 
 18 W. R. 665 190 
 
 Elsev V. Butler, Griffin P. C. 96 225 
 
 Erard's Patent, In re (1835), 1 Web. P. C. 557 (at p. 559) ; 
 
 5 Rep. Arts. N. S. 58 148 
 
 Evans & Otway's Patent, Griffin P. C. 279 1 18, 388 
 
 — — -y. Rees (1842), 2 Q. B. 334 165 
 
 Everitt's opposition to L'Oiseau's Patent, 2 Griffin P. C. 28 120 
 
 Patent, 2 Griffin P. C. 36 120 
 
 F. 
 
 Feather v. R. (1865), 6 B. & S. 257 ; 35 L. J. Q. B. 200; 12 
 
 L. T. N. S. 114 132, 185 
 
 Felton V. Greaves (1829), 3 C. & P. 611 56, 61, 127 
 
 Fiechter's Patent, Griffin P. C. 284 117 
 
 Finnigan v. James (1875), L. R. 19 Eq. 72 241 
 
 Fisher v. Dewick (1838), 1 Web. P. C. 267; 1 Web. P. C. 
 
 551, n 230, 231, 232, 233 
 
 Flower v. Lloyd (1876), W. N. 1876, 169, 230; 20 Sol. Journ. 
 
 1876, 860 224, 236, 247 
 
 (1877), W. N. 1877, 132; Johnson's P. M. 
 
 245 179, 294, 298 
 
 Forsyth v. Riviere (1819), 1 Web. P. C. 97 ; Chit. Prerog. Ca. 
 
 182; 1 Carp. P. C. 401 179 
 
 Fowlers. Gaul, Griffin P. C. 99 235 
 
 Fox V. Dellestable (1866), 15 W. R. 194 28 
 
 Foxwell V. Bostock (1864), 12 W. R. 723 ; 10 L. T. R. N. S. 
 
 144; 4 De G. J. & S. 298. ..33, 66, 99, 113, 173, 176, 301 
 V. Webster (1863), 3 N. R. 103 ; 4 De G. J. & S. 77 ; 
 
 9 L. T. N. S. 528; 12 W. R. 186; 10 Jur. N. S. 137 201
 
 XXU TABLE OF OASES. 
 
 I'AGE 
 
 Frearson v. Loe (1878), L. R. 9 Ch. D. 48 ; 27 W. R. 183 .. 51, 54, 
 
 184, 198, 202 
 Fuzee Vesta Co. v. Bryant & May, 34 Ch D. 458 Ill 
 
 G. 
 
 Galloway v. Bleaden (1839), 1 Web. P. C. 268, n. ; 1 Web. P. C. 
 
 521..... 51, 231, 232 
 
 Galloway's Patent, /« re (1843), 1 Web. P. C. 724; 7 Jur. 
 
 453 153, 156 
 
 Gamble v. Kurtz (1846), 3 C. B. 425 179 
 
 Gandy v. Reddaway, 2 P. 0. R. 49 97 
 
 Gardner v. Broadbent (1856), 2 Jur. N. S. 1041 ; 4 W. R. 767... 194, 
 
 195, 218, 220 
 
 Gare's Patent (In re), 26 Ch. D. 105 104, 115 
 
 Garthwaite's Patent, Griffin P. C. 284 1 18, 388 
 
 Gaulard v. Lindsey, W. N. Feb. 4th, 1888 1 1 1, 283 
 
 Germ Milling Co. v. Robinson, 55 L. J. Ch. 287 ; Griffin P. C. 
 
 103 247, 249, 292 
 
 Gibson V. Brand (1841), 1 Web. P. C. 627 50 
 
 (1842), 4 M. & G. 179 ; 4 Scott, N. R. 844 ; 
 
 1 Web. P. C. 631 ; 11 L. J. C. P. 177 26, 95, 166 
 
 Gillett V. Green (1841), 7 M. &■ W. 347 ; 9 Dowl. 219 : 1 Web. 
 
 P. C. 271] 10 L. J. Ex. 124 270 
 
 V. Wilby(1839), 9 C. & P. 334; 1 Web. P. C. 270 172 
 
 Glossop's Patent, Griffin P. C. 286 121 
 
 Goucher's Patent, In re (1865), 2 Moo. P. C. C. N. S. 532 161 
 
 Goucher v. Clayton, 34 L. J. Ch. 239 ; 11 Jur. N. S. 107 and 
 
 462 139 
 
 Goulard & Gibbs' Patent, 34 Ch. D. 396 ; 56 L. J. Ch. 606 278 
 
 Graham v. Campbell (1878), L. R. 7 Ch. D. 490 218 
 
 Granger, .^.r; ;w?-^e (1812), Godson on Patents, 2nd ed. p. 225 ... 135 
 Greaves v. Eastern Counties Rail. Co. (1859), 1 E. *fe E. 961 ; 
 
 28 L. J. Q. B. 290; 5 Jur. N. S. 733 273 
 
 Green's Patent, Griffin P. C. 286 119 
 
 Grover and Baker Sewing Machine Co. v. Millard (1862), 8 Jur. 
 
 N. S. 713 (at p. 714) 139 
 
 H. 
 
 Haddan'h Patent, 54 L. J. Ch. 126; 2 Criffin P. C. 12 ... 108, 215, 
 
 240, 277 
 
 Hall V. Jarvi.s (1H2!2), 1 Web. P. C. 100 25 
 
 llallctt ?A lliiguo (1831), 2 B. & Ad. 370 (at p. 377) 74 
 
 Hnhey v. Brotherhood, 15 Ch. D. 514 283, 285 
 
 19 Ch. D. 386 285
 
 TABLE OF CASES. XXUl 
 
 1'A<;b 
 Hancock v. Moulton (1852), Johnson's Patentees' Manual, 3rd eJ. 
 
 p. 208; M. Dig. 506 181, 200, 202 
 
 V. Somervell (1851), 39 Newton's Lond. Jour. 158 38 
 
 Hardy's Patent, In re (1849), 6 Moo. P. C. C. 441 ; 13 Jur. 177. 153 
 Harmar v. Playne (1809), Dav. P. C. 311 (at p. 31C) ; 11 East, 
 
 101 71, 81, 87 
 
 Harris v. Rothwell, Gritlin P. C. 109 235 
 
 _ 35 Ch. D. 416 ; 56 L. J. Ch. 459 47 
 
 Harrison v. The Anderston Foundry Co. (1876), L. li. 1 App. 
 
 Ca. 574 (at p. 581) ; 2 S. C. L. R. 4th series, 857 33, 76—98, 173 
 Harwood v. Great Northern Rail. Co. (1860), 29 L. J. Q. B. 193 ; 
 
 6 Jur. N. S. 993 32,37 
 
 (1865), 11 H. L. Cas. 654 ; 35 L. J. Q. B. 27 ; 12 
 
 L. T. Rep. N. S. 771 ; 14 W. R. 1 32 
 
 Haslam Foundry Co. v. Goodfellow, 37 Ch. i). 1 2 1 Ill 
 
 t;. Hall, 20 Q. B. D. 491 271 
 
 V. Hall, 5 P. 0. R. 144 273 
 
 Hassall V. Wright (1870), 40 L. J. Ch. 145 ; L. R. 10 Eq. 509 ; 
 
 18 W. R. 821 144, 216 
 
 Hasting's Patent (1567), 1 Web. P. C. 6 ; Noy, R. 182 18, 36 
 
 Haworth v. Hardcastle (1834), 1 Web. P. C. 480 (at p. 483) ; 
 
 4 M. & Sc. 720 ; 1 Bing. N. C. 182 ; 3 L. J. C. P. 311. ..54,74,127 
 Hayne v. Maltby (1789), 3 T. R. 438 ; Dav. P. C. 156. ..137, 138, 139 
 
 Hayward v. Hamilton, Griffin P. C. 115 33 
 
 V. Pavement Light Co., Griffin P. C. 124 219 
 
 Hearson's Patent, Griffin P. C. 309 107 
 
 266 124 
 
 Heath's Patent, In re (1853), 8 Moo. P. C. C. 217 ; 2 Web. P. C. 
 
 247; M. Dig. 114 154, 158 
 
 Heath and Frost's Patent, Griffin P. C. 31 1 109—121 
 
 V. Smith (1854), 2 Ell. & Bl. 256 ; 2 C. L. R. 1584; 18 
 
 Jur. 601 ; 23 L. J. Q. B. 166 ; 2 Web. P. C. 268... 40, 50 
 
 V. Unwin (1842), 15 Sim. 553 ; 10 M. & W. 684 168, 232, 237 
 
 (1845), 14 L. J. Ex. 153 ; 2 Web. P. C. 221 ; 
 
 13 M. & W. 583 168 
 
 (1852), 22 L. J. C. P. 7 ; 2 Web. P. C. 236 ; 
 
 12 C. B. 522 ; 25 L. J. C. P. 19 80, 84, 93, 169 
 
 Henderson v. Mostyn Copper Co., L. R. 3 C. P. 202 143 
 
 Herbert's Patent, In re, L. R. 1 P. C. 399 ; 4 Moo. P. C. C. 
 
 N. S. 300 150 
 
 Hesse V. Stevenson (1803), 3 B. & P. 565 135 
 
 Hexigh V. Chamberlain (1877), 25 W. R. 742 140 
 
 Higgs V. Godwin (1858), 27 L. J. Q. B. 421 ; 5 Jur. N. S. 97 ; 
 
 Ell. Bl. & Ell. 529 25, 183 
 
 Hill's Patent, In re (1863), 1 Moo. P. C. C. N. S. 258; 9 Jur. 
 
 N. S. 1209 ; 12 W. R. 25 ; 9 L. T. Rep. N. S. 101 151, 152, 
 
 15.3, 156, 161 
 Hill V. Thompson (1817), 1 Web. P. C. 235 ; 3 Mer. 622, 626 ... 33, 
 
 55, 63, 74, 220, 267 
 
 P. C. 239. 
 
 (1818), 2 B. Moo. 424 ; 8 Taunt. 375 ; 1 Web. 
 
 40, 51, 126, 127, 178
 
 Xxiv TABLE OF CASES. 
 
 PAGE 
 
 Hills V. Evaus (1S62), 31 L. J. Ch. 457; 6 Jur. X. S. 525 ; 6 
 
 L T. Rep. X. S. 90 ; 4 De G. F. J: J. 28S ... 45, 80, 195, 
 
 215, 264 
 
 ,.. Loudon Gaslight Co. (1857), 27 L. J. Ex. 60 79 
 
 (1860). 29 L. J. Ex. 409 ; 5 H. oc X. 312 (at 
 
 p. 336) 25,41,45, 51 
 
 Hinde v. Osborne, Griffin P. C. 127 280 
 
 Hinks '■. Safety Lightiuor Co. (1876), L. R. 4 Ch. D. 607 (at 
 
 p. 612) : 46 L. J. Chri85; 36 L. T. Rep. X. S. 391 75, 80 
 
 Hockiucr r. Hocking, Griffin P. C. 129 227 
 
 . -" ,.. Frazer,\;riffin P. C. 129 281 
 
 Hoffman '•. Posthill (1869), L. R. 4 Ch. App. Cas. 673; 17 
 
 W. R. 901 : 20 L. T. Rep. X. S. 893 243, 244 
 
 Holland V. Fox (1853), 1 C. L. R. 440 ; 1 W. R. 448. ..230, 232, 233 
 Holmes r. Loudon and Xorth Western Rail. Co. (1852), 22 
 
 L. J. C. P. 57 ; Macroiy's P. C. 13 ; 12 C. B. 831 79, 183 
 
 Honiball V. Bloomer (1854), 2 AYeb. P. C. 199; 10 Ex. 538; 
 1 Jur. X. S. 188 ; 24 L. J. Ex. 11 ; 3 W. R. 71 : 3 C. L. R. 
 
 167 ; M. Dig. 46 50, 273 
 
 Horublower v. Boulton (1799), 8 T. R. 95 ; Dav. P. C. 221 ; 
 
 1 Carii. P. C. 156 23, 27, 72, 81 
 
 Horton >: Mabon, 12 C. B. X. S. 437 321 
 
 Hoskiu's Patent, Griffin P. C. 291 388 
 
 Houghton's Patent, In re (1871), 7 Moo. P. C. C. X. S. 309 ; 
 
 L. R. 3 P. C. 461 155 
 
 HousehiU Iron Co. v. Xeilsou (1842), 1 Web. P. C. 673, 676, 
 
 718, n. ; 9 C. & F. 788 23, 42, 51, 60, 84 
 
 Household v. Fairbiu-n, Griffiu P. C. 131 284 
 
 How V. McKemau (1862), 30 Beav. 546 239 
 
 Huddart r. Grimshaw (1803), Dav. P. C. 265 ; 1 Web. P. C. 85 ; 
 
 Carp. P. C. 200 33, 256 
 
 Hughes' Patent, In re (1879), L. R. 4 App. Cas. 174; 48 L. J. 
 
 P. C. 20: 27 W. R. 493 150 
 
 Hull V. Boliaud (1856), 25 L. J. Ex. 304; 1 H. <i: X. 134. ..223, 233, 
 
 234, 261 
 
 >: .Jarvis, 1 AVeb. P. C. 100 25 
 
 Hutcl.inson's Patent, In re (1861), 14 Moo. P. C. C. 364 155 
 
 J. 
 
 Jack-sox v. Duke of Xewcastle (1864), 33 L. J. Ch. 698 250 
 
 . V. Needle, Griflin P. C. 133 219 
 
 — — V. Wolstenhulmes, Griffin P. C. 134 175 
 
 Jessop's case (before 1795), Cit. 2 H. Bl. 490 ; Dav. P. C. ]S-2, 
 
 203 ; 1 Web. I'. C. 42, u 127 
 
 Johnson'-s Patent, In re (1871), 8 Moo. P. C. C. X. S. 282; 
 
 L R. 4 P. C. 75 152, 158 
 
 _ (1877), 8 Moo. P. C. C. X. S. 291 ; L. R. 5 Cli. 
 
 D. 503 ; 4G L. J. Ch. 555 152 
 
 — /« re, 5 Ch. D. 503 104,115
 
 TAPLE OF CASES. XXV 
 
 PAGE 
 
 Johnson and Atkinson's Patent, In re (1873), L. R. 5 P. C. 87 ...154 
 
 Jones's Patent, In re (1854), 9 Moo. P. C. C. 41 161 
 
 ■ Griffin P. C. 313 106 
 
 2 Griffin P. C. 33 118 
 
 Griffin P. C. 265 124 
 
 Jones V. Berger (1843), 1 Web. P. C. 504 ; 5 M. & G. 208 ; 6 
 
 Scott, N. R. 208 ; 7 Jur. 883 ; 12 L. J. C. P. 179 ... 230, 
 
 232 235 237 
 
 V. Lees (1856), 1 H. cfe N. 189 ; 2 Jur. N. S. 645 ; 26 L. J.' 
 
 Ex. 9 142 
 
 V. Pearce (1831), 2 Coop. 58 220 
 
 -(1832), 1 Web. P. C. 122; 1 Carp. P. C. 524; 
 
 1 Lon. Jour. C. S. 215 25, 51, 183 
 
 Jordan v. Moore (1866), L. R. 1 C. P. 624; 12 Jur. N. S. 766 ; 
 
 35 L. J. C. P. 268; 14 W. R. 769 32 
 
 Jupe V. Pratt (1837), 1 Web. P. C. 145 22, 181 
 
 K. 
 
 Kay's Patent, Inre (1839), 1 Web. P. C. 568; 3 Moo. P. C. C. 24 153 
 
 Keynaston i;. East India Co. (1819), 3 Swan. 248 247 
 
 Knowles v. Bovill (1870), 22 L. T. Rep. N. S. 70 142 
 
 Kurtz V. Spence, 33 Ch. D. 579 '. 283 
 
 36 Ch. D. 770 283, 284 
 
 Kynock v. National Arms Co., Limited (1877), 37 L. J. Rep. 
 
 N. S. 31 ; 26 W. R. 22 115 
 
 Lake's Patent, 2 Griffin P. C. 16 395 
 
 2 Griffin P. C. 35 121 
 
 Lamb v. Nottingham Manufactures Co., Limited, M. R. 14th 
 
 March, 1874, B. 776 296 
 
 Lancaster's Patent, Griffin P. C. 293 119 
 
 Lang V. Gisborne (1862), 31 Beav. 133 ; 8 Jur. N. S. 736 ; 31 
 
 L. J. Ch. 769; 10 W. R. 638; 6 L. T. Rep. N. S. 771 46 
 
 Lawrences. Perry, Griffin P. C. 143, 148 45, 111 
 
 Lea V. Saxby (1875), 32 L. T. R. N. S. 731 240 
 
 Ledgard v. Bull, 1 1 App. Cas. 648 230 
 
 Levvin v. Brown (1866), 14 AV. R. 640 140 
 
 Lewis V. Davis (1829), 1 Web. P. C. 488; 3 C. & P. 502; 1 Carp. 
 
 P. C. 471 33 
 
 V. Marling (1829), 10 B. & C. 22 ; 4 C. <ii P. 56 ; 5 M. & 
 
 R. m ; 1 Web. P. C. 493 ; 1 Carp. P. C. 478 ...12, 37, 54, 88, 94, 
 
 126, 127 
 Liardet y. Johnson (1778), 1 Web. P. C. 52; Bull. N. P. 78; 
 
 1 Carp. P. C. 35 36, 93
 
 XXVI TABLE OF CASES. 
 
 I'AGE 
 
 Lister v. Eastwood (1864), 9 L. T. R. N. S. 766 177 
 
 V. Leather (1857), 8 E. & B. 1004 (at p. 1017) ; 3 Jur. 
 
 N. S. 433, 811 ; 5 W. R. 603 : 29 L. T. 
 
 Rep. 142 28, 96, 174, 175, 176 
 
 (1858), 27 L. J. Q. B. 295 ; 4 Jur. X. S. 947 ; 
 
 4 K. & J. 425 ; 8 E. »fe B. 1031 33 
 
 V. Norton, Griffin P. C. 148 48, 219, 239 
 
 L'Oiseau & Pierrard's Patent, 2 Griffin P. C. 36 118 
 
 London & Leicester Hosiery Co. v. Griswold, Griffin P. C. 154 ... 137 
 
 Losh V. Hague (1837), 1 Web. P. C. 200 50, 55, 199, 201 
 
 (1839), 7 D. P. C. 495 ; 5 M. (t W. 387 ; 3 Jur. 
 
 409; 8 L. J. Ex. 251 ; 7 Dowl. 495 273 
 
 Lovell V. Hicks (1836), 2 Y. & C. 46 ; 5 L. J. Ex. 101 140 
 
 Lowe's Patent, Lire (1846), 10 Jur. 363 154 
 
 Lucas V. Miller, Griffin P. C. 156 68 
 
 Luke's Patent, Griffin P. C. 294 118 
 
 M. 
 
 M'Alpine v. Maugnall (1846), 15 L. J. C. P. 298 ; 3 C. B. 496... 135 
 M'Cormick v. Gray (1861), 7 H. & N. 25 ; 31 L. J. Ex. 42; 
 
 9 W. R. 809 ; 4 L. T. Rep. N. S. 832 52, 169 
 
 M'Dougal's Patent, In re (1867), L. R. 2 P. C. 1 ; 37 L. J. 
 
 P. C. 17 ; 5 Moo. P. C. C. N. S. 1 150 
 
 M'Innes' Patent, In re (18G8), 5 Moo. P. C. C. X. S. 72 ; L. R. 
 
 2 P C. 54; 37 L. J. P. C. 23 157 
 
 Macfarlane v. Price (1816), 1 Web. P. C. 74 ; 1 Stark. 199 87 
 
 Macnamara v. Hulse (1842), C. k M. 471 ; 2 Web. P. C. 128, n. 
 
 267—268 
 
 Manceaux's Patent, In re (1870), L. R. 6 Ch. 272 118 
 
 Manton v. Manton (1815), Dav. P. C. 333 (at p. 350) ; 1 Carp. 
 
 P. C. 278 259 
 
 Mansden v. Saville Street Foundry and Engineering Co. Limited 
 
 (1878), L. R. 3 Ex. D. 203 ; 39 L. T. Rep. X. S. 97, 100; 
 
 26 W. R. 784 19, 20, 131 
 
 Mathers v. Green, L. R. 1 Ch. 29 9 
 
 Meadows v. Kirkmann, 27 L. J. Ex. 205 293 
 
 Medlock's Patent, la re (1865), 22 Newt. Loud. Jour. X. S. 69 
 
 114, 122 
 
 Mercier v. Cotton (1876), L. R. 1 Q. B. D. 442 239 
 
 Milligan V. Marsh (1856), 2 Jur. N. S. 1083 7, 21 
 
 Mihier's I'atent, /?i ?r (1854), 9 Moo. P. C. C. 39 161 
 
 Minteri;. Mower (1835), 1 Web. P. C. 138 37 
 
 ,;. Wells (1834), 1 Web. P. C. 127; 1 Carp. P. C. 622, 
 
 639; IC. M. &R. 505; 5 Tyr. 163; 4 L. J. Ex. 2. ..12, 179 
 V. Williams (1835), 1 Web. P. C. 135; 4 A. & E. 251; 5 
 
 N. k M. 657 ; 1 IL (t N. 585 ; 5 L. J. K. B. 60 189 
 
 Mitchell V. Barker (1851), 39 Loud. Jour. 531 220 
 
 V. Reynolds (1713), 19 Mod. R. 130; 1 P. Wms. 181... 36
 
 TABLE OF CASES. XXvii 
 
 PAOE 
 
 Moore V. Bennett, Griffin P. C. 158 33, 100, 281, 290 
 
 Morewood v. Tupper (1855), 3 C. L. Rep. 718 175 
 
 Morgan's Patent, Li re (1843), 24 W. R. 245 ; 1 Web. P. C. 
 
 737 144, 147, 159 
 
 Morgan v. Fuller (1866), L. R. 2 Eq. 296 230 
 
 V. Seaward (1837), 2 M. & W. 544; Mur. & H. 55; 
 
 1 Jur. 527 ; 1 Web. P. C. 167, 170, 187, 196 ; 1 Carp. P. C. 
 
 37, 96 ; 6 L. J. Ex. 153. ..37, 50, 63, 71, 88, 93, 125, 179, 247, 267 
 Mosey's Patent, In re (1858), 25 Beav. 581 ; Higgins' Dig. 339 ; 
 
 6 W. R. 612 144 
 
 Moss V. Malings, 33 Ch. D. 603 234 
 
 Mozeley v. The Victoria Rubber Co., 57 L. T. 142 G4, 70 
 
 GriffinP. C. 163 241 
 
 Mullins V. Hart (1852), 5 Car. & K. 297 50 
 
 Muntz' Patent, In re (1846), 2 Web. P. C. 1 13 149, 152 
 
 V. Foster (1843—4), 2 Web. P. C. 93 ; 1 Dowl. & Low, 
 
 942 28, 42, 52, 80, 168, 179, 183, 189, 195, 253, 267 
 
 V. Grenfell (1842), 2 Coop. 61, n. ; 7 Jur. 121 220 
 
 Murray v. Clayton (1872), L. R. 7 Ch. 570 ; 20 W. R. 649 ; 27 
 
 L. T. Rep. N. S. 100; 21 W. R. 118; 42 L. J. Ch. 191; 
 
 L. R. 15 Eq. 115; 27 L. T. Rep. N. S. 644; 21 W. R. 498... 34, 
 
 179, 205, 243 
 
 N. 
 
 Napier's Patent, In re (1861), 13 Moo. P. C. C. 543 ; 9 W. R. 
 
 390 149 
 
 Needham v. Johnson 1 P. 0. R. (at p. 58) 76 
 
 • v. Oxley (1863), 11 W. R. 852 ; 8 L. T. Rep. N. S. 
 
 604; 2 N. R. 388 20.3, 215, 305 
 
 (1863), 1 H. & M. 248 222 
 
 Neilson v. Betts (1871), L. R. 3 Ch. 429 ; L. R. 5 H. L. 1 ; 40 
 
 L. J. Ch. 317; 19 W. R. 1121 43, 185, 203, 215 
 
 . -— y. Forman (1841), 2 Coop. 61, n 196 
 
 V. Fothergill (1841), 1 Web. P. C. 287 138 
 
 V. Harford (1841), 1 Web. P. C. 295 ...74, 81, 179, 266, 267 
 
 (1841), 1 Web. P. C. 331 ; 8 M. & W. 806 ; 
 
 11 L. J. Ex. 20 ; 10 L. J. Ex. 493; 2 Coop. 
 
 C. C. 61, n 22, 63, 94, 234, 261, 265 
 
 V. Thompson (1841), 1 Web. P. C. 278; 2 Coop. 61, n. 71, 
 
 196 
 Newall V. Elliott (1858), 4 C. B. N. S. 269 ; 4 Jur. N. S. 562 ; 
 
 27 L. J. C. P. 537 51,66 
 
 (1864), 13 W. R. 11; 10 Jur. N. S. 954; 
 
 10 L. T. Rep. N. S. 792; 4 N. R. 429 25, 65, 
 
 169, 188 
 
 V. Wilkins (1851), 17 L. T. Rep. 20 270 
 
 i-. Wilson (1852), 2 De G. M. & G. 282 ; 19 L. T. Rep. 
 
 161 220 
 
 Newbery v. James (1817), 2 Mer. 446 (at p. 451) ; 1 Carp. P. C. 
 367 72, 129
 
 XX^^U TABLE OF CASES. 
 
 PAOK 
 
 Xewtou's Patent, In re (1861), li Moo. P. C. C. 156 ; 15 Moo. 
 
 P. C. C. 176 151, 158 
 
 9 App Cas. 592 155, 161 
 
 Xewton V. Grand Junction Rail. Co. (1846), 5 Ex. 331 ; 20 L. J. 
 
 Ex. 427, n. ; M. Dig. 75 171, 172, 268 
 
 r. Yaucher (1851), 21 L. J. Ex. 305 ; 6 Ex. 859. ..60, 77, 175 
 
 Nickels' Patent, In re, 1 Web. P. C. 649 104 
 
 V. Haslam (1844), 13 L. J. C. P. 146 ; 8 Scott, X. R. 97 ; 
 
 7 M. it G. 378 ; 8 Jur. 474 63 
 
 V. Ross (1849), 8 C. B. 679 (at p. 710) 20 
 
 Xobel's Explosives Co. v. Jones, Scott &: Co. (1878), 17 Ch. D. 
 
 721 186—188 
 
 — — 8 App. Cas. 10 ... 183 
 
 Nordenfelt ?'. Gardner, 1 P. 0. R. 65 174 
 
 Normand's Patent, In re (1870), 6 Moo. P. C. C. N. S. 477 158 
 
 Norton's Patent, l7i re (1863), 1 Moo. P. C. C. N. S. 339 ; 9 Jur. 
 
 N. S. 419; 11 "W. R. 720; 1 N. R. 557 156, 158 
 
 Norton r. Brooks (1861), 7 H. &■ X. 499; 8 Jur. N. S. 155; 
 
 10 W. R. Ill 139 
 
 Nunn V. D'Albuqiierque (1865), 34 Beav. 595 207 
 
 0. 
 
 Oldham v. Langmead (before 1789), Cit. 3 T. R. 439, 441 136 
 
 Ormson v. Clarke, 14 C. B. N. S. 475 '. 32 
 
 Otto V. Steele, Gritfin P. C. 182 269 
 
 31Ch.D. 241 46 
 
 Oxford and Cambridge Universities v. Richardson (1802), 6 Yes. 
 
 689 186, 194 
 
 Oxlev V. Holden (1860), 30 L. J. C. P. 68 ; 8 C. B. N. S. 666 ; 
 
 8 W. R. 626 ; 2 L. T. Rep. N. S. 464 48, 50, 189 
 
 Palmer v. Cooper (1853), 9 Ex. 231 ; L. R. 23 Ex. 82 ; 2 C. L. R. 
 
 430 230, 231, 235 
 
 V. Wag8taflF(1853), 8 Ex. 840; 17 Jur. 781 ; 22 L. J. 
 
 Ex. 295 ; 1 W. R. 438; 1 C. L. R. 448 ... 230 
 
 (1854), 9 Ex. 494 ; 23 L. J. Ex. 217 256 
 
 Parkes v. Stevens (1869), L. R. 8 Eq. 358; 38 L. J. Ch. 627; 
 
 17 W. R. 846 ; L. R. 3 Ch. 36 32, 74, 97, 176, 267 
 
 Pamell's J'ateiit, In re, 5 P. 0. ]{. 126 144 
 
 Paruell r. yU>rt Lcddcll & Co., 29 Ch. D. 325 273 
 
 Patent liottle Envelope Co. v. Seymer (1858), 5 C. B. N. S. 
 
 104 ; 5 Jur. N. S. 174 ; 28 L. J. C. P. 22 32, 173
 
 TABLE OF CASES. XXIX 
 
 PAGE 
 
 Patent Type Founding Co. v. Richards (1859), 2 L. T. R. N. S. 
 
 359 223 
 
 V. Walter (1860), 8 W. R. 353 ; 
 
 Johns. 727 249, 293 
 
 Patterson's Patent, Li re (1849), G Moo. P. C. C. 4G9 ; 13 Jur. 
 
 593 156 
 
 Patterson v. Gas Light & Coke Co. (1876), L. R. 2 Ch. D. 827 
 (at p. 832) ; 45 L. J. Ch. 843 ; 35 L. T. 
 
 Rep. N. S. 11 15 
 
 (1877), L. R. 3 App. Ca. 239 (at p. 243); 47 
 
 L. J. Ch. 402 ; 38 L. T. Rep. N. S. 303 ; 
 
 26 W. R. 482 23, 44 
 
 V. Holland (1845), Hindmarch, 293 254 
 
 Penn v. Bibby (1866), L. R. 1 Eq. 538 (at p. 548) 234 
 
 L. R. 3 Eq. 308 205, 270 
 
 V. Jack (1866), L. R. 2 Ch. App. Ca. 127; 36 L. J. Ch. 
 
 455; 15 W. R. 208 ; 15 L. T. Rep. N. S. 399... 31, 
 
 67, 68 
 
 (1866), 3 L. R. Eq. 308 195 
 
 (1866), L. R. 2 Eq. 314 (at p. 317); 14 L. T. R. 
 
 N. S. 495; 14 W. R. 760 260, 261 
 
 (1867), L. R. 5 Eq. 81 203, 205 
 
 — «. Fernie (1866), L. R. 3 Eq. 308 270 
 
 Perkins's Patent, In re (1845), 2 Web. P. C. 6 (at p. 18) U9 
 
 Peroni v. Hudson, Griffin P. C. 183 274 
 
 Perry V. Mitchell (1840), 1 Web. P. C. 269 225 
 
 V. Skinner (1837), Hindmarch, Patents, p. 207 ; 2 11. & W. 
 
 471 ; M. & H. 122 ; 1 Jur. 433 ; 1 Web. P. C. 250; 6 L. J. 
 
 Ex. 124 114,115 
 
 Philpott V. Hanbury, 2 P. 0. R. 43 45 
 
 Pietschmann's Patent, Griffin P. C. 314 107 
 
 Piggott V. Anglo-American Telegraph Co. (1868), 19 L. T. R. 
 
 N. S. 46 247 
 
 Pinkus' Patent, In re (1847), 12 Jur. 233 156, 157 
 
 Pitman's Patent, In re (1871), 8 Moo. P. C. C. N. S. 293 ; L. R. 
 
 4 P. C. 84 159 
 
 Plimpton V. Malcomson (1876), L. R. 3 Ch. D. 531 ; 45 L. J. 
 Ch. 505 ; 34 L. T. Rep. N. S. 340 ; L. R. 20 Eq. 
 
 37 55, 85, 91, 10.3, 219, 258, 304 
 
 V. Spiller (1876), 20 Sols. Jour. 1876, p. 860 236 
 
 ■ -(1877), L. R. 6 Ch. D. 412 44, 51, 75, 196 
 
 Poole's Patent, In re (1867), 4 Moo. P. C. C. N. S. 452; L. R. 
 
 1 C. P. 514; 36 L. J. P. C. 76 153, 158 
 
 Pooley V. Pointon, Griffin P. C. 200 272 
 
 Pow V. Taunton (1845), 9 Jur. 1056 28 
 
 Price's Patent Candle Co. v. Bauwen's Patent Candle Co. (1858), 
 
 4 K. k J. 727 202, 206 
 
 Printing and Numerical Registering Co. v. Sampson (1875), 
 
 44 L. J. Ch. 705 ; L. R. 19 Eq. 462 ; 32 L. T. Rep. N. S. 354... 140 
 
 Proctor?;. Bennis, 36 Ch. D. 740 97, 167 
 
 V. Sutton Lodge Chemical Co.,- 5 P. 0. R. 184 273
 
 XXX TABLE OF CASES. 
 
 R. 
 
 PAQB 
 
 R. V. Arkwriaht (1785), 1 Web. P. C. 64 ; Dav. P. C. 61 ; Printed 
 
 Cases, fol.^Lon. 1785; 1 Carp. P. C. 53 36, 52, 53, 72, 80 
 
 R. V. Cutler (1847), 3 C. & K. 215; Macrory, 124; 14 Q. B. 
 
 372, n 28 
 
 R. V. Else (1785), 1 Web. P. C. 76 ; Bull. X. P. 76 ; Dav. P. C. 
 
 144 60 
 
 R. V. Lister (1826), Web. P. L. 80 179 
 
 R. V. Mill (1850), 20 L. J. C. P. 16 (at p. 24) ; 10 C. B. 379; 
 
 15 Jut. 59; 1 L. M. .t P. 695 ; 14 Beav. 315 112 
 
 R. ?'. Wheeler (1819), 2 B. i- Aid. 345 ; 1 Carp. P. C. 394... 11, 26, 127 
 Ralston V. Smith (1865), 11 H. L. C. 223 ; 20 C. B. N. S. 28; 
 
 13 L. T. Rep. X. S. 1 ; 35 L. J. C. P. 49 32, 113 
 
 Renard v. Lewinstein (1864), 3 W. R. 665 ; 10 L. T. Rep. X. S. 94. 240 
 
 (1864), 10 L. T. N. S. 177 8, 195 
 
 (1865), 2 Hem. t M. 628; 5 X. R. 301 ; 
 
 11 L. T. Rep. N. S. 766 ; 13 W. R. 382 
 
 165, 216, 234 
 
 Roberts' Patent, In re (1839), 1 Web. P. C. 573 153 
 
 Robinson's Patent, Griffin P. C. 267 124 
 
 Roden v. London Small Arms Co. (1876), 46 L. J. Q. B. 213 ... 142 
 Rolls V. Isaacs (1878), L. R. 19 Ch. D. 268 ; W. X. 1878 (p. 37) 131 
 
 Rushton V. Crawley (1870), L. R. 10 Eq. 522 32, 95 
 
 Russell's Patent, Goodeve P. C. 589 118 
 
 Russell V. Cowley (1834), 1 Web. P. C. 459 ; 2 Coop. C. C. 59 
 
 25, 181, 195, 247 
 
 V. Crichton (1837), 15 Dec. of Ct. of Sess. 1270; 1 Web. 
 
 P. C. 667, n 247 
 
 V. Hatfield, Griffin P. C. 204 225 
 
 V. Ledsam (184.3), 11 M. k W. 647 232, 237 
 
 (1845), 14 M. &W. 574; 14 L. J. Ex. 353... 179 
 
 Samuda'.s Patent, /?i re (1846), Cit. Hind, on Pat. 534 116 
 
 Saxby's Patent, Inre (1870), L. R. 3 P. C. 292; 7 Moo. P. C. C. 
 
 X. S. 82; 19 W. R. 513 150 
 
 .Saxby v. Gloucester Waggon Co. (1880), L. R. 7 (^. B. D. 305 ; 
 
 W. X. 1880 (at p. 28) 34, 252 
 
 Scott and Young, Ex parte (187 1), L. R. 6 Ch. App. 274 ; 19 W. R. 
 
 425 16 
 
 Sc'd V. Higgius (1860), 8 II. L. C. 550; 30 L. J. (^ B. 314; 
 
 6 Jur. X. S. 1264 ; 3 L. T. Rep. X. S. 101 96, 257, 264, 268 
 
 Sellers 7-. Dickenson (1850), 5 Ex. 312 ; 20 L. J. Ex. 417 ...172, 268 
 Sharp's Patent, In jv (18-10), 1 Web. P. C. 641 (at p. 645); 
 
 10 L. J. Ch. 86 ; 3 Beav. 245 104 
 
 Sharp V. Braner, Griffin P. C. 205 284 
 
 Shaw V. Beck (1853), 8 Ex. 392 260
 
 TABLE OF CASES. XXXI 
 
 PACE 
 
 Shaw V. Bank of England, 22 L. J. Ex. 26 293 
 
 Sheehau v. Great Eastern Rail. Co. (1880), L. K. 16 Ch. D. 59 
 
 164, 217 
 
 Siddell V. Vickers, 39 L. R. Ch. D. 92 69—96 
 
 Simister's Patent, In re (1842), 1 Web. P. C. 721; 4 Moo 
 
 P. C. C. 164 156 
 
 Simpson t;. Holliday (1866), L. R. 1 H. L. 315; 35 L. J. Ch. 
 
 811 27 
 
 ■ (1864), 20 Newton's Lond. Jour. N. S. 105 
 
 (f^tp. 108) 94, 181, 264 
 
 (1865), 13 W. R. 577 ; 12 L. T. Rep. N. S. 
 
 99 ; 21 Newton, Lond. Jonr. N. S. Ill ; 5 N. R. 340 ...78, 85, 95 
 Singer Sewing Machine Co. v. Wilson (1865), 5 N. R. 505 ; 
 
 12 L. T. Rep. N. S. 140; 13 W. R. 560 249, 293 
 
 V. Stassen, 50 L. T. 326 lU 
 
 Smith's Patent, In re (1855), Macr. P. C. 232 114, 122 
 
 ■ Griffin P. C. 263 ' 146 
 
 Smith V. Buckingham (1870), 18 W. R. 314 ; 21 L. T. R. N S 
 
 819 140 
 
 V. Cropper, 10 App. Cas. 249; reversing 26 Ch. D. 700... 229 
 
 i;. Davidson (1857), 19 C. S. 691 41 
 
 V, Dickenson (1804), 3 B. ct P. 630 129 
 
 V. London & North Western Rail. Co. (1853), 2 E. & B. 
 
 69; 17 Jur. 1071 173 
 
 V. London & South Western Rail. Co. (1854), Kay, 408; 
 
 23 L. J. Ch. 562 ; 23 L. T. R. 10 ; 2 Eq. Rep. 428; 
 
 2 W. R. 310; 23 L. T. R. 10 202 
 
 V. Scott (1859), 6 C. B. N. S. 771 ; 28 L. J. C.P. 325 ; 
 
 5 Jur. N. S. 1356 139 
 
 V. Upton (1843), 6 M. & G. 257 254 
 
 Soame's Patent, In re (1843), 1 Web. P. C. 560, 729 (at p. 733) 
 
 21, 147, 148, 149 
 Societe Anonyme des Manufactures de Glaces v. Tielghman's, ttc , 
 
 Co., 25 Ch. D. 1 191, 283 
 
 Speckhart v. Campbell &, Co., Solicitors' Journal, Feb. 2, 1884... 215 
 
 Spencer V. Jack (1864), 11 L. T. R. N. S. 242 267 
 
 Spicer V. Todd (1839), 1 D. P. R. 306 165 
 
 Spilsbury v. Clough (1842), 2 Q. B. 466 ; 2 G. & D. 17; 6 Jur. 
 
 579; 1 Web. P. C. 255; 11 L. J. Q. B. 109 105 
 
 Stead V. Anderson (1846), 2 Web. P. C. 147 39 
 
 — (1847), 4 C. B. 806; 2 Web. P. C. 151; 16 
 
 L. J. C. P. 250 169, 170, 179, 256 
 
 V. Williams (1843), 2 Web. P. C. 126 39 51 
 
 (1844), 2 Web. P. C. 137 ; 7 M. ct G. 318 ; 8 ' 
 
 Scott, N. R. 449; 8 Jur. 930; 13 L. J. C. P. 218 42, 63 
 
 Steiner v. Heald (1851), 20 L. J. Ex. 410; 6 Ex. 607; 17 Jur. 
 
 875 29 
 
 Stevens v. Keating (1847), 2 Web. P. C. 176 ; 2 Phill. 333 ... 180, 
 
 219, 268 
 
 — (1850), 1 Mac. k G. 659 168 
 
 Stewart's Patent, 3 P. 0, R. 7 150
 
 XXXU TABLE OF CASES. 
 
 PAGE 
 
 Stocker v. Rodgers (1843), 1 Car. & Kir. 99 271 
 
 Stocking V. Llewellyn (1842), 3 L. T. R. 33 220 
 
 Stoner v. Todd (1876), L. R. 4 Ch. D. 58 ; 46 L. J. Ch. 32 ; 35 
 
 L. T. Rep. N. S. 661; 25 W. R. 138 43, 68 
 
 Stubbs' Patent, Griffin P. C. 298 120, 395 
 
 Sturtz V. Be la Rue (1828), 5 Russ. 322; 1 Web. P. C. 83 ... 63, 81, 
 
 220 
 
 §uggv. Bray, Griffin P. C. 210 285 
 
 V. Silber (1876), L. R. 1 Q. B. D. 362 251 
 
 (1877), L. R. 2 Q. B. D. 495 233 
 
 Swinborne v. Nelson (1853), 16 Beav. 416; 22 L. J. Ch. 331 ... 242 
 Sykes v. Howarth (1879), L. R. 12 Ch. D. 826 ; 48 L. J. Ch. 769 ; 
 
 '41 L. T. R. N. S. 79; 28 W. R. 215 182, 183, 189, 191, 224, 
 
 233, 262 
 
 Talbot v. La Roche (1854), 15 C. B. 310 ; 2 C. L. Rep. 836 ; 
 
 M. Dig. 210 224 
 
 Tangye v. Stott (1865), 14 W. R. 386 215, 304 
 
 Taylor v. Hare (1805), 1 Web. P. C. 292, 293 ; 1 B. & P. N. R. 
 
 260 137, 141 
 
 Templeton v. Macfarlane (1 848), 1 H. L. C. 595 52 
 
 Tenn ant's case (1802), 1 Web. P. C. 125; Dav. P. C. 429; 1 
 
 Carp. P. C. 177 10, 41 
 
 Terrell, In re (1883), L. R. 22 Ch. D. 473 276 
 
 Tetley v. Easton (1852), Mac. P. C. 48, 76 80, 93 
 
 (1857), 2 C. B. N. S. 706 ; 26 L. J. C. P. 269. 96 
 
 Thomas v. Foxwell (1858), 5 Jur. N. S. 37 176 
 
 V. Hunt (1864), 17 C. B. N. S. 183 142 
 
 V. Welch (1866), L. R. 1 C. P. 182 (at p. 192); 12 Jur. 
 
 N. S. 316; 35 L. J. C. P. 200 68 
 
 Thorn 7>. Worthing Skating Rink Company (1876), L. R. 6 Ch. 
 
 D. 415 179 
 
 TielensT;. Hooper (1850), 5 Ex. 830 143 
 
 Til'dnnan's Sand Blast Company v. Wright, Griffin P. C. 216 ... 224 
 
 Tolhauscn's Patent, hi re (1866), 14 W. R. 551 117 
 
 Townscnd v. Haworth (1875), L. R. 12 Ch. D. 831, n. ; Higgins' 
 
 Dig. Pt. II. p. 60 (not fully reported anywhere) 183, 189, 101 
 
 Travel! v. Carteret (35 Car. 2), 3 Lev. 135 126 
 
 Trotman's Patent, /n re (1866), L. R. 1 P. C. 118; 3 Moo. P. 
 
 C. C. N. S. 488 154, 155 
 
 Trotman v. Wood (1864), 16 C. B. N. S. 479 140 
 
 Turner 7;. Hancock (1881), 20 Ch. D. 303 275 
 
 V. Winter (1787), 1 Web. P. C. 77 ; 1 T. R. 602 ; Dart, 
 
 P.O. 145 ri2, 72, 259
 
 TABLE OF CASES. XXXlll 
 
 U. 
 
 PAGE 
 
 United Horse Nail Co. v. Stewart, Griffin P. C. 217 205 
 
 United Telephone Co., itc. v. Harrison, Cox, Walker ct Co. (1882), 
 
 L. E.. 21 Ch. D. 720 44, 46, 181 
 
 ?'. Dale, 25 Ch. D. 778 203 
 
 V. Donohoe, 31 Ch. D. 399 227 
 
 V. Henry, Griffin P. C. 228 189 
 
 ■ V. London Globe Telephone Co., 26 Ch. D. 
 
 766 187, 202 
 
 V. Sharpies, 29 Ch. D. 164 184 
 
 V. Walker, 56 L. T. 508 205 
 
 Unwin v. Heath (1855), 25 L. J. C. P. 8 77, 179 
 
 2 Web. P. C. 314 181 
 
 Useful Patents Co. v. Rylands, Griffin P. C. 234 51 
 
 V. 
 
 Vavasbur v. Krupp (1878), L. R. 9 Ch. D. 351 ; 39 L. T. R. 
 
 N. S. 437 203 
 
 Vidi V. Smith, 3 E. & B. 969 294 
 
 Vincent's Patent, In re (1867), L. R. 2 Ch. 341 ; 15 W. R. 524 117 
 
 Vow Buch's Application, 2 Griffin P. C. 40 119 
 
 Vow Heyden v. Newstadt, 14 Ch. D. 230 183 
 
 W. 
 
 Walker v. Clarke, 56 L. J. Ch. 239 283 
 
 Wallington V. Dale (1852), 7 Ex. 888; 23 L. J. Ex. 49 74, 267 
 
 Walton V. Bateman (1842), 1 Web. P. C. 613 37, 167, 179, 267 
 
 V. Lavater (1860), 3 L. T. Rep. N. S. 272 ; 8 C. B. N. S. 
 
 162; 29 L. J. C. P. 275; 6 Jur. N. S. 1251 139, 163, 
 
 169, 190, 216 
 
 V. Potter (1841), 1 Web. P. C. 585 25, 167, 179, 268 
 
 Warwick V. Hooper (1850), 3 M. & G. 60 143 
 
 Wegmann 7^. Corcoran (1879), L. R. 13 Ch. D. 65 (at p. 77); 
 
 39 L. T. Rep. N. S. 563; 27 W. R. 357 76, 90, 272 
 
 Westinghouse's Patent, Griffin P. C. 315 108 
 
 Westrupp & Gibbons' Patent, In re, Ex parte Wells (1836), 
 
 1 Web. P. C. 554 161 
 
 White V. Fenn (1867), 15 W. R. 348 ; 15 L. T. Rep. N. S. 505 ; 
 
 L. R. 5 Ch. App. Cas. 36 177 
 
 Whitton V. Jennings (1860), 1 D. R. & S. 110 220 
 
 Wield's Patent, hi re (1871), L. R. 4 P. C. 89 ; 8 Moo. P. C. C. 
 
 N. S. 300 155, 161 
 
 Williams v. Williams (1819), 3 Mer. 157 129 
 
 Winan's Patent, In re (1872), 8 Moo. P. C. C. N. S. 306 ; L. R. 
 
 4 P. C. 93 158 
 
 T. C
 
 XX XIV TABLE OF CASES. 
 
 PAGE 
 
 Wirth's Patent, In re (1879), L. R. 12 Ch. D. 303 ; 28 W. R. 
 
 329 6 
 
 Wood V. Zimmer (1815), 1 Web. P. C. 44, 82 ; Holt, N. P. 58 ; 
 
 Kay, P. C. 290 50, 91 
 
 Woodcroft's Patent, In re (1841), 1 AVeb. P. C. 740; 3 Moo. 
 
 P. C. C. 171 156 
 
 Woodward v. Sansum, 56 L. T. 347 64 
 
 Wren r. Weild (1868), L. R. 4 Q. B. 213, 730 225, 284 
 
 Wright V. Hitchcock (1870), L. R. 5 Ex. 37 ; 39 L. J. Ex. 97... 63, 
 
 177, 183, 190, 256 
 
 Y. 
 
 Yates' k Kelett's Patent, In re, L. R. 12 App. Cas. 147 154 
 
 Young r. Fernie (1864), 12 W. R. 901 (at p. 903); 4 Giff. 577; 
 
 10 Jur. N. S. 926 ; 10 L. T. Rep. N. S. 861 ; 9 Prac. 
 
 Mech. Jour. 2nd Series, 102; 4 N. R. 218 25, 44, 259 
 
 V, Rosenthal, 2 P. 0. R. 41 272
 
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 11
 
 THE LAW AND PEACTICE 
 
 RELATING TO 
 
 LETTERS PATENT FOR INVENTIONS. 
 
 INTRODUCTION. 
 
 Letters patent for inventions are granted by tlie crown 
 by virtue of its common law prerogative. By the creation 
 of monopolies to first and true inventors in the right of 
 using their inventions, a species of property is created in 
 favour of inventors, as a reward for the benefits which 
 they have conferred on humanity, by the exercise of their 
 thought, knowledge and industry. It is to the interests of 
 the community that persons should be induced to devote 
 their time, energies and resources in furtherance of the 
 development of arts and manufactures, and this was recog- 
 nized in England from the earliest periods which can 
 pretend to be described as civilized. 
 
 It was to the advantage of the whole community that 
 inventors should be rewarded, and no measure of reward 
 can be conceived more just or equitable, and bearing a 
 closer relation to the benefit conferred by the particular 
 inventor than to grant him the sole right of making, using 
 and vending his invention for a limited period of time. 
 In the corrupt ages of the Stuarts, it is not to be wondered 
 at, that the prerogative of the crown to grant monopoly 
 rights to first and true inventors, should have been made a 
 
 T. B
 
 2 THE LAW OF PATENTS. 
 
 lever for assuming a prerogative to grant monopoly rights 
 in trade generally. 
 
 In the reign of James the First, to such an extent had 
 this abuse been carried, that it was deemed advisable by 
 the legislature that the rights of the crown in respect of 
 letters patent should be declared by legislative enactment 
 — this was the origin of the Statute of Monopolies. 
 
 It has been supposed that the prerogative of the crown 
 to grant letters patent for inventions was created by this 
 statute, but the most cursory perusal of its enactments and 
 of the authorities which preceded it, shows clearly that, so 
 far from the statute giving to the crown any right which 
 it did not possess before it was passed, it has as its inten- 
 tion the limiting the right of the crown, and the declaring 
 that, which had always been the common law upon the 
 subject. In the first section of this Act, for instance, we 
 find it recited " that all grants of monopolies and of the 
 benefit of any penal laws, or of power to dispense with the 
 law, or to compound for the forfeiture, are contrary to 
 your Majesty's laws, which your Majesty's declaration is 
 truly consonant and agreeable to the ancient and funda- 
 mental laws of this your realm. . . . That all monopolies, 
 and all commissions, grants, licenses, charters and letters 
 patent heretofore made or granted or hereafter to be made 
 or granted . . . are altogether contrary to the laws of this 
 realm, and so are and shall be utterly void and of none 
 efi'ect, and in no-wise to 1)e put in use or execution." 
 
 Section 6 saved the granting of letters patent to inventors 
 in the following words : — 
 
 " Provided also, and be it declared and enacted, that 
 any declaration before mentioned shall not extend to any 
 letters patent and grants of ))rivilege for the term of four- 
 teen years or undir, h(;reafter to be made of the sole 
 working or mnking of any manner of new manufjictures 
 within this nialin, to thf. true and first inventor and 
 inventors of such niiinuf.iclnrcs, which others at the time
 
 INTRODUCTORY CHAPTER. 3 
 
 of making of sucli letters patents and grants shall not 
 use, so as also they be not contrary to the law, nor mis- 
 chievous to the State by raising of prices of commodities 
 at home, or hurt of trade, or generally inconvenient ; the 
 said fourteen years to be accounted from the date of the 
 first letters patents or grant of such privilege 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." 
 
 It will thus be seen that the Statute of Monopolies 
 creates no statutory right, but merely saves the common 
 law rights of the crown; and by sect. 116 of the Patents 
 Designs and Trade Marks Act, 1883, it is enacted, ''Nothing 
 in this Act shall take awai/, abridge or prejudicially affect 
 the prerogative of the crown in relation to the granting of 
 any letters p)atent, or to the iDithholcUng of the grant 
 thereof!' By sect. 46 of the same Act the word ''inven- 
 tion " is defined as meaning " any manner of new tnanu- 
 facture the subject of letters p)atent and grayit of privilege 
 within sect. 6 of the Statute of Monopolies .... and 
 includes an alleged invention." 
 
 So it is that in the present day, notwithstanding the 
 various statutes which have been passed in relation to 
 letters patent for inventions, these monopolies are still 
 granted upon the mere motion of the sovereign, in the 
 exercise of her royal prerogative, and that all that has 
 been done, has been declaratory of the limits within which 
 that prerogative should be exercised, and of the method 
 of procedure to be adopted in obtaining letters patent for 
 inventions. 
 
 For the purpose of supporting the validity of the letters 
 patent it is necessary that the patentee should conform to 
 certain requisites, and these requisites are indicated in the 
 6th section of the Statute of Monopolies. In the first 
 place, he must be the true and first inventor of a new 
 manufacture ; the new manufacture must not be contrary 
 
 B 2
 
 4 THE LAW OF PATENTS. 
 
 to law, nor must it be mischievous to the State, by raising 
 the prices of commodities at liome ; it must not be hurtful 
 to trade, nor generally inconvenient. The Act of 1883 has 
 adopted this definition of an invention, and anything that 
 does not conform with all these requisites is not entitled to 
 be called an invention. The host of important decided 
 cases as to the construction of the 6th section of the 
 Statute of Monopolies, and the enormous expense, and 
 labour and learnino^, which have been devoted to obtaininor 
 these decisions, no doubt induced the legislature to adopt a 
 definition which had in some respects obtained a correct 
 judicial meaning ; but it is doubtful whether it was wise to 
 re-enact it in a form which had, we may say, centuries ago, 
 already become to some extent obsolete. 
 
 The protection of trade by means of Guilds, and of all 
 those various protective schemes which were elaborated 
 in the middle ages, have been found to be fallacious. 
 Industries in this country are no longer protected by the 
 artificial process of law, and therefore it is difiicult to 
 understand the correct meanino- which would be given to 
 the words in the 6th section of the Statute of Monopolies, 
 which refer to an invention having a tendency to raising" 
 the prices of commodities at home, or to hamper trade, 
 or to be generally inconvenient, terms exceedingly vague 
 in themsL-lvcs, aud which the Courts have not had occasion 
 to consider for a very great number of years. 
 
 These matters, and the construction which is to be 
 placed upon the word " invention^'' will have to be dealt 
 with hereafter, when we consider the cases which have 
 been decided upon the matter.
 
 CHAPTER I. 
 
 THE PATENTEE. 
 
 By sect. 46 of the Act of 1883, the word patentee is 
 construed as meaning " the person for the time being entitled 
 to the henejit of the patent;'' consequently it may mean 
 the original grantee, his executors and administrators, or 
 the assignee of the original grantee. By sect. 4 of tlie same 
 Act it is enacted ; — 
 
 (1) " A)iij person, ivhether a British subject or not, ma// 
 mahe an apjilieationfor a patent." 
 
 It will be observed, that there is no limitation whatever 
 preventing a person under incapacity, either l:)y reason of 
 infancy or otherwise, from obtaining a patent. 
 
 (2) " Two or more persons may make a joint applica- 
 tion for a patent, and a patent may be granted to them 
 
 jointly.'' 
 
 By sect. 5, (l) " An application for a p)atent must he 
 7nade in the form set forth in the Schedule to this Act, or 
 in such other form as may be from, time to time prescribed ; 
 and must be left at, or sent by post to, the Patent Office, in 
 the prescribed mamier." 
 
 (2) " An application must contain a declaration to the 
 efect that the applicant is in possession cf an iihvention 
 whereof he, or, in the case of a joiyit application, one or 
 more of the applicants claims or claim to be the true and 
 Jirst inventor or inventors, and for which he or they desire 
 or desires to obtain a patent, and must be accompanied by 
 either a provisioned or complete specif cation."
 
 b THE LAW OF PATENTS. 
 
 Before this Act it was competent for an alien to obtain a 
 ];)atent ; Lord Cairns, in the matter of Wiiilis Patent (a), 
 went even further than this : " I am quite clear that letters 
 patent may be granted to a foreigner who is resident 
 abroad for an invention communicated to him by another 
 resident also abroad." 
 
 There does not appear to have ever been a question as to 
 whether an infant or a married woman mioht, under the 
 old law, have become a grantee of letters patent. The new 
 law, however, is perfectly clear, and sweeps away any 
 doubt that might have been entertained on the subject. 
 
 By sect. 99 of the Patent Act of 18S3, it is found that 
 due provision is made for enabling infants and persons 
 under incapacity to take the requisite steps for obtaining 
 letters patent. It will be observed that sect. 6 of the 
 Statute of Monopolies deals witli new manufactures ivitliin 
 this realm, and the construction which has been placed 
 upon that statute has been, that the consideration for the 
 grant of the patent could be ecpially supported by the pro- 
 cess of inventing a new manufacture, as by the process of 
 importing from abroad a manufacture which up to the 
 time of such importation had been unknown within this 
 realm, 
 „ J / .j Iii the case of Darcy v. Allin (h), it was held, "Where 
 / any man by his own charge and industry, or by his own 
 wit and invention, doth bring any new trade into the realm, 
 or any engine tending to the furtherance of a trade that 
 never was used before, and that for the good of the realm, 
 that in such cases the king may grant to him a monopoly 
 patent for some reasonable time until the subjects may 
 lea I'M tlic same in consideration of the good that he dotli 
 l)i-ing l)y liis invention to the commonwealth, otherwise not." 
 
 So in The ClotJurorhers of Ipsivlch case (c), it was laid 
 
 (a; L. i;., 12 ('h. D. 'M)?k (6) 1 Web. V. C. G. 
 
 (c) Codl.olt's K. 25.-5.
 
 THE PATENTEE. 7 
 
 down that " the brinoino; of a new invention into the kino;- 
 clom equally with the discovery of anything was sufficient 
 to support the king's grant." It is true that these cases 
 were prior to the Statute of Monopolies, but the Statute of 
 Monopolies merely affirmed the common law, hence these 
 cases are applicable. Edgebury v. StejDhens {d) was decided 
 after the statute ; there it was held that "a grant of a 
 monopoly may be to the first inventor, and if the invention 
 be new in England, a patent may be granted though the 
 thing was practised beyond the sea before ; for the statute 
 speaks of a new manufacture luithiu 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 " {d). 
 
 The practice of granting letters patent to the first im- 
 porters of manufactures new within this realm, has been 
 uniformly sustained by our Courts of Law. 
 
 We have seen that the word " invention " is construed by 
 the language of the 6th section of the Statute of Monopolies, 
 that language has been held in Edgebury v. Stephens {d) 
 and the succeeding authorities, to include an importer of 
 an invention. 
 
 In Milligan v. Marsh, (e) it was held by Vice-Chancellor 
 Page-Wood that a person taking out a patent and making 
 a declaration that he is a first inventor when in truth he is 
 only an importer of a communicated invention, makes a 
 false suggestion and the patent is void. 
 
 When the Act of 1883 was passed, doubts were expressed 
 as to whether the effect of sect. 5, sub-sect. 2, was not to do 
 away with the granting of patents for what is known as 
 communications from abroad, these doubts were shared by 
 the author particularly with reference to the case of Milli- 
 gan v. Marsh {supra). The question has since been in a 
 
 {d) 1 Web. P. C. 35. (e) 2 Jur., N. S. 1083.
 
 8 THE LAW OF PATENTS. 
 
 manner touched upon in the ease of In re Avery s patent (f), 
 where although in no way deciding the j)oint it appears to 
 have been considered that such a patent might be granted. 
 Stirling, J. (subsequently affirmed by the Court of Appeal) 
 in giving judgment said, " The rules which have been 
 framed by the Board of Trade under the power conferred 
 upon them by sect. 101 of the statute contain provisions 
 which the statute itself does not contain, in reference to an 
 application for a grant for an invention which has been 
 communicated from abroad. Kule 27 provides that the 
 application for such a grant shall be in the form ' A ' in 
 the 2nd schedule, and that form is different from that which 
 is prescribed by the statute and from the terms in which 
 Lindsay made the application " (his Lordship read the form 
 and continued) " that form has been framed so as to fit in 
 with sect. 5, sub-sect. 2, of the statute which enacts that an 
 application must contain a declaration . . . that the 
 applicant is in possession of an invention, whereof, he . . , 
 ckiims to be the true and first inventor. That form has 
 not been followed in this case. There is no decision that a 
 patent taken out as for an original invention, when in fact 
 the invention patented was communicated from abroad, is 
 void, though there is in the case of MiJligan v. Marsh 
 {supra) what appears to be a dictum of Vice-Chancellor 
 Sir W. Page-Wood, to that efi'ect, nor is there any 
 decision that where an invention is partly original and 
 l»artly communicated from abroad, the part communicated 
 from abroad ought to be distinguished in the specification ; 
 but in the case of Renard v. Levenstein (g), the Lord Justice 
 Knight Bruce expressed great doubt upon the point." . . . . 
 And at p. 31 8 : " That being so notwithstanding that the in- 
 vention was founded on a communication received from 
 abroad it appears to me that it well might be held that the 
 statutory declaration made by the applicant was true in 
 point of law." 
 
 (/) 36 Ch. I). 307. (g) 10 L. T., N. S. 177.
 
 THE PATENTEE. 9 
 
 Only one of the capplicants need make the declaration, a 
 capitalist or other person or persons may join an inventor 
 and obtain a valid joint patent (h). 
 
 Where a patent for an invention is granted to two or 
 more persons in the usual form, each one may use the 
 invention without the consent of the others (i). 
 
 As to the rights of such joint grantees to the profits 
 made by granting licenses, quaere (ih). 
 
 Sect. 34 of the Act of 1883 makes j)i'ovision for the 
 granting of letters patent to the legal representative of a 
 deceased inventor, provided application be made within six 
 months from the decease of the inventor, the application 
 must contain a declaration by the legal representative that 
 he believes such person to be the true and first inventor of 
 the invention. 
 
 We have now to deal with the construction of the words 
 " first and true inventor." 
 
 The reason that the common law has created a prerogative 
 of the crown to grant letters patent to first and true in- 
 ventors, is that the public benefit by the consideration 
 which the inventor gives in return for the monopoly 
 privilege which is granted to him. That consideration may 
 be divided into three parts. 
 
 In the first place, the patentee must be the actual in- 
 ventor, that is, the consideration must move from him. 
 
 Secondly. He must have invented a new and useful 
 invention. 
 
 Thirdly. He must publish his invention. 
 
 (A) See express enactment, sect. 5 (t) Matliers v. Green, L. R. , 
 
 of Patents, &c., Act, 1885. 1 Ch. 29.
 
 10 THE LAW OF PATENTS. 
 
 CHAPTER II. 
 
 THE CONSIDERATION BEING THE ACTUAL INVENTOR. 
 
 An actual inventor is a person who, either by accident 
 or design, produces or discovers an art or manufacture. 
 The process of invention may be divided into two parts. 
 The operation of the mind, and the carrying out of the 
 results of that operation by the hands. It is true that 
 when an invention is the result of pure accident, the 
 physical production may precede the operation of the mind 
 in perceiving its applicability, still, as a general rule, it 
 will be observed that the operation of the mind must 
 precede the physical production. The operation of the 
 mind must in all cases be that of the mind of the inventor. 
 The carrying out of the results of the operation of the 
 mind may be done by the hands of the inventor, or by 
 those of anyone else whom he may employ for that 
 purpose. 
 
 In Tennant's case (a), a material portion of the invention 
 claimed was found to have been suggested by a chemist at 
 Glasgow. Lord EUcnborough held, that the patent was 
 ]jad because the plaintiff was not the inventor. It will be 
 observed in this case, that although it is possible that the 
 pluintiff was the first person to use the particular method 
 I or making a bleaching liquor, still, inasmuch as that 
 lacLhod of producing this l)leaching liquor was thought out 
 by some one else and communicated to the plaintiff", he was 
 
 (a) 1 Wcl). p. C. 125.
 
 THE CONSIDERATION — THE ACTUAL INVENTOR. 11 
 
 lield not to be an inventor. In considering this question 
 we must not confuse the idea of first manufacturer with 
 that of first inventor. 
 
 "A." may have invented something, it may have pleased 
 him to try a few experiments with his invention, and then 
 to abandon it without publication. "B." may subsequently 
 have invented the same thing altogether independently of 
 " A." If " B." applies for letters patent he is at law the 
 first inventor ; but should it be shown that the process of 
 invention was not carried on in "B.'s" mind at all, but that 
 "A." communicated his ideas to " B.," although with the 
 full intention of abandoning them, " B." will not be the 
 first inventor. Take, for instance, the case of Dollond's 
 Patent (h), this was an improvement in the manufacture 
 of object glasses for telescopes. Dr. H. had made and 
 used identically similar object glasses for his own purposes, 
 but he had in no way published his invention. DoUond, 
 w^ithout any communication from Dr. H,, had re-invented 
 these object glasses ; held that DoUond's patent was good. 
 
 In R. V. Wheeler (c), Abbott, C. J., delivering the judg- 
 ment of the court, said : "If the patentee has not invented 
 the matter or thing of which he represents himself to be 
 inventor, the consideration of the royal grant fails." In 
 Barber v. Walduck id), it was proved that the invention 
 was made by a workman in the workshop of the patentee, 
 that he communicated it to his master : the patent was 
 opposed on the ground that the patentee was not the 
 inventor. 
 
 In Bloxham v. Elsee (e), the patentee had worked out 
 the principle of his invention in his own mind, but 
 he intrusted the mechanical details to Mr. D., an en- 
 gineer. Mr. D. had suggested several parts of the 
 machine to the patentee. An objection was taken that 
 
 {b) 1 AVeb. P. C. 43. {d) 1 Carp. P. C. 438. 
 
 (c-) 2 B. A: Aid. 345. {e) 1 Web. P. C. 132, n.
 
 12 THE LAW OF PATENTS. 
 
 tlie patentee was not the inventor : the objection was 
 overruled. It will be seen in this case, that the patentee's 
 mind conceived the invention, and that Mr. D. was only, 
 so to speak, the intellectual hands employed by the 
 patentee to carry out that which he had previously con- 
 ceived in his mind. The summing up of Mr. Baron 
 Alderson, in the case of Minter v. Wells {/), is instructive 
 upon this point : — " The patentee," said the learned judge, 
 " claims under the patent, stating it in his petition to the 
 crown, that he is the true inventor of the machine in 
 question, and if it could be shown that he was not the 
 true inventor, but that some one else had invented it, the 
 crown is deceived in that suggestion, which was the 
 foundation on which it granted the patent, and then the 
 law is, that the patent obtained under such circumstances 
 would be void, and no action could be maintained against 
 
 the party for the infringement of the patent If 
 
 Sutton suggested the principle to Minter, then he, Sutton, 
 would be the inventor ; if, on the other hand, Minter 
 •suggested the principle to Sutton, and Sutton was assist- 
 ing him, then Minter would be the first and true inventor, 
 and Sutton would be a machine, so to speak, which Minter 
 uses for the purpose of enabling him to carry his original 
 conception into effect." 
 
 In Lewis v. Marling {(j), Mr. Justice Bailey said: "If 
 I discover a certain thing for myself, it is no objection to 
 my claim to a patent that another also has made the dis- 
 covery, provided I first introduce it into public use." The 
 suggestion in that case having been that the patentee had 
 acquired liis invention by seeing a model of a simihir 
 machine wliich had Ijccn brouglit irom America.; it was 
 disj^rovcd that he had seen the model, and consequently he 
 was held to be tlic first and true inventor. 
 
 Jn Cornish v. Keene {11) Chief Justice Tindal said : 
 
 (/; 1 Web. P. C. 127. {<j) 10 13. li: C. 22. 
 
 (A) 1 Web. V. C. bOl.
 
 THE CONSIDERATION — THE ACTUAL INVENTOR. 13 
 
 " Sometimes it is a material question to determine whether 
 the party who got the patent was the real and original 
 inventor or not, because these patents are granted as a 
 reward, not only for the benefit that is conferred upon the 
 public by the discovery, but also the ingenuity of the jirst 
 inventor ; and although it is proved that it is a new dis- 
 covery so far as the world is concerned, yet if anybody is 
 able to show that although that was new with the party 
 who got the patent, he was not the man whose ingenuity 
 first discovered it, that he borrowed it from A. or B., or 
 had taken it from a book that was printed in England, and 
 which was open to all the world — then, although the public 
 had the benefit of it, it would be an important question 
 whether he was the first and original inventor of it." There 
 is no doubt that under the circumstances stated by the 
 Chief Justice, the patentee would not be the original 
 inventor. 
 
 We do not propose to deal at length with the cases that 
 succeed Cornish v. Keene. The principle laid down in 
 cases we have cited has been invariably followed. In 
 Gibson V. Brand {i). Chief Justice Tindal said : " A man 
 may publish to the world that which is perfectly new in 
 all its use, and has not before been enjoyed, and yet he 
 may not be the first and true inventor, he may have 
 borrowed it from some other person, or book. The 
 legislature never intended that a person, who had taken 
 his knowledge from the art of another, from the labours 
 and assiduity or ingenuity of another, should be the 
 man who was to receive the benefit of another's skill." 
 The same judge, in Walton v. Potter (k), said : " If the 
 subject-matter of the patent has been published in a 
 dictionary, for example, and, if a man merely adopts it, 
 the merit is so small that his patent for it would be worth 
 nothing." 
 
 (i) 1 Web. r. C. 628. (k) 1 Web. P. C. o92.
 
 14 THE LAW OF PATENTS. 
 
 It is evident tliat cases may arise where the operation 
 of one man's mind may have assisted the operation of 
 another's mind. In this case it will be a question for 
 the jury which M^as, so to speak, the dominant mind 
 and which the servient mind, the dominant mind will be 
 entitled to the patent. In Allen v. Rawson (I), Chief 
 Justice Tindal said : " I think it is too much that a sug- 
 gestion of a workman employed in the course of experi- 
 ments of something calculated more easily to carry into 
 effect the conceptions of the inventor should render the 
 whole patent void." 
 
 In dealing with this branch of the subject, and showing 
 that one of the essential portions of the consideration for 
 the grant of letters patent is the labour of the mind of the 
 inventor, we may cite the case of Patterson v. Gas Light 
 and Cohe Comjjany (m). In that case certain referees had 
 been appointed under the City of London Gas Act to 
 inquire into the subject of the purification of gas. The 
 plaintiff was one of those referees. The referees drew up a 
 report on the 31st January, 1872. The report contained a 
 description of the subject-matter of the plaintiff's patent. 
 Subsequently to the making of the report, but before its 
 delivery to the Board of Trade, the plaintiff, who had really 
 discovered the invention, obtained provisional protection. 
 The action was brought against the Gas Light and Coke 
 Company for infringing his patent. The company alleged 
 that the invention was not new, and also denied the title 
 of the plaintiff to take out a patent in respect of it, on the 
 ground presumably, that he had no consideration to offer 
 to the public in return for the grant of letters patent, he 
 having already disposed to the public of his knowledge 
 upon the subject for other considerations. In the judgment 
 of the House of Lords, Lord Blackburn said ; " It seems to 
 mc clear that the duty of the referees under the Act was 
 
 (l) 1 C. B. 574. (m) h. R., 3 App. C. at p. 243.
 
 THE CONSIDERATION — THE ACTUAL INVENTOR. 15 
 
 to ascertain liow far tlie gas could be practically purified 
 by eacli company. If they found that gas containing not 
 more than a certain limited amount of impurity could be 
 ])ractically produced by any means, they were to prescribe 
 the maximuni amount accordingly, and they were by 
 obvious implication, though it is not expressly enacted, to 
 make public how this degree of purity could practically be 
 obtained. It was not material to them to inquire whether 
 these were means previously known, which the companies 
 had failed to make use of from parsimony, negligence or 
 ignorance, or whether there was some new idea which had 
 been developed during the course of their inquiries, which 
 made these old means practicably valuable when before 
 they were not. They were not at all required to dis- 
 tinguish new from old. In all these respects the rejDort 
 was quite different from a specification. But, as soon as 
 they became aware that the gas could be practicably 
 brought to this degree of purity, their duty was to fix the 
 maximum accordingly, and to make known to the public 
 the means by which this could practicably be done. The 
 report of the 31st January, 1872, is drawn up as it ought 
 to have been. It shows that, by some means there 
 explained, purity to a great extent could practicably be 
 obtained, it makes no attempt to show how much of this 
 was previously known though neglected, and it nowhere 
 states that any part of what was now disclosed was 
 invented by one of their own body." In the Court of 
 Appeal Lord Justice James had said(n): " Although it is 
 not necessary for the determination of this suit to pronounce 
 any final decision on this point, we deem it right to say 
 that we think it at the very least very c|uestiouable whether 
 it can be competent for a member of an official commission 
 or committee to take out a patent for the subject-matter of 
 their official investigation, ... It is to be borne in mind 
 
 (n) L. R., 2 Ch. D. at p. 832.
 
 16 THE LAW OF PATENTS. 
 
 that the report then made belonged absolutely to the State. 
 Every fact and figure in it had been ascertained and 
 obtained at the public expense, every hour of every referee 
 and of the secretary employed in the production of it was 
 public time . . . the consideration for every patent is the 
 communication of useful information to the public. What 
 consideration is there when the information was already 
 the property of the State." 
 
 These judgments, although going to a point which was 
 not absolutely necessary for the decision of the case (for 
 the case was decided upon the ground of want of novelty 
 in the invention), tend to show that it was in the minds of 
 the judges that the mental labour of making the discovery 
 being an essential element for the consideration of the 
 grant, if that mental labour had already been paid for by 
 tlie State, it failed as a consideration to support the patent. 
 
 By sect, 35 of the Act of 1883, "A j^cttent granted to the 
 true and first inventor shall not he iyivalidated hy an appli- 
 cation in fraud of him, or hy p)TOvisio7ial p)rotection ohtained 
 thereon, or hy any use or pmhlication of the invention 
 suhsequent to that fraudtdent ajjplication during the p)(iTiod. 
 of provisional protection'' This clause is only a re-enact- 
 ment of that which had been decided to be the law previous 
 to the Act. In Ex 2^cirte Scott and Young (o), the servant 
 had filed a provisional specification of an invention, after 
 which the master filed a specification for a similar invention, 
 and subsequently filed a complete specification, and obtained 
 letters patent. It was held that, under the circumstances, 
 the Great Seal might be affixed to the letters patent of the 
 servant's invention, and that the patent might bear the 
 date of his provisional specification. 
 
 In the case of Ex parte Bates and Redgate (p>), it was 
 held, that leaving a provisional specification, and obtaining 
 u provisional })rotection, does not prevent a second applicant 
 
 (o) L. W., Cli. Apj). 274. (;>) L. U , 1 Cli. Ap]>. 577.
 
 THE CONSIDERATION THE ACTUAL INVENTOR. 17 
 
 from leaving a specification of a similar invention, and ob- 
 taining valid letters patent for tlie invention before six 
 montlia have elapsed from the time when the first provisional 
 specification was left, and in such a case letters patent will 
 not be granted to the first applicant for any part of his 
 invention, which is covered by the letters patent already 
 obtained by the second applicant, but in this case there 
 was no suggestion of fraud on the part of the second ap- 
 plicant. This decision has, however, been doubted in Re 
 Dering's Patent (q), by Lord Cairns, who said : " I may, 
 however, state my objections to that decision" (Bates and 
 Redgate), " which I never could thoroughly understand ; it 
 has always seemed to me that if Parliament held out to 
 inventors the advantage they could get from provisional 
 protection, the inventor should have the enjoyment of that 
 advantage for the six months granted to him. Parliament 
 intended the six months to be for the completion of the 
 invention, and for perfecting the specification, and never 
 said that the applicant should be deprived of or lose that 
 privilege for want of any due diligence on his part." 
 
 The difficult questions, however, which arise in these 
 cases, seem to be set at rest by the 14th section of the Act 
 of 1883 : " Where an application for a patent in respect 
 of an invention has been accepted, the invention may, 
 during the period between the date of the application and 
 the date of sealing such patent, be used and published 
 ivithout p>rejudice to the patent to be granted for the same. 
 And such iwotection from the consequences of use and 
 publication is in this Act referred to as j^rovisional pro- 
 tection." 
 
 The general question of concurrent applicants, where 
 there is no fraud, that is, where each applicant is in a 
 position to offer the consideration of mental labour, will 
 be considered in the next Chapter. It is only material 
 
 (q) L. R., 13 Ch. D. 393. 
 T. C
 
 18 THE LAW OF PATENTS. 
 
 here so far as concurrent application is brouglit about by 
 reason of one man fraudulently appropriating the invention 
 of another. 
 
 The right of the Crown to grant letters patent to true 
 and first importers of inventions appears to have been a 
 common law right. We find that so far back as 1567 
 a patent had been granted to one Hastings (r) for the 
 making of frisadoes in consideration of his having i?}i- 
 2:)orted the skill of manufacturing them from abroad. So 
 in Mathey's case, " It was granted unto liini the sole 
 making of knives with bone hafts and plates of lattice, 
 because, as the patent suggested, he brought the first use 
 thereof from bevond the seas." This was in the reio;n of 
 Elizabeth. In the clothworkers of Ipsw^ich case we have 
 this {s) said, " The king granted unto B. that none besides 
 himself should make ordnances for battery in the time of 
 war : such grant was adjudged void. But if a man hath 
 brought in a new invention and a new trade in the 
 kingdom in peril of his life and consumption of his estate 
 or stock, &c., or if a man hath made a new discovery of 
 anything, in such cases the king, of his grace and favour in 
 recompense of his costs and travail, may grant by charter 
 unto him that he only shall use such a trade or trafique for 
 a certain time ; because at first the people of the kingdom 
 are ignorant, and have not the knowledge or skill to use it. 
 But when that patent is expired the king cannot make a 
 new grant thereof." This was in 1615. 
 
 Tlien came the Statute of Monopolies, and we have seen 
 that the 6th section of that Act carefully excepted " the 
 sole working or making of any manner of new manu- 
 factures within this realm, to the true and first inventor 
 or inventors of such manufactures, which others at the time 
 of making such letters patents and grants shall not use." 
 
 Afterwards came the decisions of Darcy v. AlHn.(i), and 
 
 (r) 1 Wob. p. C. G. (s) 1 Web. P. C. G ; 1 Godb. 252, 254. 
 
 (/) 1 Web. P. C. G.
 
 THE CONSIDERATION — THE ACTUAL INVENTOR. 19 
 
 Edgeburij v. Stevens (u), where it is said, " for the statute 
 speaks of new manufactures within this realm, so that if 
 it be new here it is within the statute, for the Act intended 
 to encourage new devices useful to the kingdom, and 
 whether learned by travel or by study it is the same thing." 
 See the remarks of Eyre, C J., in Boulton v. Bull {x). 
 
 In the early days of manufacturing enterprise, when true 
 inventors were so exceedingly rare as scarcely ever to be 
 heard of, the word inventor had not acquired the meaning 
 which it has at present, and seems to have been used to 
 designate a first introducer rather than a first inventor. 
 In the early reports shortly succeeding the Statute of 
 Monopolies we do not find the judges in any difficulty in 
 dealing with the words " true and first inventor," showing 
 that the word inventor had not the precise meaning which 
 it has since acquired. 
 
 In Marsden v. Saville Street Co. (y) in the Court of 
 Appeal, Jesse], M. R., said, speaking of imported inventions, 
 *' It has been argued that before the Statute of James such 
 patents were valid and were allowed by the judges, and 
 that the statute merely restricts the duration of the patent 
 and does not destroy the right as it previously existed. 
 Even supposing that were so, the statute defines who are 
 considered to be worthy recipients of the grant of such a 
 monopoly, as it was then called, and the definition so given 
 has been followed ever since. It is difficult to say a priori 
 on what principle a person who did not invent anything, 
 l)ut who merely imported from abroad into this realm the 
 invention of another, was treated by the judges as being 
 the first and true inventor. I have never been able to 
 discover the principle ; and although I have often made 
 enquiry of others, and of some who are more familiar with 
 the patent law than even I am, although I cannot pretend 
 
 (m) 1 Web. P. C. 35. {x) 2 H. Bl. 491. 
 
 (y) L. R., 3 Ex. D. 203. 
 
 C 2
 
 20 THE LAW OF PATENTS. 
 
 not to possess a considerable familiarity with it, I could 
 never get a satisfactory answer. The only answer was, 
 ' It has been so decided and you are bound by the 
 decisions/ But it is an anomaly as far as I know, not 
 depending on any j^rinciple whatever. It has never been 
 declared by any judge or authority that there is such a 
 principle, and, not being able to find one, all I can say 
 is that I must look on it as a sort of anomalous decision 
 which has acquired by time and recognition the force of 
 law." 
 
 A patent granted to a British subject, in his own name, 
 for an invention communicated to him by a foreigner, the 
 subject of a state in amity with this country, is not void, 
 although such patent be in truth taken out and held Ijy the 
 grantee in trust for such foreigner (:). 
 
 Sect. 23 of the Act of 1883, provides for the registration 
 of owners of patents. Sect. 85 prohibits the registration of 
 any trust. This does not abolish trusts, but merely prohibits 
 the registration of trusts. 
 
 The importer of an invention need not be a meritorious 
 importer, but may only be a mere agent, Beard v. 
 Egerton (a). 
 
 The importer need not have acquired the information 
 from a foreigner al)road, but may have done so from a 
 British subject abroad (/>). 
 
 But a communication made in England by one British 
 subject to another, of an invention, does not make the 
 person, to whom the communication is made, the first and 
 true inventor within the meaning of the statute 21 Jac. 1, 
 c. 3, so as to enable him to take out letters patent for the 
 invention (c). 
 
 When a patent is taken out as for an original invention 
 
 (z) Heard v. Ei/rrton, 3 C. 1>. p. 710, ])Cr Eiirl, (". J. 
 97. (c) Marsden v, Saville Street 
 
 (a) Supra, at p. 129. Co., C. A. ; L. R., 3 Ex. D. 203. 
 {h) Nickeb V. Ross, 8 C. B. at
 
 THE CONSIDEllATION — THE ACTUAL INVENTOU. 21 
 
 the subject of the patent being, in fact, a communication 
 from abroad, the patent is void. Milligan v. Marsh (d). 
 
 " The merit of an importer is less than of an in- 
 ventor and it is an argument against the patent, 
 
 that it was imported and not invented. I do not say it 
 takes away the merit, but it makes it much smaller." Per 
 Lord Brougham in re Soames Patent (e). 
 
 We have now shown what is meant when it is said that 
 the consideration for a jDatent must move from the patentee 
 personally. 
 
 (cZ) 2 Jur. N. S. 1083 ; but see D. at p. 31 G. See, also, Rniard v. 
 remarks of Sterling, J., upon this Levinstein, 10 L. T. N. S. 177. 
 case. In re Avery's patent, 36 C'li. (e) 1 Web. P. C. 733.
 
 22 THE LAW OF PATENTS. 
 
 CHAPTER III. 
 
 THE CONSIDERATION (continued) A NEW AND USEFUL 
 
 INVENTION. 
 
 The second branch of the consideration is that the in- 
 ventor must have invented a new and useful invention. 
 It is evident that a person may have invented a manufacture 
 which, although new to him, may not be new so far as the 
 workl is concerned. He may have had all the work and 
 labour of discovering for himself a process which, although 
 not generally known, yet the previous knowledge of which 
 may amount to prior user. In such a case, inasmuch as 
 the public are considered at law to be in full possession of 
 the invention, it is evident that the applicant for letters 
 patent has no consideration to offer in return for the grant. 
 The 6th section of the Statute of Monopolies defines a 
 new invention as " any manner of new manufacture which 
 others at the time of making such letters patent shall 
 not use." 
 
 We have seen that the Act of 1883 has adopted this 
 definition of an invention. We have now to consider the 
 legal meaning which has been placed upon the words " New 
 Manufactui'cs/' 
 
 A new manufacture docs not mean, as it is errone- 
 ously sometimes supposed, only a new article of manu- 
 facture, ])ut it also means a new process or method 
 of manufacturing something new or old ; it docs not 
 mean a new principle of manufacturing, but it means 
 a new appUcation of principles. No man can claim an
 
 THE CONSIDEEATION — A NEW AND USEFUL INVENTION. 23 
 
 invention in a principle (a), for that would be to invent the 
 laws of nature, which have always existed. Man merely 
 discovers the ^Drincij^le, and if, when he discovers a principle 
 he can discover a method of utilizing the principle so as to 
 make it applicable to the production of a new manufacture, 
 he can obtain a patent for the method. In Hornhlower v. 
 Boidtonih), decided in 1799, the patent was granted for a 
 method for lessening the consumption of steam and fuel in 
 fire engines, by applying certain principles of combustion. 
 It was held that the invention could be made the subject 
 of a patent. The language of the learned judges does not 
 seem very clearly to expound the doctrine upon which that 
 judgment was based ; but Mr. Justice Grose said, " I am 
 inclined to think that the patent cannot be granted for the 
 mere principle ; but I think that, although in words the 
 privilege granted is to exercise the method of making or 
 doing anything, yet if that thing to be made or done be a 
 manufacture, and the mode of making that manufacture is 
 described, it thus becomes in effect (by whatever name it 
 may be called) not a patent for the mere principle, but for 
 the manufacture of the thing so made, and not merely for 
 the principle upon which it is made." In Boidton v. Bull (c) 
 the Lord Chief Justice Eyre said : " When the effect 
 produced is some new substance or composition of things, 
 it should seem that the privilege of sole working or making 
 ought to be for such new substance or composition, without 
 regard to the mechanism or process by which it has l)een 
 produced, which, though perhaps also new, will be only 
 useful as producing the new substance. When the effect 
 produced is no substance or composition of things, the 
 
 (a) Boulton v. B%dl, 2 H. Bl. % v. Potter, Mac. P. C. 240 ; 
 
 479 ; Hornhlower v. Boulton, 8 T. Patterson v. The Gas Light Co., 
 
 K 101 ; Jupe v. Pratt, 1 Web. P. L. R., 3 App. Cas. 246. 
 C. 146 ; Neilson\. Harford, 1 Web. (6) 8 T. Rep. 95. 
 
 P. C. 342 ; The Househill Co. v. (c) 2 H. Bl. 463. 
 
 Neilson, 1 Web. P. C. 673 ; Cross-
 
 24 THE LAW OF PATENTS. 
 
 patent can only be for the mechanism, if new mechanism is 
 used, or for the process, if it be a new method of operating 
 with or without old mechanism, by which the effect is 
 produced." Mr. Justice Heath said, "What then falls 
 within the scope of the proviso 1 such manufactures 
 as are reducible to two classes : the first class includes 
 machinery, the second, substances, such as medicines formed 
 by chemical and other processes, where the vendible sub- 
 stance is the thing produced, and that which operates 
 preserves no permanent form ; in the first class the machine, 
 and in the second the substance produced, is the subject 
 for the patent. I approve of the term ' manufacture ' 
 ill the statute, because it precludes all nice refinements ; 
 it gives us to understand the reason of the proviso — 
 that it w^as introduced for the benefit of trade." With 
 reference to this judgment, we may point out that a 
 new chemical substance is not a new manufacture, as 
 the words " new manufacture " are understood in modern 
 times, but that in the case of manufacturing a new 
 chemical substance, the process of making that sub- 
 stance is the subject of the patent, and not the substance 
 when made. 
 
 Upon perusing the cases which we propose to quote, it 
 will be seen that the more modern view of the construction 
 of the words " new manufacture " has been the result of a 
 great deal of development. At first the judges seemed to 
 lie inclined to limit the subject-matter of letters patent to 
 new articles produced ; but as the arts and manufactures of 
 the country progressed and increased, it was seen that by 
 far the most important inventions were inventions in the 
 process of making old and well-known articles of commerce, 
 and so it became evident that should the construction of 
 the words "new manufactures" be entirely limited to the 
 production of new articles, to the exclusion of the process 
 of manufacturing old articles liy cheaper, better and more 
 improved methods, the inducement which the common law
 
 THE CONSIDERATION — A NEW AND USEFUL INVENTION. 25 
 
 intended to give to inventors would be curtailed to the 
 narrowest possible limits. 
 
 Hull V. Jarvis (d) was an action for the infringement of 
 a patent for the improvement of the manufacture of lace 
 by the use of the flame of gas for the purpose of singeing 
 the fluffy ends of the surface of lace manufactured from 
 cotton. For the defendants it was contended that the 
 process was not new. Fire and flame had been applied for 
 similar purposes before the plaintiff's invention. The mere 
 doing that with the flame of gas could not be the subject- 
 matter of a patent. The patent, which was clearly only 
 for a process, was supported. In Jones v. Pearce (e) the 
 patentee had used the principle of suspension to the manu- 
 facture of v/heels; the patent was supported because, 
 although the principle could not be patented, the method 
 of applying that principle to the manufacture of wheels was 
 properly the subject of a patent. In Russell v. Coidey {/) 
 the patent, wdiich was for an improved process of manu- 
 facturing iron tubes, was supported. Lord Lyndhurst, in 
 giving judgment, said : " It is an invention to manufacture 
 tubes for gas and other purjDOses by welding them without 
 the use of any mandril or internal support, by which 
 certain advantages are produced." 
 
 In Walton v. Pottering), Chief Justice Tindal said: 
 " Now there can be no doubt whatever, that although one 
 man has obtained a patent for a given object, there are 
 many modes open for a man 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 
 
 {d) 1 Web. P. C. 100. See also Young \. Fernie, 12 W. R 903; 
 
 Booth V. Kennard, 1 Hurl. & N. NeivallY. Elliott, 13 W. R. 11. 
 527 ; Higgs v. Godwin, 27 L. J., (e) 1 Web. P. C. 122. 
 
 q. B. 421 ; Hills v. Loiidon Gas (/) 1 Web. P. C. 459. 
 
 Light Co., 29 L. J., Ex. 409 ; [g) 1 Web. P. C. at p. 590.
 
 -r 
 
 26 THE LAW OF PATENTS. 
 
 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." In this case, 
 the learned judge by the word " object " must have meant 
 the method of producing an article. 
 
 The same judge, in Gibson v. Brand {h), said : " The 
 patent is taken out ' for a new or improved process for the 
 manufacture of silk, and silk in combination with certain 
 other fibrous substances,' taken out therefore strictly for a 
 
 process undoubtedly there is a very strong reason 
 
 to suppose if the specification is carefully and properly 
 prepared, so as to point out with great distinctness and 
 minuteness what the process is, that such a patent may be 
 good in law. Such certainly was the opinion of Chief 
 Justice Eyre, in Boidton v. Watt (i), and such also appears 
 to have been the opinion (carefully guarding against any 
 abuse of that doctrine) of Lord Tenterden in the case of 
 The King v. Wheeler [k), who says that, ' the subject- 
 matter of letters patent, i. e. the word " manufacture," as 
 used in the Statute of James, is generally understood to 
 denote either a thing made, which is useful for its own 
 sake, and vendible, or to mean an engine or instrument, or 
 some part of an engine or instrument to be employed 
 either in the making of some previously-known article, or 
 
 in some other useful purpose or it may perhaps 
 
 extend also to a new process to be carried out 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 
 to a better or more useful account.' " 
 
 Since the date of these earlier decisions the law seems to 
 liavo been considered as settled upon the subject. In 
 Bewlcij v. Hancock (/), T^ord Cranworth said : *' A discovery 
 
 (h) 1 Web. P. C. 033. (/.•) 2 B. ik A. 350. 
 
 (i) 2 H. VA. 4G8. (/) 6 De G., M. & G. 403.
 
 THE CONSIDERATION— A NEW AND USEFUL INVENTION. 27 
 
 that the mixture of two or more simple substances in certain 
 definite proportions will form a compound substance valuable 
 for medical or other qualities, would afford a good ground 
 for a patent. A discovery of some machinery, whereby 
 such a mixture might be more quickly and effectually 
 accomplished, might be the foundation of another patent." 
 In Sinvpson v. Holiday {in), the specification said, " 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 nearly to, its boiling point until it assumes 
 a rich purple colour," The patentee claimed " the manu- 
 facture or preparation of red or purple dyes by heating 
 aniline dyes with arsenic acid as hereinbefore described." 
 Lord Chelmsford, in giving judgment, said: "There is 
 nothing on the face of the specification to show that the 
 invention described is not, in every part of it, the subject 
 of a patent." It is obvious that there may be many 
 different processes of accomplishing the same object ; if 
 some of the processes are old, and that which is claimed is 
 merely a new method, the subject of the invention will be 
 confined to that method [n). 
 
 Hereafter, in considering the specification, we shall have 
 to discuss the limitations within which the patent for a 
 new process will be held valid, and the cases which have 
 been decided upon the point. 
 
 Any addition to or subtraction from any known 
 machine or process causing the old machine or process to 
 accomplish an object in a more speedy, perfect or econo- 
 mical manner, is evidently the subject of a patent. In 
 Ilornhlower v. Boulton (o) Mr. Justice Grose said : " A 
 doubt is entertained whether there can be a patent for the 
 addition of an old manufacture, this doubt rests altogether 
 upon Bircot's case (p), if that were to be considered as law 
 
 (m) L. R., 1 H. L. 315. (o) 8 T. Rep. 104. 
 
 (7i) BoviU V. Fwim, 11 Exch. 739. (p) 3 lust. 184.
 
 28 THE LAW OF PATENTS. 
 
 at this date (1799) it would set aside many patents for 
 
 many ingenious inventions if indeed a patent 
 
 could not be granted for the addition it would be depriving 
 the public of one of the best benefits of the statute of 
 James." In Lister v. Leather (q), Lord Campbell said : 
 " The assertion that all patents for improvements of exist- 
 ing patents must be void, is obviously untenable." In 
 Fox V. Dellestable (r), V.-C. Malins said : " No doubt a 
 man may make an invention which is partly covered by 
 an existing patent, but he cannot use it without the 
 licence of the patentee. He may wait for the expiration 
 of the patent and take out one himself. If his invention 
 be novel, that patent will be valid." 
 
 An application of an old machine or an old material for 
 a new purpose, may be the subject of a patent ; for in- 
 stance, Muntz V. Foster {s) was an action for an infringe- 
 ment of a patent for the manufacture of metal plates to be 
 used for sheathing the bottoms of ships. The improvement 
 consisted of using an alloy of zinc and copper in certain 
 proportions for the manufacture of the plates, and for this 
 purpose copper alone had hitherto been used. The alloy 
 of zinc and copper was to produce an old and well-known 
 material, still the application of that old material to sheath- 
 ing of ships had not before been discovered, and upon its 
 being shown that such an application was a great improve- 
 ment on the old method of sheathing Avitli copper, it was 
 held that the patent could be sustained. 
 
 The mere application of a known instrument or 
 machine to a new purpose will not su]»})ort a patent 
 unless the means or method of the application is also 
 
 ]1.-\V (0. 
 
 In ]{('(). V. Cutler (u) Lord Denman said: "With regard 
 
 i<l) 8 K. (t 15. at p. 1017. r. C. 115. 
 
 (r) 15 W. R. at j). 195. (0 Pow\. Tminton, 9 Jur. 1056. 
 
 («) 2 Wob. P. (.'. 103 ; see also (t/) 3 C. & K. 215. 
 
 llayward v. Ilavdlton, (Iriffin,
 
 THE CONSIDERATION A NEW AND USEFUL INVENTION. 29 
 
 to the third and fourth claims, in which the defendant 
 claims the application of tubes in the construction of 
 tubular flues, it appears to me that he has no right to take 
 out a patent for the mere application of particular things 
 to any particular purpose. If he had made a new com- 
 bination, that would have been a new discovery, and a 
 proper subject for a patent ... I think that the appli- 
 cation of an article to produce any particular result, the 
 party having no claim either to the mode of producing the 
 article, or to the mode of applying it for attaining that 
 result, forms no ground for a patent." Lord Denman's 
 distinction between the mere application of an old instru- 
 ment to a new purpose and a new combination, appears to 
 have been followed, and to be a correct exposition of the law. 
 
 In Jackson v. Needle (x) North, J., said : " The plaintifi"'s 
 first witness seemed to have an idea that because the parcels 
 post was new, therefore a thing to be sent through the 
 parcels post was new : there is no foundation for that." 
 
 In the case of Steiner v. Heald (y), in the Exchequer 
 Chamber, the head-note is inexplicable and erroneous. If 
 the case itself is read, it will be found to be in accordance 
 with the other decided cases on this subject : In the 
 ordinary process of dyeing, by means of madder, the 
 colouring matter was obtained from fresh madder by the 
 application of hot-water ; the refuse, after boiling, w^as 
 called spent madder. It had long been known to dyers, 
 that a portion of the colouring remained in the spent 
 madder, but it was not known how to extract it, as it 
 remained in combination with the plant ; recently it was 
 discovered that by means of acid and hot-water the pure 
 colouring matter of madder, called garancine, could be 
 obtained from fresh madder, and that this process extracted 
 the colouring matter of the plant. The plaintifi" obtained 
 a patent for the new manufacture of garancine, by applyino- 
 
 (x) Griffin, P. C, at p. 134. (y) 20 L. J. Exch. 410.
 
 30 THE LAW OF PATENTS. 
 
 the same process of acid and hot-water to the spent madder ; 
 since his invention the spent madder, which was previously 
 worthless, became valuable. 
 
 At the trial Chief Baron Pollock directed the jury to find 
 a verdict for the defendant, upon the ground apparently 
 that there was no subject for a patent; in reversing this 
 decision Mr. Justice P^^on said : " Now spent madder 
 might be a very different thing from fresh madder in its 
 properties, or it might be in effect the same thing as fresh 
 madder in its properties, chemical and otherwise, with the 
 difference only that part of its colouring matter had been 
 already extracted. Again, the properties, chemical and 
 otherwise, might or might not have been known to chemists 
 and other scientific persons, so that they could find out 
 whether fresh madder and spent madder were different or 
 substantially the same things. The points appear to us to 
 be questions of fact, and materially to affect the validity or 
 invalidity of a patent." It will appear, therefore, that the 
 Court were of opinion that it was a question of fact whether 
 spent madder and fresh madder were the same thing in 
 their chemical properties ; if they were, no patent ; if they 
 were not, the validity of the patent would be sustained, 
 but the fact must be decided by the jury. 
 
 In Bush V. Fox [z) Chief Baron Pollock graphically 
 illustrated the point we are now discussing. He said : " I 
 think if one man invents a new mode of looking at the 
 moon, somebody else cannot take out a new patent for 
 looking at the sun. If a man were to take out a patent 
 for a telescope to be used to make observations on land, I 
 <lo not think anyone could say, ' I will take out another 
 patent for another telescope to be used for taking obser- 
 vations on the sea.' " That case was ultimately confirmed 
 in the House of Lords {((). In Brook v. Aston, Baron 
 ^lartin said (h) : " The application of a well-known tool 
 
 (?) Macrory'tt P. C. 104. (a) 5 H. L. C. 707. 
 
 (/.) « E. ct B. 485.
 
 THE CONSIDERATION — A NEW AND USEFUL INVENTION. 81 
 
 to work previously untried materials, or to produce new 
 forms, is not a subject of a patent." 
 
 In Bamlett v. Pickslcy (c), Blackburn, J., said : " There 
 may be cases in which a thing is used which would be 
 identically the old one to produce a new product altogether, 
 but applied to something so totally different that there is 
 an obvious invention in it. Take this example. It was 
 discovered that by taking flour and making it into tough 
 dough by means of machinery you could spin it into a pipe 
 known as macaroni pipe. An ingenious man knowing how 
 to spin flour into a pipe, it occurred to him to take red-hot 
 iron, and spin that into pipes by machinery in the same 
 way as flour was spun into a pipe for macaroni. That was 
 not an invention as it turned out, but had that been so, 
 and had he been able to spin the iron in the same way 
 as flour was spun into pij^es for macaroni, few men I think 
 would denv that there was an invention there, it beiuQ^ a 
 product so completely new, and that it would be an inven- 
 tion for makino' a new manufacture which others did not 
 
 o 
 
 make, because the result was so totally difi'erent, even 
 although in fact the machinery which was used for the 
 purpose, except that it was made stronger, would be inden- 
 tically the same as the machinery originally used for the 
 jDurpose of making the macaroni." 
 
 It is evident to anyone considering these cases, that the 
 border line is exceedingly fine. In Penn v. Bihhy (d), 
 Lord Chelmsford, L. C, recognized the difficulty of stating 
 any definition which should be applicable to every case. He 
 said : " It is very difficult to extract any principle from the 
 various decisions on this subject which can be applied with 
 certainty to every case, nor indeed is it easy to reconcile 
 them to each other." He then proceeds to dissent from 
 the definition given by Lord Campbell in Brook v. Aston^ 
 doubting the accuracy of the report, and proceeds to say : 
 
 (c) Griffin, P. C, at p. 42. See Office Reports, 17. 
 also Croysdale v. Fisher, 1 Patent (d) L. R. 2 Ch. App. 127.
 
 3Z THE LAW OF PATENTS. 
 
 " Lord Chief Justice Cockburn approaches much nearer to 
 the enunciation of a principle, or at least of a rule for 
 judging in these cases, in Harwood v. G. N. R. (e), where 
 he says, ' although authorities established the proposition 
 that the same means, apparatus, or mechanical contrivance 
 cannot be applied to the same purpose, or to purposes so nearly 
 cognate and similar as that the application of it in one case 
 naturally leads to the application of it when required in 
 some other, still the question in every case is one of degree, 
 whether the amount of affinity or similarity which exists 
 between the two purposes is such that they are substantially 
 the same, and that determines Avhether the invention is so 
 sufficiently meritorious as to be deserving of a patent.' " 
 The case of Harwood v. G. N. R., quoted above by the 
 Lord Chancellor, was carried to the House of Lords, where 
 Lord Chelmsford, then Lord Chancellor, said : " The question 
 is, whether there can be any invention of the plaintiff in 
 having taken that thing, which was a fish for the bridge, 
 and having applied it as a fish for the railway, upon that I 
 
 think the law is well and rightly settled viz., 
 
 that you cannot have a patent for a well-known mechanical 
 appliance, merely because it is applied in a manner or to a 
 purpose which is analogous to the manner or purpose in or 
 by which it has hitherto been notoriously used (/)." It 
 may be noticed that where the object of a patent is old, 
 and the means to effect it only arc new, the Court 
 construes the invention strictly, as it looks jealously at the 
 claims of inventors seeking to limit the right of the public 
 to a well-known object {g). 
 
 (e) 29 L. J., Q. B. 193; also 135, n. ; limhion v. Craidei/, L. R., 
 
 Ralston v. Smitk, 11 H. L. Cas. \0 Eq. 522 ; The Patent Bottle E71- 
 
 223 ; Jordan v. Jfoore, L. R., 1 C. velope Co. v. Seymer, 5 C. B., N. S. 
 
 P. 624; Parkes v. Stevens, L. R., 1G4 ; Ilorton v. Mabon, 12 C, B. 
 
 8 Eq. 3G7 ; li. Pt., ') Ch. 36. N. S. 437 ; Ormson v. Clarl-e, 14 
 
 (/) 11 H. L. Cas. G54. C. B., N. b. 475. 
 
 (/7) C'urti.<^ V. I'latf, 3 Ch. D.
 
 THE CONSIDERATION — A NEW AND USEFUL INVENTION. 83 
 
 A new combination is an invention consisting of the 
 discovery that two or more known processes, materials, or 
 implements when used together will become applicable to a 
 new purpose, or will effect an old purpose in a better, 
 cheaper or more expeditious manner than it had before 
 been done. 
 
 In Uuddart v. Gi'imshaw (A), Lord EUeuborough said : 
 "I suppose it will not now be disputed that a new com- 
 bination of old materials, so as to produce a new effect, 
 may be the subject of a patent." There may be a valid 
 patent for a new combination of materials previously in use 
 for the same purpose (i). 
 
 In Foxwell v. Bostoch (k) , Lord Westbury said : " If a 
 combination of machinery for effecting certain results has 
 previously existed and is well known, and an improvement 
 is afterwards discovered, consisting, for example, of the 
 introduction of some new parts, or an altered arrangement 
 in some particulars of the existing constituent parts of the 
 machine, an improved arrangement or improved combination 
 may be patented." 
 
 Bovill's patent consisted of a combination of a blast, with 
 an exhaust of air to millstones, for the purpose of preventing 
 the heat generated in grinding corn and saving the dust 
 generated. It was proved that a blast and an exhaust had 
 been used separately. But that the combination was a 
 substantial improvement. The patent was held good (/). 
 
 In Crane v. Price {m), the patentee, in his specification, 
 after specifically disclaiming the use of the hot blast or the 
 
 (h) Dav. P. C. 267. B.725; Brunion v. Ilawles, 4 B. 
 
 {i) Per Lord Eldon, Hill v. & Aid. 550 ; Leivis v. Davis, 1 
 
 Thompson, 1 Web. P. C. 237. Web. P. C. 488 ; Carpenter v. 
 
 (k) 12 W. R. 725. See also Smith, 1 Web. P. C. 538; Allen 
 
 Harrison y. The Anderston Foundry v. Rawson, 1 C. B. 551 ; Lister v. 
 
 Co., infra, p. 98 ; Hayward v. Leather, 27 L. J. Q. B. 295 ; Dart- 
 
 ffamilton, Griffin, P. C. 115 ; aud gerjield v. Jones, 13 L. T. R., N. S. 
 
 Moore X.Barrett, Griffin, P. C. 158. 142. 
 
 (l) Bovill V. Keyworth, 7 E. k (m) 1 Web. P. C. 393. 
 
 T. D
 
 34 THE LAW OF PATENTS. 
 
 use of anthracite coal, proceeded : " What I do claim as ray 
 invention is, the application of anthracite or stone coal or 
 culm combined with the usiusf of hot air blast in the 
 smelting and manufacture of iron from ironstone, mine or 
 ore as above described." The patent was held valid for 
 the combination. This decision was afterwards questioned 
 by Lord Justice James in Murray v. Clayton [n), but not 
 on the ground that a combination could not form the subject 
 of a patent. In Murray v. Clayton the decision was 
 followed, and a patent of this description was upheld. 
 
 A patent was granted in 1870 for railway signalling 
 apparatus; in 1871 another patent was granted for other 
 improvements in railway signalling apparatus ; in 1874 the 
 plaintiffs obtained a patent for a combination which, in 
 effect, was constituted of the improvements in the 1870 
 and 1871 patents; any person of ordinary knowledge of 
 the subject would, by placing the two inventions of 1870 
 and 1871 side by side, be able to effect the desired combi- 
 nation without making any further experiment or gaining 
 any further information. Field, J., held the 1874 patent 
 void (o). 
 
 In Cannington v. Nuttall (p), it was held that the patent 
 could be sustained, although each principle or process in 
 it was previously well known, provided that the mode 
 of combining these processes was new and produced a 
 beneficial result, and provided also that the specification 
 claimed not the old processes or any other, but only the 
 new combination. This case is very instructive, as clearly 
 demonstrating what is meant by a " new combination." 
 
 flaving now considered the interpretation which has 
 been pla(;ed l)y the Courts upon the word "manufacture," 
 we next (iXMiiiinc wliat lias been held to l)e a "new manu- 
 facture," tli;il is to say, to what extent prior user is an 
 
 (u) L. Jl., 7 Ch. r,^i. Co., L. K., 7 Q. B. D. 305. 
 
 (o) Saxhy V. Gloucester Wagon (p) L. K., 5 II. L. 205.
 
 THE CONSIDERATION — A NEW AND USEFUL INVENTION. 25 
 
 answer to an action for tlic infringement of a patent. It 
 is evident, that, if the alleged new manufacture can be 
 shown to have been in the possession of the public before 
 the application for the grant of letters patent, tliat there is 
 no consideration for the grant. The patentee offers to the 
 public, in return for the monopoly privilege, his information 
 and knowledge respecting a new manufacture ; if the public 
 is already possessed of the information or knowledge the 
 supposed inventor has nothing to give. We shall see here- 
 after, when we discuss the practice of the Courts in actions 
 for the infringement of patents, that the burden of proof 
 lies on the alleged infringer when he sets up a defence of 
 prior user, i.e., of want of novelty in the alleged manu- 
 facture at the date of the patent ; and it is as well to keep 
 this in mind in reading the cases which have been decided 
 as to what amounts to prior user. 
 
 We have seen that the Statute of Monopolies is a mere 
 declaration of that which was the law before it was passed ; 
 it was always held by the Courts that the principle of a 
 patent grant was not an arbitrary advantage granted by 
 the Crown to one subject in detriment to the rest, but that 
 it was an advantage granted by the Crown to persons who 
 introduced a new manufacture, and that it was granted 
 upon principle, not for the benefit of the patentee but for 
 the benefit of the public : it being considered to the benefit 
 of the public that reasonable encouragement should be 
 given to inventors to induce them to devote their time, 
 energies and resources to the improvement of the arts and 
 manufactures of the realm. 
 
 In the case of Ha sting's Patent (q), decided in 15G7, the 
 patent was in consideration of the patentee having brought 
 into the country the making of frisadoes as they were made 
 in Haarlem, in Amsterdam, being not used in England. 
 The infringers defended the patentees' bill in the Exchequer 
 
 (q) 1 Web. P. C. 6. 
 
 P 2
 
 36 THE LAW OF PATENTS. 
 
 Chamber, on the ground that they had made bales very like 
 to i\lr. Hastlng's fiisadoes, prior to the date of Mr. Hastlng's 
 patent ; they were therefore not restrained from making 
 bales like his frlsadoes. A patent was granted to 
 " one Humphrey, of the Tower, ' for the sole and only use 
 of a sieve or Instrument for melting of lead, supposing it 
 was his own invention, and therefore prohibited all others 
 to use the same for a time;' and because others used the like 
 instrument in Derbyshii'e, contrary to the intent of his 
 patent, therefore he did sue them in the Exchequer 
 Chamber by English bill, in which Court the question was 
 whether it was newly invented by him, whereby he might 
 have the sole j^rivilege, or else used before at Mendip, in 
 AYest country, which if it were there before used then the 
 Court were of opinion that he should not have the sole use 
 thereof (r)." 
 
 The general question in disputed patents is whether the 
 invention was known and in use before the patent ? In Rex 
 V. Arkwrirjht (s), decided in 1785, Mr. Justice Buller gave 
 a definition of "novelty'' which now would be considered 
 too wide. "Thus the case stands as to the several com- 
 ponent parts of this machine, and if upon them you are 
 satisfied that none of them Averc inventions unknown at 
 the time this patent was granted, or that they were not 
 invented by the defendant, upon either of these points the 
 prosecutor is entitled to your verdict." 
 
 When we speak of an invention being new, we mean 
 that it must be new so far as the public are concerned, tliat 
 is, so far as the means of information of the public goes. 
 If a man had invented a machine and made it and used it 
 secretly, so that no one but himself had access to it, and 
 the general public had no means of information upon it, 
 
 (r) 1 Wul). r. (I 7 ; Dnrnj v. Uardet v. Johnson, 1 Wub. P. C. 
 Atlin, 1 Web. W ('. G; Mitrhdl 52 unci 53. 
 V. liepwhh, 19 Mod. U. 130; (,^) 1 Web. T. C. G4.
 
 THE CONSIDERATION A NEW AND USEFUL INVENTION. 37 
 
 there is no doubt that a subsequent inventor, re-inventing, 
 so to speak, the same machine, and disclosing his knowledge 
 to the public in his specification, would be entitled to a 
 valid patent. A machine made by the person who kept it 
 secret would not amount to such a public knowledge as 
 would anticipate the invention of the patentee, but if the 
 first-made machine had been used in such a manner that 
 other persons had been enabled to acquire the knowledge 
 of its use and application, there would be a prior user to 
 void the subsequent patent. Lord Chief Justice Tindal 
 said, in Cornish v. Keene (t) : " If it was known at all to 
 the world publicly, or practised openly so that any other 
 person might have the means of acquiring a knowledge of 
 it as well as the inventor, then the patent would be void." 
 In Carpenter v. Smith (u), Lord Abinger, C. B., analyzed 
 the meaning of the words "public use." "Public use 
 does not mean a use or exercise by the public, but a use or 
 exercise in a public manner." Taking that as a definition 
 of the meaning of the words "public use," it will be 
 apparent that the question of prior user is one of fact, and 
 one which will have to be considered by a jury or a judge 
 sitting as a jury upon the facts of each particular case. 
 
 The decided cases only ofi"er illustrations of that which 
 has been held to be public use or prior user in the different 
 cases which have come before the Courts. In Walton v. 
 Bateman {x), Cresswell, J., said, referring to the words in 
 the statute, " which others at the time of making such 
 letters patent and grants did not use," said : " Now that 
 has been held to mean a user, not by way of experiment, 
 but a public user, in distinguishiDg which the knowledge of 
 the parties as to the article in use will be material for your 
 
 {t) 1 Web. P. C. 508. Web. P. C. 139 ; Morgan v. Sea- 
 
 («) 1 Web. P. C. 534. See also xvard, 2 M. & W. 544 ; Belts v. 
 
 Croijsdale v. Fisher, 1 Patent Office Menzies, 1 E. ik E. 1008; Ilartcood 
 
 Reports, IT ; Lewis v. Marling, 10 v. G. N. R., 29 L. J., Q. B. 193. 
 B. & C. 26 ; Minter v. Mower, 1 (x) 1 Web. P. C. 615 to 619.
 
 3S THE LAW OF PATENTS. 
 
 consideration Whether it ha manufacture 
 
 within the meaning of this Act I apprehend to be a c[uestion 
 of law/' The learned judge then proceeds to sum up to 
 the jury upon the question of fact as to prior user. " First, 
 was any article made before, answering the purposes or 
 ha\'ing the j)roperties of that which the plaintiff has made 
 
 and claimed as in the jDatent then even 
 
 supposing that article did embody the principles of the 
 plaintiff's, so as to present to persons using it the pro- 
 perties, qualities and advantages in principle of that article 
 which the plaintiff makes, the question for you will be 
 whether that user is not to be considered rather in the 
 nature of an experiment than of any j)ublic use of the 
 article, so as to deprive the plaintiff of the fruit of his 
 discovery in respect of this manufacture." The learned 
 judge then proceeds to quote the words of Tindal, C. J., in 
 Cornish v. Keene [y) : " ' The question raised for the jury 
 was this, whether various instances brought forward by the 
 defendants amounted to proof, that before or at the time of 
 taking out the patent the manufacture was in public use in 
 England, or whether it fell short of that point and proved 
 only that experiments had been made in various quarters 
 and had been afterwards abandoned.' " It is very difficult 
 to reconcile the meanino: of Mr, Justice Cresswell when he 
 says, that " the question of prior user is one for the jury," 
 with his remarks in the latter part of the judgment. "The 
 third issue is much wider. The defendants say that the 
 alk'gecl invention was not, nor is, a new manufacture within 
 the meaning of the statute concerning monojiolies. Now 
 that is put to him as a question of law . . . and I am 
 confirmed now, on further consideration, in the opinion I 
 previously expressed, that there is sufficient of a new manu- 
 facture in this case to justify and maintain the patent that 
 has been granted. I think that there is a new principle 
 
 (y) 1 Web. P. C. 519.
 
 THE CONSIDERATION A NEW AND USEFUL INVENTION. 39 
 
 developed, carried out and embodied in the mode of using 
 tliat principle." The learned judge must have had present 
 in his mind that the point of law was as to whether the 
 manufacture was a manufacture in the meanino; of the 
 statute or not, for the novelty of the manufacture is cer- 
 tainly a question of fact. 
 
 As further illustrating the distinction between " public 
 use" and "secret use" we may quote the words of Mr. 
 Justice Williams in Hancock v. Somervell^ which is quoted 
 in "Newton's London Journal/' Vol. XXXIX. p. 158. 
 " The defendants say that the invention had been sub- 
 stantially published and was in use, not in secret use, but 
 in public use in England before the date of the patent, and 
 if that is so, it would entitle the defendants no doubt to a 
 verdict upon this novelty issue. Upon that part of the 
 case the view that it seems to me ought to be taken by you 
 is this, you will first consider whether the material was 
 before the public ; it is not necessary that it should be 
 used by the public if it is in public use, not in secret use. 
 ... I should here say that I do not think it necessary the 
 use should be actually for sale ; if it were in public use it 
 need not be sold ; it would be sufficient, for instance, if it 
 were in use, handed about the country for the purpose of 
 attracting customers. If you should think that the material 
 being so in use, it was so palpable that you could make it 
 when you got the material, that substantially the disclosure 
 of the material was a disclosure of the means of making it, 
 that would be a public use." 
 
 In Stead v. Anderson (z), Baron Parke placed some 
 considerable limitation of the meaning of the words " public 
 use" in saying, "if the mode of forming and laying blocks 
 at Sir W. Worsley's had been precisely similar to the 
 plaintiff's, that would have been sufficient user to destroy 
 
 (2) 2 Web. P. C. 149. See also Stead v. Williams, 2 Web. P. C. 
 136.
 
 40 THE LAW OF PATENTS. 
 
 the plaintiff's patent, tliougii put in practice in a spot to 
 which the public had not free access," 
 
 It is difficult to draw the line precisely between public 
 and secret use : we do not suppose that for the purpose 
 of showing: that some use was secret use, it would be 
 necessary to show an intention of secrecy, but in all cases it 
 will be a matter of fact whether the use was so private and 
 so secret as to make it practically impossible that the 
 public should become acquainted with the manufacture. 
 
 Mr. Justice Erie, in Heath v. Smith [a), cast a doubt 
 even upon whether secret use would not amount to 
 anticipation. He said, " If one party only had used the 
 process and had brought out the article for profit and kept 
 the method entirely secret, I am not prepared to say that 
 then the patent would have been valid." But this seems 
 to be in direct contradiction to the decision in DoUond's 
 Case{b). In that case the objection to Dollond's Patent 
 was, that he was not the inventor of the method of 
 making new object-glasses, but that Dr. Hall had made 
 the same discovery before him ; but it was held, that 
 inasmuch as Dr. Hall had confined it to his closet, and the 
 public were not acquainted with it, Dollond was to be 
 considered the inventor (c). 
 
 In Betts v. Neilson (d) it is said, " There may be public 
 use of a patented article, without actual sale of the goods 
 manufactur(<l." 
 
 Tlicre arc some conflicting cases on the subject of 
 secret use. It docs not appear to be open to much doul)t 
 that purely secret use, without publication, even if accom- 
 panied with the sale of the article manufactured, provided 
 the article itself, Ijy its appearance or other qualities, does 
 not disclose the invention, ought not to invalidate the 
 
 (a) 3 E. (k 15. 2')^. I'.l. 403 to 470; and Mr. .Justice 
 
 (6) 1 Web. P. C. 43. Dallas in Hill v. Thompson, 1 Wob. 
 
 (c) Soc alH') the rciTiarks of 1'. 0. 244. 
 Bullcr, .1.. in I'.nnJfon v. I'.uli 2 H. {,i) L. R., 3 Ch. 429.
 
 THE CONSIDERATION A NEW AND USEFUL INVENTION. 41 
 
 letters patent granted to a subsequent inventor, since he is 
 in tlie position to, and does give to the public the full 
 consideration required by the Statute of Monopolies and 
 the common law, for the patent grant which he applies 
 for. On the other hand, if the secret use has been by 
 himself, and he only applies for letters patent when he 
 has any fear of his invention being discovered, then, 
 probably, the previous secret use of the inventor would 
 be held to invalidate his patent ; but that must be on the 
 ground of want of bona Jides on the part of the inventor, 
 and not on the ground of prior user, aud want of bona Jides 
 has always been held to invalidate letters patent (c). This 
 question is discussed hereafter (p. 50). 
 
 In Smith v. Davidson, a Scotch case (f), the Lord 
 President said, " In order to invalidate letters patent on 
 the ground of previous use it is necessary not only that 
 the use shall have been prior to the date of letters patent, 
 but that it should be a public and not a secret use." The 
 remarks of Lord Bramwell, in Hills v. London Gaslight 
 Co. (g), on this subject were as follows : " If a person 
 has invented anything which is the subject of a patent, and 
 has kept it to himself or communicated it privately to 
 one or two, in fact has not made it public knowledge, if 
 anyone else discovers that invention it is new, that is to 
 say, new in the sense that the first invention has not been 
 published." 
 
 There is another description of anticipation which is 
 capable of invalidating a patent besides that of public 
 use, and that is prior publication. Prior publication 
 means the printing, writing, or publishing of some docu- 
 ment to which the public have access, containing such a 
 description of the invention as will enable a practical man 
 to carry it out from the description given. Vague hints 
 
 (e) See Teiinant's case, 1 Web. (/) 19 C. S. 691. 
 
 r. C. 125. Iff) 5 H. & N. 336.
 
 42 THE LAW OF PATENTS. 
 
 or descriptions of experiments, incomplete, or imperfect, 
 are not sufficient to invalidate a subsequent patent. It is 
 not necessary that that which is described in the book or 
 publication should have been carried out in practice, it 
 equally anticij^ates the patent [h). The question will 
 always be one of fact, depending on the circumstances of 
 each particular case, and the j^oint which should be left 
 to the consideration of the jury is, whether upon the 
 whole e^'idence there has been such a publication as to 
 make the description part of the public stock of informa- 
 tion (i). 
 
 It is necessary that the description in the publication 
 which is relied upon as evidence of j)ii<^i' publication, 
 should be such as will when carried out produce the 
 patented article ; otherwise, however similar the descrip- 
 tion may be, if it will not produce the alleged invention it 
 will not amount to anticipation (j). 
 
 Vice-Chancellor "Wood, in Betts v. Menzies {k), said, " I 
 think that if a man sits down and takes out a patent 
 from his own conjectures without ever having tried the 
 experiments set forth in it, that will not invalidate a 
 subsequent patent taken out and practically worked, 
 especially when it turns out that the method prescribed 
 by the earlier patent is practically useless." This remark 
 of the learned Yice-Chancellor indicates how difficult a 
 thing it is to lay down a general rule which shall bind 
 every case ; indeed no such general rule has ever been 
 framed. It is evident that if a man were to describe 
 an invention in a book or in a specification, and describe 
 it 80 minutely and accurately that any practical person 
 could from tlie description produce tlie invented matter, 
 it would be immaterial whether the writer had tried 
 
 (h) See T/ie Ilousehill Company P. C. 142. 
 V. Neilson in tlic House of Lords, {j) Muntz v. Foster, 2 Web. 
 
 1 Web. P. C. 718, n. P. C. 94. 
 
 (t) Stead V. WUliams, 2 Web. (/.) 3 Jui-. N. S. 358.
 
 THE CONSIDERATION — A NEW AND USEEUL INVENTION. 48 
 
 experiments or had ascertained whether his invention woukl 
 work in practice or not. If it shoukl afterwards turn out 
 to work in practice, and work as described, without any 
 further inventive power and without any further invention 
 being necessary, the description in the book or specification 
 would be sufficient to invahdate any subsequent patent for 
 the same invention. 
 
 In Belts V. Menzles (ante) the Vice-Chancellor had before 
 him a case where the method described in the earher 
 publication was practically useless. In that event there 
 is no doubt that the description would not invalidate a 
 subsequent patent, because further invention would be 
 necessary to bring the matter to a successful issue. 
 
 When Betts v. Menzies {!) came before the House of 
 Lords, Lord Westbury said : "To defeat a new patent, it 
 must be clear that the antecedent specification disclosed 
 a practical mode of producing the result which was the 
 object and effect of the subsequent discovery ; a barren 
 general description therefore, though containing some 
 suggestive information or involving some speculative 
 theory, could not be treated as avoiding for want of 
 novelty a subsequent specification or invention, unless it 
 Avas ascertained that the antecedent publication involved 
 the same amount of useful information." In the same 
 case the opinion of the judges having been taken by the 
 House of Lords as to whether the Court could pronounce 
 Betts' patent to be void simply on the comparison of 
 two specifications without evidence to prove identity of 
 invention, and also without evidence that Dobbs' specifi- 
 cation disclosed a practical mode of producing the result, 
 or some part of the result described in Betts' patent ; 
 Mr. Justice Blackburn, subsequently Lord Blackburn, 
 gave it as his opinion, "that to avoid a patent on the 
 
 [I) 10 H. L. C. 117. See also and Barlow v. Baylis, Griffin, 
 Stoner v. Todd, L. K., 4 Ch. D. 58, P. C. 44.
 
 4-i THE LAW OF PATENTS. 
 
 ground of want of novelty, ifc is necessary to sliow that 
 part of what the patentee daimed as a new invention 
 was at the date of the patent already a publicly-known 
 invention ; this may be shown by proving that the in- 
 vention was already disclosed in a publication accessible 
 
 to the public it is not necessary to show that 
 
 the invention thus made publicly known had already 
 
 been put in actual use as soon as it has been 
 
 ascertained that the description in the book makes known 
 an invention, that is to say, that it adds to the public 
 stock of knowledge what would without any further dis- 
 covery enable a person to produce a result in the nature of 
 
 a new manufacture If Dobbs had made it part 
 
 of the public knowledge how to produce a new material as 
 a practical result, and Betts had afterwards claimed to have 
 a patent for, amongst other things, producing that result, 
 he would have claimed that which was not new, and if 
 Dobbs had not made it part of the public knowledge how 
 to produce the result, then Betts would not have claimed 
 anything already known. The Court cannot tell without 
 evidence whether what Dobbs disclosed would produce a 
 result, and, therefore, as it seems to me, cannot pronounce 
 the first patent void without evidence. I therefore answer 
 your lordshij)s' question in the negative " {in). 
 
 The cases which have been decided have generally been 
 upon the subject of antecedent publication by means of a 
 specification, Init it is evident that the publication of a 
 book or newspaper, or in any other form which gives the 
 l»ublic a, means of information, is equally potent as an 
 anticipation of a subsequent patent {n). Hills v. London 
 
 (m) Sec also Betfs v. Neihon G Cli. T^. 412; also Patterson v. 
 
 and JJetts V. cle Vilre, L. 11., .'Wli. Gas Li</ht and, CoLe Co., L. R., 
 
 429; NeiUon v. lirtlx, J. I;., :> If. 3 App. Cas. 239; United Tele- 
 
 1-. 1 . phone Co. v. J/arrison, Cox, 
 
 (n) Y.ninrj V. Fernie^ 12 \V. R. \\\dher dc Co., L. K., 21 Ch. D. 
 
 001 ; I'limpton v. Sjniir, I>. It., 720.
 
 THE CONSIDERATION A NEW AND USEFUL INVENTION. 45 
 
 Gas Light Company {o) illustrates very clearly the principle 
 laid flown by Lord Westbury in Beits v. Menzies. The 
 plaintiff obtained a patent for the employment of hydrated 
 oxide of iron in purifying coal gas. A specification was 
 put in evidence as published some ten years prior to the 
 plaintiff's patent by one Croll, in which he said that coal 
 gas could be purified by using the oxide of manganese, the 
 oxide of zinc, or the oxide of iron. Now there are two 
 descriptions of oxide of iron, hydrated and anhydrous. 
 Anhydrous oxides of iron will not purify coal gas. It was 
 held, therefore, that inasmuch as further experiments M-ere 
 required to discover that the action of hydrated oxide of 
 iron was different from that of anhydrous oxide of iron in 
 the purification of coal gas, that the antecedent specification 
 did not anticipate the ^plaintiff's specification. 
 
 In Hills V. Evans (j9) Lord Westbury said : " The ante- 
 cedent statement must, in order to invalidate the subse- 
 quent patent, be such that a person of ordinary knowledge 
 of the subject would at once perceive and understand and 
 be able practically to apply the discovery without the 
 necessity of making further experiments." 
 
 In Fhilpott V. Hanhury (q), however, Grove, J., said : 
 " What I am going to say now is an expression of opinion 
 
 that is rather obiter As a matter of fact my 
 
 opinion is that there is not the same necessity 
 
 for accurate description of how an invention shall be carried 
 into effect, for the purpose of anticipating an invention, as 
 there is for the purpose of sustaining a patent in the hands 
 of a patentee, because in the latter case a description ouo-ht 
 to be given which ought not to merely inform the minds of 
 every skilled person or scientific person in the trade, but 
 should inform the minds of ordinary people who are accus- 
 tomed to work at the trade. Therefore I think that there 
 
 (o) 29 L. J. Ch. 409. 143. 
 
 (p) 31 L. J. Ch. 463. See also (q) 2 P. 0. R. 43. 
 
 Laurence v. Ferrf/, Griffin, P. C.
 
 46 THE LAW OF PATENTS. 
 
 is a distinction ; but I am willing to rest my definition or 
 description of what anticipates a patent on tliis, that there 
 must be a publication which when read b}'- persons versed 
 in the trade, skilful and well acquainted with the trade (I 
 mioht even limit it perhaps to those in the trade who are 
 most skilled — the higher class of skilled workmen) , would 
 enable them to understand it. If it be such it anticipates 
 the patent. If it is a mere suggestion, if it is so erroneous 
 in the description that they cannot, by reasonable applica- 
 tion of the mind, find out what it means, it does not 
 anticipate the patent." 
 
 It is not necessary that the book containing the descrip- 
 tion of the invention should be sold so as to constitute an 
 anticipation. ]Mere exhibition in a bookseller's window 
 for sale is suflicient publication, or sending it to a book- 
 seller's in this country to be published. " There is no 
 difference between a foreign inventor and an English one 
 if, when the inventor is a foreigner, he publishes the book 
 in a foreio"n language and sends it over to the booksellers 
 in this country for the purpose of being sold " (r). Prior 
 publication in a foreign journal and in a foreign language 
 will invalidate an English patent if it can be shown that a 
 sino-le copy was deposited in England in a public place, and 
 Avas open to public inspection (.s'). 
 
 In Otto V. Steel (t), where a French treatise was placed 
 in the British Museum Library in 1863, it was held by 
 Pearson, J., that having regard to the arrangements of the 
 library there was no prior publication in England of matter 
 contained in the treatise so as to avoid a patent taken out 
 in 187G. The library arrangements were as follows : There 
 was no access to the public to any part of the library of the 
 British ^luscuni beyond the reading room. Tlie public liad 
 
 (r) Per M. II. in L'tn;/ v. Gis Harrison, Cox, Walker d; Co. 
 Ijijru^, ?>\ Bcvan, 13.^. L. R., 21 Ch. D. 720. 
 
 («) United TeUphoiH' Co. v. (t) 31 Ch. D. 241.
 
 THE CONSIDERATION — A NEW AND USEFUL INVENTION. 47 
 
 access to the general catalogue and to books of reference 
 kept in tlie reading room. In the general catalogue of the 
 British Museum the printed books were referred to under 
 the names of their authors. The treatise in question was 
 entered in the catalogue under the name of Beau de 
 Rochas, and in no other place. It was itself kept in an 
 inner room, and it could only be obtained by one of two 
 means, either by some person knowing of the book and 
 writing the name of the book on a piece of paper and 
 requesting that the book might be furnished to him ; or if a 
 reader wanted to find something on a particular subject, 
 and went to the superintendent and asked what books 
 there Avere that he had better read. The superintendent, if 
 not able to give the information, would direct one of the 
 assistants to take him to that section of the library where 
 such books were likely to be found, and would desii-e him 
 to let the reader look over the titles of those books, and 
 select what book he pleased out of that section of the 
 library. 
 
 But in Harris v. Rothwell {u) it was held by the Court 
 of Appeal that, prima facie, a patentee is not the first 
 inventor if before the date of his patent an intelligible 
 description of his invention either in English or in any 
 other language commonly known in this country, was 
 known to exist in this country either in the patent office or 
 in any other public library to which persons in search of 
 information on the subject would naturally go for informa- 
 tion. But if it be proved that the foreign publication, 
 although in a public library, w^as not in fact known to be 
 there, the existence of the publication in this country is not 
 fatal to the patent. Otto v. Steel {su2:>ra) was distinguished 
 on the ground that there the anticipating pubHcation was 
 proved not to be known to be in the public library. 
 
 An inventor may invalidate his own invention by previous 
 
 {u) 35 Ch. D. 416 ; 56 L. J. Ch. 459 ; 56 L. T. 552.
 
 48 THE LAW OF PATENTS. 
 
 publication in a specification. For instance, if an inventor 
 applies for letters patent and files a complete specification, 
 and after the publication of the specification abandons it 
 and begins again applying for letters patent for the same 
 invention, the previous publication of the specification will 
 invalidate a subsequent patent. 
 
 Under the Act of 1883 it is clear that if he only filed a 
 provisional specification there would be no publication, 
 since provisional specifications which are subsequently 
 abandoned, are not published. In OxJey v. Ilolden (x) it 
 appeared that on the 17th March, 1858, the plaintiff' obtained 
 provisional protection' Tor an invention of indiarubber pads 
 to be applied to the windows of carriages. On the lOth 
 April, 1858, he obtained a second provisional protection 
 for three heads of invention, whereof one comprised the 
 above-mentioned indiarubber pads. The first application 
 was abandoned, and the second carried to completion — 
 the?r ivas no evidence that between the date of the Jirst 
 application and the second the invention had in any ivay 
 heen put in 2}'^<^i(^t^c<i or piihlished : held, that the first 
 ai)plication did not invalidate the patent. In Lister v. 
 Norton (y) the same question arose, but there the patentee 
 had publicly used the invention between the dates of the 
 two provisional specifications. Chitty, J., held that the 
 reasoning of Oxley v. Ilolden applied to this case, and 
 said, '* But reverting to the point of law, I think that this 
 user in pul)lic is covered by the grounds on which the 
 Court of Common Pleas decided Oxley v. Ilolden. The 
 Court held that the protection of the first provisional 
 specification extended down to the grant of the patent, and 
 made this one of the grounds of their decision. A pro- 
 visional specification was tlic creature of the Act of 1852. 
 That Act, after providing for the filing of such a specifica- 
 tion which is to describe the nature of the invention, and 
 
 (.r) 8 C. n. N. S. G66. iy) Criffin, T. C, at p. 151 — 154.
 
 THE CONSIDERATION A NEW AND USEFUL INVENTION, 49 
 
 for the grant of the certificate, proceeds in the 8th sect, 
 to enact that ' Thereupon the invention therein referred to 
 may during the term of six months from the date of the 
 application for letters patent for the said invention be used 
 and published without prejudice to any letters patent to be 
 granted for the same.' The phrase ' to be granted for the 
 same ' obviously means in this section, and in the 9th 
 section (which relates to the filing of a comj)lete specifica- 
 tion in the first instance) for the same invention, and can- 
 not be construed as referring to the application or petition." 
 So far as the author can ascertain this judgment was not 
 appealed from, nor does it appear to have been discussed 
 in any subsequent cases. Should the decision be upheld 
 the results will be curious. 
 
 The secret manufacture and sale by the inventor himself 
 of a subsequently-patented article prior to the date of the 
 patent, would of itself constitute an anticipation of the 
 invention. This branch of the subject is surrounded wdth 
 considerable difficulty, for bearing in mind that the con- 
 sideration which the inventor gives for the patent is the 
 information which he is in a position to give to the world, 
 it is difficult to understand upon what principle, if he 
 keeps that information to himself and manufactures an 
 article which of itself docs not disclose his invention, he 
 should not have a patent ; since he is always in a position 
 to give the information to the public, and to give a valid 
 consideration for the o-rant. Unless indeed we rcQ-ard the 
 grant of letters patent, as not only the result of a contract 
 between two parties, the state and the inventor, but also as 
 somewhat after the nature of a reward for invention, which 
 is only given for merit. There is, as we have pointed out 
 before, no merit in publishing an invention which you find 
 it difficult to keep any longer secret. Of course it would 
 be otherwise where the article itself, by its appearance or 
 by its properties, discloses the invention ; the Courts, in 
 their decisions, seem to have recognized the difficulty of 
 
 T. E
 
 50 THE LAW OF PATENTS. 
 
 tln3 question. Baron Parke, in Morgan v. Seaivard{s), 
 said : " For if the inventor could sell his invention, keep- 
 ing the secret to himself, and, when it was likely to be 
 discovered by another, take out a patent, he might have 
 practically a monopoly for a very much longer period than 
 fourteen years." It does not seem to have been expressly 
 decided that if an article sold did not disclose the invention, 
 the use of the invention, if kept secret, would invalidate a 
 subsequent patent by the inventor. Baron Parke seems to 
 have thought that it would ; on the other hand, if the 
 original inventor manufactured articles, but kept the inven- 
 tion secret so that no one else could practise it, and someone 
 else were to re-invent the same matter subsequently, can it 
 be said that the secret use of the invention by the first in- 
 ventor would invalidate the patent of the second inventor "? 
 and if not the patent of the second inventor, why, upon 
 principle, should one person from whom the consideration 
 would move personally be in a worse position than another? 
 It may be said, perhaps, that the common law contem- 
 plated bona fides on the part of the inventor, and a hond 
 fide discovery of the invention to the public v/ithin a 
 reasonable time, and that the working of the invention in 
 secret and subsequent application for the patent was 
 strong evidence of mala fides, and consequently would 
 avoid the patent on the ground of a constructive fraud 
 upon the public [a). 
 
 Mere experiments ^\ith a view to discovery have been 
 frequently held not to invalidate a subsequent patent ; few 
 inventions could be made without trial, and there are some 
 things of such magnitude that the trials cannot practically 
 
 (2) 2 M. <t W. 544. AVcb. P. C. 530 ; Mullins v. Hart, 
 
 (a) As to publication by sale, 5 Car. k K. 297 ; Heath v. Smitli, 
 
 Bcc Wood V. Zimmer, 1 Web"! P. ('. 2 Web. P. C. 268; lloniball v. 
 
 W; Lmh\. Ihujur, 1 Web. P. ('. Bloovicr, 2 Web. P. C. 200; 
 
 20.') ; Gibson v. Brand, 1 Web. O.rlcy v. llolden, 8 C. B. N. S. 
 
 P. C. 628; Carpenter v. Smith, I GOG.
 
 THE CONSIDERATION A NEW AND USEFUL INVENTION. 51 
 
 be conducted in private : hence it has been held that the 
 mere making of experiments, with a view to invention, does 
 not invalidate a patent (/>). 
 
 Neither does the manufacture and sending out of samples 
 for the purpose of experimenting as to the satisfactory 
 character of the invention (c). 
 
 Not only must the invention be new, but the whole of 
 the invention which is claimed in the specification must be 
 new {d) ; and if any material part of it can be shown to 
 have been anticipated, there would be a valid objection to 
 the patent, and an action for infringement, even of the parts 
 that are new, would not be maintainable. 
 
 We shall show hereafter that the claiming of too much in 
 a specification, that is to say, the claiming of things which 
 are not new, is not incurable, but that it operates in such a 
 way as to prevent the inventor from successfully main- 
 taining; an action aoainst an infrino;er until he has taken 
 
 o o o 
 
 the proper steps to obtain a disclaimer of the tainted portion, 
 so to speak, of his specification. In Bramah v. Ilard- 
 castle (e) Kenyon, J., said : " Unlearned men look at the 
 specification, and suppose everything new that is there ; if 
 the whole be not new, it is hanging terrors over them." 
 In Hill V. Thompson (/), per Dallas, J., " If any part of 
 the alleged discovery, being a material part, fail (the dis- 
 covery in its entirety forming one entire consideration), the 
 patent is altogether void." In Br union v. Hawkes (g) 
 
 (b) JVewall V. Elliott, 4 C. B., Electric Light Co. v, Woodhouse, 
 
 N. S. 269 ; Hills v. London Gas Griffin, P. C. 90. 
 Light Company, 29 L. J. Ex. 409. (c) The Useful Patents Co. v. 
 
 See also Jones v. Pearce, 1 Web. Pylands, Griffiu, P. C. 234. 
 P. C. 122; Bramah v. Hardcastle, (d) Plimpton v. Sjnller, L. R. 
 
 Holroyd, 81 ; Cornish v. Keene, 1 6 Ch. D. 412, and per Jessel, M. R., 
 
 Web. P. C. 508 ; Galloway v. in Frearson v. Loe, L. R. 9 Cli. D. 
 
 Bleaden, 1 Web. P. C. 525 ; Stead 58. 
 V. WUliams, 2 Web. P. C. 135; (e) 1 Carp. P. C. 168. 
 
 HoLisehill Company v. Neilson, 1 (/) 1 Web, P. C. 249. 
 
 Web. P. C. 673. Edison and Swan {g) 4 B. & Aid. 541. 
 
 K 2
 
 52 THE LAW OF PATENTS. 
 
 Abbott, C.J., said : " I feel myself compelled to say that I 
 think so much of the plaintiff's invention, as respects the 
 anchor, is not new, and that the whole patent is there- 
 fore void." A process incidental to the manufacture, 
 which is not one of the substantial elements of the claim, 
 will not invalidate a patent (h). 
 
 A description of two processes, one of which is old, and 
 the other new, a claim of the combination of the two would 
 be valid for the combination ; but if the claim is not for the 
 combination, but for the two processes, then the patent is 
 void (?). 
 
 When a part of a described invention is old, the 
 question will always arise as to whether the claim is for 
 the several parts as described, or for the combination. We 
 shall treat of this subject at length when we deal with the 
 specification. 
 
 We now come to the consideration of the question of 
 utility, for not only must the invention be new, but it 
 must be new and useful. The 6th section of the Statute of 
 Monopolies does not refer to the necessity of utility in the 
 invention, but saving, as it does, the common law preroga- 
 tive of the Crown in respect of inventions, it refers us back 
 to what had previously been held to be the necessary- 
 elements of an invention. In Darcy v. Allin (k), decided 
 in 1G02, it was held, the invention must tend to the 
 furtherance of trade, and be for the good of the realm, and 
 that the monopoly was granted in consideration of the good 
 that tlie inventor doth bring by his invention to the common- 
 wealth, otherwise not. Consequently an essential element of 
 a valid grant is, that it should be for something which is 
 for the go(jd of tlie realm ; that is, it must be useful {I). 
 
 (h) Muntz V. Foster, li Web. P. v. Cray, 7 II. k N. 25. 
 C. 112. (/.•) Noy, 11. 182. 
 
 (/) Templeton v. Macfarlane, 1 {I) Ed<j<'burii v. Sle2jhens, 1 
 
 II. I>. C. ^/dr) ; hxc Jilso McCormich Web. V. C. 35 ; A', v. Arkivrijld, 1
 
 THE CONSIDERATION — -A NEW AND USEFUL INVENTION. 53 
 
 In Boulton v. Bull (m), Rooke, J., said : " The public have 
 a right to receive a meritorious consideration in return for 
 the protection granted." In the same case, Bullcr, J., said : 
 " The invention professes to lessen the consumption of 
 steam, and to make the patent good the method must be 
 capable of lessening the consumption to such an extent as 
 to make the invention useful." And in the case of The 
 King v. ArJcwright {n), the same judge, in leaving the 
 matters to the jury, said : " There is another question, 
 whether the stripe in it makes a material alteration, for if 
 it apjDcars, as some of the witnesses say, to do as well with- 
 out the stripes, and to answer the same purpose if you 
 suppose the stripes never to have been used before, that is 
 not such an invention as will support the patent." 
 
 It will always be a question for the consideration of the 
 jury, whether the invention is useful ; that is, whether that 
 which is new is a sufiicient advance or improvement upon 
 what was already known by the public as to add to a 
 material extent to the public stock of knowledge. It does 
 not mean that there must necessarily be a great deal of in- 
 vention, or an extensive operation, to support the patent, 
 but that the invention when carried out in some way 
 materially improves the process or manufacture, either by 
 cheapening the article produced, or by improving its 
 quality, or by improving the method of producing, or the 
 uses to which it can be put. 
 
 Each of the cases which have been decided upon the 
 question of utility deal, and necessarily must deal, with an 
 independent state of facts, and consequently, no case can 
 be said to be an authority for another case ; but they go 
 to show the general principle that " utiUty " means a sub- 
 stantial improvement, and not necessarily an extensive 
 improvement ; for instance, a man might invent a large and 
 
 Web. P. C. 72 ; Timier v. Winter, (m) 2 H. Bl. 478. 
 
 1 Web. P. C. 80. («) 1 Web. P. C. 72.
 
 oi THE LAW OF PATENTS. 
 
 complicated machine for the manufacture of boots, which, 
 when completed, would do nothing which was not done 
 before, aud would not make them any quicker or any 
 cheaper than they were made before. Such a machine 
 would not form the subject of a patent. On the other hand, 
 a man might discover a new needle for stitchinor boots, 
 which would economise half-an-hour in the manufacture of 
 each boot ; such a needle would be the subject of a patent, 
 although the whole improvement might consist of a bend. 
 
 In Crane v. P?7ce, Tindal, C. J., said : " If the invention 
 be new and useful to the public, it is not material whether 
 it be the result of long experiments and profound research, 
 or whether by some sudden or lucky thought, or mere 
 accident of discovery " (o). 
 
 We have seen that the invention must be neic in every 
 part. It is not, however, necessary that it should be useful 
 in every part. Pro^Hded always, that useless parts have not 
 been added to the specification for the purpose of deception, 
 or of misleading the public as to what the real nature of 
 the invention is, and how it is to be performed (j)). The 
 invention further need not be useful for every purpose to 
 which it can be applied, provided it be useful for some 
 purpose to which it can be applied (q). 
 
 In Frearson v. Loe (r), Sir George Jessel said : " It is not 
 because a patentee has attempted to claim as an advantage 
 something else to which he is not entitled that the improve- 
 ment he has made is to be held not worthy of a patent. I 
 am not to say that because even half the advantages said to 
 arise from his invention may not be new he is not to be 
 protected in respect of the other half." It will be observed 
 that in this case the Master of the Rolls does not refer to 
 the novelty of the invention claimed, but to the novelty of 
 
 {o) Crane v. Prire, 1 Web. P. < '• (7) Ilaicorth v, Uardcaitle, 1 
 
 at p. 411. Web. P. C. 483. 
 
 (p) Lni'is V. }farliiig, 1 Web. (r) L R., 9 Ch. D. 64. 
 
 P. C. 496.
 
 THE CONSIDERATION — A NEW AND USEFUL INVENTION. 55 
 
 the advantages. A large number of patents which are 
 applied for are intituled "improvements in the manufacture 
 
 of ," and sometimes it has been considered that 
 
 when that which is claimed is really no substantial improve- 
 ment at all, the patent is bad for a false suggestion (s). 
 
 In the case of a patent for a combination it appeared that 
 in putting the invention into practice the inventor did not 
 use everything described in the specification ; it was objected 
 that the specification was bad on this account. The objection 
 was overruled (t). 
 
 It is always a question for the jury whether the invention 
 be useful or not (u). 
 
 In Plimpton v. Malcolmson {x)^ Sir George Jessel said : 
 *' The cases cited may be rather used as illustrations of what 
 will amount to sufficient evidence than as deciding anything 
 in principle beyond this, that it must be sufficiently known." 
 This would apply to the utility issue as well as that of 
 novelty. In such matters cases merely offer illustrations, 
 and cannot be said to lay down any rigid principles of 
 law. 
 
 (s) Losh V. Hague, 1 Web. P. C. P. C. 237 ; Bloxham v. Elsee, 1 C. 
 
 202. k P. 565 ; Cornish y. Keene, 1 Web. 
 
 {t) Ehrlich V. Ihlee, W. N. 3rd P. C. 506. 
 March, 1888. {x) L. Pt., 3 Ch. D. 557. 
 
 [u) Hill V. Thompson, 1 Web.
 
 5G THE LAW OF PATENTS. 
 
 CHAPTER IV. 
 
 THE CONSIDERATION (continued) — THE SPECIFICATION. 
 
 The third condition whicli supports the consideration 
 for a valid patent, is that the patentee must puhlish his 
 invention, that is to say, that in the specification which he 
 files, and which forms the basis of the descrijotion of the 
 subject-matter of his patent, he must give such an account 
 of Lis invention, of the way of working it, and of what 
 he particularly claims, as to enable an ordinary skilled 
 person to carry out the invention without further assistance 
 or discovery. By the 5th section of the Act of 1 883, it is 
 provided : — 
 
 "(l) Tlie application for a patent must he made in the 
 fo)'7n, set forth in the frst schedide of this Act, or in such 
 other form as may he from time to time prescrihcd, and 
 must he left at or sent hy post to the Patent Office in the 
 prescnbed manner. 
 
 " (2) An application must contain a declaration to the 
 e.ffect that the cqjpJicant is in possession of an invention 
 ichereof he, or in the case of a joint ap2)lication, one or 
 more of the applicants claims or claim, to he the true and 
 first inventor or inventors, and for ivhich he or they desires 
 or desire, to ohtain a p)atent ; and must he accompanied hy 
 either a provisional or com2')lete specification (a). 
 
 (a) " Whereas sub-sect. 2 of s. f) sub-sect, mentionctl, and doubts 
 
 of the principal Act rccjuires a dccla- have arisen as to tlio nature of tliat 
 
 ration to be made by an apjdicajit declaration, and it is expedient to 
 
 for a jiatent ti; the effect in that remove such doubts; V>c it tlicrc-
 
 THE CONSIDEP.ATION — THE SPECIFICATION. 57 
 
 " (3) A 2^'i^ovisional specification must describe tJie 
 nature of the invention, and he accompanied hy drauings 
 if required. 
 
 " (4) A complete .speclfcation, ivhether left on applica- 
 tion or siihseipiently, must particularly describe and ascer- 
 tain the nature of the invention, and in what manner it is 
 to be p)G'^formed, and must be accompanied by draivings 
 if required {h). 
 
 " (5) A specif cation, ivhether j^'^'ovisioncd or complete, 
 must commence ivith the title, and in the case of a complete 
 specifcation must end luith a distinct statement of the 
 invention claimed." 
 
 Sect. 6 of the same Act vests in an examiner tlie duty 
 of reporting 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. 
 
 Sect. 7 provides for the report of the examiner, and 
 for an appeal from the decision of the comptroller should 
 he refuse the application, to the law officer, who may 
 affirm, reverse or vary the decision of the comptroller. 
 By sect. 8 (1), " Jf tJie applicant does not leave a complete 
 specifcation ivith Jiis application, he may leave it at any 
 
 fore enacted that : The decLira- be insufi&ciently complied with by 
 
 tion mentioued in sub-sect. 2 of reason only that instead of being 
 
 s. 5 of the principal Act may be accompanied by drawings the Com- 
 
 either a statutory declaration under plete Specification refers to the 
 
 the Statutory Declarations Act or drawings which accompanied the 
 
 not, as may be from time to time provisional specification, and no 
 
 prescribed." Patents, &c., Act, patent heretofore sealed shall be 
 
 1885, s. 2. invalid by reason only that the 
 (h) By the Patents, c^c, Act, Complete Specification was not ac- 
 
 1886, s. 2, it is provided : " The compauied by drawings, but re- 
 requirement of sub-sect. 4 of s. 5 ferred to those which accompanied 
 of the Patents, &c., Act, 1883, as the provisional specification." 
 
 to drawings shall not be deemed to
 
 58 THE LAW OF PATENTS. 
 
 subsequent time within nine months from the date of 
 application" {c). (2) " Unless the complete specifcation 
 is left within that time, the application shall he deemed 
 to he abandoned.'' By sect. 9, " Where a comiolete 
 specifcation is left cfter a provisional specifcation, the 
 comptroller shcdl refer both specifcations to an examiner, 
 for the purpose of ascertaining ivhether the comp)lete 
 specification has been prepared in the prescribed manner, 
 and whether the invention particularly described in the 
 complete specifcation is substantially the same as that 
 which is described in the p>rovisioncd specifcation." Sub- 
 sect. 2 provides for the refusal of the complete specification 
 by the comptroller upon an adverse rejDort of the examiner ; 
 and sub-sect. 3 gives the machinery for appealing to the 
 law ofiicer ; by sect. 10, " On the acceptance of the complete 
 specifcation, the comp)t roller shcdl advertise the acceptance, 
 and the ap}plication and specifcation or sjjecifccttions 
 luith the draivings (if any), shall be open to public 
 inspection.'' By sect. 18, sub-sect. 1, ''An applicant 
 or patentee may from time to time, by request in ivriting 
 left at the Patent Office, seek leave to amend his specifica- 
 tion, including draioings forming part thereof, by ivay of 
 
 (c) This has been varied by the ceptcd within such extended times 
 Patents, (to., Act, 1885, by sect. 3 not exceeding one month and three 
 of which it is enacted: "Where- months respectively after the said 
 as under the principal Act, a com- nine and twelve months re- 
 plete specification is required (by spectively, as the comptroller may 
 s. 8) to l)e left within nine months on payment of the prescribed fee 
 and (by s. 9) to be accepted allow, and where such extension of 
 within twelve months, and a patent time has been allowed, a further 
 is required (by s. 12) to be sealed extension of four months after the 
 within fifteen months from the said fifteen months shall be allowed 
 date of apiilication, and it is ex- for the sealing of the patent; and 
 pedicnt to emjKjwer the comp- the principal Act S'liall have effect 
 trollcr to extend in certain cases as if any time so allowed were 
 the said times ; He it therefore added to the said periods specified 
 enacted as follows : A complete in the principal Act." 
 specification may be left a)id ac-
 
 THE CONSIDERATION — THE SPECIFICATION. 59 
 
 disclaimer, correction or explanation, stating the nature of 
 such amendment, and his reasons for the same." Sub- 
 sects. 2, 3, 4, 5, 6, 7, 8 and 9, deal with the practice to 
 be observed upon amendment, to which we shall refer 
 hereafter ; and sub-sect. 10 enacts that " the foregoing 
 provisions of this section do not apply when and so long as 
 any action for infringement or other legal proceeding in 
 relation to a patent is pending.'^ 
 
 Such are the provisions of the new Act in respect of 
 the requirements of the specification. It leaves the law 
 respecting the necessary disclosures to be made in the 
 specification very much as it was before ; and the changes 
 which are made are more changes of practice tlian any- 
 thin o- else. 
 
 The specification is the means which is provided by 
 the state, whereby a patentee publishes his invention, 
 that is, dedicates it to the public. We have observed 
 that two descriptions of specifications are provided for, 
 one called " provisional," and the other " complete ; " the 
 applicant for letters patent may, if he so pleases, in the 
 first instance, file a complete specification, or he may file 
 a specification which, for want of a better word, has l3een 
 described as provisional ; subsequently, and within the 
 prescribed time, filing a complete specification, which 
 particularly describes and ascertains his invention. It is 
 only necessary, however, that the provisional specification 
 should describe the nature of the invention ; and although 
 it is not absolutely necessary that full details should be 
 given as to the method of working the invention, care 
 should be taken to ascertain to what extent and in what 
 direction the invention goes. 
 
 There are three things, in the specification, which must 
 agree with each other— the title, the provisional specifica- 
 tion, and the complete specification.
 
 60 THE LAW OF PATENTS. 
 
 The Title. 
 
 The title of the specification must disclose the object of 
 the invention (c/). 
 
 The title is a part of the specification, and should be 
 read into it so that it may limit the patentee's claim, which 
 otherwise would be too large (e). 
 
 In the case of Bex v. Else (/), the title of the patent 
 was held to contain the claim, there being no other claim. 
 
 It has frequently been held that the title must not go 
 too far; for instance, a man who had invented a nev*^ 
 street lamp, and described his invention in the title as 
 being " a method or methods of more completely lighting 
 cities, towns and villages," was held to have vitiated his 
 patent by going too far in his title. His claim should 
 have been for a new or improved street lamp (g). So 
 care must be taken that an improvement in buttons, for 
 instance, is not described as an improvement in the 
 manufacture of buttons; if the improvement is in the 
 article, it must be so stated, and if in the process, likewise. 
 In Campion v. Benyon Qi), the title was a new and 
 improved method of making and manufacturing double 
 canvas and sail cloth with hemp and flax, without any 
 starch whatever ; the title, therefore, described an invention, 
 the novelty and utility of which was to omit the use of 
 starch, but upon reading the specification we find that 
 the real invention was an improved mode of twisting 
 the threads to be applied t(j tlie making of unstarched 
 clotli, tlic patent Avas held bad. In the case of BJoxam 
 V. KUee[i), the title for the invention was for a machine 
 
 (</) Jluusrhill Co. V. Xeilson, 1 {g) Coclirane v. Smethurst, Davj's 
 
 Web. r. C. 678. P. C. 3oi. 
 
 (e) Neirtmi v. V<nirhn; l' 1 L. J., {h) 6 B. Mo. 71. 
 
 Ex. .308. (i) G B. & C. 169. 
 
 (/) 1 Web. P. ('. 70.
 
 THE CONSIDERATION — THE SPECIFICATION. 61 
 
 for making paper in single slicets witlioiit seam or joining 
 from 1 to 12 feet and upwards wide, and from 1 to 45 feet 
 and upwards in length. It was found that to vary the 
 width of the paper it was necessary to have a different 
 machine, and that consequently the title did not corre- 
 spond with the invention, and the title was held bad. 
 In Felton v. Greaves [k], the title was " a machine for 
 an expeditious and correct mode of giving a fine edge 
 to knives, razors, scissors and other cutting instruments." 
 The machine would not sharpen scissors : — Held bad. 
 These cases seem to have been decided upon the ground 
 that an incorrect or too extensive title is evidence of fraud 
 upon the Crown. For instance, in Brunton v. Ilawkes (I), 
 Best, J., said, '' that the patent w^as taken out for more 
 than the patentee was entitled to, that, in my opinion, 
 avoids the patent in toto, for the king is deceived.'"' In 
 'Cook V. Pearce (m), however, Tindal, C. J., in the 
 Exchequer Chamber, said : "This was an action on the 
 case against the defendant for the infringement of a patent 
 taken out by the plaintiff for improvements in carriages. 
 The 6th plea, after setting out the specification, averred 
 that ' although the said alleged invention in the declaration 
 of letters patent respectively mentioned is therein styled 
 and described as improvements in carriages, yet the said 
 invention in truth, and in fact, is not an invention of 
 improvements of carriages generally, but certain alleged 
 improvements in the fixing and adapting of German 
 shutters in those carriages only in which German shutters 
 are used, and that German shutters cannot be used in 
 divers and very many carriages to wit, coaches, &c.,' and 
 so the defendants say that the title of the said invention 
 is too large and general, and by reason thereof the said 
 letters patent are void and of no force It 
 
 {k) 3 C. & r. 611. (/) 4 B. & Aid. 552. 
 
 (m) 8 Q. B. 1054.
 
 62 THE LAW OF PATENTS. 
 
 lias been observed that tlie decision (in the Court below) 
 does not proceed upon the ground that the title of this 
 patent must be held of necessity to claim more than the 
 invention as explained by the specification, as if the title 
 had been ' an invention and improvement of all carriages,' 
 and the specification had limited the invention to the 
 improvement of one or more species of carriages only, or 
 if the title had been for the invention of two things, 
 and the specification had shown it to be an invention of 
 one only out of the two ; in such cases it may be readily 
 admitted that the patent would be void, in the first, 
 because there was no specification enrolled agreeing with 
 the title, and in the second, upon the principle laid down 
 by Mr. Justice Bayley, in his judgment in Brunton v. 
 Haivhes : 'that the entire discovery of all the things for 
 ■which the patent was taken out may be held to be the 
 consideration upon the patent which was granted by the 
 Crown ; ' but such an objection would not apply to 
 the case now before us, for the words 'improvements in 
 carriages' do not necessarily imply in all carriages, but 
 in their ordinary use may well be held to be satisfied by an 
 invention for improvements in some carriages only, but 
 the oTfound of the decision is as before stated confined to 
 the vagueness and generality of the title, and to that only. 
 Now the mere vagueness of the title appears to us to be an 
 objection that may well be taken on the part of the Crown 
 before it grants the patent, but to afi'ord no ground to avoid 
 the patent after it has been granted. If such title did not 
 agree with the specification when enrolled, or if there had 
 been any fraud practised on the Crown in obtaining the 
 patent with such title, the patent in those cases might 
 
 undoubtedly br held void We think it 
 
 would be unsafe to lay down the rule in terms so large 
 as it api^cars to have been adopted by the Court below, 
 for that it would endanger the validity of very many 
 patents which had hitherto been free from exception, if
 
 THE CONSIDERATION — THE SPECIFICATION. 63 
 
 every patent must be held to be void simply on the ground 
 that its title was conceived in such terms as to be capable 
 of comprising some other invention besides that contained 
 in the specification in the absence at the same time of any 
 proof of an intention to commit any fraud upon the Crown, 
 or of deceiving or misleading the public " {'u). It will be 
 seen, therefore, that although variance between the title 
 and the specification is held to vitiate the patent as in 
 Felton V. Greaves, that mere excess and generality in the 
 title will not vitiate the patent in the absence of any 
 evidence of fraud upon the Crown (o). 
 
 In Neilson v. Harford (p), Abinger, C. B., said, " If the 
 specification is consistent with the title, that would be 
 sufficient ; " and Baron Parke said, " The title of the patent 
 is for the improved application of air, though that is 
 ambiguous. It is sufiiciently explained by the specification, 
 and is not at variance with it." 
 
 The question of variance between the title and the 
 specification is one upon which the decided cases can 
 have but little bearing. All that can be gleaned from 
 previous decisions of the Courts is that variance is a fatal 
 blemish ; but in the immense variety of inventions it is 
 evident that the same variance will never occur in any 
 two cases, and it will be a question for the Court in each 
 individual case that comes before it to decide Avhether, in 
 that case, the specification and the title vary or difier 
 from each other ; and although the decided authorities 
 will be of assistance to the Court in showino- to what 
 
 o 
 
 extent variance has been held in prior cases to vitiate the 
 patent, no prior decision will be absolutely binding [q). 
 
 (n) This decision was followed P. C. 196 ; Stead v. Williams, 2 
 
 in Crossley v. Potter by Pollock, Web. P. C. 137. 
 
 C. B. See Macr. P. C. 242. {p) 1 Web. P. C. 331. 
 
 (o) Sturtz V. De la Rue, 5 Rnss. (■7) Bainhridge v. Wigley, Hig- 
 
 322 ; Morgan v. Seaward, 1 Web. gins' Digest, 155; Hill v. Thomp-
 
 G4 THE LAW OF PATENTS. 
 
 THE PROVISIONAL SPECIFICATION. 
 
 It was found that applicatiou for letters patent, being 
 made merely upon the title of an invention, caused a 
 great deal of inconvenience and uncertainty, therefore by 
 the Patent Law Amendment Act, 1852, the provisional 
 specification was created. Prior to the passing of that 
 Act applicants for letters patent, when they made their 
 application, merely deposited the title of their invention. 
 By sect. 6 of that Act a provisional specification was 
 required, whicli should give some more definite information 
 as to the nature of the invention for which protection was 
 sought than could be possibly given in a mere title. 
 
 It is very difficult to clearly define the distinction 
 between that which is absolutely necessary in the pro- 
 visional specification and that which is absolutely necessary 
 in a complete specification. In Woodward v. Sansum (r) 
 the Court of Appeal held that all a patentee need do in his 
 provisional specification is to describe his invention. He 
 need not go on therein to describe any method of carrying 
 out the invention, but, whether lie do so or not, if a dif- 
 ferent or further mode of carrying out the invention is 
 described in his complete specification that will not in- 
 validate the patent so long as such new method of carrying 
 out is fairly within the invention as described in the pro- 
 visional specification. In MoseJcy v. Victoria Ruhher Co.{s) 
 Chitty, J., laid it down that the ol)ject of a provisional 
 specification is only to describe generally and fairly the 
 nature of the invention, and not to enter into all the minute 
 details of the complete specification. 
 
 Sect. 8 of the Act of 1852, to whicli we have referred, 
 says that " the law ofticer must be satisfied that the 
 provisional sjtccification descriljcs the nature of the in- 
 
 8<m, 1 Web. P. C. 239 ; Nickrls v. llilchcoch, T.. R. 5 Y.^. 37. 
 JIadam, 13 L. J.,C. T. 146 ; Croll (r) HG I. T. ;1I7. 
 
 V. EJrjf^ 9 C. B. 479 ; Wrvjht v. {s) 57 L. 'i". 111'.
 
 THE CONSIDERATION — THE SPECIFICATION. 65 
 
 vention," and we have seen that the exact words of that 
 section are retained in sub-sect. 3 of sect. 5 of the Act of 
 1883; and probably the legislature had in view the 
 desirability of retaining the effect of the numerous valu- 
 able decisions of the Courts of law upon the construction 
 which should be placed upon what is a sufficient descrip- 
 tion of the nature of the invention. It will be observed 
 that the complete specification to which we shall refer 
 at greater length hereafter must not only describe the 
 nature of the invention, but must also ascertain the nature 
 of the invention and in what manner it is to be per- 
 formed ; but both a provisional specification and a com- 
 plete specification must commence with a title, and the 
 complete specification must conclude with a distinct state- 
 ment of the invention claimed. 
 
 The cases which we have quoted, and which were 
 decided prior to the year 1852, as to the fatal nature 
 of a variation between the title and the specification, will 
 apply equally to the consideration of a variance between 
 a provisional and a complete specification. It is evident, 
 however, that the object of the legislature in creating 
 a provisional specification, and founding upon it a period 
 of provisional protection, was to enable the inventor 
 in that interval to improve and perfect his invention, 
 and to clearly ascertain what was new, and what was 
 old, in that which he proposed to patent. That being 
 so, it is obvious that it could not have been the intention 
 of the legislature that, when framing a complete speci- 
 fication the inventor should be bound to follow implicitly 
 every detail which he had given in his provisional 
 specification, or that he should be prevented from adding 
 to or subtracting from his invention : for, in that case, 
 the object of the legislature would be defeated. 
 
 In Newall v. Elliott {t), Pollock, C. B., said: "The 
 
 {t) 10 Jar., N. S. 955.
 
 60 THE LAW OF PATENTS. 
 
 object of the statute which requires a provisional specifi- 
 cation is nothing more than a legislative recognition of 
 the custom which called upon every patentee, when he 
 applies for a patent, to give some notion of what his 
 invention is ; that has been followed by Act of Parlia- 
 ment, requiring it to be done ; but the object in both 
 cases is to ascertain the identity of the invention, and 
 make it certain that the patentee shall ultimately obtain 
 his patent for that invention which he presented to the 
 Attorney-General in the first instance .... I have no 
 doubt that the object of the Act of Parliament was not 
 to ascertain the entirety of the invention, but the 
 identity of the invention, so as to enable the Attorney- 
 General, and, in fact, to enable a jury ultimately to 
 determine whether the invention fully specified was the 
 same invention as that which was presented to the notice 
 of the Attorney-General by the provisional specifica- 
 tion." Baron Channell in the same case, at p. 960, 
 describes a provisional specification as a " short note 
 or minute of that which was ultimately disclosed in the 
 full specification." It will be observed that in the cases 
 to which we drew attention upon the subject of variance 
 between title and specification, the point always was as 
 to whether the title and the specification varied in the 
 description of the nature of the invention ; and the 
 same principle holds good when considering the variation 
 between the provisional and complete specification, the 
 question always is. Do they difi"er in their description of 
 the nature of the invention ? In Ncwall v. Elliott (u) 
 Mr. Justice Bylcs said: "The office of the provisional 
 specification is only to describe generally and fairly the 
 nature of the invention, and not to enter into all the 
 minute details as to the manner in which the invention is 
 to be carried out " (x). 
 
 (u) 4 C. ]>.., N. S. 2G9. (.r) FoxweU v. Bostod; 12 W. R. 723.
 
 THE CONSIDERATION — THE SPECIFICATION. 67 
 
 Lord Chelmsford, in Penn v. Bihhij {//), said : " The 
 relation which the provisional specification bears to the 
 <iomplete specification is much the same as that which 
 before the Patent Law Amendment Act a title bore to 
 
 the specification the only objection then 
 
 which is open upon the complete specification, is whether 
 it is sufficient in itself, and whether it agrees with tlie 
 provisional specification. Now, by ' agreement ' is not 
 meant a perfect correspondence, but merely that there 
 *shall be nothing in the complete specification at variance 
 with the provisional.'' The learned Lord Chancellor then 
 proceeds to quote NeiualVs case, to which we have referred, 
 iind proceeds : " Nor is it at all necessary that the specifi- 
 cation should extend to everything comprehended in the 
 provisional specification. Perhaps a better illustration of 
 this proposition could not be given than that which was 
 offered in the course of the argument. If the patentee 
 were to introduce into his complete specification everything 
 which was warranted by the terms of the provisional speci- 
 fication, and afterwards found that a part of that which he 
 had claimed would invalidate his patent for want of 
 novelty, or for any other reason, he might afterwards cure 
 the objection by a disclaimer. Now if he would be allowed 
 to disclaim in such a case, which is a matter of indulgence, 
 he must have a right to waive his claim to any portion of 
 the grant which the allowance of the provisional specifica- 
 tion had entitled him to demand. It is clear, therefore, 
 that unless a complete specification in this case claims 
 something different from the provisional specification, the 
 objection to the patent under consideration cannot 
 2:)revail." 
 
 In the absence of fraud, any part, whether in the 
 description or the claim of the provisional specification, 
 may be omitted in the complete specification without the 
 
 {y) L. K, 2 Ch. App. 127. 
 
 r 2
 
 68 THE LAW OF PATENTS. 
 
 necessity of any disclaimer (z). In Stoner v. Todd (a), 
 Jessel, M, R., said : " 1 must consider first tlie nature of a 
 provisional specification, and the eff'ect of a provisional 
 specification on a final specification of the same invention. 
 A provisional specification was never intended to be more 
 than a mode of protecting an inventor, until the time of 
 filing a final specification ; it was not intended to contain a 
 complete description of the thing so as to enal)le any work- 
 man of ordinary skill to make it, but only to disclose the 
 invention, fairly no doubt, but in its rough state, until the 
 inventor could perfect its details, the provisional specifica- 
 tion as such is not and cannot be known to the public. It 
 is never published unless 'vith the final specification, when 
 they become parts of the same documeut." 
 
 In the case of Bcdhy v. Roherton (/>), decided in the 
 House of Lords, the provisional specification stated the 
 object of the invention to be the preserving of animal sub- 
 stances in the fresh state, and the patentees claimed the 
 use of a solution composed of a certain quantity of gelatine 
 mixed with bisulphite of lime, but in the complete specifi- 
 cation they claimed as solution No. 1 a solution composed 
 of bisulphite of lime alone, and gave no direction how this 
 solution was to be used. Bisulphite of lime had been used 
 by a prior patentee. In the action for infringement against 
 the defendants who had used bisulphite of lime pure and 
 simple, it was held that the complete specification, if large 
 enough to cover the employment of bisulphite of lime for 
 the preservation of animal substances as practised by the 
 defenders, would claim an invention laroer than and dif- 
 ferent from that disclosed in the provisional s})ecification. 
 ft will be observed that in this case the invention, wdiich 
 was dcscribcil in the provisional specification, was the coat- 
 
 (z) rhum.is V. \v,irh, L. i;., 1 („) r. i;., I cii. d. r,s. 
 
 r. W 192. Seo also the remarks (h) L. I J., .-5 App. (.'. 1055. Sec 
 
 of Lord (y'hclm.sfonl in I'mni v. also Liicnn v. Mi Hit, (Jrifliii 1'. C. 
 liibhy, rj noted above. 150.
 
 THE CONSIDERATION — THE SPECIFICATION. 60 
 
 ingf of animal substances with a film of a mixture of gelatine 
 and bisulphite of lime ; the complete specification claimed 
 the dipping of the animal substance into a solution of bisul- 
 phite of lime in water ; it is apparent, therefore, to anyone 
 acquainted with the action of antiseptic substances upon 
 animal decomposition, that the operation of a film of gela- 
 tine with bisulphite of lime is entirely different from the 
 operation of a solution of bisulphite of lime ; it is a totally 
 different idea, and therefore a different invention ; th(3 
 complete specification, therefore, was not an extension, 
 curtailment or modification of the provisional specification, 
 but was a description of a totally difierent invention, and 
 so it was held bad for variance. 
 
 Thus we see that the provisional specification is a mere 
 extension of the title ; but since variance between the title 
 and the specification vitiated the patent before the inaugu- 
 ration of the provisional specification, variance between the 
 provisional and complete specification also vitiates a patent ; 
 l)ut it is quite open to a patentee to extend, improve or 
 curtail the claim which he has made in his provisional 
 specification when he comes to file his complete specifica- 
 tion. A patent is not renderd invalid by the fact that the 
 complete specification describes something different from 
 anything specifically referred to in the provisional specifica- 
 tion, provided that what is so described comes within the 
 nature of the invention described in general terms in the 
 provisional specification (c). 
 
 THE COMPLETE SPECIFICATION. 
 
 We now come to the more important subject of the 
 requirements of a complete specification. The complete 
 specification is, as we have seen, one of the essential con- 
 siderations which the patentee gives for the grant which is 
 
 (c) Siddell V. Vickers, 39 L. R., Ch. D. 92.
 
 70 THE LAW OF PATENTS. 
 
 niiule to him. It is the disclosure of his invention, and 
 
 of the mode of 23erformmg it. It contains the information 
 which he is bound to give to the public. That information 
 must be bond Jide^ full, complete, and unambiguous ; it 
 must disclose the invention, the nature of it, the intention 
 of it, the way of performing it, and an exact statement of 
 what is claimed by the patentee (hh). 
 
 These conditions are imposed by the common law ; they 
 were maintained intact by the Statute of Monopolies, by 
 the Patent Law Amendment Act, 1852, and are now spe- 
 cifically re-enacted in the Act of 1883. 
 
 The specification must be sufficient — that is, it must 
 give a sufficient description of the invention to enable a 
 person skilled in the art to which it refers to perform the 
 invention from the description which it gives. It must be 
 J)orid Jide — there must be no reserve on the part of the 
 inventor. He must disclose what he knows ; he must con- 
 ceal nothing, and thus he must give to the public the full 
 ]>enefit of his invention. In Edison and Sivan Electric 
 Lifjlit Co. V. Woodhouse (c), a patent dated as to its pro- 
 visional specification, November, 1879, and as to its final 
 s[)ocification, 10th May, 1880, claimed an electric lamp 
 witli a carbon "filament for its illuminating conductor. The 
 patentee took out a subserpient })atent, dated as to its pro- 
 visional specification, December, 1879, for a method of 
 making carbon filaments for electric himps. Objection was 
 taken tliat inasmucli as at tlie time of filing the complete 
 specification of the first patent the patentee knew the sub- 
 ject-matter of the second, he should have included it in the 
 first, and tliat therefore the first patent was bad by reason 
 of conc,(';i]iiici)j. This ol)jecti()n was overruled. In Mozclcif 
 V. The Vicfi,nn h'nhJur Co. {<!), diitty, J., held, that if the 
 patentee, between tlie lime of iiliti- the provisional and the 
 
 {hh) As to r(3(|uirc(l confuniiity Specification," sxipra. 
 between provinioii!il and complete (r) i52 Ch. D. r)20. 
 
 speciffcation, see " 'i'lie l*n. visional hl\ ,57 1,. '|\ 1.12.
 
 THE CONSIDERATION — THE SPECIFICATION. 71 
 
 complete specification, discovers any improvement in the 
 manner in which the invention is to be performed, he is 
 not merely at liberty, but is bound, to give the public the 
 benefit of his discovery. In Harmar v. Playne (e), Lord 
 Ellenborough said : — " The object of requiring the specifi- 
 cation to be enrolled seemed to be to enable persons of 
 reasonable intelligence and skill in the subject-matter to 
 tel] from an inspection of the specification itself what the 
 invention was for which the patent was granted, and how 
 it was to be executed." In Morgan v. Seaward {/), 
 Baron Alderson said : — " The patentee ought to state in 
 his specification the precise way of doing it (referring to 
 the invention) ; if it cannot completely be done by follow- 
 ing the specification, then a person will not infringe the 
 patent by doing it. If this were an infringement, it would 
 be an infringement to do that perfectly, which, according 
 to the specification, requires something else to be done to 
 make it perfect. If that be correct, you would prevent a 
 man from having a perfect engine. He says, practically 
 speaking, the difierence in the length of the rods would not 
 be very material, the difi'erence being small. But the whole 
 question is small, therefore it ought to have been specified, 
 and if it could not be ascertained fully it should have been 
 so stated." We quote this decision at length, because the 
 exposition of the law which it contains is still absolutely 
 correct. The subsequent cases have implicitly followed 
 the judgment of Baron Alderson ((/). 
 
 In Coles V. Baylis (h), the invention was for " Improve- 
 ments relating to the preparation of lithographic printing 
 surfaces." It was alleged by the defendant that the 
 plaintifi" was acquainted with an improved method of 
 using the lithographic printing surfaces after they had 
 been prepared by the patented process, but that he had 
 
 (c) Dav. P. C. 316. Web. R. 278. 
 
 (/) 1 Web. P. C. at p. 182. (h) 3 Patent Office R. 178, Griffiu 
 
 (^f) See Neilson v. Thompson, 1 P. C. 57.
 
 72 THE LAW OF PATENTS. 
 
 not disclosed the same in his specification, and that 
 therefore the patent was bad. Bacon, V.-C, overruled the 
 objection, and said : — " It is to be said that the specification 
 .... is bad because he knew a mode by which a stone 
 prepared according to the specification may be more con- 
 veniently or more usefully worked than anybody but him- 
 self knew, that he was bound to put that into the specifica- 
 tion. I know no authority for saying that." 
 
 The specification is a portion of the patent (0- 
 
 In the case of The King v. Arhivright (k), Mr. Justice 
 BuUer said, " The public have a right to a fair, fuU, and 
 true description of the invention in the specification." 
 
 It is incumbent on a patentee to give a specification of 
 his invention in the fairest and most unequivocal terms of 
 which the subject is capable (l). In the same case, Mr. 
 Justice Buller said : — " Many cases upon patents have 
 arisen within our memory, most of which have been de- 
 cided against the patentees upon the ground of their not 
 having made a full and fair discovery of their inventions, 
 AVhenever it appears that the patentee has made a fair dis- 
 closure I have always had a strong bias in his favour, because 
 in that case he is entitled to the protection which the law 
 gives him." In Newhery v. James [m), Lord Eldon said : — 
 " In order to support a patent, the specification should be 
 so clear as to enable all the world to use the invention as 
 fioon as the term for which it was granted was at an end." 
 
 In Edison and Swan Electric Light Co. v, Woodhouse (n), 
 Lindley, L.J., said: — "The next objection that requires 
 notice is, that it is contended that the evidence shows that 
 it is essential to success to increase the temperature gradu- 
 ally, and that the specification is insufficient because it does 
 not point this out. Now the evidence certainly shows that 
 
 (t) Jlornblower v. Boulton, 8 'i\ {I) Per Mr. Justice Ashurst, in 
 
 II, 95; Crosdty v. Ikvcrley, P>. Turner y. Winter, Dav. P. C, 151. 
 A C, 6.3. (w) 2 Mer. 451. 
 
 (k) 1 Web. P. C. 72; Dav. P. CGI. (h) Griffin, P. C. at p. 95.
 
 THE CONSIDERATION — THE SPECIFICATION. 73 
 
 the maintenance of a high temperature is that which distin- 
 guishes Cheesebrough's process from Despretz's experiment, 
 and although Professor Dewar points out the importance of 
 a gradually increasing current, neither he nor any other 
 witness says that the temperature ought to be low to begin 
 with, and be gradually raised. Their evidence only comes 
 to this — that the temperature must be kept up and the 
 electric current must be increased, or the temperature will 
 fall. But the patentee himself tells you this. He says that 
 the temperature must be as high as 7,000° F., and the sen- 
 tence in the specification, ' as the carbon increases in size 
 more current is required to maintain the temperature,' is 
 shown by the evidence to be useless, and an obvious truism 
 to those who understand the subject, unless the sentence is 
 understood to be a direction to keep up the temperature ; 
 and when we find that in fact no difficulty is experienced 
 by reason of defective instructions on this point, the Court 
 cannot hold as a matter of law that the specification is not 
 sufficiently explicit. If the defendants had shown that the 
 directions as to temperature were not practically sufficient 
 to enable a competent person to make the patented articles, 
 the case would be very different ; but they have not at- 
 tempted to do this ; they rely on the words used, and on 
 the evidence as to temperature already alluded to. This, 
 in our opinion, is not sufficient for our purpose. If the 
 language of a specification is clear enough to guide a com- 
 petent workman, and enable him to obtain the desired result, 
 we cannot see how a Court can hold the language insuffi- 
 cient in point of law. No doubt it is for the Court and not 
 for a workman to construe the specification ; but if a work- 
 man says it is a sufficient guide to him, and the Court 
 believes him, the Court must hold that as regards clearness 
 of description the specification is in point of law sufficient." 
 "We have next to consider the bearing of the different 
 decisions upon the question of what amounts to sufficiency 
 in a specification. It is always a question of fact whether
 
 71 THE LAW OF PATENTS. 
 
 tlie Specification is sufficient or not, taking care to distin- 
 guish between sufficiency of description and an attempt to 
 cover too mucli — it is for tlie jury to say wlietlier from the 
 description given the invention could be carried out. It is 
 for the Court to determine whether the inventor has claimed 
 that which is not new among that which is new (o). The 
 cj^uestion of the sufficiency of the specification is a question 
 for the jury (-p]. 
 
 The intelligibility of the specification is a c^uestion for 
 the jury (q). The construction of the specification is in 
 the same manner as the constiiiction of all documents — a 
 question of law. The dut}' of the judge at Xisi Prius is to 
 tell the jury the specification says so-and-so, placing a 
 meaning upon the different words used and the different 
 sentences used in the specification. It is then for the jury 
 to sav it is inteUio-ible or it is not. it is sufficient or it is 
 not sufficient, but the Court "^ill determine in all cases 
 whether or not the patent is defective by reason of the 
 patentee having endeavoured to describe or to claim too 
 much (?'). 
 
 We will deal with these diff"erent heads in their natural 
 order, first, as to construction, next as to intelligibility, 
 and then as to sufficiency. The object of the Courts is 
 not to defeat patents. In Hallett v. Hague (s), Lord 
 Tenterden said : — " I cannot forbear saying that I think a 
 great deal too much critical acumen has been applied to the 
 construction of patents, as if the object was to defeat, and 
 not to sustain, them." The patentee is to be presumed not 
 to claim things which he must have known to be in use (f). 
 
 (o) JJiil V. Thomj>sm, 3 Mer. P. C. 295. 
 
 G26. (r) Hill V. TJiompson, 3 Mer. 
 
 (p) Biclcford V. Skeires, 1 Q. B. 626; Beard v. Egertoyi, 19 L. J., 
 
 938 ; Wallington v. Dale, 7 Exch. C. P. 38. 
 
 868 ; Parhs v. ^tephem, L. R., 8 (s) 2 B. i Ad. 377. 
 
 Eq. 358. (0 Haworth v. Hardcastle, 1 
 
 {q) Neilsnn v. llarforJ, 1 \\\h. Web. P. C. 484.
 
 THE CONSIDEKATION THE SPECIFICATION. 75 
 
 The leaning of the Courts is invariably in favour of the 
 patentee, and specifications will not be construed astutely 
 
 so as to overthrow a patent. Sir George Jesse! , in the case 
 of Hinks V. The Safety Lightmg Co. {u), said "I am 
 anxious, as I believe every judge is who knows anything of 
 patent law, to support honest hondfide inventors who have 
 actually invented something novel and useful, and to pre- 
 vent their patents being overturned on mere technical 
 objections or on mere cavillings with the language of their 
 specifications, so as to deprive the inventor of the benefit 
 of his invention ; that is sometimes called a benevolent 
 mode of coDstruction, perhaps that is not the best term to 
 use, but it may be described as construing the language of 
 the specification fairly, with a judicial anxiety to support a 
 really useful invention, if it can be supported by a reason- 
 able construction of a patent ; beyond that the benevolent 
 mode of construction does not go." And the same judge, 
 in Plimpton v. Spillei' [x], adopted the remark that " the 
 judge is not to be astute to find flaws in small matters in a 
 specification with a view to overthrow it." 
 
 Per James, L. J., in Binney v. Feldtman {y), " giving that 
 benignant interpretation which every instrument is entitled 
 to have." 
 
 Per Cotton, L. J., in Cropper v. Smith {z), "It was said that 
 one ought to interpret in favour of a good inventor, benig- 
 nantly the construction of his specification. Now I am not 
 satisfied to what cases that is to be applied. If it is to be 
 applied to cases where the objection is that the specification 
 is of such a character that it does not describe sufficiently 
 the nature of the invention, that language may bear perhaps 
 the not unreasonable interpretation, that you are to get all 
 the knowledge you can with reference to the subject matter 
 of the patent, and then you must in an intelligent frame 
 of mind, and not in a frame of mind which shuts its 
 
 [u) L. R. 4 Ch. D. 612. (y) Griffiu, P. C. at p. 50. 
 
 {X) L. R., 6 Ch. D. 422. (z) Griffin, P. C. at p. 62.
 
 76 THE LAW OF PATENTS. 
 
 eyes to wliat is possibly not stated as clearly as it might 
 be, consider what is the real meaning of the specification, 
 not only of itself, but having regard to the knowledge 
 existing: at the time, and which would exist in the minds 
 of those to whom the specification was addressed. Of 
 course the judicial mind does not know, without evidence, 
 all the facts which persons engaged in the trade would 
 know, and it is merely saying, ' Now try and put yourself 
 in the same position as regards knowledge as those to whom 
 the specification was addressed, and then reasonably and 
 intelligently construe it.' " See also the remarks of Bowen, 
 L.J., which follow at p. 64. 
 
 In Needhcun v. Johnson (a), Lindley, L.J,, said, "I do 
 not like the expression ' benevolent interpretation.' I do 
 not believe in it. The question is whether a given con- 
 struction is the true construction ; but of course if any 
 patent is capable of more constructions than one, the 
 general rule would be applied that you would put upon it 
 that construction which makes it a valid patent rather than 
 a construction which renders it invalid." 
 
 Lord Chelmsford, in Harrison v. Anderston Foundnj 
 Co. (b), said, " the language should be construed according 
 to its ordinary meaning, the understanding of technical words 
 being, of course, confined to those who are conversant with 
 the subject-matter of the invention, and if the specification 
 is thus sufficiently intelligible it performs all that is re- 
 quired of it." Ill Clark v. Adie (c) it was held that the 
 words used in the specification must be construed like the 
 words ill any other instrument, in their natural sense, 
 according to the general purpose of the instrument in which 
 they are found. 
 
 The title of a specification and the specification itself are 
 one document, and an ambiguity in the specification must 
 
 (a) 1 P. O. II. at p. .^)8. ffeon v. Thompson, L. K., 3 App. 
 
 (6) L. Fl., 1 Ap. C. 5S1. Cas, 53 ; Wegvimm v. Corcoran^ 
 
 (c) L. li., '2 Ap. ('. 423 ; Dud- L. li., 13 Cli. 1). 77.
 
 THE CONSIDEKATION THE SPECIFICATION. 77 
 
 be construed by the light which is thrown upon it by the 
 title (d). In the case of Uniuin v. Heath (e), in the course 
 of an opinion given by the judges to the House of Lords, 
 Mr. Justice Crompton said, " 1 think it will be a narrow 
 and a dangerous construction to limit the invention claimed 
 in express words by the mode and process of working which 
 the plaintiff sets forth as a means of carrying his invention 
 into effect." 
 
 The claims in specifications frequently claim the inven- 
 tion in a general manner with the words added " as herein 
 described." It has been held that the meaning of the 
 Avords " as herein described " is not limited where the 
 invention is for a mode of construction or manufacture, 
 and not for a particular method of carrying out the prin- 
 ciple which is described in the specification. In Belts v. 
 Menzies (/) Mr. Justice Blackburn, giving his opinion to 
 the House of Lords, said, " I agree with what was said by 
 Mr. Justice Crompton in the Court below that, if a general 
 claim for the use of an invention were cut down and 
 limited to the use of the invention in the particular way 
 pointed out by reason of the words ' as herein described,' 
 it will be a narrow rule of construction, generally working 
 to the detriment of patentees, and, what weighs more with 
 me, generally giving an efi'ect to specifications different from 
 what the persons drawing them intended or those reading 
 them understand." 
 
 In the case of Univin v. Heath (supra), Mr. Justice 
 Williams said, " But if the invention described and claimed 
 by the patentee in this case is not the particular process 
 specified, but the employment of carburet of manganese in 
 the process of the conversion of iron into steel, and if the 
 description of the process in the specification, instead of 
 being a description of the invention, is only one mode of 
 
 (d) Nnotnn v. Yauclier, 6 Exch. (e) 25 L. J., C. P. 8. 
 
 864. (/) lOH. L.C. 140.
 
 78 THE LAW OF PATENTS. 
 
 carrying the invention into effect, an entirely different 
 doctrine becomes applicable to the question, viz., that if 
 the. patent is taken out for the application of a pjvlnciple 
 coupled with the mode of carrying the principle into effect, 
 the patentee is entitled to protection from cdl other modes 
 of doing so, whether known or not known at the time of the 
 specification,'' 
 
 There are numerous authorities which bear out the 
 o-eneral rule of construction which has been laid down, viz , 
 that a specification of an invention must be construed by 
 the same rules and upon the same principles that are 
 applied to other written documents, and if, on the one 
 hand, minute cavilling at the words of a specification is not 
 to be allowed as against a patentee, so, on the other hand, 
 the interpretation must not be strained in favour of a 
 patentee. Lord AVestbury, in Simpson v. Holliday [g), 
 said — " It was contended before me, and the Vice- Chancellor 
 is reported to have said, that it has been settled by authority 
 that the most lil^eral construction is to be given to the pateiit 
 
 that will sustain it I am not aware of any 
 
 such authority." 
 
 A patent may be, as we have seen, for the application of 
 a newly- discovered principle of manufacture or, for that of 
 an old principle to a new object or, for a new method of 
 carrying out an old principle applied to an old object. It 
 frequently becomes a matter of construction upon the 
 specification as to which of these branches of invention the 
 specification is intended to apply, and there have been 
 several cases upon the subject. It is evident that inasmuch 
 as the patent will be valid provided a fair descrij)tion of a 
 new invention in either branch is given, that, in construing 
 the specification of a patent a decided case upon some other 
 specification will be of very little value. We do not pro- 
 ])0sc, therefore, to discuss at length the constructions which 
 
 (rj) 13 W. R. 578.
 
 THE CONSIDERATION — THE SPECIFICATION. 79 
 
 have been placed upon specifications in particular cases. 
 The words " improvements .... in the manner 
 hereinafter mentioned," followed by a claim concluding 
 with the words, " as above described," have been held to 
 limit the claim to the particular machine described in the 
 specification or to the particular method of carrying out 
 the process and not to include the principle of the process 
 or any other method than that described of carrying it 
 out (h). 
 
 We have seen, and we shall see more fully at length 
 hereafter, that it is incumbent on a 2)atentee in drawing the 
 specification to distinguish that which is new in his inven- 
 tion from that which is old. In the case of Holmes v. 
 London and North Western Raihvay (i), A. obtained a 
 patent for an improved turning-table for railway purposes, 
 and in his specification gave a description of the machinery, 
 of which no part was new except certain suspending rods ; 
 the combination, however, was both new and useful. In 
 the specification the patentee claimed as his invention " An 
 improved turning-table hereinbefore described, such my in- 
 vention being, to the best of my knowledge and belief, 
 entirely new." It was held, that no construction of the 
 claim could be put upon it as including a combination of 
 the various parts which were old, but that it must be 
 construed as meaning that the patentee claimed the several 
 parts of the invention as being new, and the combination 
 being the only part which was new, the patent was held 
 void. In the case of Hills v. London Gaslight Company {k), 
 it was held, that wliere the meaning of a document depends 
 upon its terms and not on matters of fact, dehors the docu- 
 ment, the question will be for the judge, even although the 
 terms are technical or scientific ; and where an ambiguity is 
 raised by evidence, dehors the document, which is plain 
 
 {h) Barber v. Grace, 1 Ex. 339. {i) 22 L. J., C. P. 57. 
 
 (/(•) 27 L. J., Exch. 60.
 
 80 THE LAW OF PATENTS. 
 
 upon the face of it, tlie ambiguity being as to a term wliicb 
 imports one thing in a scientific sense, and another in a 
 commercial sense — Query, whether it is for the judge or the 
 jury. We should venture to say, that it would undoubtedly 
 be for the jury. The question not being one at all as to the 
 construction of the document, but being as a matter of 
 fact, did the writer of the specification use the scientific term 
 or the commercial term ? A specification is to be construed 
 with reference to the state of knowledge at the time it is 
 published (/). 
 
 When di'awings are attached to a specification, although 
 the drawings may be used in construing the specification as 
 explanatory of the text, they will not be allowed to be used 
 in limiting the claim in a manner not provided for by the 
 specification {m). 
 
 When two documents such as specifications are before 
 the Court for comparison, the Court must interpret the 
 meaning of the words, but the jury must say if they are 
 identical {n). It is evident that, inasmuch as technical ex- 
 pressions are used in different trades and businesses, and 
 that it is impossible for one person to be acquainted with 
 every trade and every business, and every technical ex- 
 pression used in such trade and business, it is not necessary 
 that the specification should be intelligible to any one, it is 
 sufficient that it should be intelligible to a person reasonably 
 skilled in the trade to which it particularly refers, and it 
 must be intelligible to them without the necessity of their 
 makini:^ n<^w inventions of their own or additions to the 
 specification or experiments (o). 
 
 (/) Jhaih V. Unwln, 22 L. J., P. C. 105 ; Tetleij v. Fa^to)i, Mac. 
 
 C. P. 7. P. C. G8. But see Bush v. Fox, 
 
 (m) Uinks v. Safety Lighting Co., 5 H. L. C. 707 ; Booth v. Kennard, 
 
 L. R., 4 Ch. D. 607. See also 2 H. d: N. 84 Also Hills v. 
 
 Clarkv. Adie, L. R., 2 Ap. Cas. 315. Evans, 31 L. J., Ch. 457. 
 
 (n) Bettt V. Mevzies, 10 H. L. C. (o) lieg. v. Arkmnght, 1 Web. 
 
 117: ^f'untz V. Fosfrr, 2 Web. P. (^ GO.
 
 THE CONSIDERATION — THE SPECIFICATION. 81 
 
 In Arhwright v. Nightingale {p), Lord Loughborough, in 
 charging the jury, said : " The clearness of the specification 
 must be according to the subject-matter of it ; it is addressed 
 to the persons in the profession having skill in the subject, 
 not to men of ignorance, and if it is understood by those 
 whose business leads them to be conversant in such subjects, 
 it is intelligible." And in Hornhlower v. Boulton {q), to 
 which we have previously referred, Mr. Justice Grose said : 
 " If the specification be such as to enable artists to adopt 
 the invention and to make the manufacture, it is sufficient." 
 
 In Harmar v. Flayne (r). Lord Ellenborough graphically 
 puts it : " No sort of specification would probably enable a 
 ploughman utterly ignorant of the art to make a watch." 
 But it is necessary that the specification should be in such 
 terms as to enable persons of ordinary ability to understand 
 it, and it will not be sufficient to show that one individual 
 of extraordinary ability or of very exceptional technical 
 knowledge is enabled to understand the specification (,«?). 
 In Neilson v. Harford it), Baron Parke puts it to the jury : 
 " You are not to ask yourselves the question whether per- 
 sons of great skill, a first-rate engineer, or a second-class 
 engineer, as described by Mr. Farey, whether they would 
 do it, because generally these persons are men of great 
 science and philosophical knowledge, and they would, upon 
 a mere hint in the specification, probably invent a machine 
 which would answer the purpose extremely well ; but that 
 is not the description of persons to whom this specification 
 is supposed to be addressed : it is supposed to be addressed 
 to a practical workman, who brings the ordinary degree of 
 knowledge and the ordinary capacity, to the subject." 
 
 In the case of the Badische Anilin Fahick v. Leven- 
 stein (tt), the patentee claimed, " First, the production of red 
 
 (p) 1 Web. P. C. 61. (s) Sturtzv.DelaRue,5Rus8.327 
 
 {q) 8 T. Rep. 104. (t) 1 Web. P. C. 314. 
 
 (r) Dav. P. C. 318. («) L. R. 24 Ch. D. 156. 
 T. G
 
 82 THE LAW OF PATENTS. 
 
 and brown colouring matters, which in chemical language 
 may be termed the sulpho acids of oxyazo-naphthaline by the 
 action of the diazo compounds, which may be prepared from 
 naphthylamin or from the sulpho acids of naphthylamine 
 upon any of the isomeric naphthols, or of mixtures of the 
 same, or upon any of the sulpho acids which may be pre- 
 pared from either alpha naphthol or from beta naphthol, or 
 from mixtures of the same substantially by the process 
 above described." It appeared that the patent was dated 
 1878 ; that there were two descriptions of naphthylamine, 
 one called alpha naphthylamine and the other beta naphthy- 
 lamine ; that the substance alpha naphthylamine had been 
 known for a considerable period of time, but that beta 
 naphthylamine had only been discovered in 1876 ; that at 
 the date of the patent beta naphthylamine was very little 
 known and very rare ; that up to the year 1880 it was only 
 used in laboratory experiments and that it was very costly ; 
 and that until Ijeta naphthylamine was known, the alpha 
 compound only was known and was called naphthylamine. 
 Objection, that it was not stated what naphthylamine it was 
 intended to be used. Pearson, J., said : {u) " I come to the 
 conclusion that the word ' naphthylamine ' in the patent 
 means that which was generally known in the year 1878 as 
 naphthylamine, namely, what is now described as alpha 
 
 naphthylamine although beta naphthylamine was 
 
 invented in 1 876 and would at once be called beta naphthy- 
 lamine to distinguish it from the na})hthylamine which had 
 been known for at least 15 years before, it does not follow 
 that tluit naphthylamine would all of a sudden acquire the 
 name of alpha naphthylamine ; it would remain in all the 
 books jjrinted up to that time as naphthylamine oidy, and I 
 am satisfied that at the date of the patent and subsequently 
 to tlie date of th(; patent any person ordering na])htliylamine 
 simply, would have been supplied with the old naphthy- 
 
 (u) At p. IGl.
 
 THE CONSIDERATION — THE SPECIFICATION. 83 
 
 lamine, and nobody would have thought of asking him 
 whether he wanted ' beta naphthylamine ' Under these cir- 
 cumstances I think it would be improper to come to the 
 conclusion that any naphthylamine was meant in this 
 patent except that which was known simply as ' naphthy- 
 lamine,' that is, that which is now properly described as 
 * alpha naphthylamine.' " 
 
 In the Court of Appeal [v), Baggalay, L.J., differing from 
 Fry and Bo wen, L.J J., said : "If the language of tlie 
 specification can be fairly construed, so as in the one case 
 put, to support the validity of the patent, if challenged on 
 the ground that the use of beta naphthylamine would lead 
 to failure and in the other to protect the patentee against 
 an infringement by the use of that substance, it would be 
 fatal to the plaintiff's case in the present action whether the 
 language had been adopted per incuriam or of set design. 
 Though the term ' the literature ' has been conveniently 
 applied to the documentary evidence admitted in the 
 present case, it is clear that publications of this nature 
 must be regarded as of two classes — those addressed to the 
 scientific world, and those addressed to working or practical 
 men, a distinction which cannot, in my opinion, be more 
 simply and clearly illustrated than it was by Dr. Odling, 
 who being asked by Pearson, J., when the body, as alpha 
 naphthylamine, but formerly known as naphthylamine with- 
 out any prefix, first acquired its present name, replied as 
 follows : ' My Lord, there are two distinct forms of 
 literature upon the subject. There is the systematic 
 scientific literature, and there is the technical literature, and 
 in the technical literature it is called naphthylamiue up to 
 the present day, but in the more scientific literature you 
 may find the distinction although it is very rare.' The 
 distinction between the information given by scientific litera- 
 ture and that given by technical literature is one very im- 
 
 {v) L. R. 29 Ch. D. 366. 
 
 G 2
 
 84. THE LAW OF PATENTS. 
 
 portant to be borne in mind when we are dealing with ques- 
 tions such as that now under consideration. Publications 
 having reference to chemicalscience and intelligibly expressed 
 will always be enquired after and studied in their laboratories 
 by scientific chemists, ever on the alert to make themselves 
 acquainted with the newest compounds with a view of 
 putting them to some useful purpose ; but, speaking gene- 
 rally, it is not the fact that such publications are sought after 
 and studied by practical working chemists, whose labours for 
 the most part commence after the useful purpose has been 
 ascertained." 
 
 In the House of Lords, Lord Herschell, upon the same 
 point, said : (x) "I am satisfied that after 1875 and down to 
 the time of the patent, alpha naphthylamine was still some- 
 times spoken of as ' naphthylamine,' and that if anyone had 
 ordered ' naphthylamine ' of a manufacturer he would with- 
 out hesitation have supplied alpha naphthylamine. Under 
 these circumstances I entertain no doubt that any reader of 
 the specification would understand by the word ' naphthy- 
 lamine ' occurring in it, the known commercial article, which, 
 until recently at all events, had always borne that name, 
 and not beta naphthylamine, to which the term ' naj^hthy- 
 lamine ' alone had never been applied. I am therefore of 
 opinion that the specification is not in this respect open to 
 the charge of amljiguity." 
 
 In the process of the invention it is necessary to use some 
 old or well-known apparatus ; it is not necessary in the 
 specification to describe the apparatus, save in such terms 
 as it is generally known by, in the particular business to 
 ■which it belongs (vy). 
 
 In Heath v. Unwin (2), Mr. Baron Alderson said : 
 "Every specification is to b(! read as if by jxTsons ac- 
 quainted -with the n^nnoral facts of llic iiicclianical or 
 
 {x) L. 11. 12 App. (Ja. at ]k 723. 1 Woh. P. (J. (576. 
 (ij) CnmUi/ V. Jinwrlnj, 3 C. &, {z) 2 Wcl). I'. C. 24r). 
 
 P. .01. 'i ; I/ousehill Co. v. Ncihon,
 
 THE CONSIDERATION THE SPECIF lOATION. 85 
 
 chemical sciences involved in such invention ; thus, if a 
 particular mechanicai process is specified, and there are for 
 some parts of it, as specified, other well-known mechanical 
 equivalents, the specification in those parts is in trutli th(! 
 specification of the well-known equivalent also, to those to 
 whose general knowledge we refer: viz., mechanics and 
 readers of specifications ; and so it is with chemical 
 equivalents also, in a specification which is to be read liy 
 chemists. But it may be. that there are equivalents, 
 mechanical and chemical, existing, but previously unknown 
 to ordinary skilful mechanics and chemists. These are n(.)t 
 included in the specification but must be expressly stated 
 there." 
 
 An error in a specification which may be said, in a 
 sense, to be a technical error, will not vitiate a specification, 
 although it be an error in description, j^rovided it be such 
 an error that an ordinary skilled workman would at once 
 observe and be in a position to correct ; provided it is not 
 such an error as would require experiments to show that it 
 was an error (a). 
 
 In Plimpton v. Malcolmson ih), Sir George Jessel said : 
 ""It is plain that the specification of a patent is not ad- 
 dressed to people who are ignorant of the subject-matter. 
 It is addressed to people who know something about it ; 
 but there are various kinds of people who knov.^ some- 
 thing about it, if it is a mechanical invention, as this is ; 
 you have, first of all, scientific mechanicians of the first 
 class, eminent engineers ; then you have scientific mecha- 
 nicians of the second class, managers of great manufac- 
 tures, great employers of labour, persons who have studied 
 mechanics, but not to the extent of the first class, and 
 scientific engineers, but still to a great extent for the pur- 
 pose of conducting the manufacture of complicated and 
 
 (a) Per Lord Westbury, Simpson v. HolliJay, 13 W. R. 578. 
 (6) L. R. 3 Ch. D. 568.
 
 86 THE LAW OF PATENTS. 
 
 unusual machines, and wlio therefore must have made the 
 !sul)jeet a matter of considerable study ; and in this class 
 I should include foremen, being men of superior intelli- 
 gence, who, like their masters, would be capable of inven- 
 tion, and, like the scientific engineers, would be able ta 
 find out what was meant even with slight hints and still 
 more from imperfect description, and would be able to 
 supplement so as to succeed even from a defective descrip- 
 tion, and, even more than that, would be able to correct an 
 erroneous description — that is what I would say to be the 
 two first classes, which I would call the scientific classes ; 
 the other class consists of the ordinary workman, using that 
 amount of skill and intelligence which is fairly to be expected 
 from him, not a careless man, but a careful man, though not 
 possessed of that great scientific knowledge or power of 
 invention which would enable him by himself unaided to 
 supplement a defective description or correct an erroneous 
 description. Now, as I understand it, to be a good specifi- 
 cation it must be intelligible to the third class I have 
 mentioned, and that is the result of the law." This judg- 
 ment very precisely lays down the law upon the subject 
 of intelligibility generally. 
 
 The next question, as to what is a sufficient specification, 
 is by far the most important branch of the subject. 
 
 We have seen that the consideration for the orant of 
 
 o 
 
 letters patent is, that the inventor shall particularly 
 describe and ascertain the nature of his invention, and in 
 what manner it is to be performed ; consequently for a 
 specification to be sufficient it must particularly ascertain 
 — (1) Wliat the invention itself is; (2) How the invention 
 is to be can-icd out. Uiidcr the iirst head the inventor 
 must describe cxjidly jind accurately what he has invented, 
 and if in iIh; course; oi" the descripti(m of his invention it 
 should be necessary for him U) describe something which is 
 olil l)ut which he wishes to use in the process of his inven- 
 tion, he must l)e careful to say, "Tliis is old and I do not
 
 THE CONSIDERATION — THE SPECIFICATION. 87 
 
 claim it as a part of my invention." There are two reasons 
 why the inventor should be called upon to particularly 
 state what he has invented ; one is, that the public may be 
 placed in a position to use the invention so soon as the 
 period of protection has elapsed ; and the other is, that the 
 public may be protected by being carefully informed what 
 it is that during the period of protection they are not to 
 use. In Macfarlane v. Price ic), Lord Ellenborough said : 
 " The patentee in his specification ought to inform the 
 person who consults it what is new and what is old ; he 
 should say, ' my improvement consists in this . . . .' A 
 person ought to be warned by the specification against the 
 use of the particular invention, but it would exceed the wit 
 of man to discover from what he is warned in a case like 
 this."' And the same judge, in Harmar v. Playne {d), 
 maintained the same opinion. 
 
 The degree of sufficiency which is required by the law 
 is very aptly and accurately put by Eyre, C.J., in Boulton 
 v. Bull (e) : " Suppose a newly-invented chemical process 
 and the specification should direct that some particular 
 chemical substance should be poured upon gold in a state 
 of fusion, it would be necessary that, in order to carry out 
 this operation, the gold should be put in a crucible, and 
 should be melted in that crucible, but it would be hardly 
 necessary to state in the specification the manner in which, 
 or the utensils with which, the operation of putting gold in 
 a state of fusion was to be performed. These are mere 
 incidents, with which every man acquainted with the subject 
 is familiar." In taking this distinction as a guide, however, 
 we must be careful to remember that could it be shown 
 that the chemical process would only be successful when 
 the gold was melted in a particular kind of crucible, or at a 
 particular temperature, that then, unless the description 
 
 (c) 1 Web. P. C. 74. {d) Dav. P. C. 311. 
 
 (e) 2 H. Bl. 498.
 
 88 THE LAW OF PATENTS. 
 
 was given of the temperature and of tlie crucibJe, the 
 specification would be insufficient. 
 
 It will be evident tliat, in any action for infringement, 
 the statement of claim must relate to an infringement of 
 something which is described and claimed in the specifica- 
 tion, and consequently the invention, which must be proved, 
 must be one of something which is found described in the 
 specification. If that which is alleged to be an infringe- 
 ment is not described in the specification, then there can be 
 no infringement of the patent. If anything cannot be 
 completely done by following the specification then a 
 person will not infringe the patent by doing it {/). The 
 disclosure in the specification of the nature of the invention 
 must be bond Jide, but it need not go farther than the 
 knowledge of the inventor at the time extends ((/). If a 
 patentee suppresses anything, or if he misleads, or if he 
 does not communicate all he knows, his specification is 
 bad. So if he says that there are many modes of doing a 
 thing, when, in fact, only one will do, this will also avoid 
 the patent [h). The object of the patent is to benefit the 
 world, and not to obstruct a subsequent invention ; conse- 
 quently, if the specification is worded in such a manner as 
 to grasp at more than the patentee has actually invented, 
 and to endeavour to cover, so to speak, wholesale proble- 
 matic inventions, the patent will be void (i). 
 
 There is a head-note to the case of Betts v. Neilson [k) 
 which is apt to mislead. The head-note is this : " Whether 
 a specification contains a sufficient description can only be 
 ascertained by experiments, and in making an experiment 
 knowledge and means may be employed which have been 
 acquired since the date of the patent.'' It is evident that 
 
 (/) Morydit V. Sicncard, 1 W'eli. Lewis v. Marlinij, 1 Web. P. C. 
 
 P. C. 182. 490. 
 
 (//) Lem* V. .\farlii(fj, 1 Web. (/) Cros.ilft/ v. Potter, Mac. P. C 
 
 P. C. 496. 24.'). 
 
 (h) Per Mr. .1 list ice IJiiiley, in (/(■) L. IL, .'? (;ii. Ap. 429.
 
 THE CONSIDERATION THE SPECIFICATION. 89 
 
 this head-note is incorrect, and if the case be read it will 
 be found that the judgment of Lord Chelmsford was, not 
 that the specification of the plaintiff could be held sufficient 
 or insufficient upon experiments tried on the specification 
 itself, with the assistance of subsequently-acquired know- 
 ledge, but that the specification, which was alleged to 
 anticipate the plaintiff's patent, might be read for the pur- 
 pose of determining whether there was anticipation or not, 
 or whether there had been prior publication or not in the 
 light of knowledge acquired by the general public since the 
 date of the specification. This would be undoubtedly 
 correct, because the question always is, in dealing with 
 matters of prior publication, Was the supposed invention of 
 the plaintiff's, at the time when he obtained his patent, 
 already part of the public stock of knowledge or not ? 
 The public stock of knowledge consisted of the specifica- 
 tion, which is put forth as anticipating the patent, together 
 with all knowledge on the subject which can be proved to 
 have been published or used prior to the date of the plain- 
 tiff's patent, and so in reading a specification with a view 
 to ascertaining whether it anticipates a subsequent patent 
 you must read into that specification all subsequently- 
 acquired knowledge of the subject prior to the date of the 
 patent ; but in discussing the sufficiency of the specifica- 
 tion which is actually in dispute, you cannot make use of 
 information which has been acquired since the publication, 
 for otherwise it would be held that the patent, which was 
 void at first for insufficiency of specification, might become 
 valid at some subsequent date by further discovery, which 
 is obviously absurd. 
 
 The question of the sufficiency of a specification is one 
 which must be dealt with on each particular case as it 
 arises ; a single word added to a specification may make 
 that which was insufficient sufficient, and that which would 
 be a sufficient description of one invention w^ould be found 
 to be an insufficient description of another, consequently
 
 on THE LAW OF PATENTS. 
 
 there can be uo absolutely fixed rules of construction in 
 dealing with specifications. 
 
 In Wegmann v. Corcoran (1) it was held that the speci- 
 fication of a patent was bad if one of the materials to be 
 used was described by a generic comprising a variety of 
 species, the majority of which would be unsuitable. The 
 specification of a patent is bad if a skilled mechanic would 
 not, without performing a series of experiments, be able to 
 construct the machine from the description. 
 
 The specification (m) of a machine for crushing meal, 
 described the rollers as " to have a surface consisting of 
 material containing so much silica as not to colour the 
 meal or flour. I prefer to make them of iron, coated with 
 china, and finally turned with diamond tools ; " and the 
 claim was, inter alia, for the use of material " of the hard- 
 ness required." It appeared that the rollers must be made 
 of very hard china, such as had scarcely been made in 
 Europe during this century, and specially tough, and must 
 be fixed in a peculiar manner to an iron core or spindle, 
 which carried them ; and, according to the evidence, a 
 miller or a skilled mechanic would not, without making a 
 series of experiments, discover of what china the rollers 
 must be made, or how they must be fixed to the spindle. 
 Held by the Court of Appeal, confirming the judgment of 
 INIr. Justice Fry, that the specification was insuflicient and 
 the patent invalid. Mr. Justice Fry had said : " Though 
 the grantee of a patent for an invention communicated to 
 him by a foreign resident abroad is only bound to tell the 
 public what he himself knows, yet if the original inventor 
 has not told him enough to enable him so to describe the 
 invention as that it could be constructed by the aid only of 
 the specification, the patent will be invalid. As we have 
 S(!en, it is doubtful whether this does not only afiect those 
 patents which were obtained before the Act of 1883, known 
 as " communications from abroad." 
 
 (/) ]j. R., 13 Ch. I). 6.0. (m) Wegmann v. Corcoran, supra.
 
 THE CONSIDERATION — THE SPECIFICATION. 91 
 
 It will be seen that the last-mentioned case is distinguish- 
 able from the case of Plwipton v. Malcolmson (n). There 
 the question was whether the patentee, having disclosed a 
 useful invention, was bound to disclose something more, 
 which he himself did not know, but which was within the 
 knowledge of the person communicating from abroad ; in 
 that case it was properly held that he was not so bound, 
 but it is obvious that he was bound to describe an invention 
 in his specification which of itself was useful, and that he 
 was bound to tell all that he himself knew, and to give a 
 sufl&cient description to work the invention. 
 
 We have seen that bona Jides in the description of the 
 invention is one of the essential elements of the considera- 
 tion for the grant. The patentee must say not only that 
 which is sufficient to carry out the invention, but he must 
 say all he knows, and he must give every improvement 
 which is within his knowledge at the time and which 
 assists the process or manufacture. Wood v. Zimmer (o), 
 decided so far back as 1815. gives a very clear idea of the 
 law upon this branch of the subject. In this action to try 
 the validity of Zinck's patent " for a method of making 
 verdigris," it appeared that the method described in the 
 specification was sufficient to make verdigris, but that 
 Zinck had been accustomed, clandestinely, to put aquafortis 
 into the boiler, whereby the metallic copper was dissolved 
 more rapidly, but the verdigris produced was neither 
 better nor cheaper than that made according to the speci- 
 fication. Gibbs, C. J., said : " It is said that the method 
 described makes verdigris, and that the specification is 
 therefore sufficient — the law is not so. A man who applies 
 for a patent, and possesses a mode of carrying out that 
 invention in the most beneficial manner, must disclose the 
 means of producing it in equal perfection and with as little 
 expense and labour as it costs the inventor himself The 
 
 (n) L. R., 3 Ch. D. 531. Judgment of Jessel, M.R., at p. 582. 
 (o) 1 Web. P. C. 82.
 
 92 THE LAW Of PATENTS. 
 
 price that lie pays for his patent is, that he will enable the 
 public, at the expiration of his pm-ilege, to make it in the 
 same way and with the same advantages. If anything 
 that gives an advantageous operation to the thing invented 
 be concealed, the specification is void. Xow, though the 
 specification should enable a person to make verdigris 
 substantially as good without the aquafortis as with it, 
 still, inasmuch as it would be made with more labour by 
 the omission of aquafortis, it is prejudicial concealment 
 and a breach of the terms which the patentee makes with 
 .the public." 
 
 In this case it must have been proved that the patentee, 
 at the time when he obtained his letters patent and filed 
 his specification, knew of the benefit to be derived by the 
 use of aquafortis. It is evident that if he did not know it 
 at the time, but discovered it subsequently during the 
 currency of the patent, that then it would form an im- 
 provement upon his invention, and not one which he could 
 possibly have disclosed at the time he filed his specification, 
 and therefore there would be no mala Jides on his part in 
 not describino; it. 
 
 The remarks of Gibbs, C. J., in BovilJ v. Moore [p] go 
 to the same extent ; and in Crossley v. Beverley {(j), 
 Bailey, J., said : " It is the duty of the inventor if, between 
 the period of taking out the patent and enrolling the 
 specification, he makes discoveries which will enable him 
 better to effect the thing for which the patent was 
 obtained, not only that he is at liberty to introduce them 
 into his patent, but that it is his bounden duty so to do, 
 and it is not sufficient for him to communicate to the 
 public the knowledge which he had at the time he 
 obtained the patent, but he ought to communicate to the 
 public the knowledge he had obtained before the specifica- 
 
 (p) Dav. r. C. 400. (q) 1 Web. P. C. 117.
 
 THE CONSIDERATION — THE SPECIFICATION. 93 
 
 tioii," III Morgan v. Seaward (r), Alderson, B., said : "If 
 the patentee is acquainted with any particular mode by 
 which his invention may be most conveniently carried into 
 effect he ought to state it in his specification : that was 
 laid down in a case before Lord Mansfield ; there the 
 question arose on a patent for steel trusses. It appeared 
 that the patentee in some parts of his process used tallow 
 to facilitate the invention for which he had obtained a 
 patent, and in his specification he made no mention of the 
 use of tallow. The Court held the specification to be bad, 
 because they said : ' You ought not to put people to find 
 out that tallow is useful in carrying into eff'ect the inven- 
 tion of steel trusses. You ought to tell the public so if 
 that is the best mode of doing it, for you are bound to 
 make a bona fides full, and candid disclosure.'" The case 
 referred to by the learned judge was the case of Liardet v. 
 Johnson [s). 
 
 In Tedey v. Easton (t), Pollock, C. B., said : " A man 
 has no right to patent a principle and then give to the 
 public the humblest instrument that can be made from his 
 principle, and reserve to himself all the better part of it ; " 
 and in Heath v. Unioin (u), Coleridge, C. J., said : " If the 
 inventor of an alleged discovery, knowing two equivalent 
 agents for effecting the end, could, by the disclosure of 
 one, preclude the public from the benefit of the other, he 
 might, for his own profit, force upon the public an 
 expensive and difficult process, keeping back the simple 
 and cheap one, it would be directly contrary to the good 
 faith required from a patentee in his communication to the 
 public." 
 
 Upon the same ground of mala Jides it has been held, 
 in a large number of cases, that if the patentee in his 
 
 (r) 1 Web. p. C. 174. (t) Mac. P. C. 76. 
 
 (s) 1 Web. P. C. 53 ; and Bull (n) 2 Web. P. C. 243. 
 
 N. P. 78.
 
 ■9i THE LAW OF PATENTS. 
 
 specification gives details which are not necessary to the 
 invention, which of themselves do not constitute an inven- 
 tion, and which are merely put in for the purpose of 
 misleading the public as to either what is the nature of the 
 invention or how it is to be carried into effect, then the 
 patent will be void. Bailey, C. J., in Lewis v. Marling (v), 
 said : "If the party knew that it was unnecessary the 
 patent would be bad, on the ground that this was decep- 
 tion ; but if he thought it was proper, and only by a 
 subsequent discovery finds out it is not necessary, I think 
 that it forms no ground of objection." 
 
 If the extraneous matter is put into the specification, 
 bond fide thinking that it was necessary, the patent will 
 not be held to be void ; if it was put in inaldfide, with the 
 intention of deceiving or knowino; it was extraneous and 
 useless, the patent would be void. If the extraneous 
 matter is in itself misleading, and would prevent a skilled 
 workman from successfully carrying out the invention, 
 whether it is put in iJiald fide or ho7id fide, the patent 
 will be void. It will be seen that in the latter case the 
 specification is insufl&cient, and in the former two cases 
 the question is one simply of bond fide on the jDart of the 
 inventor (x). 
 
 We now come to that portion of the sjDecification which, 
 is described as " the claim." By sect, 5, sub-sect. 5, of the 
 Act of 1883, it is provided that "a specfication, ivhether 
 Ijrovisional or complete, must commence loitU the title, and 
 in the case of a complete specification must end with a 
 distinct statement of the invention claimed^ This is, 
 perliaps, empliasizing, in a more distinct manner than had 
 been provided before the passing of this Act, the necessity 
 of tli(; inventor making a distinct and unambiguous claim. 
 
 (/•) 1 Wcl). 1'. ('. lOr,. Web. 1\ ('. 83; Bid-ford v. 
 
 (x) Simjwm v. J/olliday, 20 Skcwes, \ Web. P. C. 2\d>;Neil- 
 
 Ncwton's London .lounial, N. S. son v. Harford, 8 M. k W. 80G. 
 108. Cromjdon v. IbhcrtHon, 1
 
 THE CONSIDERATION THE SPECIFICATION. 95 
 
 He must not claim too much, and yet lie must claim 
 
 sufficient to show a useful manufacture, and lie must 
 distinguish in his claim what it is that is new in the 
 process which he has described and what is old. So far as 
 this goes, there is no doubt that the old law provided for 
 similar declarations on the part of the inventor. 
 
 In Bovill V. Moore {y), Gibbs, C. J., said : " If the 
 plaintiff has in this specification asserted to himself a 
 larger extent of invention than belongs to him, if he states 
 himself to have invented that which was well known 
 before, then the specification will be bad, because that will 
 afi'ect to give him, through the means of this patent, a 
 larger privilege than could be legally given to him." 
 In the case of Gibson v. Brand (z), Tindall, C J., said : 
 *' Looking at the specification in the case, it appears to me 
 that this patent cannot be supported at law, because the 
 plaintifi's have in the course of it claimed more than they 
 are entitled to." 
 
 The Court must be taken to distinguish between 
 describing too much and claiming too much. In the 
 course of a well-drawn specification it is frequently 
 necessary to describe something which is old, and if, 
 provided the claim says that the old parts do not constitute 
 a portion of the invention, the description of the old parts 
 in the specification will not invalidate the patent. But if 
 two methods of doing a thing are described, one of which 
 will answer and the other will not, it will be interpreted, 
 unless one of them is specifically disclaimed, that both parts 
 are claimed as being new and useful, and one of them not 
 being useful the patent will be invalidated, because it is 
 said there is a false suggestion in the specification (a). In 
 Rushton V. Crawley {h),MdXinB, V.-C, said: "The public 
 
 {y) Dav. P. C. 404. R 578; L. E., 1 H. L. 315, per 
 
 (2) 1 Web. P. C. 634. Lord Westbury. 
 
 (a) Simpson v. HoUiday, 13 W. (6) L. R., 10 Eq. 527.
 
 96 THE LAW OF PATENTS. 
 
 must be told in very distinct language in every specification 
 what are the articles they may use and what they may not 
 use. Therefore, if a man makes a discovery, and instead 
 of limiting himself in his specification to that which 
 properly is a discovery (if it be one), makes his specification 
 too extensive, and claims more than he is entitled to claim, 
 that is calculated to embarrass the public ; that is, I appre- 
 hend, a fatal objection to the patent." 
 
 In reading specifications, one frequently comes across a 
 claim in these words : " I claim as my invention the 
 appliances and combinations hereinbefore described." This 
 claim is perfectly good (c), provided there is nothing 
 described in the patent which is old. If there be an}^hing 
 old, the claim should proceed : " I do not claim so-and-so, 
 and so-and-so, as part of my invention." 
 
 Under the old law, if no claim was inserted the patentee 
 was taken to claim ever}i;hing that was described in the 
 specification {d), it not being absolutely necessary that 
 there should be a claim in the specification at all, provided 
 nothing was described in the specification which could be 
 sllo^\^l to have been anticipated (e). Since the Act of 1883 
 it has been held by the Court of Appeal that the enactment 
 in sect. 5 that a complete specification must end with a 
 distinct statement of the invention claimed, is directory 
 only, and when letters patent have been granted, they 
 will not be invalid because it has not been complied 
 with (ee). If the invention be for an improvement 
 upon an old process very great care should be taken 
 that the impruvemeut alone is made the sultjcct of 
 the claim ; so if it be for a combination of old well- 
 known parts, care must be taken that it be clearly shown 
 that the patentee claims the combination, and not the 
 
 (c) Seed V. Iliggin.", 8 II. L. C. {e) Lister v. Leather, 8 E. tt B. 
 
 nbi). 1004. 
 
 {(l) TelUy V. EatloK. 2 C. D. {ee) Sidddl v. Yickers, 39 L. R., 
 
 N. S. 706. Ch. D. 92.
 
 THE CONSIDERATION THE SPECIFICATION. 97 
 
 parts. James, V.-C, in Parkcs v. Stepltens {/), said : 
 " It is obvious that a patentee does not comply as he ought 
 to do with tlie condition of his grant if the improvement 
 is only to be found, like a piece of gold, mixed up with a 
 great quantity of alloy. And if a per.;on desiring to find 
 out what was claimed as new would !iave to get rid of a 
 large portion of the specification, by eliminating from it 
 all that was old and commonplace, all that was the subject 
 of other patents, or of other improvements, bringing to the 
 sul)ject not only the knowledge of an ordinary skilled 
 artizan, but of a patent lawyer or agent." 
 
 In Gandy v. Reddaivay (g), the claim was " constructing 
 belts or bands for driving machinery of cotton canvas or 
 duck ' woven hard ' and stitched and saturated or soaked 
 with oil, such as linseed oil or any combination thereof, as 
 herein described or set forth, or any modification thereof." 
 It was proved that cotton canvas woven hard was in the 
 trade divided into classes numbered 1 — 10. Of these, only 
 2, 3, and 4, would practically answer to carry out the 
 invention ; anyone attempting to use the other numbers 
 would fail ; certain numbers would crack if used on small 
 pulleys. Pearson, J., dismissed the action and was 
 affirmed by the Court of Appeal on the ground that the 
 claim was too large. And where a patent is taken out for 
 a combination, it is not material to its validity that the 
 specification should point out what parts are old and what 
 are new, though, if an alleged infringement consists only in 
 taking part of the combination, it is necessary that the 
 patentee should in his specification have claimed the part 
 so taken as new (h). If the whole combination constitutes 
 the novelty of the invention the whole combination alone 
 should be claimed, and subject to the substitution of 
 equivalents and evasion, there will be no infringement 
 
 (/) L. R., 8 Eq. 365. (h) Proctor v. Beiviis, 36 Cli. D. 
 
 Iff) 2 P. 0. R. 49 ; Griffiu P. C. 740. 
 101. 
 
 T. H
 
 98 THE LAW OP PATENTS. 
 
 unless the whole coml)iiiatioii is taken; but if there is 
 meHt and novelty in subordinate integers or subordinate 
 combinations they should be specially claimed, otherwise 
 there will be no infrinoement in taking them. But in the 
 case where there is novelty in the result of using the whole 
 combination, and only the whole combination is claimed^ 
 then the Court will protect the patentee from infringement 
 by taking the essence of the combination. Proctor y. 
 Be7inis {supra). 
 
 In Harrison v. The Anderston Foundry Co. (/), it wns 
 finally held by the House of Lords that if the combination 
 and application of old machinery be new and beneficial 
 the invention of this combination may be protected by a 
 patent. The specification commenced : " The invention 
 consists of a new or improved simple and most efficient 
 mode of and arranoeinent of mechanism for connectino; the 
 set or sets of compound or multiple shuttle-boxes of looms 
 for weaving stripe, check or other ornamental or figured 
 fabrics requiring two, three or more shuttle-boxes in each 
 set." The specification then described in detail and by 
 reference to drawino-s the arransfement of mechanism in 
 question, and then continued : " What we believe to be 
 novel and original, and therefore claim as the invention 
 secured to us Ijy letters 2)atent, is — (1) The construction 
 and arrangement of the parts and portion of the mechanism, 
 and (2) a shuttle-box moving and holding mechanism as 
 herein distinguished generally for actuating the shuttle- 
 l>oxcs of power-looms, all substantially in the new or 
 improved manner lierein described and shown in the 
 drawings or any mere modification thereof" A great 
 nunib»n- f»f" the parts of the macliine were admittedly old, 
 and one of tlie questions in this case was, whether the first 
 claim above set foi'tli was a sufficient claim to a combina- 
 tion. TiOid ('airns, in giving judgment, said : "Ft is as I 
 
 (») L. 11., 1 App. Ca. 574.
 
 THE CONSIDERATION THE SPECIFICATION. 99 
 
 read it a claim for a combination, that is to say, a combina- 
 tion of all the movements going to make up the whole 
 mechanism described ; it must, for the present at least, 
 be assumed that this combination, as a combination, is 
 novel, that it is, to use the words of the Lord President, 
 a new combination of old parts to produce a new result or 
 to produce a known result in a more useful and beneficial 
 way ; it is not doubted that a combination such as this is 
 may be the subject of a patent. What, then, are the objec- 
 tions to the first claim viewed as a claim for the combination 1 
 The first is an objection said to be founded upon the case of 
 Foxwell V. Bostock {k), decided by the late Lord Westbury. 
 It is said to be determined in that case that where there is 
 a patent for a combination there must be a discovery or 
 explanation of the novelty, and the specification must show 
 what is the novelty and what the merit of the invention. 
 I cannot think that, as applied to a patent for a combina- 
 tion, this is or was meant to be the effect of the decision in 
 Foxwell V. Bostock. 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." 
 
 In the same case Lord Hatherley said : " The judges 
 extended, as it appears to me with great respect, the 
 doctrine of Foxwell v. Bostock in their application of it in 
 this case ; it was there held, and that I think was all that 
 was held, that it is not comjDetent to a man to take a well- 
 known existing machine, and, having made some small 
 improvement, to place that before the public and say, 
 'I have made a better machine: there is this sewino-- 
 machine invented by so-and-so, I have improved upon 
 that. That is mine ! it is a much better machine than 
 his ; ' that will not do ; you must state clearly and distinctly 
 what it is in which you say you have made an improve- 
 
 {k) 4 De a. J. t S. 298. 
 
 H 2
 
 100 THE LAW OF PATENTS. 
 
 ment. To use an illustration vvliicli was adopted, I think, 
 by James, L. J., in another case, ' 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 
 Avhich is known.' " 
 
 In Moore v. Bennett (/), Selborne, L.C., in giving judg- 
 ment in the House of Lords, said : " Your lordships have 
 not at all to consider whether in the case of Foxivell v. 
 Bostock the decision arrived at was correct or not ; nor 
 have you to consider whether, when interpreted with 
 reference to the facts of that case, the language used by the 
 very eminent and able judge who decided it may not be 
 susceptible of an interpretation which would make that 
 language correct in point of law. But, my lords, I feel 
 that your lordships cannot refuse to regard the decision in 
 Foxwell V. Bostock in the light in which you have already 
 explained, and interpreted, and commented upon it by your 
 own decision in the case of Harrison v. The Anderston 
 Foiindrij 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 
 combination as new, but you must condescend upon that 
 
 which is improved The case of Foxivell 
 
 V. Bostock was qualified or explained in Harrison v. The 
 Aiiderston Foundnj Co. It was treated as an authority in 
 such a way as to make it impossible to apply it to the 
 present case, where, looking at the specification and at the 
 evidence, it is perfectly clear that no such general combina- 
 tion as this liad been at any time used, and where the 
 material and important parts of the two arrangements and 
 
 {I) Griffin P. C. 158.
 
 THE CONSIDERATION — THE SPECIFICATION. 101 
 
 combinations, whicli are described, are clearly, plainly and 
 intelligibly described. It would, in my judgment, be in 
 direct contradiction to the decision in ITurrison v. Tlie 
 Anderston Foundry Co. to hold the specification bad." 
 
 In Clark v. Adie (m), Lord Hatherley said, speaking of 
 Foxwell V. Bostock: "You must in some way or other 
 inform those whom you are dealing with, by which I 
 mean the general public, whom you wish to exclude for a 
 certain limited number of years from using your invention, 
 you must inform them in some mode or other whether 
 you have sub-divided, if I may so term it, your machine 
 into these separate parts and claim for each the merit of 
 novelty, or whether you are simply making a combination 
 of things per se old but ^^dlicll have never been used before 
 in combination, and which make up, as you say, your 
 machine, for which you claim protection, as a novel and 
 useful machine." 
 
 These three judgments of the House of Lords show the 
 extent to which the law went prior to the Act of 1883. 
 We have seen that since the Act of 1883 the claim is an 
 absolute essential, and the words of the statute are, " A 
 distinct statement of the invention claimed." To what 
 extent the words " a distinct statement " will be construed 
 it is at present difficult to say ; but it will undoubtedly be 
 advisable for inventors to be more careful that their claims 
 are more accurately defined, it being very probable that the 
 law as it at present stands will be held to be much more 
 stringent in its requirements than it was before the Act 
 of 1883. 
 
 {m) L. R., 2 App. Ca. 328.
 
 102 THE LAAV OF PATENTS. 
 
 CHAPTER V. 
 
 AMENDMENT OF SPECIFICATIONS. 
 
 The Patents, &c., Act, 1883, pro\ddes for tlie amend- 
 ment of specifications in two ways, compulsorily and 
 voluntarily. AVe have seen that sect. 6 directs that the 
 comptroller shall refer the specification to an examiner. 
 Sect. 7, as amended by sect. 2 of the Patents, &;c., Act, 
 1888, provides that (1), " If the examiner reports that the 
 nature of the iriventioii is not fairly described, or that the 
 application, sptec if cation, or drawings has not been pre- 
 pared in the prescribed manner, or that the title does not 
 sufficiently indicate the subject-matter of the invention, the 
 cornptroUer may refuse to accept the application or require 
 that the application, specif cation, or drcavings be amended 
 before he proceeds with the application, and in the latter 
 case the application shall, if the comptroller so direct, bear 
 date as from the time ichen the requirement is complied 
 icith." Sub-sects. 2, 3, 4, provide for an appeal to the 
 law officer; and sub-sect. 5 gives directions as to what 
 should be done when there are two applications for sub- 
 stantially the same invention. 
 
 Sect. 9, sub-sect. 1, requires that the examiner shall 
 report to the comptroller as to " whether the complete 
 .sj}ecificatio7i has been prepared in the prescribed manner, 
 iuid whether the invention particularly described in the 
 complete specification is substantially the same as that 
 which is described in the provisional specif cation." If 
 the examiner reports that these conditions have not been 
 complied with, the comptroller may refuse to accept the 
 complete specification until it has been amended to his 
 Hatisfaction, subject to a])peal to the law officer. 
 
 Sulj-sect. 3 : The law officer shall, if required, hear the 
 applicant and the comptroller, and may make an order
 
 AMENDMENT OF SPECIFICATIONS. lUJi 
 
 determining whether, and sul)jeet to what conditions, if 
 any, the complete specification shall be accepted. By snb- 
 jsect. 4 the application is rendered void, except in the case 
 of an appeal, unless a complete sj^ecification is " accepted " 
 within twelve months from the date of ajoplication. 
 Sect. 94 provides: " Where any discretionary 'power is hy 
 this Act given to the comptroller, he shall not exercise that 
 power adversely to the applicant for a 2)atent, or for 
 atnend.ment of a specif cation .... ivithout [if so 
 required within the prescribed time hy the apjplicant) 
 giving the aptplicant the opportunity of being heard person- 
 ally or hy his agent." 
 
 These provisions of the law were novel at the date of the 
 Act of 1883. It will be particularly observed that com- 
 pulsory amendment is strictly limited to matters of form. 
 The comptroller has no power to order an amendment on the 
 ground that too much is claimed, or that there is want of 
 novelty, or that the invention is not subject-matter for 
 a patent. It is very difficult to predicate what judicial 
 decisions will be given to the words " that the nature of 
 the invention is not fairly described." Is the examiner to be 
 in the position of an expert witness, and to decide whether or 
 not the description is sufficient to enable a skilled artizan to 
 carry the invention into effect within the meaning of Jessel, 
 ]\I.R., in Plimpton v. Malcolmson (a) ? or is he merely to 
 see that the language is correct, and that, without going 
 technically into the matter, the specification appears to 
 fairly describe the invention ? If the former is his pro- 
 vince, it is difficult to see how it is to be carried into eftect, 
 since there is no machinery in the Act for the receiving of 
 skilled evidence, such as would be necessary for the purpose 
 •of arriving at a satisfactory conclusion upon such a point. 
 The applicant or his agent are alone to be heard. It is 
 true that by sect. 38, where the applicant appeals he may 
 ■call witnesses before the law officer, but surely the statute 
 (a) L. R., 3 Ch. D. 568.
 
 104 THE LAW OF PATENTS. 
 
 does not contemplate that questions should be gone into- 
 which, it is evident, can only be decided on appeal, and 
 even then not satisfactorily without the procedure and care 
 of a reoular formal trial. 
 
 Under such circumstances, it may fairly be presumed 
 that the meaning of the section is, that the examiner shall 
 report whether the specification, on the face of it, appears 
 to fairly describe the invention (cc). 
 
 In construing sect. 9, it will probably be held that a 
 minute and scientific inspection of the specification is not 
 within the contemplation of the statute. 
 
 Sect. 18 provides for the amendment of the specification 
 by the applicant or patentee. There are several reported 
 cases showing that at common law mere clerical errors in a 
 specification might formerly be amended by the Master of 
 the Rolls and the Lord Chancellor upon petition, but these- 
 amendments were strictly limited to verbal or clerical 
 errors arising from mistake or inadvertence (h). hi re 
 Gare's Patent in 1884(c), Brett, M.R., allowed amendments 
 of clerical errors in a specification filed under sects. 27 and 
 28 of the Patent, &c.. Act, 1852, and said, " The Master of 
 the Rolls is of opinion that sect. 18 of the Patents, &c., 
 Act, 1883, does not affect the power of the JNIaster of the 
 Rolls to allow amendments in a patent specification filed in 
 pursuance of sects. 27 and 28 of the Patent Act, 1852, or 
 which is otherwise to he considered as a record wider the 
 anthorltij of the Master of the Iiolls. So long as the 
 specification is in the Patent Office, and before the patent 
 is sealed, the Master of the Rolls considers that the pro- 
 ceedings of sect. 18 should be the only proceedings taken 
 ]jy anyone asking for aiiicndnient undci- that section." 
 
 It would a])p('ai- from the words ])riiiti'd in italics that 
 
 (/.) /// rr Sharj>s /'„(,-,>/, I Web. (f) 26 Vh. D. lUr>. 
 
 J'. ('. 040. In re NickvCs PaUnt, (cc) Brovns Patent, 2 Griffith 
 
 1 Wei). J'. C. Giy. Re Johnaon't P. C. 1. 
 I'lilnil, 5 Cli. 1). :)U?,.
 
 AMENDMENT OF SPECIFICATIONS. 105 
 
 the jurisdiction of the M.R. is still intact with reference to 
 amendments after sealing. 
 
 We have seen that a patent for a very meritorious invention 
 may be utterly vitiated by the patentee claiming something 
 which is not new; so, also, a patent might be rendered void 
 by reason of innocent misdescription or misrepresentation. 
 
 The common law power of amendment being found 
 insufficient for the purposes of justice in such cases, the 
 Act 5 & 6 Will. 4, c. 83, was passed, enabling " any person 
 ivJio as grantee, assignee, or otherwise, hath obtained, or 
 shall hereafter obtain, letters i^atent, kc," with the leave 
 of the law officer, might disclaim any part of the " title of 
 the invention or of the specification, stating the reason for 
 such disclaimer " ; or might, with such leave as aforesaid, 
 " enter a memorandum of any alteration in such title or 
 specification (not being such disclaimer or such alteration 
 as shall extend the exclusive right granted by the said 
 letters patent), &c., &c." The case of Spilsbury v. Clough id) 
 having very much limited the meaning of the words of the 
 statute, printed above in italics, the Act V & 8 Vict. c. 69, 
 was passed, giving power to the original patentee, or his 
 assignees, or both jointly, in the event of any interest in 
 the patent remaining in the original patentee, to file a dis- 
 claimer or memorandum of alteration. 
 
 It will be observed that prior to the Act of 1883 any 
 disclaimer or amendment made by the patentee was 
 entirely at his own peril, and that in any subsequent 
 action involving the validity of the patent objection might 
 be taken to the disclaimer or amendment on the ground 
 that it really extended the patent beyond its original limits. 
 
 The provisions of sect. 18 of the Act of 1883, as amended 
 so far as sub-sect. 10 is concerned by sect. 5 of the Patents, 
 &c.. Act, 1886, are as follows: — 
 
 " (l) An applicant or a j)atentee may from time to time,. 
 h)j request in writing left at the Patent Office, seek leave to 
 
 {d) 2 Q. B. 466.
 
 106 THE LAW OF PATENTS. 
 
 amend his specification^ including drawings forming part 
 thereof, hy luay of disclaimer, correction, or explanation, 
 stating the nature of such amendment and his reasons for 
 the same." 
 
 " Disclaimer correction or explanation " does not include 
 the amendment of a specification by the insertion of subse- 
 quently ascertained knowledge ^e). 
 
 Under this section there is no power to amend the title, 
 and when a complete specification is filed with a narrower 
 title than the provisional, the proper course for the C. G. 
 to adopt is to amend the title of the provisional under 
 sect. 7, or to give the applicant liberty to insert a disclaim- 
 ing clause in the complete specification and assimilate the 
 title of the complete to that of the provisional (/) (this latter 
 course it appears to the author would be dangerous\ Sect. 
 18 only applies to amendment after acceptance of the 
 complete specification ; all amendments before acceptance 
 are under sects. 7 and 9 g . The law oflicer will not in 
 the absence of satisfactory explanation permit repeated appli- 
 cations to be made for the same proposed amendment [h). 
 
 Prohibition will not lie to the law ofiicer in the exercise 
 of his discretion under this section, E.r 'parte Simon, 
 Times, Aug. 6, 1888, C.A. 
 
 " (2) The request, and the nature of such proposed 
 amendment shall he advertised in the prescribed manner, 
 and at any time within one month from itsfrst advertise- 
 ment any person may give notice at the Patent Office of 
 apposition to the amendment. 
 
 " (3) Where such notice is given the comptroller sliall 
 give notice of the opposition to the jX'rson making the 
 request, and shall hear and decide the case subject to an 
 <(ppeal to the law officer. ^^ 
 
 (e) Per Sir 11. Wchstcr in Beck (y) Per Sir K. Webster, Jonrs' 
 
 V. Jiisdce, 2 (;riffin P. (". 10. ratent, Griffin P. (". 313. 
 
 (/) Per Sir R. Webster, Z>arr« (/r) AnwUI's Patent, 1 Griffin 
 
 Patftti, Griffin P. C. 307. P. C. f^.
 
 amendmp:nt of specifications. 107 
 
 The comptroller exercises the power to impose con- 
 ditions given in express terms to the law officer under 
 sul)-s. 4 (^). In Codd's Patent [j), he ordered as a condi- 
 tion of allowing an amendment (1), that no proceedings be 
 taken against opponent A. in respect of infringements 
 committed prior to the 1st January, 1884; (2), that the 
 applicant pay to opponent A. 10 guineas as a7idfor}iis costs 
 of and incident to his opposition to the abortive application 
 of 10th July, 1884. It is however clear that the C. G. has 
 no power to give costs as a condition of amendment {k). 
 
 " (4) The law officer shall, if required, hear the j^^^^^son 
 making the i^eqnest and the 'person so giving riotice, and 
 being in the opinion of the law officer entitled to he heard 
 in oppositio7i to the request, and shall determine whether 
 and subject to what conditions, if any, the amendment 
 ought to he allowed." 
 
 In Allen's Patent (l) application was made to amend a 
 specification dated 1885. The opponents asked that a 
 condition should be imposed that Allen should not bring 
 any action or bring any proceedings whatever against them 
 or any of their customers, &c., in respect of any pipes 
 which had been sold or contracted to be sold prior to the 
 amendment. Sir E. Clarke, S.-G., having consulted Sir K. 
 Webster, A.-G., gave the following decision. " I have care- 
 fully considered the question whether in allowing this 
 amendment I ought to impose any condition as to the 
 bringing of actions for infringement prior to the date of the 
 amendment. This appears to be the first case in wdiich 
 that question has come up for decision in respect of patents 
 issued since the passing of the Act of 1883. In several 
 cases which came before the law officer shortly after the 
 passing of this Act, I find that they imposed as a condition 
 
 (t) Ilearsott's Patent, Griffin P. C. ik) Pietschmann's Patent, Griffia 
 
 309. P. C. 314. 
 
 (J) Codd's Patent, Griffin P. C. (I) 2 Griffin P. C. 3. 
 at p. 307.
 
 108 THE LAW OF PATENTS. 
 
 of the amendment, that no action should be brouo-ht for 
 infringements prior to 1st January, 1884. An examination 
 of these cases as reported in Griffin's P. C, shows that the 
 reason for their so doing, and in each case (whatever its 
 date) referring back to the 1st January, 1884, was, that 
 they doubted whether sect. 20 would avail to protect 
 persons who were sued for infringements alleged to have 
 been committed prior to the passing of the Act. No such 
 question arises here. This patent was dated 20tli October, 
 1885, and if after amendment an action is brouirht for a 
 prior infringement, it is clear that the Court will have to 
 decide whether the matters referred to in sect. 20 have been 
 established to its satisfaction. I do not think that I am 
 entitled to substitute my opinion for that of the Court. 
 Again, I do not think that I could in strictness attach this 
 as a condition to the allowance of this amendment. I 
 could only require an undertaking from the applicant as was 
 I required by Sir H. James, A.-G., in the Westmghouse Case. 
 If he were to refuse to give such an undertaking, I do not 
 feel myself entitled by that refusal to deprive him of the 
 opportunity of protecting the real invention described in 
 his specification, by a disclaimer of that which I am satisfied 
 lie docs not mean to claim. I therefore do not think I can 
 })ropcrly impose this condition." 
 
 In CheesehoroiigK s Patent [n) the conditions were that no 
 action should be brought with reference to any \am])s made 
 sold or used before the date of the amendment, and that any 
 lamps so made might be used or sold after the date of the 
 iimendment without infrinf^ino-. In the case of a second 
 disclaimer the law officer will be disinclined to give costs 
 to the patentee even if successful (o). 
 
 ** (5) When no notice of oj^position is given, or the 
 
 (n) Griffin P. C. 303. Sec also (o) Uaddan's Patent, 2 Griffin 
 
 tlio terms imposed in Westing hoiur P. C. 12. 
 Patent, Griffin P. C. 315.
 
 AMENDMENT OF SPECIFICATIONS. 109 
 
 person so giving notice does not aiypear, the cornpt roller 
 shall determine 'whether, and subject to what conditions, 
 if any, the amendment ought to he alloiued. 
 
 " (6.) When leave to amend is re/used hy the comp- 
 troller, the ^je^'^on making the request unay appeal from 
 his decision to the law officer. 
 
 " (7) The law officer shall, if required, hear the p)erson 
 making the rapiest and the comptroller, and may make an 
 order determining ivhether and subject to ivhat conditions, 
 if any, the amendment ought to he allowed. 
 
 "(8) No amendment shall he alloioed that ivonld 
 make the specification as amended, claim an invention 
 substantially larger than or suhsta7itially different from 
 the i^ivention claimed hy the specification as it stood before 
 amendment." 
 
 An amendment will not be allowed wliicli abandons the 
 original substantive claim and limits the invention to a 
 subordinate and unimportant alternative (p). 
 
 " (9) Leave to amend shall be conclusive as to the right 
 of the party to make the amendme7it allowed, except in 
 case of fraud, and the amendme7it shall in all Courts 
 and for all purposes be deemed to form part of the 
 specification. 
 
 " (10) Tlie foregoing provisiorts of this section do not 
 apply when and so long as any action for infringement 
 or proceeding for revocation of a patent is pe^iding.'' 
 
 In Crojyper v. Smith [q) the comptroller having de- 
 clined leave to amend a specification by reason of the lOtli 
 sub-sect, of sect. 18 on the ground that an appeal was pend- 
 ing to the House of Lords from a decision of the Court of 
 Appeal, declaring the patent in question invalid, and that 
 such appeal was " an action for infringement or other legal 
 proceeding." Application was made to the Court under 
 
 (p) Heath and Frost's Patent, Griffin P. C. 311. 
 (q) L. R. 28 Ch. D. 148.
 
 110 THE LAW OF PATENTS. 
 
 sect. 19. Chitty, J., held that the words "other legal 
 proceedings " applied to a petition for revocation, and that 
 the words " action for infringement " referred to an action 
 before judgment, and consequently that the appeal to the 
 House of Lords did not deprive the comptroller from 
 the power of amending the specification under sect. 18. 
 
 In Coclcl V. Brathy (?"), liberty to amend under sect. 19 
 was given upon terms by the Court after a previous refusal 
 by the comptroller under sect. 18, but the applicant was 
 ordered to pay the costs of the application to the comp- 
 troller. 
 
 Sect. 19, ''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 or otherwise as the Court 
 or a judge may impose, he 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 heai'ing of the action shall he postponed.'^ 
 
 Where more than one action is pending, the leave of the 
 Court must be obtained under this section in each action, 
 otherwise the amendment will not be allowed, and each 
 order must be filed under rule 55 {infra) (s). 
 
 In Codd V. Brathy {supra), in giving liberty to amend 
 under this section, Chitty, J., said, " It is conceded for the 
 applicant, first, that the amended specification is not to be 
 put in evidence at the trial ; secondly, that no evidence is 
 to be given of any infringement prior to the amendment of 
 the specification. Besides that, it is conceded that the 
 applicant must pay the costs of this application and all the 
 costs that have been thrown away in the action ; " then as 
 to the contention that a condition should be imposed on 
 the phiintifi" that he should not sue the defendants on the 
 
 (r) GrifTin 1'. C. 56 ; 1 ratont (5) Codd't Patent, Griffin P. C. 
 
 Omco lleporU, 209. .".Of..
 
 AMENDMENT OF SPECIFICATIONS. Ill 
 
 amended specification for future infringements, liis Lordship 
 said, " The result of my acceding to this part of the argu- 
 ment would be, that I should be giving to the defendants 
 practically and substantially a license to infringe the plain- 
 tiff's patent when amended .... in the circum- 
 stances of this case, that would be going too far .... 
 There may be cases in which it would be right to impose 
 such a term. I am not satisfied in the case before me on 
 the evidence, that the defendants are right in their attempt 
 to impute knowledge to the plaintiff many years ago of the 
 invalidity of his patent ; if that point were made out, I 
 think the case might stand on a different footing, because 
 then 1 should have the case of a patentee with knowledge 
 of a defect in his pafent, lying by until a very few months 
 of the expiration of his patent ; and I should have on the 
 other side the defendants saying that they were aware of 
 the invalidity of the patent, that they were advised that 
 the patent was invalid, and that they set up a trade and 
 incurred great expenditure on the faith that the patent was 
 invalid . . . ." See also as to terms imposed under 
 this section, Singer v. Stassen (t), Fuzee Vesta Co. v. 
 Bryant & May (tt), Bray v. Gardner {it), Ilaslam 
 Foundry Co. v. Goodfellow {it), also Gaidard v. Lind- 
 sey iiv). 
 
 Liberty to amend under this section will not be given 
 after judgment {x). 
 
 Sect. 20. " Where an amendment, by way of disclaimer, 
 correction or exj^lanatiori, has been allowed under this Act 
 no daTYiages shall be given in any action in respect of the 
 use of the invention before the disclaimer, correction or 
 explanation, unless the patentee establishes to the satisfac- 
 
 (t) 50 L. T. 326, Griffin P. C. 497 ; 56 L. T. 292. 
 207. (v) 37 Ch. D. at p. 121. 
 
 («) 34 Ch. D. 458; 56 L. J. {w) W. N. Feb. 4, 1888. 
 
 Ch. 187; 56 L. T. 110. {x) Lawrence v. Ferry, Griffin 
 
 (u) 34 Ch. D. 668 ; 56 L. J. Ch. P. C. at p. 148.
 
 112 THE LAW OF PATENTS. 
 
 tion of the Court that his original claim was framed in 
 good faith and with reasonable skill and knowledge." 
 
 Sect. 46 defines the word "patentee," referred to in 
 sect. 18, sub-sect, (l), as meaning " The person for the time 
 being entitled to the benefit of a patent." 
 
 It will be observed that the amendments under the new 
 Act are to be by disclaimer, correction or explanation, 
 provided the amendment does not cause the specification 
 to claim an invention substantially larger or different. 
 The Act of Will. IV., after using the words " disclaimer " 
 and " alteration," provided that no extension should take 
 place in the " exclusive right " granted by the letters 
 patent. 
 
 It was always a question of great 'difficulty whether or 
 not a disclaimer or alteration extended the " exclusive 
 rio-ht " of the patentee. For instance, if in his original 
 specification, after describing several improvements in a 
 process of manufacture, he proceeded to claim them all, 
 and it should turn out that one of his improvements was 
 old, the whole patent was bad and the patentee had no 
 exclusive right at all ; if he then disclaimed the objection- 
 able portion, his patent became good as to all the rest. 
 There was clearly, therefore, an extension of the exclusive 
 rio-ht, notwithstanding that this was the very case the sta- 
 tute was passed to meet. j\Ir. Justice Maule's view of the 
 Act of Will. IV. was : — " Whereas there were previously 
 many small and trifling objections by which, if they were 
 sustained against any one of many important inventions, 
 the whole was avoided. In such cases amendments may 
 now be made by means of a disclaimer" {y). 
 
 Romilly, ^I.K., in the same case (z), at the Rolls, said : — 
 " It is proper they (patentees) should be allowed to correct 
 errors in their patents by removing from the specification 
 parts which arc n(jt material or substantia], or which they 
 
 iy) R. V. Mill, 20 L. J., ('. P. at 59. 
 page 24; 10 C. P.. 379; IT) Jur. {:) 14 Boavan, at pago 315.
 
 AMENDMENT OF SPECIFICATIONS. 115 
 
 have since discoverecj not to he new inventions ; hut this 
 power ought to he exercised with great care and discre- 
 tion." There is a case reported in Macrory's Patent Cases 
 at page 116, where Sir Ei chard Bethell, when Sohcitor- 1 
 General, allowed a patentee to enter a disclaimer, the effect 
 of which was to enable liim to claim for a combination, the 
 original clause being for the several parts of the described 
 invention. When afterwards he became Lord Westbiiry he 
 described the words of this statute as vague and indefinite, 
 and said : — " Possibly they mean that the patent must not, 
 by the operation of the disclaimer, be made to include or 
 comprehend something which was not originally contained 
 in the patent. The invention claimed may be reduced or 
 diminished, but it must not be extended or enlarged" (a). 
 
 The case of Ralston v. Smith (h) shows the difficulty 
 which the Courts had in reconciling a disclaimer which 
 might make a patent valid which was void ah initio, with 
 the prohibition against extending the exclusive right. The 
 judgment of Lord Chelmsford, as reported, is remarkable 
 for its cautious vagueness, and the care which seems to 
 have been exercised not to lay down anything approaching 
 to a general principle. Under the Act of 1883 it is not the 
 exclusive right which must not be extended, but the inven- 
 tion must not be substantially larger or different. It is pre- 
 sumed that the law officers will not find so much difficulty 
 in dealinof with these words as with the words of the old 
 statute. Moreover, an amendment once made cannot 
 afterwards be objected to on any ground whatever, ex- 
 cepting that of fraud. 
 
 The amendment becomes part and parcel of the original 
 specification in all courts and for all purposes. 
 
 Under the Statute of Will. IV. no disclaimer or amend- 
 ment could be given in evidence in any action or suit (save 
 
 (a) Foxivell v. BostocJc, 4 De G. (b) 11 H. L. C. 223 ; 20 C. B. 
 
 J. & S. at page 306; 12 W. R. N. S. 28; 13 L. T. N. S. 1. 
 723; 10 L. T. N. S. 144. 
 
 T. I
 
 114 THE LAW OF PATENTS. 
 
 and except in any proceedings by scire facias) pending at 
 the time the disclaimer or amendment was enrolled. The 
 object of this was obvious. It would have been unjust that 
 a defendant should be held guilty of infringing a patent 
 Avhen at the time the action was brought against him the 
 patent was void. The saving clause relating to scire facias 
 was always exercised subject to just provision as to costs, 
 and was inserted with a view to prevent a ]3atent being re- 
 pealed on account of some trifling error which might have 
 been cured by disclaimer or alteration. The entry of a 
 disclaimer under the old Act did not make a void patent 
 valid a.h initio, " so as to make any person a wrongdoer by 
 relation," and in Perry v. Skinner (c) it was held, that the 
 ^^•ords " from thenceforth " must be read into the specifica- 
 tion. Proceedings by scire facias are abolished by sect. 26 
 of the Act of 1883, and a petition to the Court is substituted, 
 the grounds for the petition being the same as heretofore in 
 scire facias. Although we have seen that sub-s. 10 of 
 sect. 18 prohibits any amendment under that section pend- 
 ing legal proceedings (including proceedings by way of re- 
 vocation), sect. 19 jDrovides machinery for saving a patent 
 in the event of the Court or judge being of opinion that a 
 disclaimer should be allowed upon such terms as may 
 appear just (<;/). It will be observed that the Court or 
 judge have no power to permit amendment by " correction 
 or explanation " under this section. 
 
 In Dudgeon v. Thompson (e), an interdict granted prior 
 to tlic amendment was refused to be enforced after the 
 amendment, on the ground that the amendment materially 
 altered th(; patent, and that it was quite possible that there 
 was no infringement of the patent as altered. In Kynoch 
 
 re Sinidis Patent, Macr. P. C. 232 ; 
 III re M('illi)rk\ Patent, Nowtou, 
 IjOiiddii .Idui'iiul, New Series, vol. 
 22, ]). (ID. 
 
 (e) L. R., 3 App. (Jascs, 34. 
 
 ('•) 
 
 1 liiHliii 
 
 ;:reli, 
 
 ]). 1 
 
 .'07 ; 
 
 2 M. ct 
 
 W. M 
 1 [ 1 
 
 ■1 ; 
 
 1 
 1 ■> 1 
 
 Weh. 
 
 1'. 
 
 < '. : 
 
 lMO ; (i 
 
 
 ■-.\. 
 
 Ah 
 
 1 J 1 
 to 
 
 what. 
 
 ai'(.' 
 
 jii.st 
 
 ten IIS, 
 
 hce supra, 
 
 IT 
 
 . 107 
 
 to 
 
 ill, 
 
 1111(1 /it
 
 AMENDMENT OF SPECIFICATIONS. 115 
 
 V. National Arms Company, Limited {/), it was held tliat 
 the law officer could not order an applicant for leave to dis- 
 claim to pay costs. Sect. 38 of the Act of 1883 cures this 
 defect, giving the law officer full discretion as to 
 costs {ff), with provision that his order may be made a 
 rule of Court. 
 
 Sect. 20 speaks for itself; may be it is intended to over- 
 rule Perry v. Skinner (g), quoted above. Under the Act 
 of Will. IV., when a patentee sought to disclaim it was 
 necessary that he should give his reasons for the proposed 
 disclaimer, but he was not compelled to state reasons for a 
 proposed alteration. Under the present statute he must 
 give his reasons for any amendment, whatever the form of 
 the amendment may be. The reasons will, of course, vary 
 with each case. Either that the patentee has discovered 
 that parts of the invention claimed are not new, or are use- 
 less, or are not sufficiently described, or that they will not 
 work. It will be observed that the reasons are not required 
 to be advertised. The subject of opposition to the amend- 
 ment proposed will be dealt with in the next chapter. It 
 may be observed that there is nothing in the Act of 1883 
 to withdraw from the Master of the Rolls the common law 
 power of amending clerical errors in specifications. See In 
 re Johnson's Patent {h). 
 
 (/) 37 L. J. N. S. 31. {g) 2 M. & W. 471. 
 
 (/■) As to how this discretion {h) L. R., 5 Ch. D. 503 ; and In 
 
 has been exercised, see infra, re Gare's Patent, 26 Ch. D. lOo, 
 
 " Practice." supra, 104. 
 
 I 2
 
 116 THE LAW OF PATENTS. 
 
 CHAPTER VI. 
 
 OPPOSITION. 
 
 Section 10 of the Act of 1883 provides that upon accept- 
 ance of the complete specification, but before sealing the 
 patent, the comptroller shall advertise the acceptance, and 
 that then the application and specifications, with the draw- 
 ings, if any, shall be open to public inspection. 
 
 Section 11, as amended by the Patents, &c., Act, 1888, 
 is as follows : — (l) "Any person may at any time tuithin 
 two months from the date of the advertisem^ent of the 
 acceptance of a complete specification, give notice to the 
 Patent Office of opposition to the grant of the patent 
 on the ground of the applicant having obtained the inven- 
 tion from him, 
 
 " Or from a person of whom he is the legal representa- 
 tive, 
 
 *' Or on the ground that the invention has been p)atented 
 in this country on an appliccdion of prior date, 
 
 " Or on the ground that the complete specification 
 describes or claims an invention other than that described 
 in the provisional specifcation, and that such other in- 
 vention forms the subject of an application made by the 
 opponent in the interval between the leaving of the pro- 
 visioned sptecification and the leaving of the complete 
 spjecification, but on no other ground." 
 
 Prior to the j)assiug of this Act any ground was avail- 
 able for the purpose of opposition which would have been 
 available for the purpose of destroying the validity of the 
 patent. Prior user was a frequent ground of opposition 
 {Li re Samuda (a) ), so also was an alleged dedication to 
 the public by the inventor himself (In re Adamson's 
 
 (a) Hiudmarch, at page 534.
 
 OPPOSITION. 117 
 
 Patent (h) ), but it was always considered necessary that 
 the ground of the opposition should be proved beyond the 
 shadow of a doubt [In re Tolhausens Patent (c), and also 
 In re Vincent's Patent (d) ). If there was any doubt the 
 patent ought to be sealed, so as to give the inventor the 
 benefit of an exhaustive trial. These two latter cases indi- 
 cate the course the law officer should take, where the 
 ground of opposition is an allegation that the applicant 
 has obtained the invention from the opposing party. 
 Such a question might very frequently raise questions of fact 
 of great delicacy, and the question of the credibility of wit- 
 nesses. Such questions should be left for trial in open 
 court, more particularly as it will be observed that any 
 such opposing party has an ample and unfettered remedy 
 by petition to revoke the patent under sect, 26. In Ed- 
 munds' Patent {e). Sir R. Webster, A.-G., said : — "I am| 
 clearly of opinion that under the circumstances the comp- 
 troller-general was right in declining to stop the patent in 
 the present case. Had he done so, or if I were now to do 
 so, there would be no means of reviewing our decision, 
 whereas if the patent is sealed the question can be raised 
 either in the proceedings to which I have already referred, 
 or it may be in proceedings for revocation, should the 
 parties be advised to institute any such proceedings." In 
 this case the law officer held that, in the absence of breach of 
 contract or duty, the words " the applicant having obtained 
 the invention from him" in the 11th section did not apply 
 to the obtaining the invention from a person abroad. 
 
 It frequently happens that the law officer is of opinion 
 that both the applicant and the opponent contributed 
 materially to the invention. In such case terms 
 will be imposed giving both parties an interest in the 
 
 (h) G De G., M. & G. 420; 25 {e) Griffin V. C. at page 283. 
 
 L. J. Ch. 456 ; 4 W. R. 473. See also Fi^chter's Patent, Griffin 
 
 (c) 14 W. R. 551. P. C. 284. 
 
 (d) L. R., 2 Ch. 341.
 
 118 THE LAW OF PATENTS. 
 
 patent (ee). In David and Wodley {/), upon the question 
 of workman and master, Sir H. Dcavey said : — " T am of 
 opinion that if a workman is employed by an inventor to make 
 a model for the purpose of carrying out his invention, and 
 the workman suggests improvements in detail of the machine, 
 which are adopted in the machine or model as completed, 
 those suggestions are the property of his employer, and the 
 workman cannot afterwards take out a patent for them." 
 
 The other two grounds of opposition are such as can 
 readily be proved or disproved, hence the power of the 
 law officer can be exercised with less prejudice to the 
 interests of justice. In Cuinmings Patent {jf), Sir Henry 
 James, although of opinion that the applicant's invention 
 and that which formed the ground of opposition were very 
 nearly the same, thought there was just sufficient difference 
 (although a very slight difference) to justify him in affirm- 
 ing the comptroller-general's decision. He felt, too, that 
 if he refused a patent his decision would be final. It 
 Avill make no difference in the exercise of the discretion of 
 the law officer upon the report of the comptroller, if the 
 specification appears to him to comprise the same invention 
 as is comprised in a previous application, that the validity 
 of the first patent is in dispute [g). 
 
 " On the ground that the invention has been patented 
 in this country " will not give a locus standi for opposition 
 where only a provisional protection has been granted for 
 the previous invention iji) ; but it is otherwise where the 
 opponent has brought himself within the terms of sect. 
 15 (i). If tlie invention, the subject-matter of applicant's 
 sy)efificali(jii, is fully described in the specification relied on 
 
 {ee) JiuueU's Patent^ (Joodcvc, (</) In re Manceaux's Patent , 
 
 P. C. 589 ; Lukes Patent, (Jriffin L. 11., 6 Ch. 272. 
 1'. ('. 2!)l ; ICiuins ,(■ Olivay's (h) Pai/r//s Patent, GrUYm V. ('. 
 
 Pateid, (.UdYm ]'. (\ 279; Car- 2Gd ; Dmulon's Pat e7tt, Griffni V. (\ 
 
 thwaite'g Patent, (iriliin \\ C. 284. 278. 
 
 ( f ) 2 (Irilliii I'. ('. 2G. {i) L'Oiseau and Pierrard, 2 
 
 (/) Crifliii ]'. ('. 277; also GriHin P. C. 3G. 
 Jones's !'((!( Ill, 2 (Iiilliii I'. C. .'33.
 
 OPPOSITION. ]19 
 
 in opposition, the patent will not be allowed to go, notwith- 
 standing that it is not made the subject of claim in the 
 opposing specification (/.). But when a patent is oppos('(l 
 on this ground, it is not open to the applicant to show- 
 that the invention, although described in the opponent's 
 complete specihcation, is not contained in his provisional {/). 
 The author ventures to hope this decision will be recon- 
 sidered, although it is one of Sir Richard Webster's. It is 
 founded upon the fact that the applicant is not entitled to 
 dispute the validity of the opponent's patent. But is tins 
 quite the point ? Is it not a question of priority ■? The 
 opponent's provisional was filed in March, 1885, and his 
 complete in December, 1885. The applicant's provisional 
 was filed in July, 1885, and his complete in April, 188(3. 
 Now if the invention contained in the applicant's provi- 
 sional was not contained in the opponent's provisional, it is 
 perfectly clear that the applicant was the first inventor. 
 The decision in this case would lead to this hardship — that 
 where people are racing after an invention, as is frequently 
 the case, and A. has filed a provisional for no matter what, 
 and afterwards hears that B. has made the desired discovery, 
 A. can, by including B.'s invention in his complete, say to B., 
 ^' 1 can oppose your grant. It is true my patent is invalid, 
 but I can prevent you getting a patent by opposing, and 
 you will not be permitted to enter into the question as to 
 who was the real inventor, so you can get no patent, no 
 matter how fraudulent my conduct may be, because fraud 
 on the part of the opponent is not within the 1 1 th section." 
 Since the above lines were in type the hardship indicated has 
 been removed by sect. 4 of the Patents,&c., Act, 1888, amend- 
 ing sect. 11, sub-sect. 1, of the Act of 18S3, quoted supra. 
 Under this section it will make no difierence whether 
 the patent upon which the opposition is founded has ex- 
 pired or not (m). 
 
 (l-) Von Buck's Application, 2 286. 
 Griffin P. C. 40. (m) Per Gorst, S.-G., In Lan-\ 
 
 {I) Greens Patent, Griffin P. C. caster's Patent, Griffin P. C. 293.
 
 120 THE LAW OF PATENTS. 
 
 A question has arisen as to whether, when a patent is 
 antedated, pursuant to the provisions of sect. 103 {infra) ^ 
 and when an application is made for letters patent for the 
 same invention to another applicant, between the date to 
 which such patent is antedated and the actual date of 
 apphcation, such antedated patent should, for the purpose of 
 opposition, be treated as of the antedated date or the actual 
 I date. Sir R. AVebster, on January 17th, 1888, held in the 
 matter of Everitfs Patent and L'Oiseau and PierrarcV,s 
 opposition (n), that although the opponent's patent would 
 override the applicant's by reason of the antedating, still 
 that for the purpose of opposition the opponents had no 
 locus standi. Sir R. Webster had, on December 7th, 1887, 
 allowed L'Oiseau and Pierrard's patent to be amended by 
 antedating it, j^ursuant to the 103rd section and to the 
 Convention, notwithstanding that such antedating would 
 have the effect of overriding Everitfs Patent (o). 
 
 In Stuhhs Patent (p), Sir R. Webster said: — "As this 
 is the first case I have had to deal with, I should like to 
 explain what I mean to do in these cases. Of course I 
 need not remind you that stopping a patent is a very- 
 serious step, because there are no means whatever of an 
 applicant getting that which he applies for if I stop it, and 
 it must be distinctly understood that I shall not stop the 
 patent unless I am satisfied that the inventions are identical, 
 1 shall ]iot hesitate to stop it if I can see clearly they are 
 identical. ... I shall, as a rule, allow costs to follow the 
 event." 
 
 The second sub-section provides : — " WJiere such notice 
 is given, the coinptroller shall (jice notice of the oiyposition 
 lit the (tpjiUciiiil , <iii(l shall, oil the expiration of those two 
 moiij/is, (ij'/rr //('(i/'tiKj the (ijyplieaut and the ^>e?vw;i so 
 (jiviiijj notice, if desirous of heuuj heard^ decide oil the 
 cane, hnt suhjref to a]>peal to the laiv ofjieer. 
 
 (n) 2 Ciilliii I'. C. 28. (o) 2 Unlliii I'. C. ;}6. 
 
 {p) Ciilliu r. (!. 298. 
 
 1
 
 OPPOSITION. 121 
 
 (3) " The laiD officer shall, if required, hear the a2)2)li- 
 cant and any 2^(-"^'so7i so giving 7wtice, arid hemg, in the 
 opinion of the laiv officer, entitled to he heard in opi^osi- 
 tion to the grant, and shall determine whether the grant 
 ought or ought not to he made." 
 
 In Heath and Frost's Patent (q). Sir E. Clarke said : — 
 " It appears to me that by sect. 11 it is quite clear that the 
 only class of persons who are entitled to be heard in oppo- 
 sition before the law officer, are persons who are interested 
 with a real and legitimate interest in the prior patent upon 
 which an application is opposed, or persons who, while they 
 have not patented the invention, have yet been the origina- 
 tors of it, from whom the person seeking the patent ha& 
 obtained it." 
 
 The law officer ought not to interfere with the decision 
 of the comptroller unless it is clearly wrong (r), nor ought 
 he to permit amendment in the opposition by substituting 
 another opponent when it has been decided that the original 
 opponent has no locus standi (s) ; but otherwise where the 
 original opponent is dead (ss). 
 
 (4) " The laio officer may, if he thinks ft, ohtain the 
 assistance of an expert, ivho shall he paid such remunera- 
 tion as the law officer with the consent of the treasury shall 
 appoint" 
 
 Sect. 38 of the Act gives pov/er to the law officers to 
 examine witnesses on oath, to make rules from time to 
 time regulating references and appeals, together with the 
 practice and procedure before them, and in such proceedings 
 they may make such orders as to costs as they may deem 
 just, such orders to be enforceable as rules of Court. 
 
 In the absence of opposition, or in the event of any 
 opposition being decided in favour of the patentee, the 
 patent will be sealed. (Sect. 12.) 
 
 {q) Griffin P. C. at p. 290. (5) In Heath and Frost's Patent, 
 
 (V) Per Herschell, S.-G., In Griffiu P. C. 290. 
 Glossop's Patent, Griffiu P. C. 286. (ss) Lake, 2 Griffin P. C. 35.
 
 122 THE LAW OF PATENTS. 
 
 Provisions are made in sect. 18 for oj^position to the 
 amendment of any specification — opposition to an amend- 
 ment may be made upon any ground — the only restriction 
 being that the opposition must, in the opinion of the law 
 officer, be by a person entitled to be heard. Any person 
 who would be injuriously affected by a void patent 
 becoming valid is a person entitled to be heard (^). 
 
 For practice cases the reader is referred to those quoted 
 under the head of "Practice — Opposition," infra. 
 
 (t) See the conditions imposed gi*eat care was taken to protect the 
 
 in He Medlock's Patent, reported in vested interests of pez-sons who 
 
 Newton's London Journal, New had acquired rights by reason of 
 
 Series, vol. 22, p. 69, and also in the imperfect condition of the ori- 
 
 Jie S7nith's Patent, Macr. P. C. ginal specification. 
 232, in which cases it appeai-s that
 
 123 
 
 CHAPTER VIL 
 
 THE GRANT. 
 
 Prior to the Act of 1883 letters patent were issued 
 under the great seal of England, and, consequently, by 
 the Lord Chancellor, as keeper of the great seal. The 
 process of sealing a patent was surrounded with all the 
 formalities and expense which surrounds an important Act 
 of State. Letters patent derived their authority from the 
 fact that the great seal was attached to them, for " all the 
 king's subjects are bound to take notice of the king's great 
 seal " (a). Sect. 84 of the Act provides : " There shall he 
 a seal for the Patent Office, and impressions thereof shall 
 he judicially noticed and admitted in evidence ; " and 
 sect. 12: (1) "If there is no opjoosition, or, in case of 
 opposition, if the determination is in favour of the grant 
 of a patent, the comptroller shall cause a patent to he 
 sealed ivith the seal of the Patent Office. (2) A patent 
 so sealed shall have the same effect as if it luere sealed 
 with the great seal of the United Kingdom" Form D. 
 in the first schedule to the Act gives the form in which in 
 future letters patent are to be issued. 
 
 By sect. 33, " Every p>atent may he in the form in the 
 first schedide to this Act, and shall he granted for one 
 invention only, hut may contain more than one claim; hut 
 it shall not he competent for any person in an action or 
 other proceeding^ to take any ohjection to a patent on the 
 ground that it comprises moi^e than one invention." 
 
 (a) Bast India Co. v. Sandps, Skin. 225.
 
 124 THE LAW OF PATENTS. 
 
 The Comptroller may refuse to accept an application on 
 tile ground that the specification contains more than one 
 invention. The question as to what in truth is one inven- 
 tion is consequently of importance. In Jones's Patent (h), 
 Sir Farrer Herschell, S.-G., said : "It seems to me that 
 the general object of the invention is the test by which the 
 Cjuestion of one invention must be decided. If you have a 
 particular general object of an invention to make rails rest 
 more securely, and you describe one or two or three devices 
 of an analogous nature, cognate devices, for carrying it 
 into effect, I should say they were all one invention ; but 
 if there is no common purpose so that you could say, ' I use 
 this as a substitute for that,' l;)oth serving the same purpose, 
 although there is some difference between them, but they 
 are to serve some different purpose, there is no connection 
 between them except that both are used in connection with 
 rails, and it strikes me that would be two inventions." 
 
 Letters patent consist of six material parts : — 
 
 1st. The address. 
 
 2nd. The recitals. 
 
 3rd. The grant. 
 
 4th. The prohibition. 
 
 5th. The conditions. 
 
 6th. The construction of the grant. 
 
 THE ADDRESS. 
 
 The address is a public address from the sovereign to 
 " all to whom these presents shall come." Mr. Hindmarch 
 gives the reason for this as being, that it contains bargains 
 made between the public and patentee (c). 
 
 (6) Griffin T'. C 2Cr) ; I/earson's Robinson's Patent, Griffin P. C. 2G7. 
 Patent, CJriffin P. C. 2GG ; and (c) Page 40.
 
 THE GRANT. 125 
 
 THE RECITALS. 
 
 The recitals are four in number. The first recites the 
 patentee's name and address, that he has made a declara- 
 tion that he is in possession of an invention and is followed 
 by the title of the invention. That he has declared that 
 he is the true and first inventor of the invention, and that 
 the same is not in use by any other person to the best of 
 his knowledge and belief. 
 
 It will be remembered that previously to the Act of 
 1883, there were two forms in use ; one when the inventor 
 was the first and true inventor, and the other for a com- 
 municated invention ; the latter running, " that in conse- 
 quence of a communication from a foreigner residing 
 abroad, he is in possession of an invention, &c." We have 
 seen that communications from abroad have, in all pro- 
 bability, been abolished by the Act of 1883, and that if he 
 would avoid making a false suggestion, and so destroy his 
 patent, the inventor must himself become the patentee (d). 
 This recital contains the "suggestions" which have 
 been made to the sovereign prior to the patent being 
 granted and the representations upon which it has been 
 granted. If either of these suggestions or representations 
 be untrue the patent is void. We cannot do better to 
 illustrate the exact meaning of a false suggestion than 
 to quote the language of Parke, B,, in Morgan v. Sea- 
 ward (e). In that case the false suggestion complained of 
 was in the title of the specification, which it was alleged 
 did not disclose the true nature of the invention, " This 
 brings me to the question," said the learned judge, 
 " whether this patent, which suggests that certain inven- 
 tions are improvements, is avoided if there be one which 
 is not so ; and upon the authorities we feel obliged to hold 
 that the patent is void upon the ground of fraud on the 
 
 (d) Ante, pp. 7 and 21. 
 
 (e) 2 M. & W. 544 ; 1 Web. P. C. 187 ; 6 L. J. Ex. 153.
 
 126 THE LAW OF PATENTS. 
 
 Crown, without entering into the question whether the 
 utility of each and every part of the invention is essential 
 to a patent, where such utility is not suggested in the 
 patent itself as the grouud of the grant. That a false 
 suggestion of the grantee avoids an ordinary grant of lands 
 or tenements from the Crown is a maxim of the common 
 law, and such a grant is void, not against the Crown 
 merely, but in a suit against a third person (/). It is on 
 the same principle that a patent for two or more inven- 
 tions, when one is not new, is void altogether, as in Hill v. 
 Thompson (g) ; Br union v. Hcnvkes (h) ; for, although the 
 statute invalidates a patent for want of novelty, and, con- 
 sequently, by force of the statute the patent would be 
 void, so far as related to that which was old, yet the 
 principle on which the patent has been held to be void 
 altoo-ether is, that the consideration for the grant is the 
 novelty of all, and the consideration failing, or in other 
 words the Crown being deceived in its grant, the patent 
 is void, and no action maintainable upon it. We cannot 
 help seeing on the face of this patent, as set out in the 
 record, that an improvement in steam-engines is suggested 
 by the patentee, and is part of the consideration for the 
 o-rant, and we must reluctantly hold that the patent is 
 void for the falsity of that suggestion. In the case of 
 Lewis V. Marling {i), this view of the case, that the patent 
 was void for a false suggestion, does not appear by the 
 report to have been pressed on the attention of the Court 
 or been considered by it. The decision went upon the 
 ground that the brush was not an essential part of the 
 machine, and that want of utility did not vitiate the 
 patent, and besides, the improvement by the introduction 
 of the brush is not recited in the patent itself, as one of 
 
 {/) Travdiv. Carteret, 3 Levin/,, (A) 4 B. A; Aid. 541. 
 
 135 ; ALcock v. Cooke, 5 Biug. 340. {i) 10 B. & C. 22. 
 
 (fj) 8 Tiiiiu. 375.
 
 THE GRANT, 127 
 
 the subjects of it which may make a clifierence. " It will 
 be observed here that the learned judge draws a careful 
 difference between an insufficient description in the specifi- 
 cation and a false suggestion. In the cases cited below 
 letters patent were held void for false suggestion (k). And 
 the following cases are illustrations of the distinction drawn 
 by Mr. Baron Parke : — Leivis v. Marling {sivpra) and 
 Haworth v. Hardcastle {I). Also Bainhridge v. Wig- 
 ley {vi) ; Hill V. Thompson (n). 
 
 The second recital deals with the prayer of the appli- 
 cation for the grant. 
 
 The third recital recites that a complete specification 
 has been filed, particularly describing the nature of the 
 invention. Here, again, a false suggestion will avoid the 
 patent, so that if the complete specification is imperfect, 
 the patent will be void upon two grounds, the one being 
 the failure of consideration, and the other the false sug- 
 gestion ; and a false suggestion is equally fatal whether it 
 is wilfully false or otherwise. 
 
 The fourth recital gives the common law motive for 
 the grant, which is the encouragement of inventions for 
 the public good. There will be something analogous to 
 a false suggestion if the subject-matter of the patent be 
 immoral or illegal, and hence the patent will at common 
 law be void. By sect. 86 of the Act the comptroller may 
 refuse to grant a patent for an invention of which the use 
 would, in his opiiiion, be contrary to law or morality. A 
 serious oversight in the Act appears to be that there is no 
 appeal from the comptroller when he exercises the power 
 given by this section. 
 
 (^•) Jessop's Case, 2 H. Bl. 489 ; (l) 1 Bing. N. C. 182. 
 
 E. V. Wheeler, 2 B. & Aid. 345 ; (m) 1 Carp. P. C. 270. 
 
 Felton V. Greaves, 3 C. .fc P. 611. (n) 1 Web. P. C. 239.
 
 128 THE LAW OF PATENTS. 
 
 THE GRANT. 
 
 " Know ye, therefore, that we of our especial grace, 
 certain knowledge, and mere motion do by these presents, 
 for us, &c., give and grant unto the said patentee our 
 especial licence, full power, sole privilege, and authority, 
 that the said patentee by himself, his agents, or licensees, 
 and no others, may at all times hereafter during the term 
 of years herein mentioned, make, use, exercise and vend 
 tlie said invention .... in such manner as to him or 
 them may seem meet, and that the said patentee shall 
 have and enjoy the whole profit and advantage from time 
 to time accruing by reason of the said invention, during 
 the term of fourteen years from the date hereunder written 
 of these presents." 
 
 This language is intended to preserve intact the royal 
 prerogative to grant or withhold a patent — which right 
 was by the common law absolute and undoubted. We 
 have seen that this prerogative is carefully preserved by 
 sect. 11 6 of the Act. 
 
 It is the granting portion of the letters patent which 
 creates tlie property in the invention. We have seen that 
 this species of property is purely artificial in its nature ; 
 it is the most equitable and natural method which the 
 state can devise for the reward and encouragement of 
 inventors ; it is merely a right yielding nothing until 
 tlic invention is made practically useful to humanity. A 
 trade mark is also an exclusive right, but it differs from 
 a patent, insomuch that it has not merit and the benefit 
 of mankind as its consideration. A trade mark is only a 
 right to guarantee tlie genuine origin of an article. Any- 
 one else may make the article, but tliey are only prevented 
 from stampin<Tj it witli the same mark. A patent prevents 
 the ]iiiMif frnm making the article or using tlie invention. 
 There is no property wliicli partakes of the nature of an 
 exclusive right save that of a patent, copyright, or trade
 
 THE GRANT. 129. 
 
 mark. There is no exclusive riglit in a secret. A man 
 may only use a secret to liis own profit so long as no one 
 is in a position, by reason of knowing the secret, to use it. 
 But the original possessor of a secret cannot, by any 
 process of law, prevent a person from acquiring the know- 
 ledge of his secret, or, having acquired it, from making 
 such use of it by publication or otherwise, as he may 
 think proper (o). In Newhury v. James (j)), although 
 an agreement had been made to preserve a secret, the 
 Court refused to grant an injunction on the ground that 
 there was no means of enforcing it. Lord Eldon, L. C, 
 said in Williams v. Williams (</), " So far as the injunc- 
 tion goes to restrain the defendant from communicating 
 the secret upon general principles, I do not think that the 
 Court ought to struggle to protect this sort of secrets in 
 medicine. The Court is bound indeed to protect them in 
 cases of patents to the full extent of what was intended by 
 the grant of the patent, because the patentee is a purchaser 
 from the public, and bound to communicate his secret to 
 the public." 
 
 If the plaintiff's secret, however, be one which he 
 intends to patent, and the defendant has acquired the 
 information during the progress of experiments, or from 
 the confidence of the plaintiff, he will not be allowed to 
 make such use of the knowledge so acquired as to subse- 
 quently invalidate the plaintiff's patent, or to take out a 
 patent for the invention himself, and if he do, he will be 
 liable in damages to the plaintiff (?•). It will be observed 
 that the word " patentee " is used in the grant ; the old 
 form was, " to the said John Smith, his executors, adminis- 
 trators or assigns ; " a " patentee " is, under the 46th 
 section, construed as being " the person for the time being 
 entitled to the henejit of a patent ; " we shall see presently 
 
 (o) Canham v. Jones, 2 Ves. & {q) 3 Mer. 157. 
 
 B. 218. {r) Smith v. Dickenson, 3 B. & 
 
 ( p) 2 Mer. 446. P. 630. 
 
 T. K
 
 13U THE LAW OF PATENTS. 
 
 that this includes assignees, executors and administrators, 
 together with receivers and trustees in bankruptcy, but the 
 subject of the devolution of patent rights is too extensive 
 and important to be dealt with under this head. 
 
 THE PROHIBITION". 
 
 The prohibition in the patent commands " all our 
 subjects, that they do not at any time during the con- 
 tinuance of the said term of fourteen years either directly 
 or indirectly make use or put in practice the said inven- 
 tion, or any part of the same, nor in anywise imitate the 
 same, nor make or cause to be made any addition thereto 
 or subtraction therefrom, whereby to pretend themselves 
 the inventors thereof, without the consent, licence or 
 agreement of the said patentee in writing under his hand 
 and seal, on pain of incurring such penalties as may be 
 justly inflicted on such offenders for their contempt of 
 this our royal command, and of being answerable to 
 the patentee according to law for his damages thereby 
 occasioned." 
 
 It is very difficult to understand the form of letters 
 patent w^hich is appended to the Act of 1883. It is pre- 
 sumed that the Act was intended to amend, simplify and 
 codify the law of patents. The form above quoted is an 
 imitation of forms previously in use. It is not easy to 
 understand what the " penalties " referred to in the pro- 
 hibition arc, and how are they to be put in force or re- 
 covered ? The Act certainly docs not mention penalties as 
 a form of punishment for infringers. 
 
 THE CONDITIONS. 
 
 Wr; TiimI ill llic "conditions" that the grant is to be 
 avoi(l<'(l "if it sliould appear to us, &c., or six or more of 
 our Privy (JouiH'il, that tliis our giant is contrary to law
 
 THE GRANT. 131 
 
 or prejudicial or inconvenient to our subjects generally, 
 or that the said invention is not a new invention as to the 
 public use and exercise thereof within our United Kingdom 
 of Great Britain and Ireland and Isle of Man, or that the 
 patentee is not the first and true inventor thereof within 
 this realm as aforesaid." This proviso raises some questions 
 of importance. The only proceedings mentioned in the 
 Act for the repeal of letters patent are proceedings in the 
 High Court of Justice. What is the proceeding before 
 " six of our Privy Council " ? It can scarcely be believed 
 that reference is here made in a new codifying Act to the 
 old prerogative claim of power to revoke, which has not 
 been put in practice for two hundred and fifty years. If it 
 be intended to have such a system of avoiding patents, 
 surely it would be well to provide for it in a more certain 
 manner than merely to mention it as one of the conditions 
 in the patent itself. In the next place we find here, for 
 the first time, an intimation that " novelty " means 
 novelty within the kingdom ; in the recitals of the patent 
 it is recited as being novelty universally, and throughout 
 the Act itself we find that " novelty " is not limited to 
 novelty within the kingdom. Again, we find here for the 
 first time the inventor described as " the first and true 
 inventor within this realm." In the Act and in the 
 recitals of the patent he is described as the " first and 
 true inventor." We have shown that the omission of the 
 words " within this realm " makes an immense difference 
 not only in the class of jjersons who may be grantees of 
 letters patent, but also in the nature of the evidence of 
 " prior user " which may be given in an action either for 
 infringement or revocation. The ambiguity of the form of 
 letters patent which is given, and the by no means clear 
 provisions of the Act upon these matters, will in all proba- 
 bility result in a plentiful crop of litigation (s). 
 
 (s) See Marsden v. The Saviile Ex. D. 203, aud Rolls v. Isaacs, 
 Street, <ix., Co., Limited, L. R., 3 L. R., 19 Ch. D. 268. 
 
 K 2
 
 132 THE LAW OF PATENTS. 
 
 The next proviso is one for tlie determination of tlie 
 patent in tlie event of the prescribed fees not being paid, 
 and the last provides for the supply of the patented article 
 for the use of the public service on reasonable terms. This 
 proviso in no way binds the Crown if the patented article 
 should be required for the public service to purchase it 
 from the patentee upon reasonable terms and conditions. 
 
 Prior to the .Act of 1883 letters patent did not operate 
 as ao-ainst the Crown. The Crown mioht make use of the 
 invention without in any way recognising any rights of the 
 inventor or patentee (w). But should the Crown have 
 employed a contractor, as distinguished from a servant, to 
 manufacture the patented article, the usual proceedings for 
 infringement mioht be brouo-ht aoainst the contractor, since 
 he is the person using the patent, and not the Crown. 
 There being two methods of infringing ; first, making and 
 vendino- ; and secondly, using. The contractor infringes by 
 doino- the first, and it makes no difi'erence that the Crown 
 also infringes by using the invention (.r). 
 
 This case was subsequently affirmed in the House of 
 Lords. Lord Hatherley said, " The Crown has no right 
 to authorize others who are not their officers, servants, or 
 ao-ents, to use a patented invention without a license from 
 the patentee ; " and Lord Selborne added, " I agree with 
 the Court of Queen's Bench that this decision {Feather v. 
 J{.) is not to be extended by any reasoning from the con- 
 venience of the Crown, or of the public service, or from auy 
 idea that it practically comes to the same thing, whether 
 the Crown manufactures itself or gives orders to other 
 manufacturers." 
 
 The ri'dit of the Crown to use a patented invention for 
 the public service without being under any obligation to 
 remunerate the inventor has been abolished by sect. 27 of 
 thf Act of 1883. 
 
 («) /'Va</u';- V. /i?., B. it S. 2.')7. Anns Co., L. II., 10 ^). B. 130; 
 Ij) Dixon V. The London Small L. I;., 1 Apj). Cas. Gil.
 
 THE GRANT. I'-Vi 
 
 (l) "A patent shall liavc to all intents the like effects as 
 agamst her Majesty the Queen, her heirs and successors, as 
 it has against a subject. 
 
 (*2) ''But the officers or authorities administering anij 
 department of the service of the Crown may, hy themselves, 
 their agents, contractors (y), or others, at any time after 
 the application, use the invention for the services of tJie 
 Crown on terms to he before or after the use thereof agreed 
 on, ivith the approval of the Treasury, between those officers 
 or authorities and the patentee, or, in default of such agree- 
 ment, on such teims as may be settled hy the Treasury after 
 hearing all p(vrties interest ed^ 
 
 Sect. 44 deals with the acquisition hy the Secretary of 
 State for War of any inventions cleaHng with instruments 
 or munitions of war, and with the non-pul)hcation of 
 specifications describing such inventions, and generally 
 with the preservation for the public benefit of the secret 
 of them. 
 
 THE CONSTRUCTION. 
 
 " And lastly, we do by these presents for us, our heirs 
 and successors, grant unto the said patentee that these our 
 letters patent shall be construed in the most beneficial 
 sense for the advantage of the said patentee." These words 
 are inserted in the patent for the purpose of preventing 
 the common rule of construction of grants of the Crown 
 when founded upon a petition being read most strongly 
 aoainst the orantee. This favourable construction will 
 not, however, in any way save the validity of the patent 
 if it can be shown to have been granted upon a false 
 suggestion. 
 
 (y) Dixon V. London Small Arms Co., supra.
 
 134 THE LAW OF PATENTS. 
 
 CHAPTER VIII. 
 
 THE DEVOLUTION OF A PATENT. 
 
 We liave seen that a " patentee " is " the person for the 
 time being entitled to the benefit of a patent." This 
 includes the first inventor and any person or persons in 
 whom the patent may have become vested by operation of 
 law or by assignment. 
 
 The property of a patent passes, by operation of law, 
 when the patentee dies or becomes a bankrupt. Upon 
 the death of a patentee his interest in the property passes 
 to his executors or administrators as the case may be in 
 the like manner to the rest of his personal estate. Any 
 step which in the Act is required to be taken by the 
 patentee, may be taken by the executor or administrator, 
 and sect. 34 of the Act provides that — "(1) If a person, 
 2')0S!iessed of an invention, dies witJiout making application 
 for a patent for the invention, ap2)lication may he made 
 by, and a p>atent for the invention granted to, his legal 
 representative." This undoubtedly, seeing the terms of 
 the grant itself, Avill mean his legal personal representa- 
 tive. Some letters patent of the Crown (not for inven- 
 tions) have a limitation to heirs or heirs male, such, for 
 instance, as patents of nobility. The Act proceeds — 
 " (2) Kiyry such ajypUcation must he mude witlun six 
 months <f the decease <f such person, and inust contain a 
 declaration by the legal representative that he believes such 
 perso7i to be the true a7id first inventor of the invention." 
 
 If llic patentee l)ecomes Ijankrupt tlie property in the 
 patent will pass (o his receiver, trustee or assignee in
 
 THE DEVOLUTION OF A PATENT. 135 
 
 bankruptcy {«). It is doubtful whether the doctrine of 
 
 aj^parent possession can be said to affect a patent right. 
 
 The Lord Chancellor, in 1812, seems to have thought that ^<>xJ. ttUr^y . 
 
 it did (6). This, however, can hardly be quoted as an 
 
 authority. The persons in whom the patent vests, by 
 
 reason of banki'uptcy, are placed in all respects in the 
 
 position of the original patentee, and may sue in respect of 
 
 infringements (c). 
 
 The second method of devolution is by assignment, 
 inter vivos. This may be done either by absolute assign- 
 ment of the whole of the patent, or by absolute assignment 
 of the patent right for a limited area, or by assignment by 
 way of mortgage, or by the grant of licenses. 
 
 The right of the original inventor to assign the exclusive 
 right which has been granted to him is recognised in the 
 patent itself, which is granted to the said A. B., his 
 executors, administrators or assigns. AYithout these words 
 of limitation the property in the patent right would be 
 merely personal, attaching to the person of the first in- 
 ventor and becoming extinguished by his death. 
 
 The patent itself being a deed the assignment must be 
 also by deed {d). So, also, licenses should be under seal, 
 the prohibition in the grant itself being " without the con- 
 sent, license or agreement of the said patentee in writing 
 under his hand and seal." 
 
 A license granted by a patentee, but not under seal, is, 
 however, not void in the sense that the licensee, having 
 used the patent, is not bound to pay the royalties con- 
 tracted for. In Chanter v. Dewhurst (e), it was held that 
 the defendants having obtained the license they had bar- 
 gained for, and kept it, were bound to pay for it ; and 
 
 (a) Hesse v. Stevenson, 3 B. & son on Patents, 2nd ed. p. 225. 
 P. 565, also Bloxam v. Elsee, 9 D. (c) Bloxam v. Elsee, supra. 
 
 & R. 215 ; JrAlpine v. Mangnall, (d) Co. Lit. 9 b, 172 a. 
 
 15 L. J., C. P. 298. {e) 12 M. 1- W. 823. 
 
 (6) See Ex parte Granger ; God-
 
 136 TBE LAW OF PATENTS. 
 
 secondlv, that the license was not void as not beino- under 
 seal. Baron Alderson said : " The defendants, in making 
 the machine in Cjuestion, are merely acting as agents for the 
 patentee .... in my opinion a license, for this purpose, 
 need not be under seal." 
 
 Althouo-h the words of the orant are "under his hand 
 and seal," the document is not a deed since it need not be 
 delivered as a deed, nor need it be stamped as such (jT). 
 
 By sect. 36 of the Act, "a patentee may assign his 
 patent for any place in or part of the United Kingdom or 
 Isle of Man, as effectually as if the patent ivere originally 
 granted to extend to that place or part only." Having 
 assigned a patent, the original patentee cannot manufacture 
 the patented article, and when an action is brought against 
 him by his assignee he cannot set up that the patent was 
 not valid ; he is estopped by his deed (g), that is by the 
 deed of assignment, but when the assignment is by opera- 
 tion of law there is no such estoppel. In Cropper v. 
 Smith (h), in 1873 Letters Patent for improvements in lace 
 machines were granted to H., who, in 1877 went into 
 liquidation and the patent was sold by the trustee to the 
 plaintiffs. H. afterwards entered into partnership with S., 
 and this action was brought against S. and H. to restrain 
 them from infringing the patent, held that H. was not 
 estopped from disputing the validity of the patent either by 
 matter of record, on the ground that the letters patent were 
 of record ; or by deed, by reason of the specification being 
 under his seal ; or by matter in j^ciis on the ground of the 
 statements in his petition to the Crown, there being nothing 
 to show that the plaintiffs bought on the faith of those 
 statements. (But see Bankruptcy Act 1883, sect. 50, sub- 
 sect. 5.) Tt is probable that there is estoppel by record 
 ])ct\veen the. Crown and the grantee of letters patent (?'). 
 
 (./■) Chanter v. Jo/tnsim, 14 M. Jlapie v. Maltby, 3 T. K. 439. 
 A W. 408. (h) L. R., 2G Ch. D. 700. 
 
 (v) Ol'lham \. Litngmead,c\i.\n (i) Per Fry, L. J. at p. 712; 
 
 1
 
 THE DEVOLUTION OF A PATENT. 137 
 
 Wliere tlie plaintiff, fraudulently asserting that lie had 
 a right to a patent, induced the defendant to come to 
 terms with him for a license to use that patent, the 
 defendant, in an action upon that agreement, is not estopped 
 from alleging the want of title in the plaintiff as a defence (/•). 
 But it would be otherwise in the absence of fraud and 
 where both parties are innocent, in that case the assignee 
 or licensee would not be allowed to set up as a defence the 
 bad title of the assignor or licensor [l). 
 
 In Boioman v. Taylor and others (m), the plaintiff sued 
 the defendants for the non-payment of certain royalties due 
 from the defendants to the plaintiff under a license under 
 seal for the use of the plaintiff's patent. The defendants 
 defended on the grounds (l) that the invention was not a 
 new invention, (2) that the plaintiff was not the first and 
 true inventor, (3) that the specification was not sufficient — • 
 pleas which in effect endeavoured to put in issue the 
 validity of the plaintiff's title. Upon demurrer, Taunton, J., 
 said, " The law of estoppel is not so unjust or absurd as it 
 has been too much the custom to represent. The principle 
 is, that where a man has entered into a solemn engagement 
 by deed under his hand and seal as to certain facts, he shall 
 not be permitted to deny any matter which he has so 
 asserted. The question here is, whether there is a matter 
 so asserted by the defendant under his hand and seal that 
 he shall not be permitted to deny it in pleading. It is said 
 that the allegation in the deed is made by way of recital, 
 but I do not see that a statement such as this is the less 
 positive because it is introduced by a ' whereas.' Then the 
 defendant has pleaded that the supposed invention in the 
 declaration and letters patent mentioned was not nor is a 
 new invention. These words ' was not nor is a new in- 
 affirmed House of Lords, 10 App. (k) Hayne v. Malthy, 3 T. R. 438. 
 €ases 249. Sec also London and (I) See Tatjlor v. llare, 1 Web. 
 Leicester Hosiery Co. v. Griswold, P. C. 292, 293. 
 Griffin P. C. p. 154. {m) 2 A. & E. 278.
 
 I'iS THE LAW OF PATENTS. 
 
 vention ' must be understood in the same sense as the 
 words ' had invented ' in the recital of the deed set out in 
 the declaration, and must refer to the time of granting the 
 patent, and if the invention could not then be termed a new 
 invention, it could not, I think, have been truly said in the 
 deed, that the plaintiff ' had invented ' the improvements in 
 the sense in which the deed uses the words. Then the plea 
 directly negatives the deed, and comes within the rule that 
 a party shall not deny what he has asserted by his solemn 
 instrument under hand and seal." The learned judge then 
 proceeds to distinguish Hayne v. Malthy (n), but for some 
 reason does not refer to the element of fraud in that case, 
 ^^•hich certainly would take it out of the operation of the 
 doctrine of estoppel. 
 
 Where, however, the license is not under seal there 
 will be no estoppel, and the defendant may show the in- 
 A^alidity of the plaintiff's patent by way of showing failure 
 of consideration (o). 
 
 Besseman v. Wright {'p) was decided on the ground of 
 jjartial as against total failure of consideration, and has no 
 reference to the doctrine of estoppel, although it seems 
 sometimes to have been thouajht that it had. 
 
 In Clarh v. Adie (q), James, L. J., said, " A licensee 
 cannot under any pretence whatever bring his licensor into 
 litigation as to the novelty of any part of the patent." This 
 case was afterwards affirmed in the House of Lords (r). 
 But it appears that if the license has been determined prior 
 to the expiration of the term of the patent the ex-licensees 
 may contest the validity of the patent, notwithstanding the 
 covonniits or recitals in the license (.s). In giving judgment, 
 Lord Cottenham said, " That is exactly coming to the point 
 wliicli I ])ut, whetlier, at law, the party was estopped from 
 
 {n) 3 '1'. li. 4:iH. (7) L. H., 3 Ch. D. 144. 
 
 (0) Cliauter v. Leesc, 1 \V(jl>. (/) L. li., 2 App. Cas. 423. 
 
 P. C. 295. (s) Neilson v. FolhcrgiU, 1 Web. 
 
 ip) G W. \{. 719. P. C. 287.
 
 THE DEVOLUTION OF A PATENT. 139 
 
 disputing the patentee's right, after having once dealt with 
 him as the proprietor of that right. And it appears from 
 the authority of that case (Hayne v. Malthy (t) ), and from 
 the other cases, that from the time of the last payment {i.e. 
 expiration of license), if the manufacturer can successfully 
 resist the patent right of the party claiming the rent, that 
 he may do so in answer to an action for the rent for the use 
 of the patent during that year." The language is not 
 clearly reported, but this appears to mean — to an action for 
 the use and occupation, so to speak^ of the patent after the 
 expiration of the license. 
 
 The following cases have been decided uniformly, and 
 show that parties to a deed of assignment or license are 
 estopped from denying the validity of the patent, and 
 that there is no implied warranty on the part of the 
 assignor or licensor. Cutler v. Bower [u], Smith v. Scott (cc), 
 Walton V. Lavater (y), Norton v. Brooks {z), Crossley v. 
 Dixon [a). 
 
 Where the license is by parol and has been acted upon^ 
 and so Ions; as the licensee has thouo;ht fit to claim the 
 benefit of it, he is estopped from denying the validity of 
 the patent, but no term being fixed for the duration of the 
 verbal license he may determine it at any time (6). As to 
 estoppel by judgment, see Goucher v. Clayton [bh). 
 
 When the defendant has assigned his patent to the 
 plaintiff", he cannot afterwards deny the validity of his own 
 patent — Walton v. Lavater, supra. A licensee cannot take 
 advantage of a judgment obtained by third parties against 
 the patentee declaring the patent bad (c). But a licensee, 
 
 {t) 3 T. R. 438. (6) Crossley v. Dixon, 32 L. J. 
 
 \u) 11 Q. B. 973. Ch. 617. 
 {x) 6 C. B., N. S. 771, and 28 {hh) 34 L. J. Ch. 239. 
 
 L. J., C. P. 325. (c) The Grover and Baker Sew- 
 
 (y) 8 C. B., N. S. 162. ing Machine Co. v. Millard, 8 Jur., 
 
 (,-) 7 H. & N. 499. N. S. 713. 
 (a) 10 H. L. Cas. 293.
 
 140 THE LAW OF PATENTS. 
 
 in an action by the patentee, may claim to place tlie most 
 favourable construction on the specifications, which will 
 suj)port the Talidity of the patent, if another construction 
 would make it bad {d). 
 
 An assignment of patent rights in a partnership disso- 
 lution deed will estop the retiring partner from subsequently 
 setting up the invalidity of the patent by way of defence to 
 an action brought by his late partners (e). But where the 
 plaintiff and defendant had been partners, and had worked 
 as such the defendant's patent, there being no deed between 
 the plaintiff and defendant which inferred the validity of 
 the patent, held that plaintiff was not estopped from deny- 
 ing the validity of the patent (/'). And where partners 
 are joined as defendants in an action for infringement, and 
 one is assig-nor of the patent, the other is not debarred from 
 setting up the pleas of invalidity [g). 
 
 Fraudulent agreements for the assignment of patents, 
 such, for instance, as bubble patents, will be set aside (A). 
 But in the absence of fraud the agreement will be enforced, 
 and it is no defence to the action that the plaintitf has not 
 invented the alleged invention [i). 
 
 Executors may assign a patent prior to registration of 
 the pr(.>bate {h). 
 
 Specific performance of an agreement to assign letters 
 patent may be decreed {I). Even though the agreement 
 be to assign patents for future inventions {rti). 
 
 Licenses differ from assignments, in that the patentee 
 
 (r/) Trotrruin v. Wood, 16 C. B., (i) Smith v. BachingJuim, 18 
 
 N. S. 479. W. K. 3U. 
 
 (e) Chamhers v. Crichley, 33 (A) EUwood v. Christy, 10 Jm\, 
 
 Beav. 374. N. S. 1079. 
 
 (/) Axmaun v. Lund, L. R. 18 (/) Leivin v. Broivn, 14 W. K. 
 
 Eq. 330; 22 W. R. 789. G40. 
 
 {g) IlexKjJt V. CJuimberlain, 25 (//i) Printing and Numerical 
 
 "W . R. 742. Registering Co. v. Sampson, L. R. 
 
 (h) Lovell V. //tcX-^, 2 Y. <Si C. 19 Eq. 462; 44 L. J., Ch. 705. 
 46.
 
 THE DEVOLUTION OF A PATENT. 141 
 
 granting a license does not part with his whole interest, 
 but grants merely a right to use the patent for the whole 
 term or any portion of the whole term. The license may 
 be exclusive or otherwise. 
 
 Sect. 22 of the Act of 1883 provides for the granting of 
 compulsory licenses. 
 
 " If 011 the petition of any person interested it is proved 
 to the Board of Trade that hy reason of the default of a 
 "patentee to grant licenses on reasonable terms — 
 
 " (a) The patent is not being ivorked in the United 
 Kingdom ; or, 
 
 " (6) The reasonable requirements of the public ivith 
 respect to the invention cannot be supplied ; or 
 
 " (c) Any person is prevented from ivorhing or using to 
 the best advantage an invention of which he is possessed, 
 the Board may order the patentee to grant licenses on such 
 terms as to the amount of royalties, security for payment 
 or otherwise, as the Board, having regard to the nature of 
 the invention and the circumstances of the case, nfiay deem 
 just, and any such order may be enforced by m,andamus." 
 
 These provisions are entirely novel ; " (a) and (b) " are 
 capable of being reasonably construed, as to " (c) " it is 
 difficult to understand how the Board of Trade will come 
 to a decision as to whether " a person is prevented from 
 working or using, to the best advantage, an invention of 
 which he is possessed." The " invention " must be pro- 
 tected by letters patent (see the construction given in 
 sect. 46). 
 
 The proceedings under sect. 22 will be regulated by 
 rules to be made by the Board of Trade in pursuance of 
 the power given by sect. 101, sub-sect. 1 (g), and sub- 
 sects. 3, 4 and 5. 
 
 Money paid by a licensee for royalties cannot be 
 recovered when it is ascertained that the pateut was 
 void ah initio {n). And if the licensees have kept the 
 
 (/i) Ta7/Ior V. Hare, 1 B. & P. (N. R.) 260.
 
 142 THE LAW OF PATENTS. 
 
 license and used it, the licensor can recover from them the 
 agreed royalties, although the patent may have been void 
 and the license not under seal (o). But otherwise, if the 
 licensor knew from the first that the patent was void (7?). 
 But if the consideration for the money paid is that an appli- 
 cation for a patent should be made and a license to use the 
 patent granted, no application being made for the patent, 
 there is a total failure of consideration, and the price 
 paid may be recovered (q). A license is not assign- 
 able (r). A license to a man and his assigns means a 
 license with power to licensee to sub-license {idem). A 
 licensee may covenant not to manufacture without apply- 
 ing the patented invention ; such a covenant is not in 
 restraint of trade (s). A license may be created by 
 parol, but if no time is fixed for its duration it may be 
 determined at will, and after the determination there will 
 be no estoppel to the ex-licensee to dispute the validity of 
 the patent {t). A patentee having granted a license can- 
 not prevent anyone vending the articles which have been 
 made in pursuance of the license {u). And an inventor 
 selling the patented article abroad cannot restrain its 
 importation and sale in this country. Although an 
 assignee of the patent in this country might restrain the 
 importation of an article made by the original inventor or 
 his assignee abroad (x). A latent ambiguity in a license 
 by deed may be explained by parol evidence in the same 
 manner as other deeds (?/). A licensor may in the license 
 deed stipulate for a forfeiture in the event of royalties not 
 
 (o) Chanter v. Dewhnrst, 12 M. {t) Crossley v. Dixon, 10 H. L. 
 
 <k W. 823. Cas. 293 ; L. J., 32 Ch. 617, H. L. 
 
 {]>) Chanter y. Leese, 4 M. <k W. (u) Thomas v. Hunt, 17 C. B., 
 
 295. N. S. 183. 
 
 (</) Knowles V. BoviU, 12 h. T. {x) Beits v. WUhnott, L. K., 
 
 N. S. 70. 6 Ch. 239. 
 
 (r) Pur Maulc, J., in Bower v. {y) Roden v. TJte London Small 
 
 Jlodges, 22 L. J., C. P. 108. Arms Co., 40 L. J., Q. B. 213. 
 
 (s) Jone8 V. Lees, 1 IT. tt N. 189.
 
 THE DEVOLUTION OF A PATENT. 143 
 
 being paid {z), but such forfeiture maybe waived (a). The 
 licensor may also agree that he will take all necessary steps 
 to support the validity of the patent {h). 
 
 Sect. 23 of the Act provides : — " (1) Tliere shall he hex)t 
 at the Patent Office a book called the Register of Patents, 
 ivherein shall he entered the names and addresses of 
 grantees of patents, notifications of assignments and of 
 transmissio7is of patents, of licenses under patents and of 
 amendments, extensions and revocations of patents^ and 
 such other matters affecting the validity or proprietorship 
 of patents as may from time to time he p)rescrihed ; 
 (2) the register of ^Kitents shall he prima facie evidence of 
 any matters hy this Act directed or authorized to he 
 inserted therein; (3) copies of deeds, licenses and any 
 other documents affecting the proprietorship in any letters 
 patent or in any license thereunder, must he supplied to 
 the comptroller in the prescrihed manner for filing in the 
 Patent Office." 
 
 By sect. 85, *' There shall not be entered in any 
 register kept under this Act, or he receivahle hy the 
 comptroller, any notice of any trust, express, implied, or 
 constructive'' Sect. 87, as amended by sect. 21 of the 
 Patents, &c., Act, 1888, provides for the entry in the regis- 
 ter at the request of the person becoming entitled, of any 
 assignment or transmission of interest. The person regis- 
 tered shall have power to deal with such interest as he 
 has registered, absolutely : " Provided that any equities in 
 respect of such patent^ &c., may he enforced in like mariner, 
 as in respect of any other personal property." Sect. 88, 
 as amended by sect. 22 of the Patents, &c., Act, 1888 
 deals with the inspection of registers, and the obtaining of 
 certified copies. By sect. 89 sealed copies are to be received 
 in evidence. 
 
 {z) Tielens v. Hooper, 5 Ex. 830, (6) Hendersoti v. Mostyn Copper 
 
 (a) Waruick v. Hooper, 3 M. & Co., L, R., 3 C. P. 202. 
 G. 60.
 
 144 THE LAW OF PATENTS. 
 
 Sect. 90, as amended by sect. 23 of the Patents, &c,, 
 Act, 1888, empowers the Court (High Court of Justice) to 
 order the alteration of the registers, upon the application of 
 persons aggrieved, and upon sufficient cause shown. The 
 comptroller may himself correct errors in registers which 
 are merely of a clerical nature, sect. 91. 
 
 The comptroller may refuse to enter upon the register of 
 patents a document dated before the patent, upon the 
 ground that it does not contain a sufficient proof of title (c). 
 
 Sect. 35 of the Act of 1852, after providing for the 
 registration of proprietors, assignments, &c., of patents, 
 proceeded : " Provided always, that, until such entries shall 
 have been made, the grantee or grantees of letters patent 
 shall be deemed and taken to be the sole and exclusive 
 2:)roprietor or proprietors of such letters patent, and of all 
 licenses and privileges thereby given or granted." 
 
 It will be observed that the Act of 1883, quoted above, 
 materially differs from this enactment. Hence ChoUett 
 \. Hoffman {(.l), and Hasscdl v. Tl^y/_ry/if (e), will not now 
 apply. 
 
 Prior to the Act of 1883, the High Court of Justice 
 exercised jurisdiction to alter and amend the register of 
 patents (/). 
 
 The register should be amended whenever a fraudulent 
 entry has been made. A patentee assigned half a patent 
 to A., and afterwards he assigned the whole to B. by deed, 
 reciting that he had already granted a license to work and 
 use to A. -B.'s assignment was first registered : — Held, 
 that B. had constructive notice of A.'s rights, and an 
 entr\'' was ordered to be made in the register that the 
 license referred to in B.'s assignment was the deed of 
 assignment to A., subsequently entered (g). 
 
 (c) In re rarnell's Patent, 5 P. (/") In re Morgmi's Patent, 24 
 
 0. K. 126. W. R. 245. 
 
 {(l) 7 Ell. k B. C8G. ig) In re Mosei/s Patent, 25 
 
 {e) L. H. 10 Kq. oO'J ; 40 L J., licav. 581. 
 Ch. 145.
 
 ( 145 ) 
 
 CHAPTER IX. 
 
 EXTENvSION OF TERM OF PATENT. 
 
 Sect. 25 of the Act of 1883 provides : 
 
 "(1) A patentee may, after advertising in manner 
 directed by any rules made under this section his i7iten- 
 tion to do so, j^^^esent a petition to her Majesty in 
 Council, ijraijing that his jpatent may he extended for a 
 further time; hut such 2^<2tition must he j^ resented at least 
 six months hefore the time limited for the expiration of the 
 patent r 
 
 " A patentee " is by section 46 construed as " the person 
 for the time heing entitled to the heneft of a patent^' 
 therefore a mortgagee who is unpaid must be joined for the 
 purpose of petitioning for an extension (a). 
 
 The period of six months limited by this sub-section will 
 not apply to patents granted before the 1st Jan, ISS-l. 
 With regard to such patents the provisions of 5 & 6 Will. IV. 
 c. 83, will apply, and applications for extension may be 
 made at any time prior to the expiration of the patent ; this 
 is by reason of the 113th section of the Act of 1883 {aa). 
 But once a patent is extended it becomes a new patent, 
 and the whole of the Act of 1883 applies to it (6). 
 
 " (2) Any person may enter a caveat addressed to the 
 Registrar of the Council at the Council Office, against the 
 extensio7i. 
 
 " (3) If her Majesty shall he j^lcased to refer any such 
 petition to the Judicial Committee of the Privy Councily 
 
 (a) Church's Patent, Griffin P. C. App. Cas. 589 ; 53 L. J., P. C. 84. 
 
 256. (6) Cocking' s Patent, 2 P. 0. E. 
 
 (art) Branden's Patent, L. R. 9 151. 
 
 T. L
 
 It6 THE LAW OF PATENTS. 
 
 the said Committee shall 2^Toceed to consider the same, and 
 the 2^etitioner and any perso7i who has entered a caveat 
 shall he entitled to he heard hy himself or hy counsel on 
 the 2'>ctition. 
 
 " (4) The Judicial Committee shall, in considering 
 their decision, have regard to the nature and merits of 
 the invention in relatioyi to the j^uhlic, to the profits 7nade 
 hy the 2^(^t^ntee as such, and to cdl the circumstances of 
 the case. 
 
 "(5) If the Judicial Committee re2)ort that the 2^cct(-'ntee 
 has heen inadequately remunerated hy his pateiit, it shall 
 he lawful for her Majesty in Council to extend the term, 
 of the ^3(X^e?i^ for a further term, not exceeding seven, or, 
 in exceptional cases, fourteen years; or to order the grant 
 of a new ^9a?e>if for the term therein mentioned, and con- 
 taining any restrictions, conditions, and 2^'i'ovisio7is that 
 the Judicial Committee may think fit ^ 
 
 It is tlie practice to grant a new patent, such new patent 
 being subject to tlie conditions in tlie Act of 1883 (c). 
 
 "(6) It shall he lawful for her Majesty in Council to 
 onaJce fvm time to time rules of 2^^^oc<^dure and 2^^'(^ctice 
 for regulating 2^^^oceedings on such petitions, and suhject 
 thereto such 2)7^oc£edi7igs shall he regulated accordi^ig to 
 the existing 2^i^occdm^e a7id 2^^'(tcti('e in patent 7natters of 
 the Judicial Co7ii7nittee. 
 
 *'(7) Tlie costs of all j^ar^i'e.s" of ayid rncident to such 
 proceedings shall he in the discretion of the Judicial 
 Committee; a7id the orders of the Committee res2>ecting 
 costs shall he enforceahle as if they were orde7^s of a 
 divisio7i of the High Court of Justice." 
 
 These provisions have made no substantial alteration 
 in the law. Prior to the Act 5 & 6 Will. IV. c. 83, there 
 was no ])<)vver in the C-rown to extend the duration of 
 letters patent, and should an inventor have desired to 
 
 (r) Sjuil/,'s J'a/rnf, Criflin V. C. 2G3.
 
 EXTENSION OF TERM OF PATENT. 147 
 
 apply for an extension of the term of liis grant, lie could 
 only do so by applying for and obtaining a special Act of 
 Parliament in his favour. The Act of Will. IV., and the 
 amending Act of 2 & 3 Vict. c. Q7, introduced the method 
 of petitioning and obtaining an extension to the Privy 
 Council. 
 
 It had been found that the procedure to obtain an Act 
 upon each occasion, when an extension was sought, was too 
 costly and cumbrous, hence the modern course of procedure 
 was devised. 
 
 This being shortly the origin of the jurisdiction of the 
 Privy Council, at first an impression gained ground that 
 the Privy Council were to put themselves in the position of 
 Parliament, and not in that of a court of law, in consider- 
 ing the claims of applicants who appeared before them ; 
 that they were to w^eigh the claims of the public interest 
 very heavily in the balance as against the inventor. In 
 Re Soamcs Patent {cc) Lord Brougham said : " If this case 
 were to be disposed of upon the ground which in arguing 
 such cases have sometimes been assumed to be the fit one, 
 that there must not only be merit and benefit to the public, 
 and (which is essential) a want of sufficient remuneration 
 in the course of using the patent ; but that, moreover, the 
 case is to be tried here as on a bill in parliament intro- 
 duced to prolong the patent ; then, I apprehend, there 
 can really be no doubt whatever that in this case no 
 bill would ever have passed through the two houses of 
 parliament." 
 
 The true construction is, however, not so severe as that, 
 although still sufficiently severe. In Be Morgan's Patent (d) 
 Lord Brougham said : " It is by no means their (the Privy 
 Council) course to put themselves precisely in the situation 
 of the Legislature, and never to grant an extension where 
 an Act of Parliament would not have been obtained. At 
 
 (cc) 1 Web. P. C. 729. (d) 1 Web. P. C. 737. 
 
 L 2
 
 148 THE LAW OF PATENTS. 
 
 the same time there are some limits to this. They are to 
 look to a certain degree at the position in which they are 
 placed, and to consider that they here represent the 
 Legiskture, and that they are invested with somewhat 
 similar powers of discretion to those exercised formerly by 
 the whole three branches of parliament." 
 ' Such is the spirit in which the Privy Council will 
 approach the subject of an extension, not benevolently 
 to the applicant, but still with not so stern a regard to the 
 interests of the public as parliament would entertain. 
 
 In considering their decision the Privy Council will 
 consider : — 
 
 1. The nature and merits of the invention in relation to 
 
 the public. 
 
 2. The adequacy or inadecpacy of the profits made by 
 
 the inventor as such. 
 
 3. The circumstances of the case. 
 
 In Re E}xird's Patent [dd) Lord Lyndhurst said: "In 
 cases of this kind we expect a very strong case of hardship 
 to be made out as well as a strong case upon the utility of 
 the invention ; " and the same privy councillor in Soame's 
 case (e) said, "We consider the invention as very merito- 
 rious, the result of a great deal of labour, care, and science, 
 and that it is extremely useful in its effects. We are 
 satisfied by reasonable evidence that the party has sustained 
 very considerable loss, and under these circumstances we 
 thiuk that the period ought to be extended." 
 
 It will Ije observed that the three considerations for the 
 Privy Council laid down by the Act of 1883 are almost 
 identical to the grounds of extension as given by Lord 
 Tkougham in He Derof>ne's Patent [/) : " The parties must 
 siiow in the first place som<' invention, in the next place 
 a benefit to the public, and in the tbnd place that they 
 liave not had adequate remuneration." 
 
 {rl.l) 1 Wcl). I'. ('. rj:,7. {') 1 Web. P. C. 729. 
 
 (/) 1' WlI.. p. C. I.
 
 EXTENSION OF TERM OF PATENT. 149 
 
 It is immaterial wlietlier or not the application is 
 opposed. Tiie Privy Council will require every necessary 
 ground for extension to be strictly proved l3efore they 
 advise an extension (//), and this even though the Crown 
 through the attorney-general consents (h). 
 
 " The merit of an importer is less than of an inventor. 
 We are sitting judicially, and it is an argument against 
 the patent that it is imported and not invented. I do 
 not say it takes away the merit, but it makes it mucli 
 smaller (?")." 
 
 Extension of the term Avill be granted to assignees, as 
 they have, so to speak, purcliased the merit of the original 
 inventor, but the argument against importers will apply 
 with equal force against assignees (j). 
 
 " Merit " here means the consideration "which has l)een 
 given to the state for the patent ; it does not mean the 
 merit of the inventor, l>ut the merit of the consideration 
 which he has given. An inventor may have diligently 
 worked for years in a most deserving manner, and yet have 
 p]'oduced an improvement of the most trifling nature — the 
 merit of the person in this case will not be considered. 
 On the other hand, the invention, although a great one, 
 may have been handed to him from abroad without 
 thought or trouble on his part. This is what Lord 
 Brougham contemplates wdien he says that the merit of an 
 importer is less than that of an inventor. Again, the 
 invention may have l)een a very simple one, produced by 
 an inventor with a moment of thought, and yet of great 
 importance to the world. This latter case would be one of 
 merit — simplicity of an invention being an element of its 
 value (k). 
 
 {g) In re Perkm's Patent, 2 Web. Soame's Patent, 1 Web. P. C. 729. 
 
 P. C. 6. (j) See In re Napier's Patent, 
 
 (h) In re CardweU's Patent, 10 13 Moo. P. C. C. 543. 
 
 Moo. P. C. C. 488. (k) In re Miintz' Patent, 2 Web. 
 
 {i) Per Lord Brougham, In re P. C. 113.
 
 150 THE LAW OF PATENTS. 
 
 In Baileijs Patent {hk), Lord Blackburn said: "What 
 the statute says is that the judicial committee shall, in 
 considering their decision, have regard to the nature and 
 merits of the invention before that evidence has been 
 called which shows what can hardly be disputed, viz., that 
 the invention which is the subject of the patent, is a 
 beneficial invention ; but as to the petitioner showing that 
 tliere was any special or peculiar advantage in the inven- 
 tion in relation to the public to entitle the patentee to the 
 large reward of an extension of his patent, their lordships 
 are of opinion that he has totally failed to do so." 
 
 The VvYvy Council will not inquire into the novelty or 
 utility of a patent, except in so far as such novelty or 
 utility may form elements in the consideration of the 
 merit of the invention {/). 
 
 Non-user of the patent creates a strong presumption 
 against the merit of an invention, which presumption can 
 only be rebutted by the strongest evidence (rn). But the 
 same ol)jection being raised In re Hvghes' Patent (/?), the 
 application was granted after strong and unanswered 
 evidence of merit, though the j^atent had not been used in 
 I*'ngland during the whole term (o). 
 
 In Re Bctfs Patent (p) Lord Chelmsford said, "Dobbs' 
 snecification may have given the petitioner the idea of the 
 ]M)Ssibility of uniting the two metals of tin and lead, and 
 may thus have deprived him of the merit of originalit}', 
 I')Ut in Dobbs' hands the discovery was barren ; the peti- 
 tioner, however, who followed out his suggestion, and after 
 r*'peated expei-imonts gave it a practical application, is the 
 
 (kk) Griffin P. C. at p. L>."il. ground. 
 
 il) In re Scuchi/s Patent, \.. K., {«) I.. K., 4 App. Cas. 174. 
 
 ;; P. 0. 292 : Steii'dii's Patent, 3 (o) Sec also In re M'DongaVs 
 
 I'. <>. I;. 7. Patent, L. R., 2 P. C. 1, and In re 
 
 [m) Sec /// re All>iu\ Patent, //erl)ert\s Patent, I.. K., 1 P. C. 
 
 L. Pv. 1 P. C. r>07, wlicrc an ap- :?'J9. 
 plication was rcjf.'otcd on that ( /)) 1 Mo(;. P. C. C, N. S. 49.
 
 EXTENSION OF TERM OF PATENT. 151 
 
 real benefactor to the public, and is entitled to claim 
 that description of merit which constitutes one of the 
 grounds for extending the term of a patent " (</). 
 
 Merit is a vague term. Different persons have different 
 ideas as to wherein it consists. Each case that comes 
 before the Privy Council must of necessity, therefore, be 
 decided upon the facts of that particular case. It is other- 
 wise with the other necessary condition for an extension, 
 viz., the inadequacy of the remuneration of the inventor. 
 Here figures can be dealt with, and a nearer approach to 
 uniformity of decision obtained. It is possible, therefore, 
 to gather from the various decisions a reasonably accurate 
 set of rules for the guidance of the applicant for an exten- 
 sion on the ground of the inadequacy of the remuneration. 
 
 The sufficiency of the remuneration will Ije estimated 
 with a view to the importance of the invention aud the 
 benefit the public have derived from it. That which 
 would be ample remuneration for one patent would be 
 considered inadequate for another. Refining sugar by 
 filtering it through animal charcoal was an invention of 
 great value and importance. The patent was extended for 
 six years on the ground that although there had been a 
 considerable profit, it bore no relation to the great merit of 
 the invention (r). So In re Newton's Patent {s) the Privy 
 Council granted an extension on the ground that there had 
 not been sufficient remuneration considering the value of 
 the invention. 
 
 An English patent may be renewed though a foreign one 
 has been taken out and allowed to expire {t). 
 
 If the patentee is a manufacturer of the patented article, 
 the Privy Council will not endeavour to distinguish accu- 
 rately his profits as a patentee from his profits as a 
 
 (q) Also see In re HilVs Patent, Web. P. C. 1. 
 1 Moo. P. C. C, N. S. 258 at page (s) U Moo. P. C. C. 1,56. 
 
 265. {t) In re Adair's Patent, L. R., 
 
 {r) In re Derosne's Patent, 2 6 App. Cas. 176.
 
 152 THE LAW OF PATENTS. 
 
 manufacturer, Lut will consider the gross amount of 
 profits (n). lu this case Lord Brougham said : " We cannot 
 weigh in golden scales the proportions between manufac- 
 turers' profits and patentees, but we must take it in the 
 gross, and apply our minds as men of the world, men of 
 business — neither unfanly towards the inventor, nor 
 extravagantly and romantically towards him in his favour 
 — neither against him pressing, nor in his favour straining. 
 We must ascertain whether he has, in the eyes of men of 
 ordinary but enlightened understandings, judging fairly 
 between him and the public, had a sufficient remuneration." 
 
 The ground of this view of the case appears to be that 
 the possession of the patent has placed the manufacturer in 
 an advantageous position in obtaining orders (x). 
 
 In the accounts which the patentee must file upon an 
 application for an extension, when he is a manufacturer of 
 the patented article he should, so far as possible, distiuguish 
 profits as a manufacturer from profits as a patentee {y) ; 
 and in cases where it can be shown that the reasoning in 
 Johnson's case {supra) does not apply, he will be allowed 
 to deduct his profits as a manufacturer before an estimate 
 is taken of his profits as a patentee {z). 
 
 But where he ascribed two-thirds of the profits to the 
 manufiicturer, and only one-third to the patent, it was held 
 to be unreasonable (a). 
 
 It will be observed that the cases quoted above appear 
 to conflict with the principles laid down by Lord Brougham 
 ill Muntz case (b). These words cannot be read as 
 meaning that no regard whatever ^\ ill be paid to the fact, 
 that a great portion of the patentees' plant, expenditure, 
 
 (w) In re Muntz Patent, 2 Web. (2) lb. 
 
 I'. C. 113. (a) In re HiW& Patent, 1 Moo. 
 
 (x) In re Johmou's Patent, 8 P. C. C, N. S. 258, and Duncan dh 
 
 Moo. r. C. C, N. S. 282. Wilso7i's Patmt, 1 P. 0. K. 257. 
 
 (y) In re lietW Patent, 1 Moo. (6) 2 Web. P. C. at page 120. 
 P. C. C, N. S. 49.
 
 EXTENSION OF TERM OF PATENT. 153 
 
 or time, is devoted to tlie business of an ordincary manu- 
 facture, from which some profits would be derived, even if 
 no patent were in existence, but that no attempt wdll be 
 made to go into minute details of figures. The profits will 
 be treated in gross, and then their lordships will apply 
 their general knowledge, as men of the Avorld, in coming 
 to a conclusion as to how much the j^atentee has received 
 from the profits of his invention. 
 
 In estimating profits, a deduction will be allowed for 
 the expenses of experiments in bringing the invention to 
 perfection (c). And also in respect of the costs of litiga- 
 tion necessary to maintain the validity of the j^atent, and 
 to restrain infringers [d). But not where actioias have been 
 compromised, improvidently, and costs abandoned with- 
 out sufficient reason (e). The expenses of taking out the 
 patent will be allowed as a deduction {/). So also will 
 the expenses incurred in bringing the invention in 
 general public use (</). And a deduction will be allowed 
 in respect of the personal expenses of the patentee, and 
 by way of salary for the exclusive devotion of his time in 
 bringing the patent into practical operation and public 
 notice (A). A patentee residing in America, for the 
 purpose of getting the patented article into general use in 
 England, employed an agent, and allowed him half profits. 
 This half Avas allowed to be deducted (^). 
 
 But, on the other hand, the patentee must add to his 
 profits the profits arising out of the manufacture of the 
 patented article, even though intended for exportation {k). 
 So also he must add the profits which have been made by 
 
 (c) In re Bates' Patent, 1 Web. P. C. 573. 
 P. C. 739, and In re Kay's Patent, [g) In re Galloivay^s Patent, su^pra. 
 
 1 Web. P. C. 568. (h) In re Carr's Patent, L. R., 
 
 id) In re Galloway's Patent, 1 4 P. C. C. 539. 
 Web. P. C. 724. (t) In re Poole s Patent, 4 Moo. 
 
 (e) In re Hills' Patent, 1 Moo. P. C. C, N. S. 452. 
 P. C. C, N. S. 258. {h) In re Hardy's Patent, 6 Moo. 
 
 (/) In re Roberts' Patent, 1 Web. P. C. C. 441.
 
 154 THE LAW OF PATENTS. 
 
 liis licensees (/). And in Re Johnsons patent, Lord 
 Justice James said : " Their lordships are of opinion, that 
 where the question to be considered is, whether an inven- 
 tion has been sufficiently remunerated or not, in taking 
 into consideration the remuneration received, they must 
 have reo'ard to the remuneration which the invention has 
 brought in to the patentee or the person who claims the right 
 of the patentee, whether it he in one country or another." 
 
 We have seen by sub-section G of the section of the Act 
 of 1883, now under consideration, the rules of the Privy 
 Council, which have been heretofore in force, are to continue 
 until amended or altered. 
 
 Kule 9 is as follows : — " A party applying for an exten- 
 sion of a patent .... must lodge at the council 
 office six printed copies of the specification, and also four 
 copies of the balance sheet of expenditure and receipts 
 relating to the patent in question, which accounts are to be 
 proved on oath before the lords of the committee at the 
 hearing." This must be done within one week of the 
 hearing : rule 10. 
 
 The judicial committee will not enter into the accounts 
 in a case for extension unless they have been filed in 
 accordance with this rule (?>i). 
 
 But in exceptional cases, the filing of perfect accounts 
 may be excused [n). Where the estate of a deceased 
 patentee was of little value, and no accounts had ever 
 been kept, the petitioner, the administratrix and widow of 
 the patentee, was examined to prove an allegation in the 
 petition, to the effect that not only had there been no 
 profits, Imt a considerable loss (o). 
 
 The account of profit and loss ought to l)e clear and 
 
 (I) In re Trotmaii's Pafnif, ]j. hco I71 re Yaies' and Ketleit's Patcriff 
 
 M. I V. (,'. 118 ; :} Moo. I'. C. i\, L. R. 12 App. Cas. 147. 
 
 X. S. ISH. (n) I n re Lowe's Pate7if.,lO J iu:3G3. 
 
 (m) In re Johnson's and Alkin- (0) In re Heath's I-'atent, 8 Moo. 
 
 son's Patenf, L. 11., 5 \\{'. S7 ; and P. ('. C. 217.
 
 EXTENSION OF TERM OF PATENT. 155 
 
 precise (p). The application will Le refused if the peti- 
 tioner's accounts are unsatisfactory (q). The accounts 
 furnished by the petitioner not containing sufficiently full 
 and accurate information in respect of the patent, or the 
 remuneration received by him, the judicial committee 
 declined to recommend a prolongation of the term (r). In 
 one case, the accounts being ^>r^mdyac{e unsatisfactory, the 
 judicial committee directed the question of accounts to be 
 taken before considering the merits of the invention (.s-). 
 And where the accounts were ijvwid facie satisfactory, the 
 petitioners were allowed to prove the merits of the inven- 
 tion before going into the accounts {t). The books of the 
 petitioner in respect to profits arising from his patent 
 having been lost during his l)ankruptcy, the account of 
 profit and loss was taken upon his own evidence {u). This 
 was an exception to the general rule, which is, that evidence 
 will not be received from the petitioner. 
 
 Where a patentee, whether English or foreign, has 
 obtained foreign patents, they should be stated in a 
 petition for prolongation, and the fullest information 
 afforded as to the profits thereof. A patentee should 
 ■preserve the clearest evidence of everything which has 
 been paid or received on account of the patent. Whether 
 or not his remuneration has been adequate, his furnishing a 
 satisfactory account is a condition precedent to his obtaining 
 an extension of his term (v), and no alteration has been 
 made in this respect by sect. 25, sub-sect. 4 of the Act of 
 1883 {.'?;). 
 
 (/)) In re Betts Patent, 1 Moo. 3 P. C. 461 ; 7 Moo. P. C. C, N. S. 
 
 P. C. C, N. S. 49. 309. 
 
 [q) In re Trotman's Patent, 3 (ti) In re Hutclmison's Patent^ 
 
 Moo. P. C. C, N. S. 488. 14 Moo. P. C. C. 364. 
 
 (r) In re Clark's Patent, 7 Moo. (y) In re Adair's Patent, L. K., 
 
 P. C. C, N. S. 255. 6 App. Cas. 176. 
 
 (s) In re WiehVs Patent, L. R., (,r) Newton's Patent, 9 App. Cas. 
 
 4 P. C. 89. 592. 
 
 (i) In re Houghton s Patent, L. R.
 
 156 THE LAW OF PATENTS. 
 
 The third head of subjects to be inquired into, upon an 
 application for prolongation, consist of the various grounds 
 of objections to an extension which have been allowed 
 hitherto by the committee, and which are included in the 
 general term used in sub-sect 4, viz., "All the circum- 
 stances of the case." 
 
 That the invention has not been brought into public use 
 is a good ground of objection {y). So is negligence on 
 the part of the patentee in restraining infringement (z). 
 That the invention was practically useless as originally 
 described in the specification, but was subsequently made 
 practicable by subsequent improvem.ents, introduced from 
 abroad, is also a good ground for objection («). But, 
 otherwise, where the invention was useful and meritorious, 
 in its original form, subsequent improvements form no 
 ground in support of objection il>). When the non-profitable 
 use of the j)atent has been caused by the fault of the patentee 
 himself, objection will be allowed (e). So also where a 
 patentee has delayed, intentionally, putting his invention 
 into practice, unless he can show that shortness of funds, or 
 other reasons, placed it out of his power to avoid the delay(c/). 
 
 We have seen that the novelty or utility of a patent will 
 not be inquired into, except so far as they bear upon the 
 merit of the invention. Nor will the validity of the patent 
 be inquired into, excepting in cases where it is obvious the 
 patent is invalid. In Re IliJJs Patent {e), Sir J. T. 
 Coleridge said : " Their lordships have not in these cases 
 l)(.'en in the habit of trying the validity of patents. They 
 will not, of cour.se, recommend the extension of a patent 
 
 {y) III re J'inkii.s' I'aUnt, 12 (h) In re Gdlloway's Patent, 1 
 
 Jnr. 23;{. Web. i\ (J. 724. 
 
 (z) In re Sivdnters J'ateni, 1 (c) In re Patterson's Patent, 6 
 
 W'ol,. 1'. C. 721 ; also In re Pinkus' Moo. P. C. C. 4C9. 
 
 I'atent, supra. (rf) hi re Nortem's Patent, 1 Moo. 
 
 (a) III re Woodcraft's /'atmt, V. (\ (\, N. S. .339. 
 
 1 Web. I'. (;. 740. " (e) ] Mo... I'. C. (\, N. S. 258.
 
 EXTENSION OF TERM OF PATENT. 157 
 
 which is manifestly bad ; but, on the other hand, they will 
 not generally enter into questions of doubtful validity. 
 They lay aside, therefore, the questions of want of novelty 
 and want of utility, so far as they affect the validity of 
 the patent. Indeed the learned counsel for the opponents 
 disclaimed, and very properly, any intention of impeaching 
 its validity directly ; but they contended that, both with 
 respect to the novelty and the utility of the invention, the 
 degree of merit to be attributed to the petitioner ought to be 
 taken into account ; and in their lordships' judgment they 
 are right in that contention. Unless the patent be very 
 clearly invalid, so that it would Ije altogether nugatory to 
 prolong that patent, the court usually has been rather in- 
 clined to assume that the patent may be a good patent, and 
 so leave the question to any legal consideration that may 
 arise in a contest between the parties who are interested 
 
 in it " (/). 
 
 An illustration of what is meant by the patent being 
 clearly bad is given in He M'Innes Patent (</). The 
 patent was for a metallic soap to be used for the purpose of 
 preserving metals from rust. The specification was very 
 widely worded. Sir W. Earle said, "Their lordships 
 taking into consideration with reference to the public 
 interest that the individual substance for the application of 
 which the patent is sought to be prolonged is not specially 
 defined, every kind of metallic soap being within the limits 
 of the specification, are of opinion that many questions 
 affecting the patent might be raised if any metallic soap 
 was used by the public in ignorance of the specification 
 being as wide as it is. On the whole, therefore, their lord- 
 ships are of opinion that they ought not to recommend her 
 Majesty under such circumstances to grant a prolongation.'' 
 
 In consequence of sect. 25 of the Patent Law Amend- 
 ment Act, 1852, and of sect. 7 of 16 & 17 Vict. c. 115, 
 
 (/•) Per Lord Langdale, .M. R., {g) 5 Moo. P. C. C, K S. at 
 
 In re Pinhus Pattnt, 12 Jur. 233. p. 78.
 
 158 THE LAW OF PATENTS. 
 
 which provided that letters patent obtained in the United 
 Kinoxlom for patented foreign inventions should not con- 
 tinue in force after the expiration of the foreign patent, 
 iind that any prolongation of letters patent should he made 
 subject to that condition. An inquiry into foreign patents 
 and their duration was always an essential element of the 
 proceedings before the Privy Council {h). 
 
 These Acts are, however, specifically repealed, and by 
 sect. 45, sub-sects. 2 and 3, of the Act of 1883 it is 
 provided, " Every patent grmited before the commence- 
 ment of this Act, or on an application there pending, shall 
 ormain unaffected hy the j^i^ovisions of this Act relating 
 to patents hinding the Croivn, and to compulsory licerises. 
 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 app)lications 
 then pending, in substitution for such enactments as would 
 have applied thereto if this Act had not been passed.^' 
 
 Thus it will be seen that after the commencement of the 
 Act any prolongation of letters patent will be made regard- 
 less of foreign patents or their duration, saving with regard 
 to the profits thereof, ante, p. 155. 
 
 Prior to the Act of 1883 it had been held, in a series of 
 cases, that executors and administrators of a grantee of 
 letters patent might petition for an extension (/). So might 
 the assignee of a patent, even though a public company (k), 
 ♦So might the executor of an assignee (/). 
 
 (/(,) In re ]jo<liner\ Patent, 8 N. S. 306 ; In re Johnson's Patent, 
 
 Moo. P. C. C. 282 ; In re Aube's 8 Moo. P. C. C, N. S. 282 ; In re 
 
 Patent, 9 Moo. P. C. C. 43 ; In re BUd-es Patent, L. R., 4 P. C. 535. 
 Newton's Patent, 15 Moo. P. C. C. {i) In re Heath's Patent, 8 Moo. 
 
 176 ; In re Beltii Patent, 1 Moo. P. C. C. 217. 
 
 P. C. C, N. S. 49 ; In re Poole's (/.) In re Norton's Patent, 1 Moo. 
 
 Patent, 4 Moo. P. C. ('., N. S. J'. ('. C, N. S., 339. 
 452 ; In re NormmuVs Patent, 6 (/) In re Podiner's Patent, 1 
 
 Moo. P. C. C, N. S. 477; In re Moo. P. C. C. 469. 
 U'iiian's Pafetit, 8 Moo. 1'. (". C, 
 
 I
 
 EXTENSION OF TERM OF PATENT. 159 
 
 The Act of 1883 gives a patentee the right to petition, 
 and, bearing in mind that the definition of the word 
 patentee is by sect. 46, " Any 2^(^'i'^on for the time heing 
 entitled to the henefit of a patent" it will be observed that the 
 greatest latitude is given as to persons who may petition. 
 The committee will still regard different classes of petitioners 
 in different lights. 
 
 In Re Norton s Patent, quoted above, Sir John Eomilly, 
 then Master of the Eolls, said, " Under the late statute, 
 7 & 8 Vict. c. 69, s. 4, a person is not excluded from apply- 
 ing for an extension of a patent upon the ground of his 
 being the assignee of the patent ; but it must always be borne 
 in mind that the assignee of a patent does not, unless under 
 peculiar circumstances, apply on the same favourable footing 
 that the original inventor does. The ground that the merits 
 of the inventor ought to be properly rewarded, in dealing 
 with an invention which has proved useful and beneficial 
 to the public, does not exist in the case of an assignee, 
 unless the assignee be a person who has assisted the patentee 
 with funds to enable him to perfect and bring out his in- 
 vention, and has thus enabled him to brino; it into use." 
 
 And in Re Pitman s Patent (m) Sir J. W. Colvile said : 
 " There are no doubt cases in which their lordships have 
 granted applications by the assignees of the patentee for 
 extension of the term, and have also considered, in some 
 respects, the expenses incurred by the assignee in bringing 
 the patent into notice, and for the merit as it may be said 
 of the assignee in patronizing the patentee, and in pushing 
 the patent into notice ; but the general rule which their 
 lordships entertain in applications on the part of assignees 
 is, as was stated by Lord Brougham in Re Morgan's 
 Patent ()t), that by so doing 'they are, though not directly 
 yet mediately and consequentially, as it were, giving a 
 benefit to the inventor, because, if the assignee is not 
 
 (jn) 8 Moo. P. C. C, N. S. 293. (n) 1 Web. P. C. 737.
 
 160 THE LAW OF PATENTS. 
 
 remunerated at all, it might be said that the chance of the 
 patentee of making an advantageous conveyance to the 
 assignee would be materially diminished, and consequently 
 his interest damnified. For this reason consideration has 
 been oiven to the claims of the assis^nee who has an interest 
 in the patent/ " 
 
 There is no case showing that an extension has ever been 
 granted to licensees ; but it may be suggested that at any 
 rate exclusive licensees are " persons for the time being 
 entitled to the benefit of a patent," although, of course, 
 very exceptional circumstances indeed would have to be 
 shown to warrant an extension to them. 
 
 It is difficult to estimate the effect of sect. 36 of the Act 
 of 1883 upon this branch of the subject. Sect. 36 provides 
 that: "A i^atentee may assign his 2^<:('tent for any j^Zaoe 
 in or T>cu't of the United Kingdom or Isle of Man, as 
 effectually as if the i^atent ivere originally granted to 
 extend to that j^lctce or ]Dart only." 
 
 Will the Privy Council, on the application of an assignee 
 for a portion of the kingdom, extend the patent for that 
 portion, or must all parties to the patent join in the 
 petition ? 
 
 It is evident that whilst one district assignee of an 
 electric light patent, for example, may have been amply 
 remunerated, another may not have been remunerated at 
 all, owing to the action of local authorities or other matters 
 entirely beyond the assignee's control. How could the 
 committee in justice refuse the latter an extension ? On 
 the other hand, how could they grant it to the other 1 
 
 Then again, if a patent may be extended for one district 
 and not for another, we shall have the enormous practical 
 difHculties and public inconveniences of an article being 
 patented in one county and free in another, a state of 
 affairs wliidi, we venture to say, would l)e intolerable to 
 tin- iiul)li('. 
 
 Any ])eiHon mny ciifer a caveat against the extension,
 
 EXTENSION OF TERM OF PATENT. 161 
 
 and may be heard at the bar in support of their opposition ; 
 and where unreasonable oj)position is offered, they will be 
 ordered to pay the petitioner's costs (o). But where the 
 opposition is well founded and successful, costs will be 
 allowed to the opposing party (/;). If the petition be 
 abandoned, costs will be given to opposers, and they 
 need not give the petitioner notice of their intended 
 application for the same (q). Where the petitioner had 
 fairly and honestly stated his case, both the things against 
 and the things for him in his petition, and the inquiry had 
 been prolonged by the opposition, the costs of the opposition 
 refused, although the petition had been dismissed on the 
 ground of sufficient remuneration. 
 
 Where two or more parties have opposed the petition 
 separately and successfully, the committee will sometimes 
 order a fixed sum to be paid by the petitioner to the 
 opponents, to be apportioned between them in lieu of 
 saddling him with several separate sets of taxed costs (r). 
 We thus see that, whilst on the one hand an unwarranted 
 application for an extension may be very costly, unreason- 
 able opposition may be equally so. 
 
 An extension of a patent having once been granted, the 
 Privy Council have no jurisdiction to entertain a petition 
 for a further prolongation, their power being exhausted ; 
 and this objection may be taken by an opposing party, 
 even though omitted from the objections filed by them (s). 
 
 The rules of practice to be observed upon application for 
 extensions of letters patent will be found hereafter. 
 
 (o) In re Doivnton's Patent, 1 (r) In re Jones's Patent, 9 Moo. 
 
 Web. P. C. 565. P. C. C. 41. Also In re Hills' 
 
 (p) In re Westrupp and Gibbins' Patent, 1 Moo. P. C. C, N. S. 
 
 Patent, 1 Web. P. C. 554. 258, and In re Wield's Patent, 8 
 
 {q) In re Bridson's Patent, 7 Moo. P. C. C, N. S. 300 ; Newton's 
 
 Moo. P. C. C. 499. See, however, Patent, 9 App. Ca. 592. 
 In re Milner's Patent, 9 Moo. P. (s) In re Goucher's Patent, 2 
 
 C. C. 39. Moo. P. C. C, N. S. 632. 
 
 T. M
 
 162 THE LAW OF PATENTS. 
 
 CHAPTER X. 
 
 COXFIRMATIOX. 
 
 The statute 5 & 6 AVill. IV. c. 83, provided a remedy 
 for cases of hardship, such as, where an invention had been 
 invented or used and subsequently abandoned before the 
 date of the patent in a manner unknown to the patentee 
 at the time of his application. Tliere would be a sufficient 
 prior user to invalidate the patent, and yet there would 
 be great merit probably in the j^atentee, and a great 
 benefit to the public. The patentee might petition the 
 Privy Council to confirm the patent, that is, to declare it 
 valid, notwithstanding such prior user. The proceedings 
 on such a petition were similar to those upon a petition for 
 extension. 
 
 The Act of 1883 repeals the statute 5 k 6 Will. IV. 
 c. 83, and with it all proceedings for confirmation ; and 
 this method of clothing an invalid patent with validity 
 is abolished. A perusal of sect. 45, sub-sects. 2 and 3, shows 
 that this applies to patents existing at the commencement 
 of the Act, as well as to those to be hereafter applied for 
 and granted. 
 
 It is not strictly the purpose of a law work to criticise 
 the enactments of the legjislature, savinjr iu their con- 
 structiou and application from an administrative point of 
 view, otherwise a great deal might be said as to the advisa- 
 bility of abolishing that which was intended for and 
 operated merely as a relief under very liard and exceptional 
 circumstances.
 
 ( 16:3 ) 
 
 CHAPTER XI. 
 
 REMEDIES OF THE PATENTEE AND OF THE PUBLIC ACTION" 
 
 FOR INFRINGEMENT. 
 
 An actioD for infringement is the remedy whicli the 
 patentee has, and the means wliich is given to him for 
 enforcing his patent privileges. 
 
 The courts are bound to take notice of the patent, and 
 are bound to give legal effect to it, provided it cannot be 
 shown to have been granted contrary to law. 
 
 PARTIES TO THE ACTION. 
 
 The Act of 1883 gives no directions as to what persons 
 may be plaintiffs or defendants in an action for infringe- 
 ment, and therefore leaves the question of the parties to 
 the action as it was before the passing of the Act. 
 
 The original grantee, it is obvious, so long as he has 
 not parted with the whole of his interest in the patent, may 
 be a plaintiff. And so may the assignee of a patent (a), 
 even though he has acquired the right by assignment of 
 two separate moieties, and the party sued is the original 
 grantee (6). 
 
 The assignee of a portion of a patent may sue for an 
 infringement of that part. Erie, C.J., in giving judgment 
 in Dunnicliff v. Mallett (c), said : " The question is 
 
 {a) Electric Tdegraph Co. v. N. S. 162. 
 Brett, 10 C. B. 838. (c) 7 C. B., N. S. 209. 
 
 (6) Walton v. Lavater, 8 C. B., 
 
 M 2
 
 164 THE LAW OF PATENTS. 
 
 wlietlier an assignment of part of a patent is valid. I 
 incline to think that it is. It is every day's practice for 
 the sake of economy to include in one patent several 
 things which are in their nature perfectly distinct and 
 severable, . . . Being therefore inclined to think that 
 a patent severable in its nature may be severed by the 
 assignment of a part, I see no reason for holding that 
 the assignee of a separate part which is the subject of 
 infringement may not maintain an action." The plaintiff 
 in such an action would not be allowed to sever his part 
 from the rest of the patent, and he would be liable to 
 be defeated if it could be shown that the patent in any of 
 its parts was void. But, on the other hand, he would 
 have to show that his part alone would have been sufficient 
 to support a patent, i.e., that it contains a new and useful 
 invention. Sect. 33, however, of the Act of 1883, pro- 
 vides, ''Every ijatent . . . shall he granted for one 
 invention only, hut may contain more than one claim; 
 hut it shall 7iot he comi^etent for any i^erson in an action 
 or other ]yroceeding to take any ohjection to a patent on 
 tlie ground that it comprises more thctn one invention." 
 
 By sect. 36, " A patentee m^ay assign his patent for any 
 place in or pjart of the United Kingdom, or Isle of Man, 
 as effectually as if the patent ivere origincdly graiited to 
 extend to that place or part only." The assignee for a 
 district will Ije in a position to bring an action for infringe- 
 ment, but it is obvious that the infringement must be 
 within his district, otherwise he will be unable to prove 
 (lamajT-c. 
 
 One of several joint owners of a patent may bring an 
 action in his own name to restrain infringement, or for 
 damages, witliout joining his other co-owners ((/), and he 
 mav sue alone for an account of profits, and for payment to 
 
 {,!) Shrrhan V. (n-rnt Eastrrn I)(ntv.Tur)>in,2i.kM.V?,^. 
 ItaU. Co., \.. K., IG Ch. I), r.9 ;
 
 PARTIES TO THE ACTION. 1G5 
 
 the plaintifF of such part of such profits as the plaintiff" 
 should be entitled to, 
 
 Abinger, C.B., in Derosne v. Fairie {e), said that " a 
 mere licensee could maintain no action against anyone 
 else for the infringement of a patent." He might, however, 
 use the name of the grantor of the license for the purpose 
 provided he were an exclusive licensee (/). 
 
 A mere licensee would have no exclusive right to use the 
 invention ; he is only a person who is permitted to use it. 
 The grantor of such a license might grant a dozen other 
 such licenses without prejudicing the rights of the license ; 
 but an exclusive licensee has a right of property in the 
 monopoly, and stands very much in the same position as 
 an assignee for a district. The term exclusive, as applied 
 to a licensee, meaning exclusive within an area. 
 
 When the exclusive licensee finds it necessary to protect 
 his rights by Ijringing an action in the name of the licensor 
 he is liable to give the licensor security for the costs {(j) 
 which, in the event of defeat, the licensor would have to 
 pay. The right, however, to assign for particular districts 
 will make this branch of the subject unimportant, since 
 exclusive licenses were only a scheme for the purpose of, 
 in effect, assio;nino; for districts. 
 
 The assignees or trustees in l^ankruptcy of a patentee 
 may maintain action for infringement in their own 
 name [h), and so may the executors or administrators of 
 a patentee. 
 
 As defendants, a person physically using a patented 
 invention is liable, such as a contractor (^). When u 
 person in the position of a servant uses a patented inven- 
 tion, the master, in law, is the person who physically uses 
 
 {€) 1 Web. P. C. 154. {h) Bloxam v. Elsee, 6 B. k C. 
 
 (/) Renardv. Levinstein, 2 Hem. 169. 
 
 k M. 628. {i) Denley v. Blore, 38 Loud. 
 
 {g) Evans v. Rees, 2 Q. B. 334 ; Jour. 224. 
 Spicer V. Todd, 1 D. P. R. 306,
 
 166 THE LAW OF PATENTS. 
 
 the invention as well as the servant, and the master may 
 be sued. If a servant uses an invention in the course of 
 Ms employment the master is liable, even though the 
 master has told the servant to avoid infringing the 
 patent (k). The directors of a company whose servants 
 infringe an invention are personally liable (/). 
 
 An architect specifying the use of a patented invention 
 is not liable (m). 
 
 Aliens infringing a patent in tMs country by vending 
 or otherwise are liable if they come within the jurisdiction 
 of the courts (n). A person ordering goods to be made in 
 England which are an infringement of a patent, although 
 intended for exportation to him abroad, infringes the patent. 
 " He that causes or procures to be made may be well said 
 to have made himself." Per Tindal, C. J. (o). 
 
 (k) Betts V. De Vitre, L. R., 3 (n) CaldweJl v. Vanvlissengen, 
 
 Ch. App. Cas. 429. 9 Hare, 415. 
 
 {I) Ibid. (o) Gibson v. Brand, 11 L. J., 
 
 (m) Denley v. Blore, -38 Lond. C. P. 177. 
 Jour. 224.
 
 ( 167 ) 
 
 CHAPTER XII. 
 
 THE CAUSE OF ACTION — INFRINGEMENT. 
 
 The infringement of a patent is the doing that which 
 the patent prohibits from being clone (a). The words of 
 the Royal Command are as follows : " We do by these 
 presents for ns, our heirs and successors, strictly command 
 all our subjects whatsoever within our United Kingdom of 
 Great Britain and Ireland and the Isle of Man, that they 
 do not at any time during the continuance of the said term 
 of fourteen years, either directly or indirectly make use of 
 or put in practice the said invention, or any part of the 
 same, nor in anywise imitate the same, nor make or cause 
 to be made any addition thereto or subtraction therefrom, 
 whereby to pretend themselves the inventors thereof, with- 
 out the consent, license or agreement of the said patentee 
 in writing under his hand and seal, on pain, &c." 
 
 There is no duty cast upon a patentee to inform persons 
 that what they are doing amounts to an infringement of his 
 patent, and he is not estopped by omitting to give such 
 information, although he knew of the infringement, from 
 subsequently bringing his action (h). 
 
 The question of infringement or no infringement is one 
 of fact, and therefore is for the jury (c). But this refers 
 to the mere infringement alone within the meaning of 
 
 (a) Walt07i V. Batevian, 1 Web. (c) Walton v. Potter, 1 Web. 
 P. C. 613. P. C. 585 ; De la Rue v. Dickenson, 
 
 (b) Proctor V. Pennis, 36 Ch. D. 7 E. <fe B. 738. 
 740.
 
 168 THE LAW OF PATENTS. 
 
 Tindal, C. J., in Muntz v. Foster (d), when he told the jury 
 that " for the purpose of inquiring whether the defendants 
 have infringed the patent or not, we are to assume that it 
 is a good patent, that no objection arises either to the 
 nature of the grant or the specification which has been 
 enrolled by the plaintiff." 
 
 If the patent is invalid there can be no infringement in 
 the sense that a patent which has no legal existence cannot 
 be infringed. But assuming that it has a legal existence, 
 the question is for the jury. This explains the apparently 
 contradictory decision in Curtis v. Piatt (e) in the House 
 of Lords. The question of infringement was there taken as 
 involving the validity of the patent. 
 
 It is equally an infringement whether the defendant 
 acted in ignorance of the plaintiff's patent or not. In 
 Heath v. Unwin {/), Parke, B., delivering the judgment 
 of the Court, said : — " There was therefore no intention to 
 imitate the patentee's invention, and we do not think the 
 defendant can be considered to be guilty of any indirect 
 infringement if he did not intend to imitate at all," This 
 judgment certainly gives an erroneous impression of the 
 law, and Shad well, V.-C, when the same case came before 
 him (g), said : — " The party complaining of the act is not 
 the less prejudiced by it because it was committed uninten- 
 tionally ; and my opinion is that, if a party has done an 
 act that is injurious to the rights of another (though with- 
 out any intention of doing him an injury) he is answerable 
 for the consequences," In Stevens v. Keating (h) the Lord 
 Chancellor disapproved of the case in the Court of Ex- 
 chequer ; " and I must dechne to act upon the principle 
 which it lays down." 
 
 Subsequently, wluii JleatJi v. Unwin came before the 
 House of Lords, the opinion of the judges being taken, 
 
 {d) 2 Wcl). J'. ('. 99. (/) 14 L. J., Ex. at p. 156. 
 
 (e) L. W. 1 II. L. 3:57 ; 35 L. J., (g) 15 Sim. 553. 
 
 Ch. 852. {h) 1 Mac. & G. 659.
 
 THE CAUSE OF ACTION INFRINGEMENT. 169 
 
 Parke, B. (^), acknowledged the error into wliicli the Court 
 had fallen, and approved of Stevens v. Keating. 
 
 In Stead v. Anderson (k), Wilde, C.J., tersely puts it : — 
 *' The question of infringement depends not on what the 
 defendant intends, but on what he does." 
 
 So it is immaterial whether the defendant was aware 
 that the thing was patented or not, since in law every per- 
 son in the realm is taken to have notice of a patent in the 
 same way that he is taken to be aware of the law (I). 
 
 And the converse is also sound — if a person intending 
 to infringe a patent does not in fact do so, he v/ill not be 
 taken to have infringed (m). 
 
 In M'Cormick v. Gray (n) the specification, after de- 
 scribing several parts of reaping machines, including some 
 cutting blades of peculiar construction, claimed : " The con- 
 struction of reaping machines according to the improvements 
 before described — that is to say, the constructing and placing 
 of holding fingers, cutting blades, and gathering reels, respec- 
 tively, as before described, and the embodiment of those 
 parts as so constructed and placed, all or any of them in 
 machines for reaping purposes, whether such machines are 
 constructed in other respects as before described, or however 
 else the same may in other respects be constructed." 
 
 The defendant made and sold cutting blades similar to 
 those described by the plaintiff's patent, which were cajyahle 
 of being used in the plaintiff's reaping machine. Bramwell, 
 B., in giving judgment, said : — "A man could not make 
 the blade of a knife without infringing this person's patent, 
 because you may intend to put it into a machine, or you 
 may not. I think it is a very clear case, and I am satisfied 
 there is no difference between making a thing with one 
 
 {i) 25 L. J., C. P. at p. 19; 5 T., N. S. 245. 
 H. L. Cas. 505. (m) Newall v. Elliott, 10 Jur., 
 
 {k) 2 Web. P. C. 156. N. S. 954. 
 
 (1) Walton V. Lavater, 29 L. J., (n) 31 L. J., Ex. 42. 
 
 C. P. 275; Curtis v. Flatt, 11 L.
 
 170 THE LAW OF PATENTS. 
 
 intent and making it with another, because I always under- 
 stood, that if a man may do a thing, he may do it with 
 whatever intent he pleases." It will be observed, that in 
 this case, to make the knives was no infringement, and 
 there was no evidence of the defendant having applied 
 them to reaping machines (o). 
 
 Thus we see that infringement, as taken apart from the 
 question of validity, is a matter of fact, and that intention 
 is not material to the conclusion. 
 
 To prove infringement, it must be shown that there is a 
 substantial resemblance {p). The infringement must be 
 of a part for which the patent was granted, and not merely 
 of a part described in the specification [q). 
 
 A patented article sold by a patentee carries with it the 
 right of being used and sold anywhere (r). 
 
 It is impossible to surmise how the Courts will deal with 
 sect. 36 of the Act of 1883, which enables a patentee to 
 assign his patent for any place or part of the kingdom as 
 effectually as if the patent were originally granted to extend 
 to that place or part only. 
 
 Supposing a patentee to assign a patent for making 
 brushes for liOndon to A, and for Liverpool to B. Will 
 the purchaser of brushes from k. in London be infringing 
 the rights of B by using the brushes in Liverpool, and will 
 he be liable to an action ? If he is not liable to be sued, 
 of what use is the right of assignment for a part only, since 
 the assignee, for one place, could make the brushes in that 
 place, and sell them universally to the detriment of assignees 
 for other places. 
 
 The amount of prior user which will be sufficient to 
 invalidate a patent, differs considerably from the amount 
 of user wliicli will be held to infringe a patent : " these 
 
 (o) Sec, however, yiancro//!v. War- (7) CroU v. Edge, 19 L. J., C. P. 
 
 den, Komilly's Notes of Cases, 103. at p. 2GI. 
 
 {p) Stead V. Anderson, 2 Web. (?•) Belts v. Wdlmott, L. R., 6 
 
 r. (J. 151. Ch. App. Cas. 239.
 
 THE CAUSE OF ACTION INFRINGEMENT. 171 
 
 are different questions, depending on wholly different con- 
 siderations, tlie one upon the extent of previous knowledge, 
 the other upon the effect of the grant " (s). 
 
 In BarloLC v. Baylis (t) the patent was for " improvements, 
 in manufacturing metal nuts, and in machinery for stamp- 
 ing, forging and rolling the same." Action for infringe- 
 ment ; defence anticipated by Berry. It was contended by 
 the plaintiff that Berry's machine would not work. Brett, 
 J., in summing up to the jury, said : — " Now the first ques- 
 tion about Berry's machine which I will ask you is this : 
 Was Berry's ever a machine or invention in this sense, that 
 a workman could, from his specification and drawings, make 
 the machine described by him so that it would, more or less 
 badly, do the work required of it ? because, in my opinioii, 
 if it would not, 1 do not say perfectly, but if it would not 
 do the work required of it, it was not an invention at all, 
 or a machine in a business sense. ... I put the words 
 ' more or less badly,' because I do not think that if the only 
 defect in the machine was some defect in the levers which 
 any workman could find out at once, if it would make a 
 nut, though badly, that would not prevent it from being a 
 machine." 
 
 The jury found that Berry's machine would not do the 
 work more or less badly. Judgment for plaintiffs. Judg- 
 ment upheld by the Court of Common Pleas. 
 
 In Brei'eton v. Richardson [u), infringement of a patent 
 for " a new and improved tricycle," alleged prior user by 
 Jackson and his family ; reply that this was merely an 
 experimental user. Field, J., said :- — " Their driving to 
 Cheam, Worcester Park, and Maiden, going about on busi- 
 ness night and day, and for pleasure ; and the public noto- 
 riety which the thing had excited in the neighbourhood, so 
 that it was called ' Jackson's patent threshing machine,' all 
 
 (s) Per Turner, V.-C, in Ccdd- Co., 5 Ex. 331. 
 i/kU v. Vanvlissengen, 9 Hare, 428 ; {t) Griffin P. C at p. 44. 
 
 Newton v. Grand Junction Rail. (u) 1 P. O. R. 166.
 
 172 THE LAW OF PATENTS. 
 
 satisfy me that, provided I am right in holding that the 
 thing was substantially the same, it was publicly used. A 
 question of difficulty occurred to my mind as to what 
 degree of public user is enough when you have to deal with 
 a thing like that. I quite understand that if there were at 
 this moment an axle running under an omnibus which I 
 could not see, it might or might not be a public user. 1 
 think it would be a public user." Action dismissed with 
 costs. 
 
 We have seen that by sect. 33 of the Act of 1883, a 
 patent may still contain more than one claim, and in such 
 a case, provided every claim which is made is valid, a patent 
 may be infringed by infringing any one claim. In Gillett 
 V. WiJhy (.r), Coltman, J., said : — " If they are all new (the 
 parts claimed), and the defendant has infringed any one of 
 them, it wiU be sufficient to support the action, and it is 
 not necessary that he should have infringed them all." In 
 Newton v. The Grand Junction Rail. Co.(y), Pollock, C.B., 
 said : — " But in considering the question of infringement, 
 all that is to be looked at is, whether the defendant has 
 pirated a part of that to which the patent applies ; and 
 if he has used that part for the purposes for which the 
 r)atentee adapted his invention, and for which he has taken 
 out his patent, and the jury arc of opinion that the differ- 
 ence is merely colourable, it is an infringement," and in 
 Sellers V. Dickenson {z), the same judge said: — "There 
 may be an infringement by using so much of a combi- 
 nation as is material . . . if a portion of a patent for 
 a HOW arrangement of machinery is in itself new and useful, 
 and another person, for the purpose of producing the same 
 effect, uses that portion of the arrangement, and substitutes 
 for the other matters combined with it another mechanical 
 equivalent, that would l)c an infringement of the patent." 
 
 " Where a {)atent is for a combination of two, three, 
 
 {x) 9 Car. A- \\ 336. {y) r, Ex. 331. 
 
 (2) 5 Ex. 324.
 
 THE CAUSE OF ACTION — INFRINGEMENT. 173 
 
 or more old inventions, a user of any of them would not 
 be an infringement of the patent ; but where there is an 
 invention consisting of several parts, the imitation or 
 pirating of any part of the invention is an infringement of 
 the patent " (a). 
 
 Speaking of this case in Clark v. Adie (6), James, L.J., 
 said : — " Upon the authority of Smith v. L. & N. W. Rail- 
 ivay Co., it has been strongly contended before us that 
 whenever there is a patent for a combination, that patent 
 gives protection, not indeed to every distinct thing that 
 enters into the combination, but to every combination, 
 arrangement and aggregate of two or more of those dis- 
 tinct things, even although such subordinate combination 
 is not expressly or impliedly claimed in the specification. 
 This, in our opinion, is so startling a violation of every 
 principle of patent law, that we doubt whether we could 
 follow any authority, short of the House of Lords, in 
 applying such a doctrine. If a patent for a combination 
 of several parts is in reality a patent, and gives really a 
 monopoly for every combination of any two or more of 
 those parts, then it follows, from the very first princijDle of 
 patent law, that if any conceivable combination of any two 
 or more parts was old, the patent would be bad. On the 
 other hand, if the patentees say, ' No, we do not claim to 
 protect every combination of those parts, but only those 
 subordinate combinations, or parts of the combination, 
 which are new and useful,' then such a claim would be 
 entirely inconsistent with the leading case of Foxivell v. 
 J Rostock (c), which, we may be permitted to say, is as good 
 sense as it is sound and intelligible law ... I will 
 state what we conceive to be the real principle which 
 
 (a) Per Campbell, C. J., in (/;) L. R., 10 Ch. App. Cas. 674. 
 
 Smith V. L. ci- JV. W. Bail. Co., (c) 12 W. R. 723. See also 
 
 2 E. & B. 76 ; The Patent Bottle Harrison v. Anderston Foundry 
 
 Envelope Co. v. Seymei', 5 C. B., Co., pp. 98—99, siqjra. 
 
 N. S. 172.
 
 17-i THE LAW OF PATENTS. 
 
 underlies tlie case of Lister v. Leather (c7), aud which 
 reconciles it with the other cases, and with general prin- 
 ciples, and common sense. A patent for a new combination 
 or arrangement is to be entitled to the same protection, 
 and on the same principles, as every other patent. In f;ict 
 every, or almost every patent, is a patent for a new com- 
 bination. The patent is for the entire combination, but 
 there is, or may be, an essence or substance of the 
 invention underlying the mere accident of form, and that 
 invention, like every other invention, may be pirated by 
 a theft in a disguised or mutilated form, and it will be in 
 every case a question of fact, whether the alleged piracy is 
 the same in substance and effect, or is a substantially new 
 or diflferent combination." 
 
 In Nordenfelt v. Gardner (c), Brett, M.R., said :— '' The 
 machine which is challenged may have that combinaticm 
 actually without any variance at all. If so, it is obvious 
 that the challenged machine is an infringement, or it may 
 have that comljination with some alteration. The altera- 
 tion of a combination as it seems to me may be by addition 
 or subtraction, or substitution of parts. Any one of these 
 alters the combination. If the alteration, whether it be by 
 addition, or subtraction, or substitution, be merely colour- 
 able, then the two machines are substantially the same ; 
 although not mathematically exactly the same, they are 
 substantially the same ; and in any case, notwithstanding 
 such colourable alteration, there may be an infringement. 
 An alteration hy addition may be an improvement, but 
 then that will leave the whole of the original combination, 
 and add something to it. If such an alteration of the 
 combination be made, it seems to me that no good patent 
 can be, made with regard to the new machine except by 
 claiming the invention as an improvement, and by showing 
 distinctly what the addition is so as to sIidw what the 
 improvement is. \\\ ((Iteration hy subtraction^ if it were 
 
 {,!) 8 K. ic B. 1004. {e) 1 r. 0. Pu 0,5.
 
 THE CAUSE OF ACTION INFRINGEMENT. 175 
 
 more than a colouraLle suljtraction, would, as it seems to 
 me, alter the combination. It would not be a combination 
 of the same things, it would be a combination of different 
 things ; and if the combination were altered by a material 
 subtraction, I should think that it was a new combination. 
 But an alteration hy substitution, that is, by substitution 
 of one of the material elements of the orie^inal combination, 
 must to my mind be a new combination. The second 
 combination, then, is a combination of different things from 
 the first. There is a taking away of one of the elements, 
 and a material element of the old combination, and a 
 putting in of a new material element which is different 
 from any of the elements of the former." 
 
 Where, however, the application by the defendant of a 
 portion of the invention of the plaintiff is for a different 
 object^ and with a view of carrying out a ^^rinciple totally 
 newly discovered by the defendant, and which was un- 
 known to the plaintiff, there is no infringement, although 
 at first sight there appears to be some similarity of pro- 
 cess (/). 
 
 We have seen that sect. 5, sub-sect. 5, provides that 
 a complete specification must conclude with a distinct 
 statement of the invention claimed ; so that, if the inven- 
 tion be a combination, it must be so stated ; if for parts, 
 they must be claimed. There is no infringement if the 
 defendant cannot be shown to have infringed, directly or 
 indirectly, a part or parts of the claim [g). In Lister v. 
 Leather {It) it was held that a valid patent for an entire 
 combination, or for a process, gives protection to every part 
 that is new and material, for the purpose of effecting that 
 particular combination or process, without any express 
 claim of particular parts, and notwithstanding that parts of 
 the combination are old. In future, if any parts are 
 
 (/) Newton V. Vaucher, 6 Ex. (g) Jackson v. Wolstenhulmes, 
 
 859. See also Morewood v. Tup- Griffin P. C. 134. 
 per, 3 C. L. Rep. 718. (h) 8 E. & B. 1004.
 
 176 THE LAW OF PATENTS. 
 
 desired to be protected, as well as the combination or 
 process, the claim will have to be so drawn as to include 
 those parts- 
 
 The jury will always have to consider whether the in- 
 frino-ino; machine process or combination is a substantial 
 imitation {i). No fine lines can be drawn as to what 
 amounts to substantial imitation. In Clarke v. Adie [k), 
 in the House of Lords, Lord Blackburn said : — " I incline to 
 agree with what was said in the Exchequer Chamber in 
 the case of Lister v. Leather (l), that you cannot decide in 
 the abstract whether the using of two parts, A and B, of a 
 combination of A, B, and C is or is not using part of that 
 invention, nor can you decide in the abstract the other 
 Cjuestion, which was somewhat discussed in the case of the 
 sewing machine [Foxwell v. Bostoch) (m), "whether or no 
 the specification shows that A or B is sufficiently claimed 
 as a part of the invention or not. I do not think that 
 either of those questions can be decided in the abstract. I 
 would wish, Kke the Exchequer Chamber in Lister v. 
 Leather^ before deciding it, to have before me the nature 
 of the machine, in order that I may see what A, B, and C 
 are, and what is their relation to each other." 
 
 In Parkes v. Stevens {n), James, V.-C, said : — " The 
 authority of that case [Lister v. Leather) has been pressed 
 upon me as if it really established this, which would be a 
 most startling proposition, that a patent for a combination 
 or arrangement would be a distinct patent for everything 
 that was new and material and that went to make up the 
 combination . . . the judgment if read well will be 
 found to give no warrant whatever for such, I must call 
 it, baseless notion. The law is 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 
 
 (i) Tlujmas v. Foxivdl, 5 Jur. (/) 8 E. .i- V>. lOOt. 
 
 N. S. 39. ("0 12 W. K. 723. 
 
 (k) L. R., 2 App. Cas. 335. (n) L. K, 8 Eq. 358.
 
 THE CAUSE OF ACTION INFRINGEMENT. 177 
 
 new and material for that process, which is really nothing 
 more than stating in other words that you not only have no 
 right to steal the whole, hut you have no right to steal any 
 part of a man's invention ; and the question in every case 
 is a question of fact — is it really and substantially a part 
 of the invention " (o). This judgment was affirmed on 
 appeal [p). 
 
 If a man in the course of producing an improved com- 
 bination substantially uses a combination which already 
 forms the suljject of a patent he therel>y infringes the 
 patent, notwithstanding that the combination he is making 
 has a different end in view than that which has been 
 patented {q). 
 
 But, on the other hand, where a patent is for a combina- 
 tion a person who takes a new and material part of the 
 combination, but not for a similar or analogous purpose 
 to that to which it was applied in the patent, does not 
 infringe the patent (r). 
 
 If the invention be for a combination or process whereby 
 an already well-known object is produced, it will be no 
 infrino^ement to make another combination, even of the 
 same materials (provided they be also old and well- 
 known), for the purpose of attaining the same object, for 
 the patent is for the means of attaining the object, and if 
 other means are employed there is no infringement. The 
 patent is also for the method of combining the old and 
 well-known materials, and if another method is adopted 
 there is no infringement (s). 
 
 "When the defendant has set himself to work to evade 
 the plaintiff's patent by fraudulently making a colourable 
 
 (o) See also Wright v. Hitch- at p. 230. 
 
 cod; L. R., 5 Ex. 37 ; on the (r) Listej- v. Eastwood, 9 L. T., 
 
 other side White v. Fenyi, 15 W. N. S. 766. 
 
 R. 348. (s) Curtis v. Piatt, in the House 
 
 ( p) 5 Ch. Ap. Cas. 36. of Lords, 35 L. J., Ch. 852 ; L. R., 
 
 {q) Per Lord Westbury in Can- 1 H. L. 337. 
 ■nington v. Nuttall, L. R., 5 H. L. 
 
 T. N
 
 178 THE LAW OF PATENTS. 
 
 imitation, or substituting a mechanical or cliemical equiva- 
 lent, the cases show that the Courts will look strictly at 
 what he has done, and will take care that he does not over- 
 step the line which he is endeavouring to keep within. 
 
 The question of fraudulent evasion is, as we have shown, 
 one of fact. " A slight departure from the specification, 
 for the purpose of evasion only, would, of course, be a fraud 
 upon the patent ; and therefore the question will be, 
 whether the mode of working by the defendant has or has 
 not been essentially or substantially different " (t). 
 
 In Dudgeon v. Thompson {ii) Lord Cairns makes strong 
 objection to the use of the term colourable imitation, in 
 connection witli the infringement of patents, and pro- 
 ceeds : — " If there is a patented invention, and if you, the 
 defendant, are found to have taken that invention, it will 
 not save you from the punishment or from the restraint of 
 the Court, that you have, at the same time that you have 
 taken the invention, dressed it up colourably, added some- 
 thing to it ; taken, it may be, sometliing away from it, so 
 that the whole of it may be said, as is said in this injunc- 
 tion. Here is a machine, which is either the plaintiff's 
 machine, or differs from it only colourably. But under- 
 lying all that there must be a taking of the invention of 
 the plaintiff. There used to be a theory in this country, 
 that persons might infringe upon the equity of a statute, if 
 it could not Ije shown that they had infringed the words of 
 the statute ; it was said that they had infringed the equity of 
 the statute, and I know there is by some confusion of ideas, 
 a notion sometimes entertained that there may be some- 
 thing like an infringement of tlie equity of a patent. My 
 lords, 1 cannot think that there is any sound })rinciple of 
 tliat kind in our law ; that which is protected is tliat which 
 IS specified, and that which is held to be an infringemei;t 
 
 (/) Per DiiUiiH, J., in //;// V. 77/owy..,;», 1 Wcl). I". ('. 2\2. 
 (it) \j. \l., '.'> A]ij). ( ';i.s. iit ]). \?>.
 
 THE CAUSE OF ACTION INFRINGEMENT. 179 
 
 must be an infringement of tliat which is specified. But I 
 ao-ree it will not be the less an infrino-ement because it 
 has been coloured or disguised by additions or subtrac- 
 tions, which additions or subtractions may exist, and yet 
 the thing protected by the specification be taken notvvith- 
 standinoc." 
 
 Summing up the cases, therefore, we come to this. 
 Strictly speaking, there is no such thing as a colourable 
 imitation : either the defendant has infringed the thing 
 specified or he has not. At the same time there is an 
 essence or substance to every invention underlying the 
 mere accident of form or words. If the defendant has 
 imitated and adopted the essence of the invention he will 
 not be allowed to escape because he has not adopted the 
 form or words in which the essence of the invention is 
 clothed (x). 
 
 There is a description of imitation which is produced by 
 the substitution of chemical or mechanical equivalents. 
 To the unscientific eye there is a total dissimilarity between 
 the infringing machine or process and the original ; but, 
 none the less, it is a mere imitation — it is a robbery of the 
 ideas and intentions of the first inventor, but a robbery 
 conducted in a scientific manner. 
 
 We have seen that a patent cannot be granted for the 
 
 (x) Thorn v. The Worthing Web. P. C. 586 ; Neil son v. Har- 
 
 Skating Rinh Co., L. R., 6 Ch. D. ford, 1 Web. P. C. 310; Walton 
 
 415; Flower V. Lloyd, W.N. 1877, v. Bateman, per Cresswell, J., 1 
 
 p. 132 ; Barrett v. Vernon, 45 L. Web. P. C. 616 ; Muntz v. Foster, 
 
 T. (N. S.) 755; Bailey v. Roher- perTindal, C. J., 2 Web. P. C. 101 ; 
 
 ton, L. JR., 3 App. Cas. 1055. And Ritssellv. Ledsam, 14 M. & W. 580 ; 
 
 the older cases, Bovill v. Moore, Gamble v. Kurtz, 3 C. B. 425 ; 
 
 Dav. P. C. 405 ; Forsyth v. Riviere, Stead v Anderson, 2 Web. P. C. 
 
 1 Web. P. C. 97; R. v. Lister, 156; Unwin v. Heath, 25 L. J., 
 
 Web. P. L. 80 ; Minter v. Wells, C. P. 8 ; Curtis v. Piatt, 35 L. J., 
 
 1 Web. P. C. 130; Morgan v. Ch. 852; Murray v. Clayton, L. 
 
 Seaivard, per Alderson, B., 1 Web. R., 7 Ch. App. Ca. 585. 
 P. C. 171 ; Walton v. Potter, 1 
 
 X 2
 
 ISO THE LAW OF PATENTS. 
 
 discovery of a mere principle (y), but that, if the principle 
 when discovered is at the same time applied, a valid grant 
 may be made for the application of the principle. The 
 essence of the patent is the fact of applying the newly- 
 discovered principle to a particular end. Xow a mechanical 
 or chemical equivalent is another method of producing 
 the same result, a method which a skilled mechanic or 
 chemist, havino- once seen the orioinal invention, could at 
 once suggest and apply without the necessity of any inven- 
 tive power whatever. Ecpiivalents may be substituted for 
 parts as well as for the whole invention, so that it may 
 happen that a patent is taken out which consists of three 
 parts. An equivalent may be substituted for each part, so 
 that in effect the whole invention may be changed and yet 
 there may be a most flagrant infringement. 
 
 Take, for instance, the case of Stevens v. Keating (z). 
 Here the patent was for the manufacture of cement. The 
 cement was made from gypsum (sulphate of lime) by admix- 
 ing it with pearlash (carbonate of potash) and sulphuric acid. 
 Chemically, the effect was this : Sulphate of potash was 
 produced ; this, combined with the sulphate of lime, pro- 
 duced a double salt, which, when submitted to a high 
 temperature and subsecjuently ground to a fine powder, 
 constituted the cement. The principle of this discovery 
 was that sulphate of lime combined with salts of potash or 
 soda, and when so combined, produced a substance which 
 set very hard. The defendant substituted for the j^earlash 
 and sulphuric acid a chemical ecjuivalent, borate of soda 
 (borax), and heated that with gypsum, producing in the 
 same manner a double salt, and with the same resulting 
 property of setting. This Avas properly held to be an 
 iiifringemont. 
 
 "Ecjuivalents which are not known at the time of the 
 patent as equivalents and afterwards are found to answer 
 
 (//) Ante, p. 2.3. (z) 2 Web. P. ('. ISl.
 
 THE CAUSE OF ACTION — INFHINGEMENT. 181 
 
 the same purpose, are not included in the specification. 
 They are new inventions." Per Baron Parke (a). 
 
 In Russell v. Cowleij (b) the invention claimed was that 
 of bringing to a welding heat a long piece of iron of the 
 proper quality ; after having turned up its edges and 
 drawing it througli a hole of the proper size of the in- 
 tended tube, so as to compress together the edges and 
 give it a com^Dlete circular form. The defendants turned 
 up the skelp, and, after heating it in the furnace, passed 
 it througli two rollers with grooves : — Held, that the two 
 rollers with grooves were a mere mechanical equivalent 
 for the hole througli which the iron was passed under the 
 patent (c). 
 
 In Curtis v. Piatt (d), Wood, V.-C, said :— " Where the 
 thing is wholly novel and one which has never been achieved 
 before, the machine itself which is invented necessarily 
 contains a great amount of novelty in all its parts, and one 
 looks very narrowly and very jealously upon any other 
 machine for effecting the same object, to see whether or 
 not they are merely colourable contrivances for evading 
 that which has been before done. When the object itself 
 is one wliicli 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 long 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 M^ould be 
 to say that the whole world is to be precluded from achiev- 
 ing some desirable and well known object which everybody 
 
 (a) Unwin v. Heath, 2 Web. 208 ; Bateman v. Gray, Mac. P. 
 
 Pat. Cases, 314. C 102 ; Smi2JSon v. Holliday, 20 
 
 (6) 1 Web. P. C. 463. Newton's Loud. Jouru. (N. S.) 
 
 (c) See also Jwpe v. Pratt, 1 HI ] United Telephone Co. v. 
 
 Web. P. C. 146 j The Electric Harrison, Cox, Walker I- Co., \j. V.., 
 
 Telegraph Co. v. Brett, 10 C. B. 21 Ch. D. 720. 
 
 838; Hancock v. Moulton, John- (o?) L. R., 3 Ch. D. 136 (note). 
 
 sou's Patentees' Annual, 3rd ed.
 
 182 THE LAW OF PATENTS. 
 
 lias had in view for years. In such a case it may be said 
 that the means taken are simply mechanical equivalents 
 for the means previously adopted for arriving at the same 
 object." 
 
 There are three ways in which a patent may be in- 
 fringed : — 
 
 1. By making the patented article or working the 
 process. 
 
 2. By using. 
 
 3. By selling. 
 
 BY" MAKING. 
 
 A person may infringe a patent by making the article 
 himself, or by his agent, or by his servants. The agent 
 and servants, it is true, will be considered as equally in- 
 fringing the patent, and actions may be brought against 
 them individually, but that in no way absolves the person 
 who employs them for that purpose. In Sykes v. Howarth (e) 
 a patent consisted of the application of cards or strips of 
 leather covered with wire or rollers at " wide distances." 
 A person who contracted to clothe rollers and supplied to a 
 " nailer " cards of such width that when applied to the 
 rollers they must of necessity leave wide spaces, and who 
 himself paid the nailer, was held to have infringed the 
 patent, though he alleged that his business was that of a 
 card-maker only and did not include the nailer's work. Li 
 giving judgment, Fry, J., said : — " I have come to the con- 
 clusion that the nailer must be deemed to have been the 
 agent, for the purpose of nailing on, of the defendant 
 
 there is a contract to clothe in the manner 
 
 prescribed by IIm' particulars given to the defendant, and 
 tli;it contract was carried into effect by a person paid by 
 the defendant — the defendant himself receiving the total 
 
 (c) L. K., 12 Cb. D. 82G.
 
 THE CAUSE OF ACTION INFRINGEMENT. 183 
 
 amount for wliicli he contracted. The consequence is that 
 in my judgment all the defences faiL" 
 
 We have seen that it is an infringement to colourably 
 imitate an invention. It is no infringement to make, use, 
 or vend the elements which afterwards enter into the com- 
 bination. In Toiunsend v. Hawo7'th {/), Jessel, M. R., 
 said : — " The chief of these chemical substances are sub- 
 stances M^hich are perfectly well known, and most of them 
 are common substances ; they are all old chemical com- 
 pounds, and there is no claim in the patent at all except 
 for the peculiar use of these chemical compounds for the 
 purpose of preserving the cloth from mildew. No judge 
 has ever said that the vendor of an ordinary ingredient 
 does a wrong if the purchaser coming to him says, ' I want 
 your compound because I want to preserve my cloth from 
 mildew. I wish to try the question with the patentee.* 
 No one would doubt that that sale would be perfectly legal. 
 You cannot make out the proposition that any person sell- 
 ing any article, either organic or inorganic, either produced 
 by nature or produced by art, which could in any way be 
 used in the making of a patented article, can be sued as an 
 infringer, because he knows that the purchaser intends to 
 make use of it for that purpose." 
 
 The working and making must be by way of using the 
 invention, as distinguished from experimenting with it, 
 so as to operate as an infringement. In Higgs v. God- 
 win ( g) the patent was for obtaining a commercially sale- 
 able manure by treating sewage with slaked lime. The 
 defendant used the process by way of experiment to purify 
 
 (/) L. R., 12 Ch. D. 831, note. at pp. 10 and 13; Von Heyden v. 
 
 {g) E. B. & E. 529. See also Newstadt, 14 Ch. D. 230 ; Belts v. 
 
 Jones V. Pearce, 1 Web. P. C. 122, Nieho7i, 6 N. R. 221 ; Wright v. 
 
 and Muntz v. Foster, 2 Web. P. C. Hitchcock, L. R., 5 Ex. 37 ; Sykes 
 
 93 and 96 ; Holmes v. L. dh K W. v. Hoivarth, L. R., 12 Ch. D. 
 
 R. Co., 12 C. B. 831 ; NoheVs Ex- 826. 
 plosives Co. V. Jones, 8 App. Cases
 
 184 THE LAW OF PATENTS. 
 
 water — Held no infringement. In Frearson v. Loe (Ji), 
 Jessel, M. R., adverting to this branch of the subject, said : — 
 " The other point raised was a curious one and by no means 
 free from difficulty, and what occurred with regard to that 
 was this : that the defendant at various times made screw 
 blanks, as he said, not in all more than 2 lbs., by various 
 contrivances, by which no doubt screw blanks were made ; 
 according to the plaintiff's patent of 1870, as well as that 
 of 1875, they seem to have been an infringement of both. 
 He said he did this merely by way of experiment, and no 
 doubt if a man makes things merely by way of bond Jide 
 experiment, and not with the intention of selling and 
 making use of the thing so made for the purpose of which 
 a patent has been granted, but with the view of improving 
 upon the invention, the subject of the patent, or with a 
 view of seeing whether an improvement can be made or 
 not, that is not an invasion of the exclusive rights granted 
 by the patent. Patent rights were never granted to pre- 
 vent persons of ingenuity exercising their talents in a fair 
 way. But if there be neither using nor vending of the 
 invention for profit, the mere making for the purpose of 
 experiment and not for a fraudulent purpose ought not to 
 be considered within the meaning of the prohibition, and 
 if it were, it is certainly not the subject for an injunction. ' 
 
 To purchase infringing articles for the purpose of in- 
 structing pupils and to enable them to pull them to pieces 
 and put them together again, is not mere experimental user 
 and amounts to infringement (^). 
 
 It will be remembered that prior to the Act of 1883 
 letters patent did not operate as against the Crown ; ques- 
 tioijs sometimes arose as to whether persons acting in the 
 service of the Crown might manufacture a patented article 
 or use a patented process. 
 
 (A) L. R., 9 Ch. D. 48. 
 
 (r) United Telephone Co. v. ^/larjyles, 29 Ch. D. 1G4.
 
 THE CAUSE OF ACTION — INFHINGEMENT. 185 
 
 When the persons using the invention were servants of 
 the Crown, and acting in pursuance of their duty as servants, 
 they were protected ; but if they were contractors contract- 
 ing with the Crown they were not protected, but stood in 
 exactly the same position as other subjects (^). 
 
 Sect. 27 of the Act of 1883 provides that a patent should 
 bind the Crown, but that the Crown may use the invention 
 " by agents or contractors " on terms to be before or after 
 the use agreed upon. 
 
 BY USING. 
 
 It frequently occurs that very fine questions arise as to 
 what constitutes using a patented invention. The general 
 rule may be thus stated : That if the defendant has put the 
 invention to the purpose for which it was intended he has 
 used it in this country. In the case of Nielson v. Betts (I), 
 in the House of Lords, the facts were as follows : Betts, the 
 plaintiff in the suit, was the patentee of an invention for 
 the manufacture of capsules for the purpose of covering 
 bottles of liquid (wune, beer, or otherwise), and protecting 
 them from the action of the atmosphere. Betts' patent did 
 not extend to Scotland. Nielson and his co-appellants, 
 defendants in the suit, were persons who bottled beer in 
 Glasgow for the Indian market. They bottled the beer 
 and covered it with capsules, which were made in Germany 
 in pursuance of Betts' specification. The beer was shipped 
 by the appellants in vessels which called at Liverpool to 
 complete their cargoes ; on some occasions the beer was 
 transhipped in England, but no cases of beer were opened, 
 nor was any of the beer sold in this country. Held, by 
 the House of Lords, that, inasmuch as the object of Betts' 
 
 (k) Dixon V. The London Small 1 Q. B. D. 384 ; also Feather v. R, 
 
 Arms Co., L. R., 10 Q. B. 130, and 6 B. & S. 257. 
 
 L. R., 1 App. Cas. 632, reversing (l) L. R., 5 H. L. 1. 
 decision of Court of Appeal, L. R.,
 
 186 THE LAW OF PATENTS. 
 
 iuvention was to make a capsule that would preserve the 
 beer, whilst the beer was in England it was being preserved 
 by the use of Betts' invention, and consequently that there 
 was an infringement of the patent. Lord Chelmsford, in 
 giving judgment in the Court below, said : — " It is the 
 employment of the machine or article for the purpose for 
 which it was designed which constitutes its active use, and 
 whether the cajDsules were intended for ornament or for 
 protection of the contents of the bottles upon which they 
 were placed, the whole time they were in England they 
 may be correctly said to be in active use for the very 
 objects for which they were placed upon the bottles by the 
 vendors. If the beer, after being purchased in Glasgow, 
 had been sent to England, and had been afterwards sold 
 here, there can be no doubt, I suppose, that this Avould have 
 been an infringement, because it would have been a profitable 
 user of the invention, and I cannot see how it can cease to be a 
 user because Enoland is not the final destination of the beer." 
 The case oi NoheV s Exiolosives Co. Y.Jones, Scott d Co.(m), 
 is instructive upon the question of user. The subject of 
 the plaintifi''s patent, dynamite, is a mechanical compound 
 of nitro-glyceriue and infusorial earth. The compounding 
 of nitro-glycerine in this manner is done for and efiects the 
 purpose of rendering it less liable to explosion from con- 
 cussion. The object of the patent was, therefore, to enable 
 nitro-glycerine to be kept and handled with safety. Held, 
 by Bacon, V.-C, that the mere storage of dynamite made 
 abroad, and only landed in this country for the pur^^ose 
 of transhipment, amounted to an infringement of the 
 plaintiff's patent. This decision was reversed in the 
 Court of Appeal, but upon another point, to be mentioned 
 presently, and without in any manner impugning the cor- 
 rectness of the Vice-Chancellor's decision on this question. 
 
 (m) L. li., 17 i'h. I). 721. Sco Cambridge v. Richardson, 6 Ves. 
 ulso 'I'lu Universities of Oxford and G89.
 
 THE CAUSE OF ACTION INFRINGEMENT. 187 
 
 In the case of Caldwell v. Vanvlissengen (^n), it was held 
 by Turner, V.-C, that foreign ships coming into British, 
 ports, fitted with screw propellers, which were made in 
 pursuance of the specification of an English patent, thereby 
 infringed the patent. If the injunction which was granted 
 he carefully read, it will be found to amount to a restraint 
 from proj^elliijg the vessels with the propellers, not from 
 having the ships merely fitted with them. Legally speaking, 
 the user of propellers differs from that of capsules or 
 dynamite in this important respect, that the one is in use 
 only when in motion ; the others are at use, the one when 
 merely affixed to the bottles, and the other when merely in 
 possession. Subject to the applicability of the arguments 
 adduced in the case of dynamite, it is submitted that mere 
 possession, unaccompanied with user, does not constitute 
 an infringement of letters patent, unless the possession 
 is of such a character as to import a threat to use. But 
 in The United Telephone Co. v. The London Globe 
 Telephone Co. (o), Bacon, V.-C, said : " That the defen- 
 dants are in possession of instruments made in infringement 
 of the plaintiff"'s patent is confessed by them and placed 
 beyond the possibility of question, and that of itself gives 
 to the plaintiffs a right to ask for an injunction to restrain 
 the defendants from making use of that which by their own 
 confession is an unlawful possession, and would be, if used, 
 I presume, an unlawful use .... the defendants 
 excuse themselves .... next on the ground that it 
 is not their intention to use them. If it is not their inten- 
 tion to use the instruments, then the injunction asked for 
 can do them no harm. That would not be enough to 
 dispose of the case, but it is the right of the plaintiffs to 
 have an injunction against the defendants who have the 
 means to the extent of 800 machines of injuring theii- 
 patent rights." 
 
 (ji) 21 L. J., Ch. 97. (o) 26 Cli. D. 766.
 
 188 THE LAW OF PATENTS. 
 
 In the case of Adair v. Young {p), certain pumps, which 
 were an infringement of the phiintiff 's patent, were fitted 
 on board a British ship. There was no evidence of their 
 having been used. Held, by the Court of Appeal, that 
 there had been no infringement, but as there was evidence 
 of an intention to use the pumps, an injunction would be 
 granted against the use of the pumps. 
 
 Sect. 43 of the Act of 1883 provides : — " {l) A patent 
 shall not prevent the use of an invention for the purposes 
 of the navigation of a foreign vessel toithin thejurisdie- 
 tioit of any of Her Majesty's Courts i/i the United Kingdom 
 or Isle of IJan, or the use of an invention in a foreign 
 vessel ■within that jurisdiction, provided it is not used 
 therein for or in connection ivith the manufacture or 
 ■preparation of any thing intended to he 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 authorize subjects of such foreign state, 
 having patents or like privileges, for the exclusive use or 
 exercise of inventions ■within its territories, to prevent or 
 interfere unth the use of such inventions in British vessels 
 while in the ports of such foreign state, or in the waters 
 luithin the jurisdiction of its Courts^ where such inventions 
 are not so used for the manufacture or prepjaration of 
 anything intended to he sold in or exported from the 
 territories of such foreign state." 
 
 A patent is not infringed by being used on board an 
 English vessel abroad [q). 
 
 In the case of NoheVs Explosives Co. v. Jones & Scott (/•), 
 mentioned above, the Court of Appeal reversed the decision 
 of Vice-Chancellor Bacon, on the grounds that the defen- 
 dants had not infringed the plaintiff's patent, they having 
 merely acted as Custom House agents for the transhipment 
 of the dynamite, and their functions being confined to 
 
 (p) L. It., 12 Ch. D. 13. N. S. 954. 
 
 {q) Neivall V. KUu>t(, 10 Jur., (;•) 17 Ch. 1). 7'Jl. 
 
 I 
 
 I
 
 THE CAUSE OF ACTION INFRINGEMENT. 189 
 
 obtaining papers necessary for such transhipment, and that 
 they never had any ownership in or exercised any control 
 over the dynamite. 
 
 This decision shows that the Courts will not recognize 
 that a person infringes a patent by aiding- and abetting, 
 so to speak, another to do so. There must be some actual 
 infringement on the part of the defendant (.?). 
 
 SELLING. 
 
 A person infringes letters patent who sells the patented 
 article within this realm. It is a putting in practice of 
 the invention within the terms of the grant. 
 
 Lending is not selling [t). 
 
 The purchase of the patented article is not of itself an 
 infringement of the patent, nor is the mere possession, 
 since these do not come within the prohibition in the grant, 
 which is against making use of, or putting in practice, the 
 said invention (u). 
 
 This is always with exceptions such as in the case of 
 dynamite, where the mere possession involves ex necessitate 
 the use ; and the importation of the patented article will 
 not of itself amount to an infrino;ement. 
 
 The possession of the patented article, combined with 
 exposure for sale, if no sale is in fact effected, is no 
 infringement (x). 
 
 But the making of the patented article, as we have 
 seen, is an infringement, whether a sale was effected, or 
 attempted or not (?/). 
 
 Where the patent is for a process the manufacture of 
 an article by the process abroad and sale in this country 
 
 (s) See also Toivnsend v. Ha- Web. P. C. 13.5. 
 worth, L. R., 12 Ch. D. 831 ; Syhes {o:) Ibid. 
 
 V. ^o^rar</^ 12Ch. D. 826. {y) Muntz v. Foster, 2 Web. 
 
 {t) United Telephone Co. v. P. C. 101 ; Oxley v. Holden, 8 C. 
 
 Henry, Griffin, P. C. 228. B. (N. S.) 6G6. 
 
 {u) See Minter v. Williams, 1
 
 190 THE LAW OF PATENTS. 
 
 is an infrino-ement In EhnsJie v. Boursier (z). Sir W. M. 
 James, V.-C, said : — " It is said that tinfoil can be made by 
 the plaintiff's process at less cost than by the old method ; 
 and it is conceded that nobody in England can use the 
 plaintiff's process of making cast tinfoil as distinguished 
 from rolled tinfoil without a license from the plaintiff. If 
 that cannot be done in England it would be a very strange 
 thino- if a person in England could send an order to 
 some one in France, get the same thing manufactured 
 there in exactly the same way, and bring it here so as to 
 compete with the person to whom the Crown has granted 
 ' the whole profit, benefit, commodity, and advantage ' 
 arisino- from the patent. It would be a short mode of 
 destroying ' every profit, benefit, commodity, and advan- 
 tage ' which a patentee could have from such a thing, if all 
 that the man had to do was to get the thing made abroad, 
 import it into this country, and then sell it here in 
 competition with the English patentee." 
 
 In Walton v. Lavater {a) Erie, C. J., said: — "But it 
 appears to me that the main purpose of the patent is to 
 give the profit to the patentee, and that the main mode 
 of defeating that purpose would be by selling the patented 
 article ; and it seems to me that without proof of the 
 making of the article by the infringer, evidence that he 
 sold the patented article for profit would be good evidence 
 upon which a jury might find that he had infringed the 
 patent. With respect to the defendant not being liable, 
 iDecausc the articles were imported from abroad, I should 
 say that, even if it was a simple case of importation, 
 without any }jroof of knowledge of the article being 
 patented or of the infringement, it would be sufficient 
 evidence of infringement that the defendant had imported 
 and sold'*(h). 
 
 (z) L. K., 9 Eq. at p. 222. end; L. 11, 5 Kx. 37 ; 39 L. J., 
 
 (a) 29 L. J., C. P. 275. Ex. 97. 
 
 (b) See also ]Vri<jM v. I/ilch-
 
 THE CAUSE OF ACTION — INFRINGEMENT. 191 
 
 Selling known chemical substances with knowledge 
 of and with a view to their being used for the purpose of 
 infringing a patent is no offence, provided the vendor takes 
 no actual personal part in the infringement (c). 
 
 A patentee selling the patented article sells with it 
 the right of free disposition as to that article, and if he 
 sells the article in France, tbe purchaser may import and 
 sell it in England. Lord Hatherley, in Betts v. Wilhnott (d), 
 said : — " Inasmuch as he has the right of vending the goods 
 in France, or Belgium, or England, or in any other quarter 
 of the globe, he transfers with the goods necessarily the 
 license to use them wherever the purchaser pleases. When 
 a man has purchased an article he expects to have the 
 control of it, and there must be some clear and explicit 
 agreement to the contrary to justify the vendor in saying 
 that he has not given the purchaser his license to sell 
 the article, or to use it wherever he pleases as against 
 himself." 
 
 Where the defendants were owners of patents in Belgium 
 and England for an invention for making glass lamp globes 
 by a deed executed in Belgium, granted a license to the 
 plaintiffs to manufacture under their invention in Belgium 
 but not elsewhere. The plaintiffs under this license having 
 manufactured articles in Belgium and sold them in England, 
 it was held by the Court of Appeal, affirming Pearson, J., 
 that the grant of the license to use the patent in Belgium 
 did not imply permission to sell the manufactured article in 
 England in violation of the defendants' English patent (e). 
 
 And when the patentee has assigned his patent in France 
 and kept it to himself in England, the French assignee 
 may not, nor may a purchaser from him import and 
 
 (c) Toivnsend v. Haworth, L. R., (c) Societe Anonyme des Manil- 
 la Ch. D. 831 ; Sykes v. Howarth, factures de Glaces v. Tielghman's 
 L. E., 12 Ch. D. 826. Patent Sand Blast Co., 25 Ch. 
 
 {d) L. R., 6 Ch. App. Cas. at D. 1. 
 p. 245.
 
 192 THE LAW OF PATENTS. 
 
 vend or use the goods made in France in England (/). 
 In this case the sale of the article can only imply such 
 license as the vendor himself has, and the vendor has no 
 right to sell in England. 
 
 Conversely, if the patentee had assigned his patent rights 
 in Enoiand, he conld not manufacture in France and sell 
 in Eno-land, and the sale of an article in France would 
 carry with it no implied right to import into or sell in 
 Eno-land. But if the rights under the patent are vested in 
 one and the same person for both France and England^ 
 or if there are no monopoly rights in France but only in 
 England, the patentee could make and sell in France and 
 restrain the purchaser from selling or using the article in 
 England, unless indeed there was a special agreement for 
 that purpose ; and then such agreement could not be held 
 to attach to the article so as to prevent any person in whose 
 hands it might come from importing it ( g). 
 
 {/) See the mle laid down in {g) Betts \. Willmott, ^ Q\\. Aj^^. 
 
 Caldwell V. Vanvlissengen, 9 Hare, Gas. 239. 
 415.
 
 ( 198 ) 
 
 CHAPTER XIII. 
 
 THE REMEDY — INJUNCTION. 
 
 The remedy sought or granted in an action for infringe- 
 ment may consist of an injunction, together with an account 
 of sales and profits, or damages. 
 
 The judicature acts and the rules which have been made 
 for the governing of the practice of the courts have intro- 
 duced great changes in the method of procedure. The old 
 practice of moving for an injunction l)y a suit in the Court 
 of Chancery, and of trying the validity of the patent at 
 common law has disappeared ; and in its place the patentee 
 seeking; to enforce his rights commences but one action in 
 which he claims, and if entitled to, obtains every 
 remedy which was formerly granted to him by the dual 
 process. 
 
 Every patentee proceeding against an infringer must 
 prove the validity of his patent and his title to an injunc- 
 tion ; that being so, and the right to the injunction 
 hanging so completely upon the question of validity, it 
 is obvious that the new procedure and the new power of 
 both divisions of the High Court of Justice to grant 
 complete and sufficient remedies and to try every question 
 is of great advantage to persons in possession of patent 
 risfhts. 
 
 There are two forms of injunction, the interlocutory 
 injunction and the perpetual injunction. 
 
 The interlocutory injunction stands very much upon 
 the same footing, and will be granted for similar reasons 
 
 T. O
 
 194 THE LAW OF PATENTS. 
 
 and upon the same conditions that an injunction was 
 formerly awarded by the Court of Chancery when an action 
 was directed to be tried at common law. 
 
 The perpetual injunction is granted after trial, and 
 binds the parties against whom it is granted during the 
 continuation of the term of the patent. 
 
 An interlocutory injunction will be granted whenever 
 there has been such working, user and enjoyment of the 
 patent rights by the patentee as will satisfy the Court that 
 there are ^ivong prima facie reasons for acting on the sup- 
 position that the patent is valid. 
 
 Lord Eldon, in the case of the Universities of Oxford 
 and Cambridge v. Richardson (a), said :- — " It is then said 
 in cases of this sort the universal rule is that if the title is 
 not clear at law the Court will not grant or sustain an 
 injunction until it is made clear at law. With all defer- 
 ence to Lord jMansfield, I cannot accede to that proposition 
 so unqualified. There are many instances in my own 
 memory in which this Court has granted or continued an 
 injunction to the hearing under such circumstances. In 
 the case of patent rights, if the party gets his patent and 
 puts his invention in execution and has proceeded to a 
 sale, that may be called possession under it ; however 
 doubtful it may be whether the patent can be sustained, 
 this Court has lately said possession under a colour of 
 title is ground enough to enjoin, and to continue the 
 injunction, till it shall be proved at law that it is only 
 colour and not real title." 
 
 And in Gardner v. BroadJ)ent (h) Sir J. Stuart, V.-C, 
 said : — " 1 wish it to be understood that the law of the 
 C<jurt is that laid down by Lord Eldon in the Universities 
 of Oxford and Camhridtjc v. Richardson." 
 
 Tliere having been a trial as to the validity of the patent, 
 wliicli has tcnnlnatcfl in favour of the patentee, will be 
 
 (a) 6 Yes. G8i). {h) 2 Jnr., N. S., 1041.
 
 THE REMEDY — INJUNCTION". 195 
 
 considered by the Court sufficient reason for granting an 
 interlocutory injunction. 
 
 Where the patentee has worked and enjoyed the patent 
 for many years without dispute, an interlocutory injunction 
 will be granted. In Dudgeon v. Thompson (c) Jessel, M. E., 
 said : — " The Court can grant an injunction before the 
 hearing where the patent is an old one and the patentee 
 has been in long and undisturbed enjoyment of it, or where 
 its validity has been established elsewhere, and the Court 
 sees no reason to doubt the propriety of the result, or 
 where 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." 
 
 So in Betts v. Menzies {d), Wood, V.-C, said :— " The 
 law of this Court is, that where the patentee has had long 
 enjoyment, then he shall have an injunction to protect his 
 rights until trial, even although his rights under his patent 
 be doubtful." On the other hand, we find Lord Westbury 
 laying it down in Ilills v. Evans (e) : — " It is the habit 
 and the rule of the Court not to grant that injunction (to 
 restrain infringement), at all events until the hearing, and 
 not to make it perpetual unless the legal validity of 
 the patent has been conclusively established." 
 
 Sometimes an application for an interim injunction is 
 advisable where there has not been long user of the patent, 
 or a decision in favour of the patentee. In such cases the 
 plaintiff must be prepared to give prima facie satisfactory 
 evidence of the validity of his patent (/). 
 
 These decisions certainly appear contradictory, but 
 
 (c) 30 L. T. R., N. S. 244 ; P. C. 95. 
 
 also Rtissell v. Coivley, 2 Coop. {e) 4 De G., F. k J, at p. 289. 
 
 C. C. 59 (n.) ; but see CrossMll v. (/) Gardner v. Broadbent, 2 
 
 Evory, 10 L. T. 459. Jur., N. S. 1041 ; Davenport v. 
 
 {d) 3 Jur., N. S. at p. 358. See Jep&on, 1 N. R. 173; Renard v. 
 
 also Davenport v. Goldberg, 2 H. Zfm'ws^aX 10 L. T., N. S. 177 ; and 
 
 k M. 282 ; Pe7in v. Bibhy, 3 L. J., cases quoted at pp. 218 — 220, infra. 
 
 Eq. 308 ; Muntz v. Foster, 2 Web. 
 
 o 2
 
 196 THE LAW OF PATENTS. 
 
 perhaps this principle may be gleaned from them — that 
 the Comt will consider the balance of convenience in 
 each particular case. If it should appear that irremediable 
 injury will be sustained by the defendant if an injunction 
 goes which may afterwards appear unfounded, the Court 
 will require a very strong case to be made out by the 
 plaintiff before granting sucli an injunction [g), and the 
 converse would equally appear. 
 
 In BicJcford v. Skeives {Ji), Shadwell,V.-C., said: — " I have 
 nothing to do Avith any other case than the case before me." 
 
 The Court will not infrequently grant or refuse the 
 injunction until the hearing upon terms ; the terms on 
 the plaintiff being that he shall be answerable in damages, 
 or on the defendant that he shall keep an account of the 
 material manufactured, or of the articles sold, in pursuance 
 of the patent process. And in considering which course 
 should be adopted the Court will be influenced chiefly by 
 the balance of convenience and the probability of injury to 
 either side {{). 
 
 In Plimpton v. Spiller {}:), James, L. J., said: — "The 
 Court, not forming an opinion very strongly either one way 
 or the other whether there is an infringement or not, but 
 considering it as a fairh^ open question to be determined at 
 the hearing, and not to be prejudiced by any observations 
 in the first instance, reserves the question of infringement 
 as one which will have to be tried at the hearing: and 
 which it will then have to consider. There will always be, 
 no doubt, the greatest possible difficulty in determining 
 what is the best mode of keeping things in statu quo — 
 for that is really what the Court has to do, to keep things 
 in statu quo — uiilil the final decision of the question ; and 
 then, of course, the Court says, 'We will not stop a going 
 
 ( g) Ncihonx. Forman, 2 Coop. P. C. 278; Bridson v. M' Alpine, 
 
 Gl (n.). 8 Beav. 229. 
 
 ih) 1 Wol). V. C. 213. (/.) L. 11., 4 Ch. D. 289. 
 
 (t) Ncihun V. Thompson, 1 Web.
 
 THE REMEDY — INJUNCTION. 197 
 
 trade. We will not adopt a course which will result in a 
 very great difficulty in giving compensation on the one 
 side or on the other. We have to deal with it as a practical 
 question, in the best way we can.' I think, on the whole, 
 that the Master of the Rolls has made the right order, viz., 
 by granting the injunction and putting the plaintiff upon 
 an undertaking to abide by such order (if any) as to 
 damages as the Court may think fit to make if he should 
 ultimately turn out to be in the wrong, and that it would 
 not be right in this case merely to put the defendant upon 
 the terms of keeping an account which, I conceive, might 
 be a very clumsy and inefficient mode of recompensing the 
 plaintiff if he should turn out ultimately to be in the 
 right." In the same case the present Master of the Rolls, 
 Sir W. B. Brett, said : — " There will be a hardship on the 
 one side or on the other, and the question is on which side 
 does the balance appear to lie ? Now, if the trade of a 
 defendant be an old and established trade, I should say 
 that the hardship upon him would be too great if any 
 injunction were granted. But where, as here, the trade of 
 the defendant is a new trade, and he is the seller of goods 
 to a vast number of people, it seems to me to be less 
 inconvenient and less likely to produce irreparable damage 
 to stop him from selling, than it would be to allow him 
 to sell and merely keep an account, thus forcing the 
 plaintiff to commence a multitude of actions against the 
 purchasers." 
 
 Injunctions are now granted pursuant to the Judicature 
 Act, 1873, sect. 25, sub-sect. 8: — "A mandamus or an 
 injunction may be granted, or a receiver appointed, by 
 an interlocutory order of the Court in all cases in which it 
 shall appear to the Court to be just or convenient that 
 such order should be made ; and any such order may be 
 made, either unconditionally or upon such terms and con- 
 ditions as the Court shall think just ; and if an injunction 
 is asked either before, or at, or after the hearing of any
 
 198 THE LAW OF PATENTS. 
 
 cause or matter, to prevent any threatened or apprehended 
 waste or trespass, such injunction may be granted, if the 
 Court shall think fit, whether the person against whom 
 such injunction is souglit is or is not in possession under 
 any claim of title or otherwise, or (if out of possession) 
 does or does not claim a right to do the act sought to be 
 restrained under any colour of title ; and whether the 
 estates claimed by both, or either of the parties, are legal 
 or equitable." 
 
 It will be observed that this section confers unon the 
 
 J. 
 
 Court very wide limits within which, in its discretion, it 
 may grant injunctions. It sweeps away a great deal of 
 the technical rules which had been from time to time laid 
 down by the Court of Chancery for the granting of in- 
 junctions, and it practically substitutes for them the 
 opinion of the judge trying each particular action as to 
 the balance of convenience upon a consideration of the 
 facts of the case. 
 
 The basis of an injunction is the threat actual or implied 
 on the part of the defendant, that he is about to do an act 
 which is in violation of the plaintiff's rights ; so that not 
 only must it be clear that the plaintiff has rights, but also 
 that the defendant has done somethino; which induces the 
 Court to believe that he is about to infringe those rights. 
 
 The fact that he has been guilty of an infringement of 
 the patent rights will, under circumstances, be evidence 
 that he intends to continue his infringement, but whether 
 he has actually infringed the patent or not, it will be 
 sufficient if he has threatened to infringe it. Actual 
 infringement is merely evidence upon which the Court 
 implies an intention to continue in the same course. 
 
 In Frearaon v. Loe{j), Jessel, M. R., said : — " I am not 
 aware of any suit or action in the Court of Chancery which 
 has been successful on the part of a patentee, without 
 
 U) L. R., 9 Cli. D. at p. G5.
 
 THE REMEDY INJUNCTION. 199 
 
 infringement having been proved ; but, in my opinion, on 
 principle there is no reason why a patentee should not 
 succeed in obtaining an injunction without proving actual 
 infringement. I think for this reason : where the defendant 
 alleges an intention to infringe, and claims the right to 
 infringe, the mischief done by the threatened infringement 
 of the patent is very great, and I see no reason why a 
 patentee should not be entitled to the same protection as 
 every other person is entitled to claim from the Court from 
 threatened injury, where that threatened injur}^ Avill be 
 very serious. No part of the jurisdiction of the old Court 
 of Chancery was considered more valuable than that 
 exercise of jurisdiction which prevented material injury 
 being inflicted, and no subject was more frequently the 
 cause of bills for injunction than the class of cases wJiich 
 were brought to restrain threatened injury, as distinguished 
 from injury which was already accomplished. It seems to 
 me, when you consider the nature of a patent right, that 
 where there is a deliberate intention expressed, and about 
 to be carried into execution, to infrins^e certain letters 
 patent under the claim of a right to use the invention 
 patented, the plaintiff is entitled to come to this Court to 
 restrain that threatened injury. Of course it must be plain 
 that what is threatened to be done is an infringement." 
 
 The actual infringement of the patent is taken by the 
 Court to imply an intention to continue the infringement, 
 notwithstanding any promises not to do so, and an injunc- 
 tion will be granted. Vice-Chancellor Shad well, in Losh 
 V. Hague (k), said : — "If a threat had been used, and the 
 defendant revokes the threat, that I can understand as 
 making the plaintiff satisfied ; but if once the thing com- 
 plained of has been done, I apprehend this Court interferes, 
 notwithstanding any jDromise the defendant may make not 
 to do the same thing again." 
 
 a-) 1 Web. P. C. 200.
 
 200 THE LAW OF PATENTS. 
 
 If the fact of actual infringement is relied upon, and not 
 a mere threat, it ^Yill be necessary to show very clearly that 
 what has been done amounts to an infringement. In Haii- 
 coch V. Moulton (I), it was held that the evidence must be 
 so perfect, that if it were a motion to commit for the breach 
 of an injunction, the Court would commit upon it. If the 
 evidence of infringement is conflicting, either by reason that 
 it is denied that the acts complained of were done, or that 
 such acts as were done did not amount to an infringement 
 of the patent, the Court should not grant an interim in- 
 junction before the hearing of the action (7u). 
 
 If the evidence relied upon for the injunction is the sale 
 by the defendant of the patented article, and not the 
 manufacture, the plaintiff must show that such patented 
 article was not made by himself or his licensees {n). 
 
 In the case of Adair v. Young (o), the defendant was the 
 captain of a ship which was fitted with certain pumps 
 which were an infringement of the plaintiff's patent. No 
 act of using the pumps was proved ; but it was shown that 
 the ship was not supplied with other pumps. It was held 
 that the possession of the pumps under such circumstances, 
 although not of itself amounting to an infringement, was 
 evidence upon which the Court would act that the 
 defendant intended to use the pumps, should occasion 
 require. And the Court, Brett and Cotton, L. JJ., James, 
 L. J., dissenting, granted an injunction. 
 
 Lord Justice James, in giving his reasons for dissenting, 
 said : — " I think that an injunction ought not to be granted 
 against a man unless he has done somethino- which he 
 ought not to have done, or permitted something which he 
 ouglit to have prevented. Now, a master who comes on 
 board ought not to be answerable on the ground that, when 
 
 (/) M. Di^'. 506. (n) IJetts v. Willmotl, L. R., 
 
 (m) The Electric Telegraph Co. G Cli. Aj.y). ( "as. 239. 
 V. Xott, 2 Coop. 11. (o) L. R., 12 Ch. D. 13.
 
 THE REMEDY INJUNCTION. £01 
 
 lie takes the command, there is on board a pump which 
 infringes the patent. He does not, owing to his qualified 
 possession, become at once an infringer. He had no power 
 to take a pump out of the ship ; he had nothing to do with 
 putting it there, and he was not wrong in allowing it to 
 remain there, for he could not lawfully remove it. An 
 injunction, therefore, can only be granted on the principle 
 of quia timet, and in applying that principle I think that it 
 would be a right exercise of the discretion of the Court not 
 to grant an injunction against a master who has done 
 nothing wrong when there is no difficulty in finding and 
 suing the owner of the ship." 
 
 The Court, however, seem to have been of opinion that 
 the ground upon which an injunction should be granted is 
 not whether the defendant has done anything wrong or not, 
 but whether there was evidence of an intention to use the 
 patented invention. The Court held that the circumstances 
 of the case showed an intention in the captain to use the 
 invention. 
 
 No injunction will be granted where the patentee has 
 not proceeded with reasonable speed to prosecute in- 
 fringers (^9). But in cases where there are several in- 
 fringers he is not justified in commencing a vast multitude 
 of actions and applying for injunctions in each {q). His 
 proper course is to " select that which he thought the best 
 in order to try the question fairly, and proceed in that case 
 to obtain his interlocutory injunction. He might write at 
 the same time to all the others who were in siraili casu, 
 and say to them ; ' Are you willing to take this as a notice to 
 you that the present case is to determine yours ? Other- 
 wise I shall proceed against you by way of interlocutory 
 injunction ; and if you will not object on the ground of 
 delay, I do not mean to file bills against all of you at once. 
 
 ( p) Losh V. Hague, 1 Web. P. Beav. 1. 
 C. 201 ; Bacon v. Jones, 4 My. & {q) Foxwell v. Webster, 3 N. R. 
 
 Cr. 438; Bridson v. Benecke, 12 103, at p. 180.
 
 202 THE LAW OF PATENTS. 
 
 Am I to understand that you make no objection of that 
 kind ? If you do not object I shall file a bill against 
 only one of you/ I do not think any court could 
 complain of a patentee for taking the course I am 
 suggesting '' (r). 
 
 Where machines have been manufactured or articles made 
 in infringement of patent rights, an injunction will be 
 granted to prevent their use or sale even after the patent 
 has expired (s). 
 
 The injunction falls with the expiration of the 
 patent (t). 
 
 After trial and judgment, and upon application for a 
 2-)erpetual injunction, when the nature of the infringing 
 matter will permit of it, an order will be made that the 
 articles (machinery or otherwise) be delivered up to the 
 plaintiff or destroyed (u). This was done in Plimpton v. 
 /-^ -X^ G. MalcolTYison (supra) ; the reference to this cause is M.E., 
 28th Jan., 1876, B. 381. An inquiry will, when necessary, 
 be directed as to the articles manufactured which are in the 
 defendant's possession, and that they be destroyed, Betts v. 
 De Vitre, V.-C. W., 1865, A. 119. The defendant will 
 also be ordered to make discovery upon oath of the articles 
 or machinery which he may have in his possession, and 
 Avhich infringe the plaintiff's patent, so that they may be 
 delivered up and destroyed ; this was done in Tangyc v. 
 Scott, V.-C. W., 12th Feb., 1866, B. 461. The right of 
 property in the articles which infringe the patent remains 
 
 (r) Per Sir W. Page-Wood, also Prices Patent Candle Co. v. 
 
 V.-C, Bovill V. Crate, L. 11., 1 Eq. Pamven's Patent Candle Co., 4 K. 
 
 at p. 391. See also Hancock v. ik J. 727. 
 
 Afonlton, M. Di^^ 506 ; ,Svu<h v. (() Daw v. JiJleT/, L. R., 3 Eq. 
 
 7'he London ami Stuth WiKtern 49G. 
 
 Rail. Co., Kay, 408. {u) Frcarsonx. Lor, L. R., 9 Ch. 
 
 («) Cro.<(.<f/('i/ V. Beverley, 1 Web. D. ut p. G7 ; but see United Tele- 
 
 P. C. 119; CrnssUy v. The Derby photie Co. v. London d- Globe Tele- 
 
 aa^ TA/ihlCo., 4 L. J., Ch. 25. See phone Co., 2G Ch. D. ut p. 776.
 
 THE REMEDY DAMAGES. 203 
 
 in the infringer, altliough the Court may order the articles 
 to be destroyed {x). 
 
 These mandatory orders are never made except after 
 trial, and when the plaintiff has fully established to the 
 satisfaction of the Court the validity of his patent and the 
 fact of the defendant's infringement. 
 
 An injunction having been granted to restrain the 
 defendant from infringing a patent for the manufacture of 
 telephones : It was held to be a breach of the inj unction to 
 sell the separate parts of the patented telephones which 
 anyone might put together (y). 
 
 DAMAGES. 
 
 In addition to an injunction, the defendant may be en- 
 titled, when there has been actual infringement as distin- 
 guished from an intention to infringe, to either damages or 
 an account of sales and profits. 
 
 He is not entitled to both damages and an account, 
 but he must elect which he will take (z). An account of 
 sales and profits amounts to a condonation of the 
 infringement (a). 
 
 The measure of damage is the loss which the plaintiff 
 has actually sustained, irrespective of the costs of the 
 action. The question of damages is not synonymous with 
 an account of profits, the basis of calculation being entirely 
 different. In calculatino- damao;es, the Court will not take 
 into account any manufacturer's profit which the plaintifi' 
 might have made (6). But it is submitted that considera- 
 
 (x) Vavasseur v. Krupp, L. R., L. R., 5 H. L. 1 ; JVeedham v. 
 
 9 Ch. D. 351. Oxley, 11 W. R. 852. 
 
 (y) United Telephone Co. v. Dale, (a) Per Lord Westbury, Neilson 
 
 25 Ch. D. 778. v. Belts, supra. 
 
 (2) De Vitre v. Belts, L. R., (6) Penn v. Jack, L. R., 5 Eq. at 
 
 € H. L. 319 ; NeUson v. Belts, p. 86.
 
 204. THE LAW OF PATENTS. 
 
 tion should be had where the patentee is the manufacturer, 
 and has granted no licenses, to the damage which he has 
 sustained by reason of the commercial competition to 
 which he has been subjected. 
 
 In estimating damages, the Court will inquire into the 
 extent of infringement and the amount of goods manu- 
 factured by the defendant, care being taken to distinguish 
 this inquiry from that as to sales and profits. In the one 
 case the quantity of business is inquired into, in the other 
 the amount of profit. It is evident that the smaller the 
 price at which the articles have been sold, the greater the 
 damage to the patentee by reason of the market deprecia- 
 tion of the profits to be made by his invention by reason of 
 the competition. 
 
 In Betts v. De Vitre (c), Sir W. Page- Wood, V.-C, 
 said : — " I confess it appears to me that if the damages are 
 to be assessed, it would be proper to take the identical 
 course that was taken in Hills v. Evans, for this reason, 
 that damages of this description, namely, damages for the 
 infringement of a patent where there has been no license 
 granted at any time for the use of that patent, can only be 
 ascertained on those very vague and guess-like data which, 
 it appears, juries have been obliged to act upon in 
 ascertainino- what the actual loss has been that has occurred 
 to a patentee by the user by some wrongdoer of his patent 
 right. The difiiculty one sees must be very great where 
 there are no licenses existing. Where there are licenses 
 existing, the difficulty would be next to nothing, because 
 you would simply ascertain the amount sold, and fix the 
 wronfjdoer with that amount." 
 
 In l*enn v. Jack, licenses had been granted, and the 
 same Vice-Chancellor fixed the amount of damage at the 
 amount which would have been received had the defendant 
 been working under a license. 
 
 (c) .34 L. J., rh. 291.
 
 THE REMEDY DAMAGES. 205 
 
 In tlie United Horse-nail Co. v. Stewart {d), a Scotch 
 case, the Lord Ordinary (Kinnear) said: — " It appears to 
 me to be a fair enouo;h ground for estimatinoj their damages 
 to take the whole profits which they would have made upon 
 the sales actually made by the defenders, if the defenders 
 had not interfered so as to prevent the pursuers effecting 
 those sales themselves. That would mean the difference 
 between the cost of manufacture and the prices at which 
 they were selling at the time to their agent." The learned 
 judge proceeded to state that damages by way of com- 
 pensation for competition were reasonable enough, but that 
 in the particular case before him the evidence did not 
 justify such damages. 
 
 Where licenses have been granted, no account will be 
 taken of profits which have been lost by reason of com- 
 petition (e). 
 
 Where bills to restrain the infringement of a patent have 
 been filed against both the person who manufactures, and 
 the person who uses the article, and issues of fact have been 
 found for the plaintiff, it is the right of the plaintiff to have, 
 not only an account against the manufacturer, but also 
 damages against the person using the article, wherever it be 
 found (/). 
 
 In aid of the inquiry as to damages, directed by the 
 judgment for a perpetual injunction, the defendant must 
 give full discovery, and will be required to set out the 
 names and addresses of the persons to whom machines, 
 made in infringement of the patent have been sold ; 
 but not the names of the agents concerned in the trans- 
 action [g). 
 
 (d) Griffin P. C. 217 ; see as to at p. 85. 
 measure of damages based upon (/) Read note to Penny. JBibby, 
 
 special conditions, United Telephone L. R., 3 Eq. 308. 
 Co. V. Wcdker, 56 L. T. 508. {g) Murray v. Clayton, L. R., 
 
 {e) Penn v. Jack, L. R., 5 Eq. 15 Eq. 115.
 
 206 THE LAW OF PATENTS. 
 
 ACCOUNT OF SALES AND PROFITS. 
 
 In cases where it is deemed to the advantage of the 
 plaintiff, he may elect, in lieu of damages, to take an ac- 
 count of sales and profits ; that is, to condone the infringe- 
 ment upon the footing that the defendant has been acting 
 as the plaintiff's agent in selling or using the invention. 
 
 The plaintiff will not, however, be allowed to claim an 
 account if he has tacitly permitted the defendant to 
 infringe his patent, relying upon an ultimate account of 
 profits. In Crossley v. The Derby Gas Light Co. (h), Lord 
 Brouo'ham said : — " It is a principle of equity, that a party 
 who claims a right should not lie by, and by his silence or 
 acquiescence induce another to go on spending his money 
 and incurring risk, and afterwards, if profit has been made, 
 come and claim a share in that profit without having ever 
 been exposed to share in the losses which might have been 
 sustained. Upon this the defendants rely ; but it was to 
 be considered, on the other hand, whether the plaintiff did 
 not explain the delay which has taken place, and whether 
 the conduct of the defendants has not been such as to lull 
 the plaintiff's suspicions to sleep." 
 
 Prior to the Judicature Acts it was held a rule in Courts 
 of Equity, that in consequence of the terms of 21 & 22 Vict. 
 c. 27, no relief could be awarded for damages or an account, 
 unless an injunction could be granted at the same time. 
 All other relief Ijeing merely incidental to the injunction (i). 
 Thus, where a patent had expired after bill filed, but before 
 an injunction could be granted, the Court declined to con- 
 sider the question of damages (k). But now, in pursuance 
 of sect. 24, sub-sect. G, of the Judicature Act, 1873, a Court 
 of Equity may give full relief ; and so, wherever a court of 
 
 (h) 1 Web. r. C. 120. <k J. 727. 
 
 (i) Price's Patent Candle Co. v. (/c) Betts v Gallais, L. R., 10 
 
 Bauwen'a Patent Candle Co., 4 K. Iv]. 392.
 
 THE REMEDY — ACCOUNT OF SALES AND PROFITS. 207 
 
 law would, prior to the passing of the Act, have granted 
 damages or an account, similar orders will be made by 
 either branch of the High Court of Justice, irrespective of 
 the question of injunction. 
 
 Where it appears at the trial that the defendant has 
 made no profit, although the plaintiff may be entitled to 
 damages, he will not be entitled to an account (l). 
 
 Where the defendant has acted in ignorance of the patent, 
 and before action has offered to submit to an account and 
 to pay to the plaintiff the amount of profits, the Court 
 should exercise its discretion in disallowing costs (m), 
 although it may grant the injunction. In such a case the 
 plaintiff will proceed to an account at his peril, running 
 the risk of nothing being found due. 
 
 The practice of the Courts as to injunctions, damages, 
 and accounts, will be dealt with hereafter under the head 
 of " Practice." 
 
 (I) Bacon v. Spottiswoode, 1 Beav. (to) Kiinn v. D'' Albuquerque, 34 
 
 387. Beav. 595.
 
 208 THE LAW OF PATENTS. 
 
 CHAPTER XrV. 
 
 REVOCATION. 
 
 We have seen tliat the patentee has his remedy in an 
 action for infringemeDt. The public has also a remedy by 
 petition for revocation. 
 
 Sect. 26 of the Act of 1883 provides : — 
 " (l) The proceeding hy scire facias to repeal a 2^cvtent 
 is hereby abolished. 
 
 '' (2) Revocation of a patent may he obtained on peti- 
 tion to the Court. 
 
 " (3) Every ground on ivhich a patent might, at the 
 commencement of this Act^ be rep>ealed by scire facias 
 shall be availoMe by way of defence to an action for in- 
 fringement, and shall also be a ground of revocation. 
 
 " (4) A petition for revocation of a patent may be pre- 
 sented by: — 
 
 " (a) The Attorney-General in England or Ireland, 
 
 or the Lord Advocate in Scotland. 
 " (b) Any 'person autJwrised by the Attorney-General 
 in England or Ireland, or the Lord Advocate 
 in Scotland. 
 " (c) Any person alleging that the patent luas obtained 
 in fraud of his rights, or of the rights of any 
 person binder or through ivhom he claims. 
 " (d) Any 2^^^'son alleging that he, or any 2'>erson 
 under or through ivhom he claims, was the 
 true inventor of any invention included in 
 the claim of the j^atentee.
 
 REVOCATIOX. 209 
 
 " (c) Ani/ person alleging that he, or any iierson 
 under or through whom he claims an interest 
 in any trade, Jmsiness, or manufacture, had. 
 jmhlicly manufactured, used, or sold ivithin 
 this realm, before tlie date of the ixitent 
 anything claimed hy the patentee as his 
 invention. 
 
 " (5) The 2)l(^intiff must deliver with his petition par- 
 ticidars of the ohjections on ivhich he means to rely, and 
 no evidence shall, except hy leave of the Court or a judge, 
 he admitted in proof of any ohjection of which ijarticulars 
 are not so delivered. 
 
 " (6) Particulars delivered may he from time to time 
 amended hy leave of the Court or a judge, 
 
 " (7) The defendant shrdl he entitled to hring in and 
 give evidence in support of the p>ate7it, cmd if the p)laintiff 
 gives evidence impeaching the validity cf the jyctteyit the 
 defendant shall he entitled to reply. 
 
 "(8) Wliere a patent has heen revoked on the gremnd 
 of fraud the comptroller m,ay, on the applicatio7i of the 
 true inventor, made in accordance ivith the jj^^ovisions of 
 this Act, grant to him a patent in lieu of and hearing the 
 same date as the date of revocation of the 2^citent so re- 
 voked, huA the pjatent so granted shall cease on the ex- 
 2Jiration of the term for which the revoked pKitent was 
 granted." 
 
 Prcactically speaking, scire facias had fallen into desuetude 
 before the passing of this Act ; other methods of disputing 
 the validity of patents were found, or thought to be, more 
 to the advantage of persons opposing them. It is presumed, 
 however, that the new procedure will find more favour, 
 being simpler, more speedy, and more similar to the ordi- 
 nary action for infringement than the old action of scire 
 facias. 
 
 The grounds upon which a patent may be revoked 
 are similar to those upon which it might have been can- 
 
 T. r
 
 310 THE LAW OF PATENTS. 
 
 celled by scire facias (a). These are iu the Fourth Institute 
 said to be : " Firstly, when the king by his letters patent 
 doth grant by several letters patent one and the selfsame 
 thing to several persons, the former patentee shall have a 
 scire facias to repeal the second patent ; secondly, when 
 the king granteth anything that is grantable upon a false 
 suggestion, the king by his prerogative jure regio may have 
 a scire facias to repeal his own grant. When the king doth 
 grant anything which by law he cannot grant, he jure regio 
 (for the advancement of j iistice and right) may have a scire 
 facias to repeal his own letters patent." 
 
 And it was held in Sir Oliver Butlers case (h), that 
 " where a patent is granted to the prejudice of the subject, 
 the king, of right, is to permit him on his petition to use 
 his name for the repeal of it in a scire facias at the king's 
 suit, and to hinder multiplicity of actions upon the case." 
 
 Thus it will be seen that formerly any person might, on 
 behalf of the public, proceed by scire facias to repeal a 
 patent, although security for costs was required. Sub-sect. 4 
 of sect. 26 has very considerably narrowed and limited this 
 general right. 
 
 Practically speaking, any ground which may ]3e set up as 
 a defence to an action for infringement may be employed 
 as a ground for revocation — such as that the person to 
 whom the letters patent were granted was not the first and 
 true inventor, or that the invention was not new or useful, 
 or that it was not true that the invention liad not been 
 practised before, or that the said invention did not come 
 within the meaning of the words " a new manufacture," or 
 tliat the specification was insufficient and did not disclose 
 tlie nature of the invention. 
 
 Tlie petition is to be i)resentcd to the High Court of 
 Justire in England or in Ireland. ])y sect. 109 it is pro- 
 vided : (l) " J')-(M-cecli'iif/s in Scvthmd for revocation of a 
 
 (a) ■\ Inat. 88. (J) 2 Vent. .344.
 
 EEVOCATIOX. 211 
 
 'patent shall he in the fonn of an action of reduction at 
 the instance of the Lord Advocate, or at the instance of a 
 jKirty having interest ivith his concurrence, ivhich concur- 
 rence may he given on just cause shoion only!' And in 
 respect to Ireland we find that, by sect. 110, '> All iKirties 
 shall, notwithstanding anything in this Act, have in 
 Ireland their remedies under or in respect of a p>atent 
 as if the same had heen granted to extend to Irekmd 
 only." 
 
 The general result of these sections seems to be that the 
 proceeding for revocation may be taken in any part of the 
 United Kingdom, and that the question may be dealt with 
 by the Courts of either portion independently ; so that it 
 will be possible for letters patent to have been cancelled so 
 far as England is concerned, and yet to continue in force 
 for Scotland and Ireland, and vice versa. 
 
 It will be observed that in sect. 26, sub-sect. 4 (c and d), 
 
 ''Any p>erson alleging that he, &c may petition,^' 
 
 and by sub-sect. (3), any ground which might be available 
 for scire facias may form the ground for revocation. 
 
 In Re Averfs Patent (c), it was held by Stirling, J., and 
 the Court of Appeal, that this applied only to cases of actual 
 fraud, and would not be extended to questions of mistake, 
 though the consequences might be to deprive the inventor 
 of his patent rights. Cotton, L. J., said : — -" If it is made 
 out that the present petitioner, Avery, is a person who 
 brings himself within that clause, and satisfies the Court 
 that the patent was obtained in fraud of his rights, then 
 we should have to go into the other question, namely, 
 whether the patent is or is not good" .... (at p. 325), 
 " an act, to be ' in fraud of his rights,' to my mind must 
 involve an attempt by the agent to deprive the principal of 
 something, or to gain for himself something at the expense 
 of his principal." 
 
 (c) L. R., 36 Ch. D. 307. 
 
 r 2
 
 212 TUK LAW OF PATENTS. 
 
 AVe have dealt with the several grounds of revocation in 
 previous chapters, under the title of Infringement, and it 
 will be uunecessaiy to do more here than to reft-r the 
 reader to them. In a subsecjuent chapter will be found 
 the practice to be observed in the course of proceedings for 
 revocation.
 
 ( ^1^ ) 
 
 CHAPTER XV. 
 
 INTEllXATIOxXAL AND COLONIAL ARRANGEMENTS. 
 
 Sects. 103 and 104 of the Patents, &c., Act, 1883, give 
 power to the Crown to enter into arrangements with foreign 
 and colonial governments with respect to tlie mutual protec- 
 tion of patent rights. And, in respect to any foreign State 
 which has entered into such arrangements, any person 
 who has applied for protection for any invention in any 
 such State shall l3e entitled to a patent for his invention in 
 priority to other applicants, and such patent shall have the 
 same date as the date of the application (a) in such foreign 
 State, provided that the application for letters patent in 
 this country is made within seven months from the date of 
 the application for protection in such foreign State. 
 
 Then follows a provision that a patent granted under 
 such circumstances shall not entitle the patentee to bring 
 actions in respect of infringements which may have 
 happened prior to the date of the acceptance of his final 
 specification. 
 
 It will be dangerous for persons to adopt foreign dis- 
 coveries or inventions before the expiration of the seven 
 months from the date of the foreign application : for, in 
 the event of a patent being applied for under this section, 
 the whole of the capital invested in the adoption of such 
 invention may be found to have been lost. Regard par- 
 ticularly being had to the fact that by sub-sect. 2 any use 
 
 (a) Patents, <tc., Act, 1885, sect. 6.
 
 211 THE LAW OF PATENTS. 
 
 of tlie invention in this country within the seven months 
 by any number of persons will in no way invalidate the 
 patent rights subsequently obtained ; and that the persons 
 who have used the invention will not have obtained any 
 vested ris:hts to continue the use of the invention. 
 
 The application for a patent under this section must 
 be made in the same manner as oi'dinary applications. 
 The section only applies with respect to such foreign 
 States with respect to which her Majesty shall from time 
 to time, by Order in Council, declare them to be appli- 
 cable, and so long only in the case of each State as the 
 Order in Council shall continue in force with respect to 
 that State. 
 
 "Where it is made to appear to her Majesty that the 
 legislature of any British possession has made satisfactory 
 provision for the protection of inventions patented in this 
 country, her Majesty may, by Order in Council, apply the 
 provisions of the last preceding section, with such varia- 
 tions or additions, if any, as to her Majesty in Council may 
 seem fit, to such British possession. 
 
 Orders in Council in pursuance of this section shall have 
 the like effect as if the provisions they contain had been 
 incorporated in the Act. 
 
 I
 
 p lattice, 
 
 — ♦ 
 CHAPTER I. 
 
 ACTION FOR INFRINGEMENT. 
 
 An action for infringement is commenced by writ issued 
 out of the High Court of Justice. 
 
 Subject to the special provisions of the Patent, &c., Act, 
 the rules of the vSupreme Court apply to actions for in- 
 fringement of patents and petitions for revocation («). 
 
 The Avrit may be endorsed merely for damages for in- 
 fringement, or for an account of sales and profits, and 
 it may l^e endorsed for an injunction claiming that the 
 defendant may be restrained from continuing to infringe 
 the patent (h), and for a mandatory order that the de- 
 fendant may be ordered to deliver up to the plaintiff the 
 articles made in infringement of the patent which are in 
 his custody or power, or in the custody or power of his 
 servants or agents, so that they may be broken uj) or 
 destroyed (c). The plaintifl' may not claim both an account 
 of sales and profits and damages for infringement ; the two 
 claims being inconsistent, since, if an account is taken, the 
 infringement is condoned (d). 
 
 Service of a writ in Scotland for an infrino-ement in 
 
 o 
 
 England will be allowed (e). 
 
 (a) Haddan's Patent, 54 L. J. C'h. also Be Vitre v. Letts, L. K., 6 H. 
 126; Griffin, P. C. 108. L. 321 ; NeeJhavi v. Oxley, 11 W. 
 
 (b) Form, p. 287. 11. 852. But see Hills v. Evans, 
 
 (c) Form, p. 287. See Tangtje v. 4 De G. F. & J. 288. 
 
 Stott, 14 W. E. 386 ; Betts v. De (e) Speckhart v. Campbell, Ach- 
 
 Vitre, 34 L. J., Ch. 289. 7iach d) Co., Solicitors' Journal, 
 
 {d) Per Lord Westbury in Neil- Feb. 2, 1884. 
 son V. Betts, L. R., 5 H. L. 1. See
 
 216 PCACTICE. 
 
 CHAriER II. 
 
 PARTIES'. 
 
 The parties to tlie writ may be — as plaintiflfs, any 
 person for the time Ijcing entitled to the benefit of the 
 patent. An ordinary licensee cannot be plaintiff, as he 
 is merely licensed to use, and not entitled to any mono- 
 poly ; but an exclusive licensee may sue, using the name 
 of the grantor of the bcence in the action (a). An assignee 
 may sue in his own name, even though he has acquired 
 the right by assignment of two separate moieties, and the 
 party sued is the original grantee (h). An assignee of a 
 portion of a patent may be plaintiff (c) ; so, also, it is 
 submitted, may an assignee for a place or part of the 
 United Kingdom, under sect. 3G of the Act of 18S3. 
 Assignees or trustees under a bankruptcy petition may 
 sue (d), and an assignee may maintain an action, although 
 the assimnnent has not Ijeen reoistcred (r\ One of several 
 joint owners may recover (/), and one of several co- 
 owners of a itatent has a rig;ht to sue alone for the rccoverv 
 of profits due for the use of a })atent ; and an objection by 
 a defendant that other persons should have been joined as 
 plaintiffs should be made promptly under Rules of Court 
 
 (a) Rnufrd v. La-instcm, 2 H. (</) Jilnxam v. Eh,e, G P.. k C. 
 
 it .M. G2S. lGi». 
 
 {!,) Walton. V. Liratii; 8 ( '. ]'.., (c) Ilassull v. ]Vrijht, I.. ]{., 10 
 
 N. S. 102 ; Elrdric Tihfjraph Co. Vm. 509. 
 V. Bntt, 10 (;. K 8.-58. '( /•) Dnvcnport v. Kkhanh, 3 L. 
 
 (c) Dunnidif: v. Mulhtl^ 7 (.'. I'.., T., N. S. 503. 
 N. S. 209.
 
 PARTIES. 2 1 7 
 
 1875, Old. XVl. rules 13 and 14, and may not be post- 
 poned till the hearing, where no impediment exists to 
 raising the objection at once (fj). 
 
 A mere agent to introduce, sell, and grant licences for 
 the use of a foreign patent in this country is not entitled 
 to take proceedings to restrain infringement {h). 
 
 As defendants, all persons physically infringing, or 
 threatening to infringe, the patent may be joined. An 
 architect, specifying the use of a patent, should not be 
 joined, but the contractor doing the work may (i). The 
 directors of a company may be sued in their personal 
 capacity for an infringement by the servants of the 
 company (k). Where the principals are out of the juris- 
 diction, the court will restrain the manao^er or work- 
 men (I). 
 
 {(/) tShehan v. Great Eastern Jour. 224. 
 Kail. Co., L. W., 16 Ch. D. 59. (A) Betts v. De Vitre, L. R., 3 
 
 (Ji) Adams \. North British Rail Ch. 441. 
 Co., 29 L. T., N. S. 367. (/) See Betts v. Neilson, 13 W. 1?. 
 
 (i) Denley v. Blore, 38 Loud. 804; 12 L. T., N. S. 489.
 
 51S PRACTICE. 
 
 CHAPTER TIL 
 
 IXTERLOCUTORY INJUNCTION. 
 
 An interlocutory injunction may be granted ex parte, 
 after the issue of tlie Avrit, and before service. An ex 
 parte injunction Avill only be granted when it cau be shown 
 that great injury will accrue to the plaintiff by delay, and 
 when he can clearly establish his title and the fact of 
 infringement (a). Interlocutory injunctions are always 
 upon terms as to damages (h). 
 
 Notice of motion having been given, an interlocutory 
 injunction will be granted after appearance, or with leave, 
 upon notice of motion to be served with the writ. 
 
 By sect. 25 of the Judicature Act, 1873, sub-sect. 8 : 
 "A mandamus or an injunction may be granted, or a 
 receiver appointed by an interlocutory order of the Court, 
 in all cases in which it shall appear to the Court to 1)e just 
 or convenient that such order should be made ; and any 
 such order may be made either unconditionally or upon 
 such terms and conditions as the Court shall think just ; 
 and if- an injunction is asked either before, or at, or after 
 the hearing of any cause or matter to prevent any threatened 
 or appreliended waste or trespass, such injunction may be 
 granted if tlie Court shall think fit, whether the person 
 against wliom such injunction is sought is or is not in 
 possession under any claim of title or otherwise, or (if out 
 of possession) does or does not claim a right to do the act 
 
 {a) fJardn^r \. Broadbent/l inw, {!>) Graltam v. Cami'hcll, L. K., 
 
 N. 8. 1011. 7 Ch. 1). 400.
 
 INTERLOCUTORY INJUNCTIOX. 219 
 
 souglit to he restrained under any colour of title ; and 
 whether the estates claimed Ijy both or either of the parties 
 are legal or equital)le." 
 
 Ord. L. rule 6, directs that : " An application for an 
 order under sect. 25, suh-sect. 8, or under rules 2 or 3 of 
 this order, may be made to the Court or a judge l^y any 
 party. If the application be by the plaintiff for an order 
 under the said sub-sect. 8, it may be made either ex parte 
 or with notice " 
 
 A master of the Queen's Bench Division has no power to 
 grant an injunction. Ordei^ LIV. rule 12. 
 
 An interlocutory injunction will only be granted when 
 there is a fair prima facie case of validity. This may be 
 made out by long undisturbed enjoyment, or by the 
 question having been previously tried in a court of law (c), 
 or Avhere the defendant has admitted the validity of the 
 patent (cI), or is so placed in his relationship to the patentee 
 as to be estopped from denying its validity (e). 
 
 In Hayivard v. The Pavement Light Co. (/), Kay, J., 
 said, when granting an interlocutory injunction, " The 
 invention has been patented so long ago as 1871, and the 
 validity of the patent has been established by the Court of 
 Appeal." 
 
 In Jachson v. Needle (</), Baggallay, L. J., said, " The 
 Court abstains from interfering by injunction in the case of 
 a recently dated patent where there is really a substantial 
 question to be tried." See also the law and authorities 
 quoted ante, p. 194 et seq. 
 
 (c) Dudgeon v. Thovij^son, 22 (d) Birds v. Me/Ior, 26 Loud. 
 
 W. R. 464 ; Plimpton v. Med- Jour. 268. 
 
 co/?HSOH, L.R. 20 Eq. 37; Co/(?«n/v. {e) Clarke \. Fergiisson, 1 Gift". 
 
 Allison, 4 ]\Iy. & Cr. 487 ; Stephens 184. 
 y. Keating, 2 Ph. 333; Bridson v. (/) Griffin, P. C. 12t. 
 
 Mc Alpine, 8 Beav. 229; Bridson (g) Griffin, P. C. at p. 133. Sec 
 
 V. Benecke, 12 Beav. 1, and cases also Lister v. Norton, Griffin, P. C. 
 
 quoted s«^)ra, under the head '-'In- 148. 
 junction."
 
 220 PRACTICE. 
 
 The iuj unction may Le refused upon terms that the 
 defendant keep an account pendente lite (h). But it is 
 open to the plaintiff to show that if he succeeds the 
 defendant's position is such that he will be unable to pay 
 the damages or the amount of the account {i). 
 
 The evidence to be used upon an application for an 
 interlocutory injunction is upon affidavit. 
 
 The affidavit should clearly point out in what the 
 alleged infringemejit consists (k). If the plaintiff' is the 
 first inventor, he must distinctly swear to the fact, as also 
 to the novelty and utility of the invention, and to the due 
 filing of a sufficient specification (1). If the plaintift' is an 
 assignee he must swear to the best of his belief {m). The 
 affidavits in either case must state the facts as at the time 
 of swearing, and it is not sufficient to swear that the inven- 
 tion was believed to be new when the patent was granted {n). 
 An injunction granted prior to statement of claim will be 
 dissolved if the statement of claim when delivered docs not 
 agree with the affidavits upon which the injunction was 
 granted (o). 
 
 Tu the Chancery Division it is the practice to hear appli- 
 cations for interlocutory injunctions as motions in Court. 
 In the Queen's Bench Division the application is heard by 
 the Judge in Chambers upon a summons. 
 
 Forms of injunction ui)on undertaking as to damages ( p), 
 and of order refusing iujuiiction u})on terms («y), will be 
 found ill the Ap})endix. 
 
 (//) Jones V. IWirce, 2 Coop. .08 ; ()'2i ; Stiirt^ v. De la Rue (per Lord 
 
 MitchM V. Barker, 30 Lond. Jour. Lyndliurst), .") lUiss. 329 ; Whitton 
 
 531 ; Mantz v. Gr'nf'll, 2 Coop. v. Jhuiukjs, 1 Dr. & S. 110. 
 
 Gl (ii.). {in) (Jardner\.BriHuU»-iit, 2 Jur., 
 
 (i) Ntimll V. ]VlUnn, 2 Do C, N. S. 1011. 
 
 M. & G. 282. {li) Hilly. Th<n.ijm,ii,\]\\<.n:Ci-2\. 
 
 {/:) Hill V. 77io)tij)SO)i, '.) .Men {(>) Stoclciifj v. Llcwclli/ii, .'5 L. '\\ 
 
 G21 ; Jhtts V. Willwod, [.. I{., G 33. 
 
 Ch. 239. {]') V^^nn G, j). 200. 
 
 (I) Hill V. Th<,mpyf<-n, 3 M.r. (7) F. hm 7, p. 201.
 
 •?o 
 
 CMArTER IV. 
 
 STATEMENT OF CLAIM. 
 
 The Rules of Court of 18S3 have rendered the form 
 of pleadings of less importance than hitherto. Ord. XIX. 
 rule 2b', provides : "No technical objection shall l)e raised 
 to any pleading on the ground of any alleged want of 
 form;" but by rule 27 the power of the Court to strike 
 out pleadings on the grounds that they are unnecessary, 
 scandalous, or embarrassing, is preserved. 
 
 Ord. XIX. rule 4, requires all material facts to be 
 pleaded, and prohibits the pleading of evidence. Rule 5 is 
 as follows : — "The forms in Appendices (C, D., and E.), 
 when applicable, and when they are not applicable forms of 
 the like character, as near as may he, shall be used for all 
 pleadings, and where such forms are applicable and suffi- 
 cient, any longer forms shall be deemed prolix, and the 
 costs occasioned by such prolixity shall be disallowed to or 
 borne hy the party so using the same, as the case may be." 
 
 The forms mentioned relate to pleadings in an action for 
 the infringement of a patent, but there is no provision made 
 for the case where infringement has only been threatened, 
 nor for the case when a mandatory order or an account of 
 sales and profits is required (a). 
 
 It w^ill be observed that the statement of claim in patent 
 cases, which is rendered obligatory by Ord. XIX. rule 5, 
 contains no allegation as to the matters going to constitute 
 the validity of the patent, nor does it give the date, time, 
 or place of the infringement ; but it refers to the particulars 
 of breaches which are delivered "herewith." 
 
 ((/) See J<'orm, p. 294.
 
 22^ PEACTICE. 
 
 CHAPTER V. 
 
 PARTICULARS OF BREACHES. 
 
 Particulars of breaches were required to be delivered 
 in every action for the infringement of a patent by sect, 41 
 of tlie Patent Law Amendment Act, 1852; and now by 
 sect. 29 (1) of tlie Act of 1883, it is provided : — ''In an 
 action for infringement of a patent tlie plaintiff must 
 deliner with his statement of claim, or by order of the 
 Court or a judge at any subsequent time, particidars of 
 the breaxhes complained of; (4) at the hearing no evidence 
 shall, except by leave of the Court or a judge, be admitted 
 in proof of any alleged infringement, or objection of 
 ivhich particidars are not so delivered ; (5) particulars 
 delivered may be from time to time amended by leave of 
 the Court or a jvdge." 
 
 Particulars of breaches are particulars of the times, places, 
 occasions, and manner in which the plaintiff says the defen- 
 dant has infringed liis letters patent. Tlie defendant must 
 have full, fair, and distinct notice of the case to be 
 made against him («'/). In JJaffcy v. Kyit(jck{b), Sir 
 James J^acon, V.-C, said : "All that is required and pro- 
 vided l)y the Patent Law Amendment Act, 1852, which 
 has made no alteration in the practice to be observed in 
 tliesc cases, is tlint the defendants shall not be taken by 
 Huri)ri.sc, and it is the duty of the judge to take care that 
 by the particulars of Itreaches they shall have full and fair 
 notice of the case that they will have to meet."' 
 
 (a) Nrerfham v. 0.'%, 1 If. <k M. 2-1H. (h) L. T?., 10 E.]. at ].. 2.31.
 
 PARTICULARS OF BREACHES. 223 
 
 It liad undoubtedly prior to the passing of the Patent 
 Law Amendment Act, 1852, been the practice of the Courts 
 to compel plaintiffs to give particulars of breaches, and the 
 cases which were then decided as to the sufficiency of 
 particulars are applicable now ; for then, as now, the 
 object was that tlie defendant should be warned with 
 reasonable certainty of the case that was to be made 
 against him. 
 
 The following clause was ordered to be struck out of the 
 amended particulars (c) : " And the plaintiffs state these 
 particular instances by Avay of example only, and not so 
 as to preclude them from proving any of the infringements 
 mentioned in the former particulars of Ijreaches." 
 
 If the particulars delivered are too general the defendant 
 should apply for further and better particulars. 
 
 If at the trial evidence is tendered which comes within 
 the literal meaning of the particulars it will be admitted, 
 notwithstanding that the particulars are too general, as the 
 defendant should have objected to the particulars, and 
 not wait until the trial to take his objection [d). 
 
 The plaintiif having delivered particulars of breaches 
 specifying certain sales by the defendant of rollers, and in 
 particular to Shaw and Smith, the defendant, in answer to 
 interrogatories, admitted sales to Hirst. Fry, J., in giving 
 judgment, said : " In this case I think I must admit the 
 evidence tendered in respect of Hirst's case. It is said that 
 in respect of those cases which are not mentioned by name 
 in the particulars of breaches, the plaintiff cannot give 
 evidence. It may be that the particulars were not suffi- 
 cient, or tended to embarrass. But the defendant did not 
 apply for amended particulars, according to the case of 
 Hull V. BoUand. It appears to me I have to inquire what 
 is the meaning of the particulars. I find the case of Hirst 
 
 {c) The Patent Type Founding (d) Hull v. Holland, 25 L. J., 
 
 Co. V. Richards, 2 L. T., N. S. Ex. 304. 
 359.
 
 224 PRACTICE. 
 
 is witliin tlie literal meaning of the particulars. If I had 
 found that the case of Hirst was likely to create surprise, 
 or likely to introduce any point not raised by Smitlis or 
 Shaw's case, I should probably have given an opportunity 
 to the defendant to brino; fresh evidence. I have asked 
 whether there is any witness not here whom the defendants 
 would desire to bring in respect of Hirst's case, and have 
 received no satisfactory answer on that point, and must 
 assume there is no such witness " [e). 
 
 AVhen the patent consists of two or more processes, or 
 distinct and separable inventions, particulars of breaches 
 should distinguish which of the processes it is alleged 
 has been infringed, and should particularly indicate what 
 parts of the defendant's machine or manufactured article are 
 claimed to constitute an infringement ; but when the pro- 
 cess was one entire invention, the Court declined to compel 
 the plaintiff to point out the particular parts of the specifi- 
 cation which were alleged to be infringed. Jervis, C.J., 
 said : " If the two processes described in the specification 
 are wholly distinct from each other, and the defendant's 
 process may 1)e an infringement of the one and not of the 
 other, he ought to have better particulars; but if the whole 
 is substantially one process, he is not entitled to them . . . 
 We must not make the particulars more complicated than 
 the specification (/)." 
 
 In Ehcij V. Jji'f/('r{(/), an action for infringement of a 
 patent for " improvements in the manufacture of lace, in 
 twist lace machinery, and in apparatus employed therein," 
 the following particulars of l)reaclies were held by Pear- 
 son, J., to 1)C sufficient : — "The defendant has infringed l)y 
 tlie production in a twist lace machine, or in twist lace 
 machines, of lace fabrics in tlie manner described in the 
 
 {r) Sylcn V. Ih.wnrlh, L. It., iL' fjraph Co. v. Nott, 4 C. B. 462, 
 
 Eq. 82G. ;ui(l TihjhmcuL^s Sand Blaat Co. v. 
 
 (/) Tall,ol V. L.I Horhr, i:. C. I',. Wright, (Jrilfiii, V. C. 210. 
 
 .",10. Soc iilso Thr Ehclnr Trlr- (;;) Criiriii, I', r. !)G.
 
 PARTICULARS OF BREACHES. 225 
 
 specification of the said patent, page 3, line 22 to page 9, 
 line 39, or in a manner only coloiirably differing therefrom; 
 and by the use of the improved combination of apparatus 
 therein described, and also in particular by the pi'oduction 
 in a twist lace machine, or in twist lace machines, of fabric 
 known as 'Double tie Swiss Net' in the manner described 
 in the specification of the said patent, page 6, line 57 to 
 page 7, line 38, or in a manner only colourably differing 
 therefrom, and by the use of the improved combination of 
 apparatus therein described." 
 
 Further particulars of breaches will sometimes be 
 postponed to discovery on the ground that the defendant 
 knows the breaches which he has committed better than 
 the plaintiff (A). 
 
 Particulars of breaches, as we have seen, may also be 
 ordered in actions which are not strictly actions for the 
 infringement of patents ; this is done under the ordinary 
 jurisdiction of the Court (i). In an action charging that 
 the defendant falsely and maliciously wrote and told persons 
 who had bought certain machines of the plaintiffs that the 
 machines were infringements of his, the defendant's patents^ 
 the defendant having pleaded not guilty, the Court ordered 
 the defendant to deliver particulars, showing in what parts 
 the plaintiff's machines were an infringement of the de- 
 fendant's patents, and pointing out by reference to the 
 page and line of the defendant's specifications, which part 
 of the inventions therein described he alleo^ed to have 1)een 
 infringed {k). 
 
 (h) Russell V. Hatfidd, Griffin, P. C. 2G9. 
 P. C. 204. {k) Wren and others v. Wti/dy 
 
 {{) Perry v. Mitchell, 1 AVeb. L. R., 4 Q. B. 213. 
 
 T.
 
 2:26 PRACTICE. 
 
 CHAPTER \I. 
 
 STATEMENT OF DEFENCE. 
 
 The statement of defence in patent actions is now, 
 "under tlie Rules of the Supreme Court, 1883, a very brief 
 and concise document, giving no particulars or details 
 whatever, and remitting tlie plaintiff to the particulars 
 of objections, and the answers to the interrogatories for 
 information as to the case which is to be made ao-ainst him. 
 Under Ord. XIX. rule 5, the form given in Appendix (D.) 
 sect. VI. is rendered oljligatory. That form merely gives 
 headings of defence which is all that is to be allowed ; for 
 instance: — "(l)That the defendant did not infringe the 
 patent ; (2) The invention was not new ; (3) The plaintift 
 was not the first and true inventor ; (4) The invention 
 was not useful ; (5) The patent was not assigned to the 
 plaintiff." And to these might l^e added : — That the title 
 did not disclose the nature of the invention {a) ; that the 
 title, the provisional specification, and the complete 
 s})ecification, or any two of them, did not substantially 
 refer to the same invention {Ij) ; that the specification was 
 ]iot sufficient (c) ; that tlie claim in the specification was 
 not sufficient to distingjuish what was new from what 
 was old ((/) ; that the patent was obtained in fraud of the 
 defendant, as, for instance, when a person employed to 
 carry out or assist in experiments, aj^plies for letters patent 
 ]]imsolf, or where the patentee has obtained the invention 
 from the confidence of tlie defendant. 
 
 i'l) Auto, i>. GO ct scfj. ('•) Ante, pp. 8G— 94. 
 
 IJi) Antf, p. G7 ct HO(i. ('/) Ante, \\ 05 ct sccj.
 
 STATEMENT OF DEFENCE. 227 
 
 It will 1)0 observed that any one of these defences will 
 be sufficient to constitute a complete defence to the action ; 
 and that the greater portion of them are of a nature to 
 require elal)orate and costly evidence to prove or disprove 
 them. Too much care cannot, therefore, be taken in 
 preparing a statement of defence to avoid setting up 
 defences which it is not expected will be satisfactorily 
 proved at the trial, regard being had to the provisions of 
 the Eules of 1883 as to costs; otherwise, oven if the 
 defendant succeeds in the action, ho mny l^e mulcted in 
 heavy costs to the other side. 
 
 A statement of defence alleged that if the specification 
 were construed so as to make the defendant an infringer, 
 the claims of invention would be bad for want of novelty, 
 as including matters described in certain specifications 
 (stating them). North, J., refused to strike out j)ar. 2 
 under Ord. XIX. rule 27 ; the Court of Appeal dismissed 
 the appeal with costs {e). 
 
 A statement of defence admitted infrino-ement in ten 
 instances and no more, the plaintiffs elected to move for 
 judgment upon such admissions ; held that they were 
 entitled to an enquiry as to damages as to those ten 
 instances of infringement and no more, and that all 
 evidence as to any other instances of infringement alleged 
 to have been committed l:)y the defendant must be 
 excluded (_/). 
 
 Where the defendants in an action for infringement have 
 been indemnified by another person or Company, such 
 other person or Company may he joined as a third party 
 under Ord. XVI. rule 48, of the rules of the Su23reme 
 Court {[/). 
 
 (e) Iloclinr/ V. Ilocl-ing, Griffin, {rj) Edison and Swan United 
 
 P. C. 129. mectric Light Co. v. Holland, L. R., 
 
 (/) United Telephone Co. v. 33 Ch. D. 497. 
 Domhoe, 31 Ch. D. 399.
 
 2^s rr.ACTiCE. 
 
 CHAPTER VII. 
 
 PARTICULAES OF OBJECTIONS. 
 
 Sect. 21, sub-sect. (2) of the Act of 1883, provides:— 
 *' The defeiidant must deliver with his statement of 
 defence, or by order of the Court, or a judge at any 
 suhsequent time, j^ctrticulars of any objections on ivhich he 
 relies in support thereof; (3) If the defendant disputes 
 the validity of the patent, the particulars, delivered by 
 him, must state on what grounds he disputes it ; and if 
 one of those grounds is ivant of novelty, must state the 
 time cmd place of the previous publication or user cdleged 
 by him; (4) At the hearing, no evidence shall, except 
 by leave of the Co^i.rt, or a judge, be admitted in proof 
 of any alleged infringement or objection, of ivhicli j^cir- 
 ticulars are not so delivered; (5) Particidars delivered, 
 may be from time to time amended^ by leave of the 
 Court, or a judge ; (G) On taxation of costs, regard shall 
 be had to the ^^cirticidars delii^ered 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 cert if ed by the Court or 
 a judge to hare been p)'i'Oven, or to have been, reasonable 
 and projK'r, without regard to the gene)'(d costs of the 
 ease." 
 
 Tliis last sul)-scction will make it imperative ujioii the 
 ]ilaintiff or (hfcjidant, who has succeeded in an action, 
 to ohtain a certificate from the judge wlio lias tried the 
 ca.sc tliat eacli one of the i»nrti<'idars delivered hy liini
 
 TARTICULAUS OF OBJECTIONS. 229 
 
 lias been proved or ^Yas reasonable and proper. It will 
 be observed that the words of the section are " sIkaU not 
 be allowed any costs ; " this leaves no discretion in tlie 
 Court except as to certifying. 
 
 Ord. XIX. rule G, of tlie Eules of the Supreme Court, 
 18S3, provides: " In all cases in which the party pleading 
 relies on any misrepresentation, fraud, breach of trust, 
 wilful default, or undue influence, and in all other cases 
 in which particulars may be necessary beyond such as are 
 exemplified in the forms aforesaid, particulars (with dates 
 and items if necessary) shall be stated in the pleading : 
 j)rovided that if the particulars be of debt, expenses, or 
 damages, and exceed three folios, the fact must l)e so 
 stated, and a reference to full particulars already delivered 
 or to be delivered with the pleading." 
 
 It is not easy to reconcile the practice under this rule 
 with the language of the 29th sect, of the Patent Act, or, 
 indeed, with the form of defence given in the form to 
 the rules cjuoted above. Ord. XIX. rule 6, provides that 
 particulars shall be incorporated with the pleading ; on the 
 other hand, the form and the Patent Act seem to indicate 
 a separate document. Hitherto the practice has been to 
 deliver a separate document, and it is apprehended that 
 when the balance of convenience is considered the Courts 
 will hold that in respect of a patent action the practice has 
 remained unchanged. 
 
 The particulars of objection may allege that the in- 
 vention was not ncAV at the date of the patent. It is 
 not necessary for every one of two or more defendants 
 defending in the same interest to deliver particulars of 
 objections (a). 
 
 Particulars of breaches must be distimyuished from 
 particulars of objection for want of novelty. In the latter 
 case the particular instances may not be within the 
 
 («) Sviith V. Cropper, 10 App. Cas. 249, reversing 2G Cb. D. 700.
 
 230 PRACTICE. 
 
 knowledge of the patentee and must be specified, in tlie 
 former, the defendant must know whether and in Avhat 
 respect he has been guilty of infringement (6) . 
 
 Particulars stated that " A particular improvement had 
 been used by A. B. (giving names and addresses), and divers 
 other people within this kingdom and elsewhere.'' The 
 judges struck out the words '■'and divers other ijeople" (c). 
 
 The words "carriage builders generally throughout Great 
 Britain " do not sufficiently comply with the statute, nor 
 do the words " used and applied by carriage builders gene- 
 rally ; " and the words " in or near London, in or near 
 Liverpool, &c., and in or near various other of the principal 
 towns of Clreat Britain," are too general ((/). 
 
 Vice-Chancellor Sir W. Page-Wood said in Morgan v. 
 Fuller (d) : " An allegation of general user does not of 
 course admit of being met precisely .... The real object 
 is to secm'e to both parties a fail* trial " (t'). 
 
 In Flower v. Lloyd {/), Field, J., said : " I cannot follow 
 the cases which have been cited ; we have advanced in our 
 ideas since they were decided (g). If the defendants knew 
 that their processes have been used by other persons in 
 London and Birmingham, besides those specified, they must 
 know the persons by whom they have been used, and must 
 give more specific information. I do not say that they need 
 give the name and address of every such person, but they 
 must give fair information. If they can give no further 
 information, the words in question are useless, and too in- 
 definite, and must be struck out." 
 
 Prior user. — The objection on the ground of prior user 
 
 (b) Ud<jard V. Bull, 11 A p. Cas. Web. P. C:. 54t ; Holland v. Fox, 
 
 648, P. C. 1 C. L. R. 440 ; Palmer v. Cooiyer, 
 
 {c) Fisher v. Dewid, 1 Wcl). P. Ex. 231. 
 
 C, 551 (n.). (/) Solicitors' Journal, 1S7G, p. 
 
 {d) Morgan v. Fidbr, L. R., 2 SCO. 
 
 Efj. 207. (//) Baitlei/ v. Ki Ujhlcy, 7 M. & G. 
 
 {() Sec also Jones v. Berber, 1 052 ; Palmer v. Wagstaff, 8 Ex. 840.
 
 PARTICULARS OF OBJECTIONS. 231 
 
 must state the time and place ^vlien sucli user occurred ; 
 but it will be observed tliat the persons by whom used is 
 not mentioned in sub-sect. (3). The Act, however, does 
 not direct that such particulars shall not be required. The 
 Patent Law Amendment Act, 1852, sect. 41, required that 
 the place of prior user should be given, and was silent as to 
 times or persons. Notwithstanding this, in Palmer v. 
 Coo2)er(h), Baron Alderson went even further than to 
 require the names of the persons who had used the inven- 
 tion, and the present addresses of such persons were 
 ordered to be given, " As otherwise the plaintiff would not 
 know where to go for his evidence/' The object of par- 
 ticulars is, in the words of Tindal, C.J. (?'), " Not, indeed, 
 to limit the defence, but to limit the expense of the 
 parties, and more particularly to prevent the patentee from 
 being upset by some unexpected turn of the evidence. 
 Under the fifth section (5 & 6 Will. 4, c. 83), therefore, 
 it was intended that the defendant should give an honest 
 statement of the objections on which he means to rely." 
 In Palmer v. Cooper (h), Parke, B., said : " The defen- 
 dant's particulars ought to give the plaintiff such information 
 as will enable him to make the necessary inquiries at the 
 place named.'' 
 
 It will be evident, therefore, that there are cases where 
 to omit giving the names and addresses of the persons 
 who are alleged to have anticipated the invention w^ould 
 be to supply the plaintiff with objections which would be 
 practically useless. 
 
 There are cases where the names and addresses have 
 been refused. In Carpenter v. Walker (Z), the objections 
 
 {h) Ex. 231. See also 5w/;iO(5 {i) Fisher v. Deivkk, 1 AVeb. P. 
 
 V. Mackenzie, 4 Biug. N. C. 132; C. 267. 
 Gcdloivay V. Bkaden, 1 Web. P. C. {k) 1 Web. P. C. 2G8(u.). 
 
 268 (n.).
 
 232 PEACTICE. 
 
 stated tliat the inveution had been used by "tlie defendant 
 and divers persons." It was refused to order tbe defendant 
 eitlier to give the names and addresses of the " divers 
 persons/' or to have those words struck out. 
 
 It may be argued that the reason of such refusal was 
 that a disclosure was required of the AAitnesses and case 
 of the defendant. It is obvious that, although it is a 
 recognized j^rinciple that one litigant shall not be per- 
 mitted to inquire as to what witnesses the other is about to 
 caU at the trial, still that by far the more important 
 principle is that neither party should be taken b}' surprise, 
 and that the plaintiff should have a fair opportunity of 
 critically examining every alleged anticipation which may 
 be attempted to he established against him. 
 
 It does not of necessity follow that persons who have 
 anticipated the invention should be the only and necessary 
 witnesses of such anticipation. On the whole, therefore, it 
 is submitted that names and addresses of such persons 
 should be given in particulars of objections. 
 
 General words are inadmissible in particulars ; for 
 instance, expressions such as " and divers other people " (/), 
 and " Inter alia at Sheffield, Birmingham, and London " (m). 
 But in Bentley X. Keigldey [n), Mr. Justice Maule, under 
 special circumstances, allowed the words " and others " to 
 be sufficient. 
 
 AVhen the allegation of the defendant is that the patent 
 is void Ijy reason of a portion of the described invention 
 being old, the particulars should clearly distinguish which 
 part is alleged to be old, as well as the times and places of 
 prior user (i>). 
 
 {I) Fisher V. Dewid; 1 Web. 1'. (;t) 7 M. A G. G.".2. See also 
 
 C. o.tI (n.); Galloxvay v. lileaden, Jones v. Ikrger, 1 Web. P. C. 549. 
 
 1 Wcl). P. C. 2G8 (n.). (o) Heath v. Vmvin, 10 M. it W. 
 
 (» 7/o//r/»r/v./'o.r, 1 W. Pv. 448; G84; Rm$cU v. Lahom, 11 ^r. k 
 
 1 C. L. R. 440. W. 047.
 
 PARTICL'LAKS OF OBJECTION.S. 233 
 
 Evidence will be admitted at the trial, provided the 
 language of the particulars of objections is large 
 enough to admit it ; for instance, if the plaintiff has 
 allowed such words as " and elsewhere " to stand until the 
 trial, the defendant will be allowed to give evidence of 
 prior user anywhere (/)). The proper course for the 
 plaintiff to take should the defendant deliver vague par- 
 ticulars is to issue a summons before a judge in chambers 
 for further and better particulars, or, in the alternative, to 
 have the objectionable words struck out (q). 
 
 In Sugg v. Silber {)■), Mellish, L. J., said :— " The autho- 
 rities cited by Mr. Cave'^were cases where objections had 
 been taken to the notices of objection at the time when 
 they were delivered, and further and better particulars / 
 
 were asked for. In my opinion there is a very large dif- ^ 
 
 ference between a case where a judge has been applied to 
 and has ordered further particulars in order to state an 
 objection more specifically, and a case where at the trial 
 the plaintiff asserts that the defendant ought to be pre- 
 vented from availing himself of an objection. It is per- 
 fectly obvious tliat, if Mr. Cave was right in saying that 
 the two questions are the same, and that wherever the 
 Court would order further particulars because the objection 
 had not been particularly specified, it would also hold that 
 the party was precluded from raising it at the trial. No- 
 body would be foolish enough to apply to a judge for 
 further particulars." 
 
 Although the objections did not specifically point out 
 that the inveiition consisted of several claims, yet the 
 objection that the invention is not the subject-matter 
 of a patent, is sufhcient to open the objection that the 
 whole, or some particular part of it, is not the subject- 
 
 (p) Hull V. Bolland, 25 L. J., C. 551 (u.) ; Carpenter v. Walker, 
 
 Ex. 304 ; Syhes v. Hoivarth, L. R., 1 AVeb. P. C. 268 (n.) ; Holland v. 
 
 12 Eq. 826. Fojc, 1 C. L. R. 440. 
 
 (q) Fishery. Deidd; 1 Web. P. {r) L. R., 2 Q. B. D. 495. 
 
 fu^ fh'^iix^tu^.
 
 23i rRACTICE. 
 
 matter of a patent, and that conse<iuently tlie patent 
 is bad (s). 
 
 The defendant may, by leave of a Court or judge, from 
 time to time, and upon such terms as under the circum- 
 stances of the case may be deemed equitable, amend the 
 particulars Avhieli he has delivered ; this is done by 
 summons. 
 
 Page- Wood, V.-C, in Fenn v. Bihhy {t), permitted a 
 defendant in his amended particulars, to preface his state- 
 ment of the specific instances of alleged prior user, with 
 the Vv'ords '•' amongst otlier instances ' in order to give 
 him an opportunity to apply for leave to re-amend by 
 inserting any further instances of prior user which he 
 might discover. 
 
 Liberty to amend particulars of objections at the trial 
 was given upon terms in ReuardY. Levenstein {tc) ; but in 
 3I0SS V. MaVings (x), North, J., refused leave, and said: — 
 '•' I could only grant it if the defendant showed that he 
 could not, with reasonable diligence, have discovered the 
 new facts sooner. This he has not done. I must, there- 
 fore, refuse the application." 
 
 The terms upon which amendment is permitted are, 
 first, that the plaintiff should be at liberty, if he pleases, 
 to discontinue the action, and to be in the same position 
 as to costs, as if the proposed amended particulars had been 
 delivered in the first instance (?/), and, secondly, that the 
 defendant should be put under such terms as to costs, as 
 to the judge or Court seem just. The particulars of objec- 
 tions give notice to the plaintifi" of the case which is to be 
 made against him ; thereupon he may discontinue or not, 
 
 («) Sec also JIaU v. Jhllawl, 1 K'trtk Closet Co., L. II., 17 Ch. D. 
 
 H. k, N. 134; and Ntllson v. 139 (n.); and A I'clin;/ \. 3faclaren, 
 
 JIarfv/i/, 1 Web. P. C. 331. same page ; also Edison Telephone 
 
 (I) L. I J., 1 i:<j. 548. Co. V. LuUa Bnhber Co., L. R., 17 
 
 («) II L. 'i'. at p. 50G. Oil. 1). 137 ; and Ehrlich v. Ihlee, 
 
 (x) 33 Cli. D. 003. .00 L. T. 810. 
 
 (y) Baird v. MouWs J'afciU
 
 PARTICULARS OF OBJECTIONS. 235 
 
 as lie pleases, paying defendant's costs. The defendant 
 slioidd not be permitted to keep back liis most salient 
 objections, and so to entice the })laintiff to proceed and 
 incur costs, and then to amend his particulars at the last 
 moment, 
 
 A form of order for further particulars will be found in 
 the Appendix (- ). 
 
 The defendant will not be allowed at the hearing: of the 
 action to introduce evidence of prior user, not disclosed 
 in the particulars of objection, although such evidence 
 may have only come to his knowledge since the delivery of 
 the particulars of objection. His proper course is to obtain 
 leave by sunnnons or by serving short notice of motion for 
 leave to amend, when an order will be made ujDon the 
 terms mentioned above ; and with an added term to delay 
 the trial should it appear just that the plaintiff should 
 have time to investigate the new evidence (((). 
 
 Objections on the ground of prior publication stand 
 very much upon the same footing as those on the ground 
 of prior user. 
 
 If the prior publication is alleged to be in books or 
 newspapers, the plaintiff is entitled to be told the name 
 of the book or newspaper, and to give such details of the 
 books or newspapers as will enable them to be found and 
 identified by the plaintiff (6). 
 
 In Fowler v. Gaul (c), the defendants, by their particu- 
 lars of objections, alleged (inter alia), "5. That the alleged 
 invention" Avas published prior to the patent by certain 
 patents and the specifications thereof (naming them) ; 
 8. The plaintiff's specification claims some of the matters 
 specified or patented in certain specifications (naming 
 them)." The District Piegistrar, affirmed subsequently by 
 
 (z) Page 298, 208; P(dmer v. Cooper, 9 Ex. 231, 
 
 (a) Daw V. Eky, L. K., 1 Eq. (c) Griffin, P. (J. 99. See also 
 
 38. ]Iarris v. Rothii'dl, Griffin, P. C. 
 
 (6) Jones V. Ber<j€r, 5 M. & (J. 109.
 
 233 PEACTILE. 
 
 tlie Judofe in Cliambers and Divisional Court, ordered 
 " better particulars, showing in detail what part or parts of 
 the patents or specifications respectively referred to in the 
 5th and 8th objections showed prior publication, and what 
 parts were relied on as being claimed by the plaintiff's 
 specification. In default of delivery, objections 5 and 8 to 
 be struck out." 
 
 In Plimpton v. SpilJcr id), the particulars were — " before 
 the date of the alleged letters patent the alleged invention 
 had been published in England in the ' Commissioners of 
 Patents Journal,' of the 6th February, 1863, and in the 
 'Scientific American/ of the 24tli January, 1863, and in 
 drawings and sketches deposited in the Patent Office 
 hbrary, in July, 1865." Mr. Justice Field directed that 
 the defendant should amend his particulars by stating the 
 date of the American patent, and in whose name it had 
 been granted. And also by giving the pages of the publi- 
 cations mentioned, but not the lines. And also by giving 
 such written details as would enable the drawings mentioned 
 to be identified, and to state whether the drawinos were or 
 were not contained in books, and what books. Notice of 
 objections, on the ground that the grantee of the letters 
 patent was not the first and true inventor, does not stand 
 upon the same footing as objections on the ground of prior 
 user or publication. Sect. 29, sub-sect. 3, does not require 
 the defendant to state more than generally on what grounds 
 he objects, and a statement that bis objection is that the 
 plaintiff was not the true inventor, that is, that the con- 
 sideration did not move from him, will be sufficient, care 
 being taken to distinguish this oltjection from that of prior 
 user or publication. 
 
 When the objection is, that the grantee was not the 
 true inventor, tiie Court will nut require the defendant to 
 
 (t/) 20 Solicitors' Journal, 1^7^, p. SGO. Sec also Flou'cr v. Lloi/i.1, 
 game reference.
 
 PARTICULARS OF OBJECTIO^■S. 237 
 
 say who was the true inventor (e). The fact upon which 
 the objection is based, is the M'ant of consideration, not the 
 fact of some one having performed the invention before. 
 The performance of the invention by some one else before 
 the patent would not, of necessity, invalidate the patent. 
 As, for instance, if it w^ere done in secret ; but if the inven- 
 tion w\as communicated to the grantee, the patent w^ould be 
 void for want of consideration. Now the foundation of the 
 objection is, the fact of that communication, and the know- 
 ledge of this, and the time and place of it, miglit be within 
 the patentee's knowledge only, and might not be extracted 
 from him until in the witness box. 
 
 The objection that the specification is insufficient is 
 enough without explaining in what way it is insuffi.cient {/). 
 A litigant could scarcely be required to argue his case on 
 paper before he w^ent into Court, and the sufficiency or in- 
 sufficiency of a specification is to a great extent a matter of 
 mere aro;ument. 
 
 In Jones v. Berger (g), it was held that objections that 
 the specification " did not sufficiently distinguish between 
 wdiat was old and what was new," and that the inventor 
 " did not disclose the most beneficial method with which 
 he was then accjuainted of practising his said invention," 
 were sufficient. 
 
 We have seen that Ord. XIX. rule 6, requires particulars 
 in case of fraud to be delivered with the statement of 
 defence. 
 
 Fraud is a valid objection to a patent. The practice of 
 the Court is to require accurate and detailed particulars of 
 any fraudulent acts alleged. The species of " fraud, covin, 
 or misrepresentation " should be given {h). 
 
 When the objection is on the ground of want of con- 
 
 (e) Russcdl V. Ledsam, 11 M. «fe 687. 
 W. G47. But see Jones v. Berger, {g) 5 M. J: G. 208. 
 
 5 M. k G. 208 ; 1 Web. P. C. 544. (A) linssdl v. Ledsam, 11 M. k ^^'. 
 
 (/) Heath V. Univlti, 10 M. & W. 647.
 
 I 
 
 ft 
 
 238 PRACTICE. 1 
 
 formity betAvcen the provisional and complete specification, 
 " the defendant ought to give such particulars as would 
 inform the plaintiffs of the nature and scope of this objec- 
 tion of nonconformity. This docs not mean that the de- 
 fendants must furnish the plaintiffs with the heads of what 
 the defendants' argument will l)e at the trial, but only such 
 information as the plaintiffs may reasonably require in order 
 to know precisely the nature of the case that will be raised 
 against them. Each case must depend on its own circum- 
 stances." Per Cotton, L. J. (?'), C. A. And when the ob- 
 jection is the insufficiency of the specification, the defendant 
 must condescend to particulars of insufficiency (/). 
 
 (i) Anglo-American Brush Ligld (k) Crompton y. Anr/Io-American 
 
 Corporation v. Cromptoii, 34 Ch. D. Brush Light Corporation, 35 Ch. D. 
 
 152; 56 L. J. Ch. 167; Griffin, 283; 56 L. J. Ch. 802; 57 L. T. 
 
 P. C. 34. 291.
 
 ( ^39 ) 
 
 CHAPTER Vlir. 
 
 INTERROGATORIES. 
 
 Okd. XXXr. rule 1, of the Rules of the Supreme Court, 
 1883, provides that either party to an action, with leave of 
 the Court or a judge, may interrogate the other party. 
 
 Interrogatories must be relevant to the issue, and 
 will not be allowed to be used for the purpose of cross- 
 examination. Since it is not possible to say precisely what 
 the issues l^etween the parties are before the statement of 
 defence is delivered, neither party, except under special 
 circumstances, will be allowed to interrogate until that 
 stage of the action has been reached (a). 
 
 Rule 26 provides that 5/., or some further sum, should 
 be brought into Court by the party desiring to interrogate 
 before he shall be at liberty to do so. 
 
 The general rules as to interrogatories in ordinary actions 
 apply equally to actions for infringement. 
 
 The plaintiff may interrogate the defendant, and the 
 defendant must answer as to what infringement he has 
 been guilty of ; and he must disclose, if asked, the names 
 and addresses of all persons, wdiether in England or abroad, 
 from whom he may have received money for the use of 
 articles alleged to be made in infringement of the patent (b). 
 
 In Lister v. Norton (c), the defendants put in a defence 
 
 (a) Jfercier v. Cotton, L. R., 1 42G ; IIow v. McKernan, 30 Beav. 
 Q. B. D. 442. 547. 
 
 (h) Crossley v. Sfeivart, 1 N. R. (c) Griffin, P. C. at p. 149.
 
 240 rRACTICE. 
 
 denying infringement, and the plaintiff interrogated tlic 
 defendants, and asked in one interrogatory wliether the 
 defendant's firm had not sohl imitation sealskins (the 
 patent being for " Improvements in the manufacture of 
 velvets and of pile fabrics in imitation of sealskin and 
 other similar materials ") to certain firms, naming sixteen 
 firms. This interrogatory the defendants declined to answer, 
 on the ground that the information was not hondfide sought 
 for the purposes of the action. Chitty, J., ordered an answer 
 to the interrogatory, unless within fourteen days the defen- 
 dant admitted infringement. 
 
 In a petition for revocation under sect. 26, interrogatories 
 will be allowed to be administered by the petitioner to the 
 respondent, inquiring into the manufacture, use, and sale 
 of the patented article prior to the date of the patent (<:/). 
 
 Where a defendant alleged that his process was secret, 
 he was bound to answer whether he used the materials 
 mentioned in the specification, and whether he used any 
 additional materials, but not to disclose the proportions in 
 which he used the specified materials, or what the additional 
 materials were (e). 
 
 AVlien there is nothins^ to show that the defendant has 
 infringed the patent, and he has denied on oath having in- 
 fringed the patent, the plaintiff" will not be permitted to 
 interrogate as to the articles made and sold by the 
 defendant, there bein^^ nothini]: to show that the articles 
 sold infringe the patent. If Lea v. Saxhy (/) be read, this 
 propositicjn will be seen to follow. 
 
 Crossli/ V. Tomey(g) was an action to restrain infringe- 
 ment. Tlie defendant in interrogatories was required to 
 state whether he was not making articles in all respects 
 identical with those of the plaintiff, and to set forth in what 
 respects they differed, and by what process they were made. 
 
 {(1) Iladdan's I'atont, 54 L. J- C. GG5. 
 Ch. 12C. (/) 32 L. T.,N. S. 731. 
 
 {e) Rennrd V. Lfmngtfin, 3 X. {g) L. K., 2 Ch. D. 533. 
 
 I 
 
 \
 
 INTERROGATORIES. 24 1 
 
 It was lield that the defendant, who alleged prior user by 
 himself and others, had sufficiently answered by stating 
 that, save so far as the articles manufactured by him before 
 the date of the patent were similar to those of the plaintiff, 
 the articles he now made differed from those made by the 
 plaintiff, but he could not show in what they differed with- 
 out ocular demonstration. It was also held in this case, 
 that when the defendant alleged prior user by other persons, 
 he was bound to set forth the names of some of those 
 persons. In the argument of this case, it appears that some 
 confusion existed as to the necessary retjuirements of 
 particulars of objections and answers to interrogatories. It 
 must be remembered that the answers to interrogatories are 
 on oath, and it can never have been intended by the legis- 
 lature, when the stringent requirements of particulars of 
 objections were created, that the defendants should be bound 
 to swear to these particulars ; the penalty upon a defendant 
 giving particulars, which at the trial he is not prepared to 
 prove, is that he is mulcted in costs. But it was never in- 
 tended that he should be prohibited from giving particulars, 
 which, although based upon mere suspicion, he may hope to 
 prove at the trial, perhaps out of the plaintiff^s own mouth (?'). 
 It appears that Chitty, J., has ordered a plaintiff 
 (patentee) to answer interrogatories with reference to 
 documents which passed between himself and his patent 
 agent at the time the specification was prepared, notwith- 
 standing that the patent agent was also acting in the 
 matter as plaintiff's solicitor and that privilege was 
 claimed [k). In the same case interrogatories which sought 
 to compel the plaintiff to particularize the alleged breaches 
 by stating what parts of the plaintiff's specification were 
 infringed by the defendants (the defendants having in 
 answers to interrogatories disclosed what they had done) 
 
 (i) See, however, Finnegan v. {k) MoseJy v. The Victoria JRubber 
 
 Tames, as to answers to inteiToga- Co., Griffin P. C. 163. 
 tories, L. R., 19 Eq. 72. 
 
 T. R
 
 24<Z PRACTICE. 
 
 ■were disalloTved on tlie ground that tlie defendants could 
 for themselves compare the plaintiff's specification with 
 what they admitted they had done. 
 
 In Bovill V. Smith (l), the following interrogatory was 
 disallowed, " Does not the defendant allege that the 
 plaintiff's invention was publicly used within this realm 
 before the date of the plaintiff's patent 1 Set forth par- 
 ticularly when, and in what place or places, and in what 
 manner, does the defendant allege that the plaintiff's inven- 
 tion, or any or what part thereof, was publicly used within 
 this realm before the date of the plaintiff's patent." Sir 
 W. Page- Wood, V.-C, said that the plaintiff was not 
 entitled to enquire generally into the w^ay in which the 
 defendant shaped his case in order to find out whether some 
 of the persons alleged by him to have used the process 
 Ijefore the date of the patent, were the persons against 
 whom the plaintiff had succeeded in other suits, though he 
 might have asked if the process was the same as that used 
 by A. B., or any one person specifically named, who had 
 been a defendant in some former suit. 
 
 A defendant who submits to answer must answer 
 fully : he cannot, by denying the plaintiff's title, escape 
 answering. Discovery of title deeds and of professional 
 communications form an exception. The plaintiff and 
 defendant had both patents for making gelatine ; the 
 plaintifi" interrogated as to the article manufactured by the 
 defendant, and as to the names and addresses of the cus- 
 tomers, and as to prices and profits. The defendant denied 
 all infrinircment. He said he had made his article accord- 
 ing to his own, and not according to the plaintiff's, patent, 
 and he declined to give an account of such article. Held, 
 that notwitlistanding his denial, he was bound to do 
 so (m). It is doubtful whether this case would be followed 
 
 (/) Ti. I{., 2 Eq. 459. Sco also (m) Swlnhorne, v. Nehon, IG 
 
 Daw V. J'Jh'U, 2 II. & M. 725. Bcav. 416.
 
 INTERROGATORIES. 24.'i 
 
 now, for it is difficult to understand how the question coukl 
 be relevant to the issue. It might be relevant after judg- 
 ment, but before judgment the issue is, infringement or no 
 infringement. The names of the customers could not bear 
 upon this question. 
 
 After trial, and in pursuance of the terms of the judg- 
 ment, if the plaintiff has been successful he is entitled to 
 interrogate the defendant, or to require that the defendant 
 " should make and file an affidavit statins: what machines 
 of the same construction as that supplied by him to A. or 
 B., including such machines as are in his possession or 
 power," see Seton, Uh ed.^p. 352. The answer or affidavit 
 of the defendant must be complete. In Murray y. Clay- 
 ton (n), a patentee of improvements in brick-cutting 
 machines, who was a manufacturer of the machines by an 
 agent at the agent's works and not a licensor, having 
 obtained a perpetual injunction against the defendants, 
 (who were also manufacturers of brick-cutting machines), 
 from infringement, the defendants were ordered to file an 
 affidavit stating the number of machines made by them 
 since the date of the patent, and the names and addresses 
 of the persons to whom the same had been sold, and of the 
 agents concerned in the transactions. Upon motion to varv 
 the order, it was held, that the plaintiff" was entitled to 
 have discovery of the names and addresses of the purchasers 
 but not of the agents concerned, there being nothing to 
 show that any agents had been employed. 
 
 In answering interrogatories filed by a defendant for the 
 examination of the plaintiff", the general rule applies that 
 he who is bound to answer must answer fully (o). 
 
 Interrogatories for the examination of a plaintiff" are on 
 a diff'erent footing from those for the examination of a 
 defendant in this respect, that a plaintiff" is not entitled to 
 
 (n) L. R., 15 Eq. 115. 
 
 (o) Hoffman v. Posthill, L. R., 4 Ch. App. 673. 
 
 u 2
 
 244 PRACTICE. 
 
 discovery of the defeudant's case, but a defendant may ask 
 any questions tending to destroy the phiiutiif's claim [p). 
 
 In determining whether a question is one of fact, and, 
 therefore, to be answered, it makes no difference that it is 
 asked with reference to a written document (ir. 
 
 A defendant in a suit for infringement of a patent in 
 order to prove that there was no novelty in the plaintiff's 
 patent, interrogated the plaintiff as to the inventioES 
 described in the specifications of various patents, and asked 
 him to show in what respects they differed from his. The 
 plaintiff" declined to answer these interrogatories on the 
 ground that the questions were not questions of fact, and 
 that they related to the plaintiff's case ; the defendant 
 excepted to the answer, and the exceptions were 
 allowed Q.)). 
 
 A plaintiff" in a patent suit was recjuired by interogatories 
 to set out a correspondence between himself and a third 
 party, and also to state the particulars of the infringement 
 of his patent on which he relied. He refused to answer 
 these questions on the ground that the defendant might 
 obtain an order in chambers to inspect the correspondence : 
 and that he had sufficiently set out the particulars of the 
 infrinoement in his bill. These answers were held to be 
 sufficient (j)). 
 
 We have set out the effect of this case at leno-th, because 
 it is founded upon and exemplifies in many ways the 
 principle upon which a defendant may examine a plaintiff. 
 Lord Justice Giffai'd, in giving judgment, said, " As regards 
 the case of Daw v. £h'i/ {q), it must be always remembered 
 that that was the case of a plaintiff" exhibiting interroga- 
 t(n-ies to a defendant, and it was there held that the plaintiff 
 could not call on tlie defendant to set forth the particulars 
 of his defence. But when you come to the case of a 
 
 ( p) llnffnion V. I'osihiU, L. ]{., (7) 2 H. .t M. 725. 
 
 4 Ch. A]))!. G7.>.
 
 INTERROGATORIES. 245 
 
 defendant asking questions of a plaintiff, it is a very 
 different thing. It is the defendant's business to destroy 
 the plaintiff's case, and there the defendant has a right to 
 ask all questions which are fairly calculated to show that 
 the patent is not a good patent, or that what he alleges to 
 be an infringement is not an infringement.'' Lord Justice 
 Selwyn had said, " Our decision in this case will leave it 
 entirely within the power of the learned Vice-Chancellor to 
 order that all the costs occasioned by the interrogatories, 
 the answer, the exceptions, the hearing the exceptions 
 before him, and the hearing of this appeal, shall be dealt 
 with as he, in his discretion, shall think fit ; and if it shall 
 appear that the power which the Court, for the purpose of 
 justice and discovery, gives to the parties to administer 
 interrogatories to each other has been abused, I have no 
 doubt the learned Vice-Chancellor will take care that 
 justice shall be done, and will make the party who is to 
 blame pay all the costs of the improper exercise of this 
 power."
 
 246 PRACTICE. 
 
 CHAPTER IX. 
 
 INSPECTION. 
 
 Sect. 30 of the Patents, &c. Act of 1883, provides : " In 
 an action for infringement of a patent, the Court or a 
 judge may, on the ajyplication of either party, make such 
 order for an injunction, inspection, or account, and im- 
 pose such terms and give such directions respecting the 
 same and the p>roceedings thereon, as the Court or a judge 
 may see fit.'' 
 
 The power to order an inspection was always assumed 
 l)y the Courts ; in Bovill v. Moore (a), Lord Eklon said : 
 " There is no use in this Court directing an action to be 
 brought, if it does not possess the power to have the action 
 properly tried. The plaintiff has a patent for a machine 
 used in makino; bobbin lace. The defendant is a manu- 
 facturer of that article ; and, as the plaintiff alleges, he is 
 making it with a machine constructed upon the principle of 
 tlie machine protected by the plaintiff's patent. Now the 
 manufactory of the defendant is carried on in secret. TIk^ 
 machine whicli the defendant uses to make bobbin lace, and 
 wliicli the })]aintifl" alleges to be a piracy of his invention, is 
 in the defendant's own possession, and no one can have 
 access to it witliout liis permission. The evidence of the 
 j)iracy, at present, is the bobbin lace made by the defendant. 
 'J'li(i witnesses sny that this lace must have been manu- 
 factured by the pLiintifr's machine, or by a machine 
 
 (a) 2 Coop. Ch. Cii. r.G (ii.) ; Dav. P. C. 30 1.
 
 INSPECTION. 247 
 
 similar to it in principle. This is obviously in a great 
 measure conjecture. No Court can be content with 
 evidence of this description. There must be an order that 
 plaintiff's witnesses shall be permitted before the trial of 
 the action to inspect the defendant's machine, and to see it 
 work." 
 
 The object which the Court has in view in all cases 
 where an inspection is permitted, is to ensure that the 
 true facts of the case shall be carefully sifted ; but at 
 the same time the Court will take care that the process of 
 the law is not abused, and that an action for infringement 
 shall not be made a means and lever for the discovery of 
 other persons' secrets. 
 
 The Court requires before granting an order for inspec- 
 tion that a strong primd facie case shall be made out of 
 infringement (b). And when the interests of justice 
 require, the inspection will be granted to scientific 
 witnesses, who will be required to keep any se(,'rets which 
 they may have discovered, and which do not affect the 
 question of infringement (c). And in Floivei' v. Lloyd {d) 
 the Court of Appeal strictly limited the inspection to 
 scientific men, and excluded the plaintiff from being 
 present. 
 
 In Pigott V. The Anglo-American Telegraph Co. (e), it 
 was alleged that an inspection would disclose important 
 secrets. GifFard, V.-C, in refusing an order to inspect, 
 said : "Of late years greater readiness has been shown by 
 the Equity Courts to allow inspection in patent cases than 
 by the Courts of Common Law. But it has never been 
 
 (6) Morgan v. Seaward, 1 Web. 55 L. J. Cli. 287 ; 1 Griffin P. C. 
 
 P. C. 169 ; Russell v. Cowley, 1 103. 
 
 Web. P. C. 458 ; Bovill v. Moore, (c) See Russell v. Crichton, 1 
 
 supra; Kynaston v. East India Web. P. C. 667 (n.) ; 15 Dec. Ct. 
 
 Co., 3 Swan. 248; East India Co. of Sess. 1270. 
 
 Y. Kynaston, 3 Bl. Ap. Gas. 153 ; {d) W. N. 1876, 169, 230. 
 
 The Germ Milling Co. v. Robinson, (e) 19 L. T., N. S. 46.
 
 248 PRACTICE. 
 
 considered as a matter of right, uor have the Equity Courts 
 considered themselves as precluded from exercising a 
 proper discretion in applications of this description. The 
 Court ought to be satisfied of two things : that there really 
 is a case to be tried at the hearing of the cause, and that 
 the inspection asked for is of material importance to the 
 plaintiff's case as made out by his evidence." 
 
 In Batleij v. Kynock (/), Sir James Bacon, V.-C, said : 
 " Upon the single point which is raised before me, there 
 can be no doubt that the plaintiff in such a suit as this is 
 entitled to an inspection of the means which the defendants 
 employ in the manufacture of the articles alleged to be 
 violations of the plaintiff's patent, when such inspection is 
 essential for the purpose of enabling the plaintiff to 
 prove his case ; upon the materials before me that is not 
 made out. There is no allegation by the plaintiff that he 
 cannot make out his case without inspection. But there is 
 on the part of the defendants a plain allegation that in- 
 spection is not necessary for the purposes of the suit ; 
 upon that only I must decide this question. I would 
 rather not go into the other matters which have been 
 referred to. The description in the specification and the 
 allegation in the bill — but as I read both the description 
 in the specification and the allegation in the bill — I find 
 that the charge made by the plaintiff is that the cartridges, 
 the rioht of manufacturino- which is vested in him exclu- 
 sively, have been imitated and copied by the defendant, 
 and if that fact can be made out the plaintiff's case can be 
 clearly established. The mode of making that out is by 
 examination of the cartridges, the means by which they 
 have been made, whether by a machine or hammer or a 
 screw cannot signify in the least if the cartridges of the 
 defendant when made arc made upon the principle of the 
 patent claimed by tlie plaintiff." 
 
 (/) L. K., 19 Eq. 91.
 
 INSPECTION. 249 
 
 In Drake v. Muntz Metal Co. (g), before statement of 
 claim application was made to Bacon, V.-C, that the 
 defendants by their proper officer should make an affidavit 
 verifying the machines and processes used by the defendant 
 company in bending metal tubes since date of plaintiff's 
 patent and for inspection. The yice-Chancellor said that 
 sect. 30 {sujjixt) did not give him power to direct an 
 affidavit to be made, but ordered inspection of the machines. 
 
 The Court, in the case of The Patent Tijpe Founding 
 Co. V. Walter (Ii), assumed the jurisdiction to order the 
 defendant to deliver to the plaintiff a sample of the type 
 made by him so that the plaintiff might have the same 
 analysed, for the purpose of ascertaining whether the 
 composition was similar to the plaintiff's patented com- 
 position. 
 
 In some cases where it is necessary, the Court will order 
 the defendant and the plaintiff to give mutual inspection, 
 and to show both the patented machine and the alleged 
 infringement at work, and to permit either party to take 
 away any of the work or samples of the work which has 
 been done in their presence (^). 
 
 The application may be made on motion to the Court 
 or by summons ; it is usually made upon the application 
 for an interim injunction, but it is immaterial at what 
 stage of the proceedings the ap|)lication is made. The 
 evidence in suj)port must be on affidavit, and a prima 
 facie case of infringement must be made out, and that the 
 inspection is material to the plaintiff's case. 
 
 Order L. of the Eules of the Supreme Court, 1883, 
 contains some provisions as to inspection which must be 
 noticed. 
 
 Ttule 3 provides for the inspection of property and the 
 
 {g) 3 P. 0. R. 43. Sewing Machine Co. v. Wilson, 5 
 
 (h) 8 W. R. 353. N. R. 505, and The Germ Milling 
 
 (i) Davenport v. Jepson, 1 N. Co. v. Rohinso7i, 55 L. J. Ch. 288. 
 R. 307. See also The Singer
 
 250 PRACTICE. 
 
 taking of samples, or for " any observations to be made 
 or experiment to be tried wbich may be necessary or 
 expedient for the purpose of obtaining full information or 
 evidence." Rule 4 : "It shall be lawful for any judge, by 
 whom any cause or matter may be heard or tried with or 
 without a jury, or before whom any cause or matter may 
 be brought by way of appeal, to inspect any property or 
 thing concerning which any question may arise therein." 
 
 This last mentioned rule was introduced by the Eules 
 1883. Before, the parties must have consented to a view 
 being had. In JacJcson v. The Diihe of Newcastle {h), Lord 
 TVestbury said: "A judge is bound to j)roiiounce his 
 decision according to the evidence before him, but his 
 inspection of the premises may bring him to a conclusion 
 directly opposite to that w^hich is established by the 
 evidence." 
 
 {k) 33 L. J., Ch. 698.
 
 ( 251 ) 
 
 CHAPTER X. 
 
 THE TRIAL. 
 
 The constitution of the Court which is to hear and 
 
 determine patent actions is provided for by sect. 28, 
 sub-sect, 1, of the Act of 1883. " /n an action or pro- 
 ceeding for infringement or revocation of a patent^ the 
 Court may^ if it thinks ft, and shall on the request of 
 either of the parties to the proceeding, call in the aid of 
 an assessor, specially qualified, and hear and try the case 
 wholly or partially ^ with his assistance ; the action shall 
 he tried without a jury, unless the Court shall otherwise 
 direct" 
 
 Under the old statute, either party liad an absolute 
 right to have the questions of fact decided by a jury^ 
 and the Court had no power to deprive them of this 
 right {a). 
 
 Under the 57th sect, of the Judicature Act, 1873, the 
 Court had power, without the consent of the parties, " in 
 any such cause or matter requiring any prolonged examina- 
 tion of documents or accounts, or any scientific or local 
 investigation whicli cannot, in the opinion of the Court, 
 or a judge, conveniently be made before a jury, or con- 
 ducted by the Court through its other ordinary officers, the 
 Court or a judge may at any time, on such terms as may 
 be thought proper, order any question or issue of fact, or 
 
 (a) Sugg v. Silher, L. R., 1 Q. B. D. 3G2.
 
 'Zb'Z PRACTICE. 
 
 any question of account arising therein, to be tried either 
 before an official referee, to be appointed as hereinafter 
 provided, or before a special referee to be agreed on 
 between the parties ; and any such special referee so 
 agreed on, shall have the same powers and duties, and 
 proceed in the same manner as an official referee. All 
 such trials before referees shall be conducted in such 
 manner as may be prescribed by rules of court, and subject 
 thereto in such manner as the Court or judge ordering the 
 same shall direct." 
 
 In the case of Saxhij v. The Gloucester Wagon Co. (h), 
 ]Mr. Justice Hawkins was of opinion that a patent case was 
 a case which required a "prolonged scientific examination," 
 and consequently he remitted the action to that which he 
 considered the most proper tribunal for difficult scientific 
 questions, " the official referee." AYe are inclined to think 
 that sect. 28 of the Patent &c., Act, does away with this 
 option. The words appear to read, " The Court may 
 ertipJoij an assessor, and shall do so on the application 
 of either jKirt I/, and shall try the case; and the action 
 shall he tried without a jury, &c!' 
 
 Ord. XXXYL rule 5 of the Rules of the Supreme Court, 
 provides, " The Court or a judge may direct the trial, 
 without a jury, of any cause, matter, or issue, requiring 
 any prolonged examination of documents or accounts, or 
 any scientific or local examination which cannot, in their 
 or his opinion, conveniently T)e made with a jury ; " and 
 rule 6 : " In any other cause or matter, upon the applica- 
 tion of any party thereto, for a trial with a jury of the 
 €ause or matter, or any issue of fact, an order shall be 
 made for a trial with a jury." These rules, together with 
 tlu' provisions of sect. 28 of the Patent Act, would show 
 that the better opinion probably is that, unless a judge or 
 the Couit otherwise orders, the constitution of the Court 
 
 (6) W. N. 1880, p. 28.
 
 THE TRIAL. 253 
 
 shall be a judge sitting without a jury, and with or without 
 an assessor. 
 
 The grounds of application for a trial by jury would 
 1)e that the evidence shows a conflict of testimony in 
 material parts, or that grave questions of credibility are 
 likely to arise, or that a charge of fraud is made against 
 either party. 
 
 Mr. Hindmarch, at p. 291 of his celebrated work, says: 
 " Few causes require so much care and industry in prepar- 
 ing for trial as patent actions, in which very nice points of 
 law and difficult questions of fact must often be decided 
 between the parties ; and it \vill frecpiently happen that a 
 party will succeed or fail in obtaining a verdict according 
 to the industry with which he has got up his case for trial. 
 Properly to understand the questions raised in such actions 
 and prepare the necessary proofs, a competent knowledge 
 not only of law, but also of science in general and the useful 
 arts, is essentially requisite." 
 
 It is no ground for postponing the trial of an action 
 for infringement that a petition has been presented by the 
 defendant or any other person under sect. 26 to revoke the 
 patent. 
 
 We have seen that proceedings for revocation are similar 
 to, and for the same purpose as, scire facias prior to tlie 
 Act of 1883. In Muntz v. Foster {c) it had been held 
 that the fact of a writ of scire facias lacing pending was no 
 ground for staying the action for infringement. Tindal, 
 C. J., said : "As a general rule, a plaintiff has a right to 
 have his cause go on for trial according to the ordinary 
 course of business. Special circumstances may exist 
 upon which the Court may see fit to interfere ; but 
 the present does not appear to us to be a case in which 
 we ought to interfere by staying the proceedings in the 
 action." 
 
 (c) 2 Web. P. C. 93 (n.), 1 Dowl. k Low. 942.
 
 *254. PRACTICE. 
 
 Tlie oTound of this decision was that the phaintiff in the 
 action for infringement, being defendant in the proceedings 
 by scire facias, had not the conduct of those proceedings, 
 and that the defendant in the action for infringement might 
 delay them ; but Avhere in Patteson v. Holland (d), an 
 action for infringement had been tried, and a rule nisi for 
 a new trial had been obtained and argued, and it appeared 
 that another action was pending in that Court for another 
 infrino-ement of the same patent, and that a scire facias 
 had been sued out to repeal the patent, the Court suspended 
 their judgment upon the rule for a new trial, and ordered 
 the trial of the other action to be postponed until after the 
 trial of the scire facias. 
 
 And where a verdict had abeady gone for the Crown on 
 scire facias, but a new trial was pending, the plaintiff was 
 not permitted to proceed to trial with his action for in- 
 frino-ement until the rule for the new trial in scire facias 
 
 o 
 
 had been disposed of (e). 
 
 In an action for infringement the plaintiff has the right 
 of beginning and of replying, notwithstanding that the 
 burden of proof may really be on the defendant, as, for 
 instance, where the case principally turns upon questions of 
 prior user or prior publication, which are introduced by the 
 defendant. It sometimes happened that this privilege, 
 particularly in cases of conflicting evidence, was of great 
 value, and for the purpose of snatching it from the plaintiff 
 the defendant did not wait for the plaintiff to commence 
 his action, but commenced proceedings himself by scire 
 facias to repeal the patent, so as to place himself in the 
 position of plaintiff. But, by sect. 26, sub-sect. 7, of the 
 Act of 1 SS3, it is provided that in cases where it is sought 
 to revoke a patent, " llie defendant slicdl he entitled 
 to begin and give evidence in support of the patent, 
 
 (rl) ITindmarcli, 293. (e) Smith v. Upton, G M. tt (J. 251.
 
 THE TRIAL. 255 
 
 and if the plamtiff gives evidence impeaching the 
 validity of the pateyit, the defendant shall he entitled 
 to rephj." 
 
 The plaintiff must give evidence of the issues, which 
 he is bound to prove. It is for him to support his patent 
 and to establish its validity. He must prove his patent 
 if the grant be denied. This is done by producing the 
 patent itself, with the great seal — or, under the Act of 
 1883, the seal of the Patent Office — attached to it; sect. 
 12, sub-sect. 2, provides that, ^' A iKitent so sealed shall 
 have the same effect as if it ivere sealed with the great seal 
 of the United Kingdom" ; or under sect. 89, if it be not 
 convenient or possible to produce the original, "^Printed or 
 writteyi copies or extracts, p>itrporting to he certifed hy 
 the conip)troller 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 hooks kept there, shall he admitted in 
 evidence in all Courts in her Majesty s dominio7is, and in 
 all proceedings, without further proof or p)roduction of 
 the originals." 
 
 If the plaintiff sues as assignee, or under any deriva- 
 tive title, and his title is denied, the entry from the register 
 of patents may be proved in the manner suggested by the 
 89th section. 
 
 Under the 96th section " a certificate purporting to he 
 under the hand of the comptroller as to any entry, '^natter 
 or thing luhich he is authorised hy this Act, or any general 
 rules made thereunder, to make or do, shall he prima facie 
 evidence of the entry having heen made, and of the con- 
 tents thereof, and of the matter or thing having heen done 
 or left undone." 
 
 For instance, if an entry in the register is denied by the 
 defendant, he may prove its omission by a certificate under 
 the 96th section. 
 
 If the fact of infringement is denied, the plaintiff must
 
 256 PRACTICE. 
 
 be ready with evidence that the defendant has made, used 
 or sold the article or process, and any one of these acts will 
 satisfy the allegation of infringement, whether the infringe- 
 ment was intentional or not (/). Mere possession un- 
 accompanied by user, does not amount to infringement [g). 
 Evidence that the defendant has sold articles made by a 
 patented process, or by a patented machine, will be sufh- 
 cient ill). If the defendant has imitated the plaintiffs 
 process, or substituted chemical or mechanical equivalents, 
 he will have infringed the patent ({), and the plaintiff must 
 be ready with expert and other evidence to satisfy the 
 Court that the defendant has substantially imitated his 
 process or article. It is an infringement to import and use 
 or sell a patented article ; although it is no infringement 
 to merely import and no more (/:). If an article, by its 
 appearance or properties, can be distinguished as having 
 been made by a patented process, and the defendant will 
 not permit the plaintiff to see how it is made. Lord Ellen- 
 borough held, that a prima facie case had been made out, 
 which it was for the defendant to rebut {I). But the mere 
 fact that there is a similarity of appearance between an 
 article made by the patented process and the alleged 
 infringement, is not sufficient : there must be reasonably 
 satisfactory evidence that a similar article could not be 
 ])roduced in any other manner ; that, in fact, it carries the 
 footprint of the invention with it (in). It will be observed, 
 that when expert witnesses are called for the purpose of 
 proving infringement in this manner, they must be asked 
 wliether there is a similarity between the patented article 
 
 (/) Stead \. Anderson, ^ C. I>. (/) Huddart \. Grimshmv, Davis, 
 
 800, iuul uutc, p. 1G8. P. C. 288. See also Belts v. NeU- 
 
 (f/) Atito, ]). 180. son, L. R., 5 H. L. 11 and 12. 
 
 (//.) Wri^/if V. J/ilrhrork, L. II, (vi) 8cc Palmer v. Wagstaff, 9 
 
 5 Kx. .'57. Ex. 494 ; 2:i L. J., Ex. 217 ; 2 C. 
 
 {{) Ante,]). 179. L. U, 1052; and Davenport v. 
 
 (/•) Ante, i>. 189. JUrhards, 3 L. T., N. S. 504.
 
 THE TRIAL. 257 
 
 and the alleged infringement, and also whether there is 
 any other process, except the patented process, whicli will 
 produce that similarity ; but they cannot be asked their 
 opinion as to whether or not there has been infringement. 
 That is a question for the jury, or the Court in the absence 
 of a jury (w). 
 
 The Court will consider the circumstances of the case, 
 the behaviour of the witnesses and their credibility, when 
 considering the question of infringement or no infringe- 
 ment. 
 
 In Clark v. Adie (o), Lord Blackburn said : — " When- 
 ever a man knowing for the first time of an invention, 
 either by seeing a machine at work or by reading a specifi- 
 cation, proceeds to do what he never did before, and takes 
 a part of the invention, it is always a very strong arga- 
 mentum ad hominem to say : You are, by the very fact of 
 taking this, making evidence against yourself that it was 
 a new invention ; otherwise, why did you take it ? You 
 are making evidence against yourself that at all events the 
 part you took was new, or why did you take it ? and 
 whenever there is a case of theft or stealing knowingly, 
 that observation ought to have some weight, although I 
 think in practice it has more weight given to it than it 
 ought to have. But where there is a case of an innocent 
 infringement of property, by an unwitting use of this 
 sort, that observation can have no weight against the 
 party in the slightest degree, and I think it ought not to 
 have any." 
 
 The burden of proving infringement is strictly on the 
 plaintiff, and if he does not satisfactorily prove it there 
 is no necessity of entering upon the defendant's case on 
 other matters. The plaintiff must always give evidence., 
 
 (n) Per Lord Wensleydale in (o) L. R., 2 App. Cas. 337. 
 
 Seed V. Higgins, 8 H. L. Cas. 550. 
 
 T. S
 
 258 PRACTICE. 
 
 when tlie alleo-ed iufrino-ement is the sale or use of 
 an article, that it was not made by himself or his 
 agents {p). 
 
 When the defendant allegjes that there is a defect or 
 insufficiency in the specification, the burden of proving 
 that there is no such defect is on the plaintiff. 
 
 We have seen {q) that it is for the jury to say whether a 
 specification is sufficient or intelligible or not ; it is for 
 the Court to place a construction upon the language used 
 in the specification. The plaintiff must therefore be pre- 
 pared with evidence of an expert character as to the suffi- 
 ciency of the specification; and in selecting this evidence 
 the plaintiff cannot be better guided than by the judgment 
 of Sir George Jessel in Plimpton v. Malcolmson {r) : he 
 must not select eminent engineers or celebrated chemists 
 as the persons to whom the specification must be intelli- 
 gible, but he must choose " ordinary workmen " in the 
 particular branch of trade to which the invention refers — 
 "not a careless man, but a careful man, though not 
 possessed of that great scientific knowledge or power of 
 invention which would enable him by himself un- 
 aided to supplement a defective description or correct an 
 erroneous description." He may, of course, call eminent 
 engineers, but their evidence can only be, "placing my- 
 .self in the position of an ordinary workman I think it 
 would or would not be intelligible or sufficient to me." 
 If the specification be not sufficiently clear to be under- 
 stood by an ordinary workman (a witness for the plaintiff), 
 witnesses will not be allowed to be called to explain the 
 intention of the patentees, and the plaintiffs will be non- 
 suited (s). 
 
 Experiments conducted for the express purpose of manu- 
 
 (;)) Botls V. Wilmoti, L. R., 6 (r) L. R., 3 Ch. D. o31. 
 
 Ch. 239. (s) Brooks v. Ripley, 2 Load. 
 
 {q) Ante, Y\K 72 iind 73. Jour. C. S. 35.
 
 THE TRIAL. 259 
 
 facturiug evidence, with, a view to litigation, are to be 
 looked at with distrust (t). 
 
 The plaintiff must, if the matter be put in issue, prove 
 that the title, provisional specification and complete specifi- 
 cation, correspond and substantially describe the same 
 invention [it). 
 
 If it is alleged by the defendant that the invention is 
 illegal or useless, the burden of proof is on the plaintiff (.t). 
 
 So the plaintiff must be prepared, if he intends to claim 
 damages, and not on account, to prove the damage which 
 he has sustained. If he has been in the habit of granting 
 royalties, the amount of royalties to which he would have 
 become entitled is the proper measure of his damages ; as 
 to the measure of damages in other cases, see ante, j^. 203 
 et seq. 
 
 When the defendant pleads that the grantee of the 
 letters patent was not the true and first inventor, or 
 that the invention was not new, it will be sufficient if 
 the plaintiff gives some ^^^-^mayacze evidence of novelty (?/). 
 It will be sufficient to call one or two persons acquainted 
 practically with the trade to which the invention refers, to 
 say that they never heard of it, or saw or heard of its 
 having been put in practice or published before the date of 
 the patent. Gibbs, C.J., said : " The first witness, a man 
 of considerable experience, had never seen locks with the 
 lips so perforated ; primd facie that is good evidence ; but 
 when the question is, whether this had existence previous 
 to the patent, fifty witnesses proving that they never saw 
 it before would be of no avail if one was called Avho had 
 seen it and practised it " {z). 
 
 The plaintiff having given this primd facie evidence, 
 the burden of proof as to prior user or prior publication is 
 
 (t) Young v. Fernie, 4 Gitf. 609. 
 
 606. 
 
 
 
 {u) Ante, p. 60 et seq. 
 
 (2) Manton v. 
 
 Ilanton, 
 
 Dav. 
 
 {x) Ante, p. 255. 
 
 P. C. 350. 
 
 
 
 (V) Turner v. Winter, 1 T. R. 
 
 
 
 
 a 2
 
 260 PRACTICE. 
 
 shifted to the defendant, and if he would invalidate the 
 patent he must prove his case. 
 
 We have previously discussed what amounts to prior usei' 
 and prior publication (o). The evidence which the defendant 
 brings must be complete and satisfactory, and the Cjuestion 
 is one of fact. 
 
 If the defendant has succeeded in establishing a case 
 against the plaintiff, the latter will be permitted before the 
 defendant sums up, to adduce rebutting evidence. In 
 Penn v. Jack and Others [b), Sir W. Page-Wood, V.-C, 
 said : "I think the plaintiff is entitled to adduce evidence, 
 in reply, for tlie purpose of rebutting the case set up by 
 the defendants ; and for this reason, that it is quite im- 
 possible for him to know what is the nature of the evidence 
 which is to be produced. The defendants, who contest the 
 validity of the invention, have in effect put in a plea deny- 
 ing the novelty of the plaintiff's patent; and the affirmative 
 of the issue thus raised in reality rests with the defendants, 
 who are not obliged to grive the names of their witnesses. 
 How can the plaintiff possibly meet such a case until he 
 hears the evidence for the defence, and knows what their 
 witnesses will prove ? I should be very sorry to have to 
 put the parties to all the expense and delay of a new trial, 
 which I should have to direct, if this evidence were ex- 
 eluded. Besides which, the witnesses are at hand and 
 ready, and the sensible and obvious course is to examine 
 them now. The practice at common law is stated in 
 Taylor on Evidence ; and it appears that where, as here, 
 several issues are joined, the plaintiff may content himself 
 with ;i(l(lu('iiig evidence in support of those issues which he 
 is bound to [)rove, reserving the right of rcl)utting his adver- 
 sary's proofs, in the event of the defendant establishing a 
 pj'imd facie case with respect to the issues which lie upon 
 him. In support of this proposition, /S/iaw v. Becl- [c) is 
 
 (a) Ante, pp. .'55 iuid 41. {/>} L. 11., 2 K(]. at p. .'517 
 
 (c) 8 Kx. 3'i2.
 
 THE TRIAL. 261 
 
 cited, where Parke, B., used the following expression : 
 ' But Abbott, C.J., laid down what appears to me to be a 
 more reasonable rule, by holding that the defendant was 
 bound to prove his plea, and that the j)laintiff might answer 
 it by additional evidence/ Other instances are also men- 
 tioned, all showing the wide discretion given to the judge 
 in allowing evidence to be given by the plaintiff in reply. 
 The plaintiff has put in his letters patent as formal evidence 
 of his title. The defendants then j)lead want of novelty, 
 and give, in proof of the issues thus raised by them, special 
 evidence, which the plaintiff is entitled to rebut, by evidence, 
 in reply. Regarding this case as one of an affirmative plea, 
 the burden of proving which rests on the defendants, I feel 
 bound to admit the evidence proposed to be given by the 
 plaintiff in reply." 
 
 Although the j^laintiff may, as of right, rebut the case 
 made by the defendant, upon any issue which rests with the 
 defendant, where the plaintiff lias given such rebutting 
 evidence, the defendant will not be allowed to strengthen 
 the case which he had made by adducing further evi- 
 dence ; and this will apply with greater force when the 
 defendant's counsel has summed uj) the evidence which has 
 been offered (d). 
 
 At the hearing of the action, no objection will be 
 allowed, either to the particulars of objections, or to 
 the particulars of breaches, and any evidence will be 
 received which they are wide enough to admit of If there 
 is any vagueness or insufficiency in the particulars, the party 
 requiring further information must apply for it to a judge 
 in chambers, within reasonable time before the trial of the 
 action ; but they will not be allowed to permit the opposite 
 side to go to trial, and then to submit that, for want of 
 sufficient particularity in the objection, the evidence is not 
 admissible (e). 
 
 (d) Penn v. Jack, L. R., 2 Eq. W. 806 ; Hull v. Bolland, 1 H. & 
 at p. 318. N. 134. 
 
 («) Neilson v. Harford, 8 M. &
 
 262 PRACTICE. 
 
 In SyJces v. Howarth (/), the plaintiff delivered parti- 
 culars of breaches in May, 1878, which stated that the 
 defendant had at divers times between the 29th of ]May, 
 1879, and the commencement of the action, infrinofed the 
 plaintiff's patent by the manufacture, or sale, or use of 
 fancy rollers, and in particular by fancy rollers manufac- 
 tured and sold by or covered with cards, by tlie defendant, 
 for Messrs. Shaw and Mr. Smith. In July, 1878, the 
 statement of defence was delivered. It stated, " The 
 defendant has made and sold to Messrs. Samuel Shaw and 
 Co. and ]\Ir. Charles Smith, in the particulars of breaches 
 in this action respectively mentioned, and to other persons, 
 certain cards (in all six sets), which were all 2-| inches in 
 width ; " and the defendant, in answer to interrogatories, 
 disclosed the name of Hirst as one of the persons suppUed 
 with such sets of cards. Mr. Justice Fry admitted evidence 
 in Hirst's case. He said : " The defendant did not applv 
 for amended particulars, according to the case of Hull v. 
 BoUand [supra). It appears to me I have to inquire 
 what is the meaning of the particulars. I find that the 
 case of Hh'st is within the literal meaning of the particu- 
 lars. If I had found that the case of Hirst was likely to 
 create surprise, or likely to introduce any point not raised 
 in Smith's or Shaw's case, I should probably have given 
 an opportunity to the defendant to bring any fresh 
 evidence." The learned judge would not have ruled that 
 the plaintiff was prevented from giving the evidence in 
 Hirst's case, but he would have allowed the defendant to 
 rebut it. 
 
 These decisions must not be confused with a case where, 
 for example, the particulars alleged infringement or prior 
 user at London and Liverpool. In such a case no act of 
 infringement or prior user would be admitted in evidence 
 which did not occur at London or Liverpool, but if the 
 words were London, Liverpool, or elsewhere, then the 
 (/) L. R., 12 Ch. D. 826.
 
 THE TRIAL. 263 
 
 evidence might extend to any part of the country, because 
 any evidence would come within the strict meaning of the 
 objections. 
 
 Upon the trial no evidence will be received in support 
 of any issue which is not raised in the pleadings. In 
 Bovill V. Goodier [g) it was held that an objection to the 
 validity of a patent on the ground of the expiration of a 
 foreign patent for the same invention, cannot be taken at 
 the hearing of a suit to restrain the infringement of a 
 patent unless it has been raised by the answer. 
 
 {g) L. R, 2 Eq. 195.
 
 264 PRACTICE. 
 
 CHAPTER XL 
 
 QUESTIONS FOR COURT AND JURY. 
 
 We have seen that as a rule actions for the infringement 
 of letters patent arc directed to be tried before the Court 
 without a jury. Still, under special circumstances, the 
 parties, or either of them, may obtain an order to try 
 before a jury. Under these circumstances it will still be 
 material to consider what are the questions which the 
 Court should leave to the jury, and which are left to the 
 decision of the Court. 
 
 As to the specification. The construction is for the 
 Court (a) ; and the rules of construction are similar to 
 tliose which govern the construction of other documents(5). 
 In Hills V. Evans (c), Lord Westbury said : " It is un- 
 doubtedly true, as a proposition of law, that the construc- 
 tion of a specification, as the construction of all other 
 written instruments, belongs to the Court ; but a specifica- 
 tion of an invention contains most generally, if not always, 
 some technical terms, some phrases of art, some processes, 
 and requires generally the aid of the light derived from 
 wliat are called surrounding circumstances. It is, therefore, 
 nil admitted rule of law that the explanation of the words 
 or technical terms of art, the phrases used in commerce, and 
 the proofs and results of the processes which are described 
 (and in a chemical patent the ascertainment of (ihemicai 
 equivalents), tliat ;ill these are matters of fact upon which 
 
 (a) Hills V. Evans, 31 L. J., Cli. (6) Simpson \. Holliday, 20 New - 
 
 457 ; Seed v. Ilujffins, 8 II. L. Ciw. ton's Lon. Jour. N. S. 105. 
 561 ; Jiovill V. Awm, 11 Ex. 740. (c) 31 L. J., Ch. 457.
 
 QUESTIONS FOR COURT AND JURY. 265 
 
 evidence may be given, contradictory testimony may be 
 adduced, and upon which undoubtedly it is the province 
 and the right of a jury to decide. But when these portions 
 of a s^jecifi cation are abstracted and made the subject of 
 evidence, and therefore brought within the province of the 
 jury, the direction to be given to the jury with regard to 
 the construction of the rest of the patent, which is con- 
 ceived in ordinary language, must be a direction given only 
 conditionally, that is to say, a direction as to the meaning 
 of the patent upon the hypothesis or the basis of the jury 
 arriving at a certain conclusion with regard to the meaning 
 of those terms, the signification of those phrases, the truth 
 of those processes, and the result of the technical procedure 
 described in the specification. And so the rule is given by 
 Parke, B., in delivering the judgment of the Court of Ex- 
 chequer in the case, I think, of Neilson v. Harford (d). 
 The language of the learned judge, which I adopt, is in 
 these words : ' The construction of all written instruments 
 belongs to the Court alone, whose duty it is to construe all 
 such instruments as soon as the true meaning of the words 
 in which they are couched and the surrounding circum- 
 stances, if any, have been ascertained as facts by the jury ; 
 and it is the duty of the jury to take the construction from 
 the Court, either absolutely, if there be no words to be con- 
 strued as words of art or phrases used in commerce, and no 
 surrounding circumstances to be ascertained, or condition- 
 ally, when those words or circumstances are necessarily 
 referred to them.' Now, adopting that as the rule in the 
 comparison of two specifications, each of which is filled 
 with terms of art and with the description of technical pro- 
 cesses, the duty of the Court would be confined to this — to 
 oive the legal construction of such documents taken inde- 
 pendently. But, after that duty is discharged, there would 
 remain a most important function to be still performed, 
 
 (d) 8 M. <fe W. 806.
 
 266 PRACTICE. 
 
 which is the comparison of the two instruments when they 
 have received their legal exposition and interpretation ; and 
 <is it is always a matter of evidence what external thing is 
 indicated and denoted by any description, when the jury 
 have been informed of the meaning of the description con- 
 tained in each specification, the work of comparing the 
 two, and ascertaining whether the words, as interpreted by 
 the Court, contained in specification A, do or do not denote 
 the same external matter as the words, as interpreted and 
 explained by the Court, contained in specification B, is a 
 matter of fact, and is, I conceive, a matter within the pro- 
 A'ince of the jury, and not within the function of the 
 Court." 
 
 Epitomisiug this elaborate judgment. AVhen the lan- 
 guage used is that which has an ordinary and legal mean- 
 ing the question is, what has the man said ? not what did 
 he intend to say ? and, therefore, the Court will place the 
 leo-al meaning on his words. When the lano-uao-e used is 
 that which has no ordinary legal meaning, or which under 
 different circumstances may have two or more ordinary 
 legal meanings, the question is, as a fact, with what mean- 
 ing did the writer use the words or expressions which he 
 has used ? and that is a question which the Court should 
 require the jury to solve. The matter could not be placed 
 more lucidly than it is by Lord Westbury in the last dozen 
 lines of the judgment which we have quoted. 
 
 It is for tlic jury to say whether the specification is 
 intelligible (e) or not, and it is for the Court to direct 
 tlie jury as to the class of persons to whom it must be 
 intelligible (f). 
 
 It is for tlie jury to say whether the specification is 
 sufficient or not, that is, whether it contains a sufficient 
 description of the invention ; but it is for the Court to 
 
 (e) Meilson v. Harford, 1 Web. (/) See cases cited at p. 80 et 
 
 P. C. 295. seq.
 
 QUESTIONS FOR COURT AND JURY. 267 
 
 inform tlie jury the degree of sufficiency which the law 
 requires in specifications (g). 
 
 The novelty of the invention is a question for the jury. 
 Questions of prior user or prior publication are always 
 questions of fact, and it is for the jury to compare what 
 has been done before and what is set up as being new, and 
 to say whether or not they are identical. And so any 
 document which is said to amount to prior publication 
 must be construed by the Court, but it is for the jury to 
 compare it with the specification and to say whether the 
 described matter is the same or not (A). 
 
 The utility of the invention is also for the jury, sub- 
 ject to the directions of the Court as to the degree of 
 utility which the law requires for the purpose of support- 
 ing the validity of a patent {i). 
 
 The question of infringement is for the jury. In De la 
 Hue V. Dickinson (k), Campbell, C. J., said : — "There may 
 well be a case where the judge may and ought to take 
 upon himself to say that the plaintiff has offered no evi- 
 dence to be left to the jury to prove infringement, as if 
 there were a patent for a chemical composition, and the 
 evidence was that the defendant had constructed and used 
 a machine for combing wool. But, if the evidence has a 
 tendency to show that the defendant has used substantially 
 the same means to obtain the same result as specified by 
 the plaintiff, and scientific witnesses have sworn that the 
 
 (g) Bill V. Thompson, 1 Web. P. C. 222 ; Muntz v. Foster, 2 Web. 
 
 P. C. 235; BickfordY. Shewes, 1 Q. P. C. 107 ; Spencer v. Jack, 11 L. 
 
 B. 938 ; Neilson v. Harford, 1 Web. T., N. S. 242. 
 
 P. C. 295 ; Walton v. Bateman, (i) Hill v. Thompson, 1 Web. 
 
 1 Web. P. C. 621 ; Beard v. Eger- P. C. 237 ; Bloxam v. Elsee, 1 C. 
 
 ton, 19 L. J., C. P. 38; Walling- & P. 565; Cornish v. Keene, 1 Web. 
 
 ton V. Dale, 7 Ex. 888 ; Parkes v. P. C. 506 ; Morgan v. Seaward, 1 
 
 Stevens, L. R, 8 Eq. 358, and L. Web. P. C. 186 ; Macnamara v. 
 
 R., 5 Ch. Ap. Cas. 36. Hulse, C. & M. 471. 
 
 Qi) Cornish v. Keene, 1 Web. {k) 7 E. & B. at p. 755. 
 
 P. C. 519 ; Elliott v. Aston, 1 Web.
 
 268 PRACTICE. 
 
 defendant actually lias used sucli means, the question be- 
 comes one of fact, mixed with law, which the judge is 
 bound to submit to the jury." 
 
 In Seed v. Higgins {J), Lord Chelmsford in the House 
 of Lords said : — " What the defendant had done in any 
 case was of course a question of fact, but whether, on 
 proof of certain acts having been done by a defendant, 
 the plaintiff had any case to go to a jury, was a question 
 for the judge " {m). 
 
 (I) 30 L. J., Q. B. at p. 317. 331 ; Stevens v. Keating, 2 Web. 
 
 (m) See also Walton v. Potter, P. C. 191 ; Sellers v. Dickinson, 5 
 
 1 Web. P. C. 586 ; Macnamara v. Ex. 323 ; Curtis v. Piatt, 35 L. J. 
 
 Huhe, Car. & M. 471 ; Neivton v. Ch. 852. 
 Grand Junction Rail. Co., 5 Ex. 
 
 I
 
 ( 269 ) 
 
 CHAPTER XII. 
 
 CERTIFICATES. 
 
 Sect. 31 of the Patents, &c., Act, 1S83, is as follows : — 
 *' In an action for mfringement of a ^patent, the Court or 
 a judge may certify that the validity of the patent 
 came in question, a^id if the Court or a judge so certifies, 
 then in o,ny subsequent action for infringement, the plain- 
 tiff in that action, 07i obtaining a fined order or judgment 
 in his favour, shall have his full costs, charges and ex- 
 penses as betiveen solicitor and client, unless the Court or 
 judge trying the action certifies that he ought not to have 
 the same." 
 
 Similar provisions were contained in 5 & 6 Will. IV. 
 c. 83, and also in the 43rd section of the Patent Law 
 Amendment Act, 1883. 
 
 The object of these sections is to prevent patentees of 
 important inventions being ruined by successive actions, 
 which they are bound to bring to restrain infringements, 
 manufacturers banding themselves together to defeat a 
 patentee's rights in this manner. 
 
 The Act of William IV. cited above gave the patentee a 
 right to treble costs, but this was taken away by 5 & 6 
 Vict. c. 97, which gave him full costs ; and now, as we 
 have seen, costs as between solicitor and client are substi- 
 tuted for full costs. 
 
 In Otto V. Steel (a), Pearson, J., refused costs as between 
 
 (a) Griffin P. C. 182.
 
 270 PEACTICE. 
 
 solicitor and client in a second action, after a certificate had 
 been obtained in a first action, on the ground that the patent 
 was impeached on grounds substantially different from 
 those relied on in the first action. 
 
 To acquire the protection of the 31st section a certificate 
 is requisite, and this should be applied for at the trial of 
 the action, and the apphcation must be made to the Court 
 or judge who have tried the cause (6). 
 
 The Court have no power to order full costs upon the 
 first trial in which the vahdity of the patent came in 
 questioD, the words of the statute being " in any subse- 
 C[uent action for infringement " (c). 
 
 Where several simultaneous actions have been brought, 
 and one of them has been made a test action and proceeded 
 with to trial, upon a certificate being given in that action it 
 will not operate upon the others (d). 
 
 An action was compromised at the trial by a verdict 
 beincr entered for the plaintifi" in the action for 405. damages 
 and costs, with all usual certificates. Subsequently, upon 
 an ex parte application, the judge endorsed on the record a 
 certificate that the record in a certain action, wherein Bovill 
 was plaintiff" and Keyworth was defendant, and the certifi- 
 cate thereon endorsed was given in evidence at the trial of 
 this action {Bovill v. HacIIey], it was held that this certifi- 
 cate was improperly granted, the record and certificate in 
 the former action jiot having been given in evidence, and 
 it not bein<"'' under the circumstances a " usual certificate " 
 within the contemplation of the parties (e). Upon the 
 trial of the second action the record of the first action 
 with the endorsement must be produced, but not before 
 the verdict, in such a manner as to prejudice the second 
 trial (/). 
 
 (6) GUlet V. Green, 7 M. i W. 308. 
 
 347. (e) Bovill V. Hadley, 17 C. B., 
 
 (c) Penn v. BMij, L. R., 3 Eq. N. S. 435. 
 
 308. (/) Neivall v. Wilkins, 17 L. T. 
 
 {d) Penn v. Fernie, L. R., 3 F.(i. 20.
 
 CERTIFICATES. 271 
 
 The certificate of the judge, which is granted for tlie 
 purpose of affecting the costs in future cases, is one which 
 cannot be given by consent. In obtaining this certificate 
 the plaintiff and the country are the parties, not the 
 defendant, and the judge is bound to protect the interests 
 of the country and to see tliat the certificate is not given 
 when the validity of the patent has not, in fact, been proved 
 to the satisfaction of the Court ; otherwise, there is nothing 
 to prevent collusive actions being merely brought for the 
 purpose of obtaining this valuable privilege — a privilege 
 which can be used as an enormous lever, preventing per- 
 sons from incurring the risk of a conflict with the 
 patentee {g). 
 
 No appeal will lie from a granting or refusing to grant 
 a certificate that the validity of the patent came in question ; 
 such appeal not being from a judgment or order within 
 sect. 19 of the Judicature Act(^). 
 
 We have seen that the object of this section is to prevent 
 the patentee from being repeatedly harassed by the validity 
 of his patent being called in question in succession of 
 actions. It does not appear ever to have been decided 
 whether, when in a second action the validity of the patent 
 is not called in question, but there is a mere denial of 
 infringement, the section applies. It is submitted that 
 such a case was not within the contemplation of the 
 legislature, and that the judge should direct only party and 
 party costs whenever the validity of the patent is not called 
 in question. 
 
 Sect. 29 of the Act of 1883, after providing for the 
 delivery of particulars of breaches and objections, enacts : 
 " (6) On taxation of costs regard shall be had to the 
 jyarticulars delivered by the ijlaintiff and by the defen- 
 dant, and they respectively shall not be allowed any 
 
 ( g) Stacker v. Rodgcrs, 1 C. & gineering Co. v. Hall, 20 Q. B. D. 
 K. 99. 491. 
 
 (Ii) Ilaslam Fou7idry and En-
 
 9>7-Z PRACTICE. 
 
 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 ayid proper 
 without regard to the geyieral costs of the case." 
 
 Where the plaintiff is successful on some issues and the 
 defendant on some the costs should be apportioned (f). In 
 Simmonds v. Hitchman, noticed L. R. 29 Ch. D. at p. 4 17, 
 costs were apportioned by Bacon, V.-C. In Badische 
 Anilin Fabrik v. Levinstein (k), in the Court of Appeal, 
 Bo wen, L.J., said : " I am of opinion in this case that the 
 plaintiffs should have the costs occasioned by the issues 
 raised by the particulars of breaches, and that in respect of 
 all the other costs the costs in the action should follow the 
 usual result and be awarded to the successful party. It 
 seems to me that without laying down any hard and fast 
 line, or trying to fetter our discretion at a future period in 
 any other case, we are acting on a sensible and sound 
 principle, namely, the principle that the parties ought not, 
 even if right in the action, to add to the expenses of an 
 action by fighting issues in which they are in the wrong. 
 It may be very reasonable with regard to their own interest, 
 and may help them in the conduct of the action, that they 
 should raise issues in which, in the end, they are defeated, 
 but the defendant who does so does it in his own interest, 
 and I think he ought to do it at his own expense. The 
 order, therefore, I think ought to be as I have stated." 
 
 The certificates granted under this section must not be 
 confused with the certificate under sect. 31. The object of 
 sect. 29 is to provide what costs shall be payable in the 
 action itself, and the object of sect. 31 is to provide for the 
 costs of future actions. 
 
 Care must be taken at the trial to ask the judge to 
 
 (i) Wegmaim v. Corcora7i, L. K. {/c) L. K., 29 Ch. D. at p. 418. 
 
 13 Ch. D. 65 ; 27 W. R. 357 ; Young See also Foolci/ v. Pointon, Griffin, 
 V. Rosenthal, 2 P. 0. R. 41. P. C. at p. 200.
 
 CERTIFICATES. 273 
 
 certify as to each particular breach mentioned in tlie 
 particulars of breaches, and as to each particular objection, 
 and no costs of witnesses, or of, and incidental to, such 
 l)reach or objection, as is not specially certified for, will be 
 allowed (/). The Court of the County Palatine cannot 
 grant a certificate, not being a " Court " within the mean- 
 ing of the Patent, &c.. Act, 1883 (to), and this appears to 
 be confirmed by sect. 26 of the Patents, &c., Act, 1888. 
 The certificate is not a judgment or order under sect. 19 of 
 Judicature Act, 1873, and therefore there is no appeal 
 from the judge who grants or refuses it {n). 
 
 If an action is not tried out, it is obvious that a difficulty 
 may arise as to costs, since the parties have had no 
 opportunity to prove or disprove their particulars. In 
 Greaves v. The Eastern Counties Railway Co. (o), it was 
 held that where the defendant had delivered particulars 
 of objections, and just before trial the plaintiff" had 
 abandoned his action, thus giving the defendant no 
 opportunity of proving or disproving his objections, the 
 defendant was entitled to the costs of the objections and 
 of the witnesses, for the act did not apply, except where 
 the cause came on for trial. It will be observed, however, 
 that there is a diff"erence between the language of the 
 43rd sect, of the Patent Law Amendment Act, 1852, and 
 the language of the 29th sect, sub-sect. (6) of the Patents, 
 &c. Act, 1883. In the former case the words were : "Shall 
 not be allowed any costs in respect of any particular unless 
 certified by the judge before tuhom the trial ivas had to have 
 been 'proved." Under the latter statute : " Shall not he 
 allowed any costs in respect of any particidar delivered 
 
 (/) Honiball v. Bloomer, 10 {tn) Proctor v. Sutto?i Lodge 
 
 Exch. 538. See alsoZos/iv. Hague, Chemical Co., 5 P. 0. R. 184. 
 
 5 M. & W. 387, and Parnell v. {n) Haslam v. Hall, 5 P. 0. B. 
 
 Mort Leddell d: Co., 29 Ch. D. 144. 
 
 325. (o) 1 E. & E. 961. 
 
 T. T
 
 274 PRACTICE. 
 
 hy them, unless the same is certijied hy the Court or a 
 judge to have been i^roven^ or to have been reasonable and 
 proper," It is submitted that the practice under the new 
 act when the action has not been tried is to take out a 
 summons before a judge at chambers for a certificate, on 
 the ground that the particulars were reasonable and proper ; 
 such summons should be supported by an afBdavit, alleging 
 that the plaintiff or defendant had reasonable grounds for 
 believing that he would at the trial have been able to prove 
 the particulars in respect of which application is made ; 
 but a certificate so granted will not operate in a manner to 
 entitle the plaintiff to costs as between solicitor and client 
 in any subsequent action. 
 
 Since the above was written the point in c^uestion has 
 arisen in Peroni v. Hudson [p), where the defendant did 
 not appear on the trial. Kay, J., ga^'e a certificate that 
 the plaintiff had proved his particulars, but refused to 
 certify that the validity of the patent came in question, 
 holding that sect. 31 only applied where the patent was 
 established in a case contested in Court. 
 
 We have seen that since the Judicature Acts, the 
 Common Law Di\'ision and the Chancery Division can 
 cither of them grant full relief in an action for the infrino-e- 
 ment of a patent, granting both an injunction and 
 damages, or an account. In olden times the Common 
 Law Courts merely inquired into damages, and if less 
 than -iOs. was recovered a question arose as to whether 
 or not County Court costs should not alone be allowed ; but 
 now in every patent case an injunction may be granted, 
 and this rencovcs the case from the operation of 30 &: 31 
 Vict. c. 142, s. 5. 
 
 The Rules of the Supreme Court, 1S83, provide for cases 
 where the higher scale and lower scale of costs aie to he 
 allowed ; and in future, notwithstanding that an injunction 
 
 (;;) (;riffii), V. C. 183.
 
 CERTIFICATES. 275 
 
 is granted, it will be necessary to ask the judge at the trial 
 to certify for costs on the higher scale. 
 
 Order LXV. r. 8, provides : " In causes and matters 
 commenced after these rules come into operation, solicitors 
 shall be entitled to charge and be allowed the fees set forth 
 in the column headed ' lower scale,' in Appendix N. in all 
 causes and matters, and no higher fees shall be allowed in 
 any case, except such as are by this order otherwise 
 provided for ; and in causes and matters pending at the 
 time when these rules come into operation, to which the 
 higher scale of costs previously in force was applicable, 
 the same scale shall continue to be applied." 
 
 Eule 9. — " The fees set forth in the column headed 
 ' higher scale ' in Appendix N. may be allowed, either 
 generally in any cause or matter, or as to the costs of any 
 particular application made, or business done, in any cause 
 or matter, if, on special grounds arising out of the nature 
 and importance, or the difficulty or urgency of the case, the 
 Court or a judge shall, at the trial or hearing, or further 
 consideration of the cause or matter, or at the hearing of 
 every application therein, whether the cause or matter shall 
 or shall not be brought to trial or hearing, or to further 
 consideration (as the case may be) so order ; or if the 
 taxing officer, under directions given to him for that 
 purpose by the Court or a judge, shall think that such 
 allowance ought to be made upon such special grounds as 
 aforesaid." 
 
 Sect. 49 of the Judicature Act, 1873, provides that there 
 shall be no appeal as to costs ; but this was held not to 
 apply where the costs were a matter of right, and not 
 discretionary {q). Under the Eules of Court, which were 
 in operation prior to the 24th October, 1883, the question 
 of higher or lower scale was a matter of right (r). Hence, 
 
 (q) Turner v. Ha)icocl;C. A., 20 (r) Rules of S. C. Dec. 1875 
 
 Ch. D. 303. 
 
 T 2
 
 276 PRACTICE. 
 
 in Re Terrell (s), tlie Court of Appeal held that there was 
 an appeal, hut no^Y it will he ohserved that the order is in 
 the alDsolute discretion of the judge, and, therefore, it is 
 submitted there is no appeaL 
 
 The directors of a limited company, whose servants 
 have infringed a patent, may be ordered to pay costs 
 personally. Sir W. Page- Wood, in Betts v. De Vitre (i), 
 said : " Where there is a wilful act against the rights of a 
 patentee, after he has obtained a verdict, and the certificate 
 of a judge, that his title came in question, all the world 
 must be taken to know that that was fairly and com- 
 pletely tried and disposed of, and, if they infringe the 
 patent, they infringe it with a liability for costs." The 
 reasoning of this decision is not quite clear, and it is 
 submitted that, should the question arise again, the opinion 
 of the Court of Appeal might be taken on the subject, 
 regard being had to the case of Denley v. Blore {u). 
 
 Judgment having been recovered, minutes of judgment 
 should be prepared. The minutes will be in accordance 
 with one or other of the precedents given hereafter. We 
 have drawn attention in previous pages to those points 
 which should be attended to in preparing these minutes. 
 Care should be exercised when an account is directed to be 
 taken that provision be made for the payment of costs to 
 the plaintiff up to and including the hearing, otherwise the 
 payment of all costs will be delayed until the final account 
 has been taken, which in some cases has been known to 
 amount to a delay of years. 
 
 («) L. R., 22 Ch. D. 473. (u) 38 Loud. Jour. 224. 
 
 (t) 11 Jur., X. S. 11.
 
 ( 277 ) 
 
 CHAPTER XIIL 
 
 PRACTICE ON PETITION FOR REVOCATION. 
 
 The Rules of the Supreme Court apply to a petition for 
 revocation and the word plaintiff in Ord. XXXI. r. 1, 
 includes petitioner (a). 
 
 All persons are not empowered to petition for revocation 
 of a patent. 
 
 The parties who may petition are specified in sect. 26, 
 sub-sect. 4, of the Patents Act, 1883. 
 
 The petition must be presented to the High Court of 
 Justice. 
 
 A form of petition, applicable to such a case is given 
 hereafter (6). 
 
 Sub-sect. (5). " The p/am^i^' must delivey^ with his 
 petition 2)a7^ticulars of the objections on ivhich he means 
 to rely, and no evidence shall, except by leave of the Court 
 or a judge, be admitted in proof of any objection of which 
 particulars ai'e not so delivered." 
 
 The practice as to particulars is precisely similar to that 
 in an action for infringement. It will, however, be 
 observed that the judge has no power of certifying under 
 sect. 31 that the validity of the patent came in question, 
 nor will a certificate granted in a previous action for 
 infringement affect the question of costs in proceedings 
 for revocation, the words of sect. 31 being " in any subse- 
 quent action for infringement." 
 
 (a) Haddan's Patent, 54 L. J. Cb. 126. (6) Page 288.
 
 278 PRACTICE. 
 
 Sect. 100 of tlie Judicature Act, defines " Pleading" as 
 including any pe^l^^on or summons, and also as including 
 the statements, in writing, of tlie claims or demand of 
 any plaintiff, and of the defence of any defendant thereto, 
 and of the reply of the plaintiff to any counter-claim of a 
 defendant. 
 
 Ord. XXXI. r. 1, of the Rules of the Supreme Court, 
 gives power to the Court, or a judge, to permit interro- 
 gatories " in any other cause or matter,^'' to be delivered by 
 either party to the other. It is presumed that leave will 
 be given to the respondent (called defendant in the Patent 
 Act, 1883) to deliver interrogatories to the petitioner, and 
 circumstances may arise when it would be just to permit 
 the petitioner to examine the respondent. The rules as to 
 interrogatories will be similar to those in an action for 
 infringement. 
 
 The respondent having entered an appearance to the 
 petition, the same will be set down for trial. 
 
 There does not appear to be any provision that the 
 petition should be verified by affidavit, or that the respon- 
 dent should deliver an answer. 
 
 The respondent should be careful that the particulars of 
 objections are suflBciently precise and accurate, other- 
 wise he may be taken by surprise at the hearing (c). He 
 ' may apply for further and better particulars in the same 
 manner as in an action for infringement ; and under sect. 
 2G, sub-sect. (6), " Pai^ticulars delivered may he, from 
 time to time, amended by leave of the Court or a judge." 
 
 Sect. 28, sub-sect, (l), })rovides that the mode of trial of 
 a petition for revocation shall be similar to that of an 
 action for infringement. 
 
 And the parties are entitled to have the petition heard 
 as vivd voce evidence {d). 
 
 (c) Ante, p. 22R et scq. 34 Ch. D. 39G ; 56 L. J. Ch. 606 ; 
 
 {d) Goulard and Gibbs' Patent, .56 L. T. 284.
 
 REVOCATION. 27'.) 
 
 Sect. 26, sub-sect. 7. " Tlie defendant shall he entitled 
 to begin and give evidence in supj)ort of the patent, and if 
 the plaintiff gives evidence impeachi7ig the validity of the 
 patent, the defendant shall he entitled to reply J' 
 
 The evidence whicli will be required of the respondent 
 (defendant), in the first instance, will be very slight, and 
 will be similar to that which he would give as to the 
 validity of the patent were he plaintiff in an action for 
 infringement. The petitioner will then have to prove the 
 case he alleges in his petition and particulars, and the 
 respondent has the right of reply. It is merel}^ to preserve 
 this right to reply, that the respondent is made practically 
 plaintiff at the trial. 
 
 It is very doubtful whether sect. 29, sub-sect. (6), will be 
 held to apply to petitions for revocation. Sub-sect, (l) of 
 the same section, limiting, apparently, the operation of that 
 section to actions for infringement, as distinguished from 
 sect. 28, which deals with both actions for infringement and 
 petitions for revocation.
 
 280 PRACTICE. 
 
 CHAPTER XIV. 
 
 PRACTICE ON APPEAL. 
 
 Under Order LYIII. rule 4, the Court of Appeal has all 
 the powers and duties as to amendment and otherwise of 
 the High Court together ^^'ith full discretionary power to 
 receive further evidence upon questions of fact, such 
 evidence to be either by oral examination in Court, by 
 affidavit, or by deposition taken before an examiner or 
 commissioner. Such further evidence may be given with- 
 out special leave upon interlocutory application or in any 
 case as to matters which have occurred after the date of the 
 decision from which the appeal is brought. Upon appeals 
 from a judgment after trial or hearing of any cause or 
 matter upon the merits, such further e\'idence (same as to 
 matters subsequent as aforesaid) shall be admitted on 
 special grounds only, and not without special leave of the 
 Court. 
 
 Leave to amend particulars of objections to letters 
 patent was refused where the case had been argued 
 throughout on the footing that no such amendment was 
 necessary (a). 
 
 As to fiuiher evidence in Hinde v. Osborne (6), Lindley, 
 L.J., said : " The power given to the Court of Appeal to 
 hear fresh evidence is an extremely valuable one, and is 
 given by (Jrder LVHI. r. 4. I cannot understand that as 
 meaning that the Court of Appeal ought to grant leave to 
 
 (a) Cropper v. Smith, 26 C. D. L. J., at pp. 710, 711. 
 7U0; but see remarks of Bowen, (6) Gritiin, i\ C. at p. 127.
 
 PRACTICE ON APPEAL. 281 
 
 adduce fresh evidence, simply because a man has failed at 
 the trial and he thinks he can get more evidence, which, if 
 he had got it before, would have enabled him to succeed on 
 the trial. That cannot be. There must be some ground 
 shown to satisfy the Court that there is some evidence now 
 forthcoming, which, with due diligence, he could not have 
 got, and it must, therefore, in accordance with the usual 
 practice, be evidence, not merely swearing by affidavits or 
 anything of that kind, but something in the nature of the 
 production of a lost document, or something of that sort, 
 which will not expose the parties to a mere flood of 
 affidavits made up to meet the blots and defects which 
 have been disclosed upon the first trial." 
 
 Pending an appeal an inju7iction will under some cir- 
 cumstances be suspended (c). 
 
 On appeal to the House of Lords it was held in a case 
 where the Court of Appeal had held the specification bad 
 and for the defendant on the infringement issue, but the 
 House had reversed the decision on the specification and 
 upheld it on the infringement issue, that each party must 
 pay their own costs of the appeal {d). 
 
 (c) Hocking v. Frazer, GriflBn, {d) Moore v. Bennett, Griffin, P. 
 
 P. C. 129. C. at p. 161.
 
 282 PRACTICE. 
 
 CHAPTER XV. 
 
 ACTION FOR INJUNCTION TO RESTRAIN THREATS. 
 
 Sect. 32 of the Patents Act, 1883, provides, " Where 
 any perso7i claiming to he the j^cctefitee of an invention, by 
 circulars, advertisements, or otherwise, threatens any 
 other person with any legal proceedings, or liability in 
 respect of any alleged manifacture in sale or pm'chase of 
 the inventio7i, any person or persons aggrieved thereby 
 may bring an action against him, and may obtam an in- 
 junction agai7ist the continuance of such threats, and may 
 recover such damage {if any) as may have been sustained 
 thereby, if the cdleged manufacture^ use, sale, or purchase, 
 to which the threats related, was not, in fact an infringe- 
 ment of any legal rights of the person making such 
 threats : Provided that this section shall not apply if the 
 person making such threats, iviih due diligence, com- 
 meyices and prosecutes an action for infri7igement of his 
 patent.^^ 
 
 The action mentioned in the proviso as taking a case out 
 of the section need not be an action against the person who 
 is suing; to restrain the threats, but that an action for in- 
 fringement honestly brought with reasonable diligence 
 against any of the persons who have been threatened will 
 if duly prosecuted satisfy the proviso (o). 
 
 Pending the trial of an action for the infringement of 
 certain patents, the plaintiffs in the action issued advertise- 
 ments stating that in consequence of the continued infringe- 
 ment of tlieir })at('nts l)y the defendants, they had 
 commenced an action against them to restrain them from 
 infringing sucli patents ; and that actions would be com- 
 menced against all persons employing or using apparatus 
 (a) ChaUender v. Royle, 36 Ch. D. 425.
 
 ACTION FOR INJUNCTION TO RESTRAIN THREATS. 283 
 
 which was in accordance With the letters patent without the 
 leave of the patentees. Held that the plaintiffs were not 
 justified in issuing such advertisements notwithstanding 
 sect. 32, sujyra (b). 
 
 Before this Act an injunction under some circumstances 
 might have been granted (c). 
 
 This section would appear to give the threatened party 
 the power of testing the validity of the patent. 
 
 But in an action commenced under this sect. 32 of the 
 Act for an injunction to restrain a patentee from issuing 
 threats of legal proceedings, Chitty, J,, held that the 
 validity of the patent could not be tried, the only issue in 
 such an action being infringement or no infringement. The 
 plaintiffs in their statement of claim alleged that the 
 defendant's patent was invalid, and such allegation was 
 ordered to be struck out (d). 
 
 No aj)peal was lodged from this decision until it was too 
 late, subsequently upon application to amend by reinserting 
 the allegations that the patent was invalid, the Court of 
 Appeal expressed the opinion that the validity of the patent 
 could be quesdoned under this section, and allowed the 
 amendment upon terms tliat particulars of objection were 
 delivered, and that the defendant, as to the validity of the 
 patent, be at liberty to begin and reply (e), and the decision 
 of Chitty, J., (supra) has since been directly overruled by 
 the Court of Appeal {/). 
 
 In Driffield &c., Pure Lhtseed Cake Co. v. Waterloo 
 Mills, (&c., Co., (g), such a course was evidently con- 
 templated but was abandoned. Bacon, V.-C, held that the 
 words " by circulars, advertisements, or otherwise," did not 
 
 (6) Goulard v. Lindsay, 56 L. T. 579. 
 506. {e) Kurtz v. Spence, 36 Ch. D. 
 
 (c) Societe, dr., des Glaces v. 770. See also Walker v. Clarke, 
 
 Tilghman's, tix., Co. 25 Ch. D. 1, 56 L. J. Ch. 239. 
 and Halsey v. Brotlierliood, 15 Ch. (/) Challender v. Royle, 36 Ch. 
 
 D. 514. D. 425. 
 
 {d) Kurtz V. Spence, 33 Ch. D. {g) 31 Ch. D. 638.
 
 284 PRACTICE. 
 
 mean otherwise ejusdem generis with circulars or advertise- 
 ments, and that a solicitor's letter was a sufficient threat, a 
 perpetual injunction was granted, but a claim for damages 
 disallowed. 
 
 This is neither an action for infringement under sect. 29 
 nor a petition for revocation under sect. 26, and therefore 
 the provisions as to particulars of objections do not apply. 
 The provisions of the Eules of the Supreme Court, 18 S3, as 
 to particulars do not appear to be available for the obtain- 
 ing of particulars of objections in such a case, it being 
 remembered that the patentee is defendant ; that the cause 
 of action is not to establish the patent but to restrain 
 threats, and that the patentee himself has to set up his 
 valid patent by way of substantive defence. The patentee 
 is at such disadvantage in such form of action that it is to 
 his interest forthwith to commence an action for infringe- 
 ment, and to apply for a stay of the action brought against 
 him (A). 
 
 Forms of indorsement to writ, &c., under this section, are 
 given hereafter. 
 
 Id Barrett v. Barrett's Screw Stopper Co., Limited {i), 
 an action had been brought to restrain the issue of certain 
 circulars containing threats against persons infringing 
 defendant's alleged patent. The inventor had brought an 
 action for infringement. Upon motion for interlocutory 
 injunction to restrain the issue of the circulars, Pearson, J., 
 adjourned the motion until the hearing of the action for 
 infringement wdth liberty to apply and costs reserved. 
 
 If an action to restrain threats has been commenced and 
 stayed pending an action for infringement, and the action 
 for infringement is not prosecuted with due diligence, an 
 injunction will be granted upon the first action and the 
 stay removed (j). And in considering whether such an 
 
 (/t) See Kurtz v. Spence, 30 Cb. {j) Household w Fairhurn, Qv'i^n, 
 
 D. 770. P. C. 131. 
 
 (t) 1 Patent Offi:e Reports, 9.
 
 ACTION FOR. INJUNCTION TO RESTRAIN THREATS. 285 
 
 action is brouo-lit with due dilio-ence, the time of issuinof 
 the threats, and not the time when the party bringing the 
 action first knew of the acts which he alleixes to be infrino^e- 
 ments, is the period to be looked at(Z:). 
 
 In Burney v. United Telephone Co., (/), upon an inter- 
 locutory motion to restrain threats, the defendants declined 
 to bring an action for infringement on the ground that the 
 plaintiff was a man of straw, Chitty, J., said : " Sect. 32 of 
 the Act of 1883, under which this motion is made contains 
 this condition, ' If the alleged manufacture . ... to 
 luhich the threats related ivas not in fact an infringement 
 of any legal rights of the person m^aking the threats.' In this 
 case there appears to be a serious question between the 
 parties whether the instrument sold by the plaintiff is an 
 infringement or not of the defendant company's patent 
 rights. There is a conflict of affidavits upon the point, and 
 therefore the question is one which the Court cannot decide 
 on this motion. As the plaintiff is not al)le to prove that 
 there is not in fact any infringement of the defendant 
 company's rights, which is a condition precedent to his 
 obtaining an injunction, the motion must be refused." 
 Costs were ordered to be costs in the cause. 
 
 In Sharp v. Brauer (m), which was an action to restrain 
 threats and for damages. Bacon, V.-C, said : " Upon the 
 question of damages, the case is covered over and over 
 again by decisions. Unless there is plain evidence of malice, 
 in the plain common vernacular meaning of the word malice, 
 there is no cause of action." 
 
 In Challender v. Royle (7^), upon the subject of an In- 
 terlocutory Injunction in an action to restrain threats, Cot- 
 ton, L. J., said : " I think, however, that before going to the 
 
 (k) Challender v. Royle, 36 Ch. Hahey v. Brotherhood, 15 Ch. D. 
 
 D. 423. 514, and 19 Ch. D. 386 ; Wren v. 
 
 (0 L. R. 28 Ch. D. 394. Weild, 4 Q. B. L. R. 730. 
 
 \m) Griffin, P. C. 205. See colso («) 36 Ch. D. at p. 435. 
 Sugg V. Bray, Griffin, P. C. 210, and
 
 286 PRACTICE. 
 
 proviso, I ought, having regard to the judgment of the 
 
 Vice-Chancellor, to state my opinion as to how the matter 
 
 ought to be dealt with in an interlocutory application. As 
 
 far as I understand the Vice-Chancellor, he seems to have 
 
 considered that he could not enter, or that he need not enter, 
 
 at this stage of the cause into the question, whether the sale 
 
 of the plaintiff's tap-unions was an infringement of the 
 
 defendant's patent, or whether that patent was a valid 
 
 patent, and that all he need consider was the balance of 
 
 convenience and inconvenience as between these parties in 
 
 o-ranting or refusing the interlocutory injunction. I must 
 
 express my dissent from that view. It is very true that in 
 
 all cases of interlocutory injunction the Court does considei^ 
 
 and ouo-ht to consider the balance of convenience and incon- 
 
 venience in granting or refusing the injunction. But there 
 
 is another and very material question to be considered, has 
 
 the plaintiff made out a primd facie case '? That is to say, if 
 
 the evidence remains as it is, is it probable that at the 
 
 hearino" of the action he will get a decree in his favour ? 
 
 Therefore, though I quite agree that the Court ought not on 
 
 an interlocutory injunction to attempt finally to decide the 
 
 question, whether the act complained of is an infringement, 
 
 or (if the question of the validity of the patent is raised), 
 
 whether the patent is a valid one or not, yet in my opinion 
 
 it ouo-ht to be satisfied that on one or both of these two 
 o 
 
 points, the plaintiff in the action has made out a iirimd 
 facie case, and unless the Court is so satisfied it would be 
 wron^y to grant an injunction merely on the ground that it 
 cannot do the defendant any harm." 
 
 It has been deemed advisable to limit the remarks in this 
 work to such points of practice as pertain particularly to 
 the law of patents. The general practice of the Courts has 
 not been dealt with, and the practitioner is referred to tlie 
 ordinaiy books of practice for such general information as 
 he, iiiJiy require.
 
 F E M S 
 
 FOR PROCEP^DINGS IN THE HICtH COURT 
 OF JUSTICE. 
 
 Indorsement on Writ. 
 
 1. Action for Infringement 
 The plaintiff's claim is : — 
 
 1. For au injunction to restrain the defendant from infringino- injunction. 
 the plaintiff's patent, No. , and dated . 
 
 2. For damages for the infringement of the said patent, or Damages. 
 alternatively that an account may be taken of all the machines Account, 
 made in infringement of the said patent which have been manu- 
 factured, or sold, or let for hire, or used by or by the order, or 
 
 for the use and profit, of the defendant, and also of the gains and 
 profits made by the defendant by reason of such manufacture, 
 sale, or letting for hire or use, and that the defendant may by a 
 day to be appointed by the Court be ordered to pay to the 
 plaintiff the amount of such gains and profits. 
 
 3. That the defendant may be ordered upon oath to deliver Order for 
 up to the plaintiff, or break up, or otherwise render unfit for destruction. 
 use, all machines or parts of machines made in infringement of 
 
 the plaintiff's said patent, which are in the custody or power of 
 the defendant, his servants, or agents. 
 
 2. Action to restrain Threats. 
 The plaintiff's claim is : — 
 
 1. For an injunction restraining the defendant from, by cir- Injunction. 
 culars, advertisements, or otherwise, threatening to takeleo-al or 
 
 other proceedings against persons manufacturing, usino-, or 
 
 selling an alleged invention of the defendants, to wit, 
 
 The said threats being to the prejudice of the plaintiff. 
 
 2. For damages in respect of the injury sustained by the 
 plaintiff by reason of the circulars, advertisements, or other 
 threats of the defendant to take legal or other proceedino-g 
 against persons manufacturing, using, or selling the said alleo-ed 
 invention.
 
 288 
 
 FORMS. 
 
 3. Petition for the Revocation of a Patent. 
 
 Grant. 
 
 Not first in- 
 Tentor. 
 
 Obtained in 
 fraud of 
 petitioner. 
 
 In the High Court of Justice, 
 
 Chancery [or Queen's Bench] Division. 
 
 In the matter of Letters Patent granted to 
 dated , and numbered , a 
 
 id 
 
 , of- 
 the 
 
 matter 
 
 of the Patents, Designs, and Trade Marks Act, 1883, 
 sect. 26. 
 
 To Her Majesty's High Court of Justice. 
 
 The humble petition of Sir , Her Majesty's Attorney- 
 General in England (or Ireland, or Lord Advocate in 
 Scotland) (or other person authorized to petition by 
 sect. 26, sub-sect. 4 of the Patents, &c. Act, 1883) (a), 
 
 Sheweth as follows : — 
 
 1. Letters patent, dated the 
 
 18 — , have been granted 
 
 -, for [title of invention]. The said letters patent were 
 
 to — 
 
 sealed on the 
 
 2. On the said [date of letters patent], the said [name of 
 grantee], was not the true and first inventor of the said invention. 
 
 3. Tlie said letters patent were obtained by the said [name of 
 grantee], in fraud of the rights of your petitioner, who was the 
 true and first inventor of such invention, [or, in fraud of the 
 
 rights of J S , who was the true and first inventor 
 
 of the said invention. The said J S died on the 
 
 day of 
 
 -, intestate, and letters of administration of 
 
 Invention not 
 new. 
 
 Had been 
 used by 
 petitioner. 
 
 Not 8u>)ject 
 matter for 
 patent. 
 
 his estate were granted to your petitioner out of the Probate 
 Division of this Honourable Court, on the day of ]. 
 
 4. The said invention was not at the time of the date of the 
 said letters patent a new invention as to the public use and 
 exercise thereof within this realm. 
 
 5. Your petitioner (or 2)erson under or through ivhom he claims 
 an interest in any trade, business, or manufacture) had prior 
 to the date of the said letters patent publicly manufactured, 
 used, or sold within this realm the alleged invention (or a part 
 of the alleged invention, to wit, such part as relates to, &c., &c.), 
 in respect of which such letters patent were granted as aforesaid. 
 
 6. The said alleged invention was not any manner of new 
 manufacture, the subject of letters patent and grant of privilege 
 within sect. 6 of the Statute of Mono])olies. 
 
 (a) If till' ])<'titiiiii 1)0 presented 
 by any person under sect. 2n, snh- 
 eeet. 4 (c), (d), or (e), the name and 
 addres.", and deficrii)tion of peti- 
 
 tioner must appear ; if under (b), 
 tlie f;u't of the authority of the Attor- 
 ne}'-(ieueral must he staled. Glaz- 
 brook V. Gillatt, !) Beav. 492.
 
 FORMS. 289 
 
 Your petitioner humbly prays that the said letters patent may 
 be revoked, or that such other order may be made in the 
 premises as to this Honourable Court shall seem meet. 
 And your petitioner will ever pray. 
 
 It is intended to serve this petition on (6) , . 
 
 4. Notice of Motion for Interlocutory Injunction. 
 
 In the High Court of Justice, 
 
 Chancery [or Queen's Bench] Division. 
 
 Between A. B Plaintiff, 
 
 and 
 CD Defendant. 
 
 Take notice that this Honourable Court will be moved [if short 
 
 notice of motion, by leave granted] on the day of , 
 
 or so soon thereafter as counsel can be heard by Mr. , 
 
 of counsel for the above-named plaintiff, that an injunction 
 may be awarded against the defendant to restrain the said 
 defendant, his servants or agents until the trial of this action or 
 farther order from either directly or indirectly making, using, 
 or putting in practice the invention described in the specifica- 
 tion and drawings filed under the letters patent granted to the 
 plaintiff [or assignor, or other predecessor in title of plaintiff], 
 
 and numbered , or that such further order may be made 
 
 in the premises as to the Court may seem meet. 
 
 5. Affidavit in Support of Notice of Motion. 
 
 [Title as above.] 
 
 I, of , the above-named plaintiff, make oath 
 
 and say, 
 
 1. Letters patent dated [ ] were granted to me under Graut. 
 
 the seal of the Patent Office for an invention entitled " improve- 
 ments, &c., &c.," for a period of fourteen years from the 
 
 day of . 
 
 2. At the time when the said letters patent were granted to Novelty. 
 me the said invention was new as to the public use and exercise 
 thereof within this realm. 
 
 (6) Here insert the names and served personally, unless an order 
 
 addresses of all persons who, either has been obtained for substituted 
 
 as original grantees or by assign- service. The original must be 
 
 ment, ai'e registered under sect. 23 shown if demanded!^ An order may 
 
 of the Patent, &c. Act, 1883, as be obtained for service out of the 
 
 interested in the patent. jurisdiction ; see Daniell's Chancery 
 
 A copy of the petition mv;st be Practice. 
 
 T. U
 
 290 FOEMS. 
 
 First 3. I am the true and lirst inventor of the said invention [or 
 
 inventor. John Smith or other predecessor in title of the plaintiff, was the 
 
 true and first inventor of the said invention]. 
 Utility. 4. The said invention is of great public utility. 
 
 5. [State any 2^ct'i"ticular fads, sucJt as a previous action or 
 loiKj user, vjhichkave a tendency to cause a presumption of the 
 validity of the jjatent.] 
 
 Infringement. 6. On the day of the defendant infringed the 
 
 plaintiff's said patent by manufacturing [selling or using], 
 etc. (c). 
 
 7. [The articles sold by the defendant Avere not manufactured 
 b}^ me or b}^ my licensees or agents.] 
 
 8. I believe that the defendant means to continue the in- 
 fringement of the said letters patent, whereby my trade is 
 greatly injured ; persons refusing to jDurchase the patented 
 articles from nie [or I am unable to grant licences, or state any 
 other grounds of spec kd cUcmage arising by reason of the con- 
 t inu ed infringement] . 
 
 6. Interlocutory Order to Restrain Infringement of 
 
 Patent. 
 
 Form 1. 
 
 Upon motion, &c. by counsel for the plaintiff, and upon hear- 
 ing counsel for the defendant [or reading an affidavit of service 
 of notice of this motion on the defendant ; or, if moved ex parte 
 before the defendant has appeared, the writ of summons issued in 
 
 this action on tlie ■ — day of ] [enter afUdavits in 
 
 sup)port and in opposition, if any], and the plaintiff, by his 
 counsel, undertaking to abide by any order this Court may 
 make as to damao^es, in case this Court should hereafter be of 
 opinion that the defendant shall have sustained any, by reason 
 of this order, which the plaintiff ought to pay [if so, and also 
 undertaking to accept short notice of motion to dissolve the in- 
 Interlocutory junction hereby awarded], let an injunction be awarded to 
 injunction. restrain the defendant T., until further order, from manufac- 
 turing any tube expanders similar to the tube exi)ander which 
 lias been purchased by the defendant B., as in the phdntiff's 
 writ mentioned, or otherwise constructed so as to imitate or 
 resemble the roller expanding tool described in the specification 
 in the plaintiff's letters ])atent in the said writ mentioned, and 
 
 ((•) Eviilt'iice sliould be ailihued jier.sons wlio had jnu'cliaspd bruslics, 
 
 ^)\' KUpportiiif,' affidavits in case it wliicli, from their a]i])earance, 
 
 is deemed that tlie dci'indaiit lias showed they had been made; by the 
 
 int'rin^'ed the |)alent. in Monn- v. jiatvnted maciiine, from the del'eii- 
 
 llniiidt, 1880, M., N". !) 1, the evi- daiit. 
 dence adduced was tiiat nt several
 
 FORMS. 21)1 
 
 to restrain the defendants T. and B., tlieir agents, &c., from 
 selling or offering for sale, or otherwise parting with the custody 
 of any tube expanders, or parts of any tube expanders, which 
 have been so manufactured by the said defendant T. Liberty 
 to either party to apply to expedite the hearing ((J). 
 
 Fortn 2. 
 
 On usual undertaking as to damages, let an injunction be 
 awarded against the defendants S. and C, to restrain the 
 said defendants, their servants, »S;c., until the trial of this action 
 or further order, from either directly or indirectly making, The same on 
 using, or putting in practice the invention described in the spe- teims. 
 citication and drawings filed under the letters patent, granted to 
 N., dated the, &c., and numbered 2190, and now vested by 
 assignment in the plaintiff, or any part thereof, except as to 
 any skates made by the plaintiff, or his agents or agent (e). 
 
 7. Interlocutory Injunction for Infringement refused 
 
 ON Terms. 
 
 Upon motion, &c., for injunction to restrain, &c., and the 
 defendant, by his counsel, undertaking to keep an account of all 
 moneys received or to be received by him, by reason of the sale 
 or use of the parlour or roller skates in the writ mentioned, this Refusal on 
 Court does not think fit to make any order upon the said motion, ^crms. 
 but does order that the costs of the said motion be costs in the 
 cause (/). 
 
 8, Inspection, Notice of Motion for. 
 
 [Title as before.] 
 
 Take notice, that this Honourable Court will be moved [ifiJi 
 
 the Chancery Bivifiion, before his lordship, Mr. Justice '^- — ], 
 
 on the part of the plaintiff", that the plaintiff, his solicitors and 
 agents, ""^^ two scientific witnesses, to be named in the notice Scientific wit- 
 hereinafter mentioned, maybe at liberty at all seasonable times, "'^'^^*^^- 
 and as often as may be requisite, upon giving three davs' pre- 
 vious notice in writing to the defendants' solicitors, to enter into 
 and upon the business premises of the defendants, where the 
 process of decorating or printing tin or metal plates is carried on 
 by the defendants, as stated in the plaintiff's statement of claim 
 in this action, and to inspect and examine there the whole of the 
 process by which such printed and decorated tin and metal 
 plates are manufactured by the defendants ; and to take, on pay- 
 
 {(l) Dudgenu v. Thompson, M. R., 16th Mtircli, 1876, B. 424. 
 24tli March, 1874, A. 723. (/) Plimpton v. Alalcolmson, M. 
 
 (c) Plimpton V. Spilli'v, M. R., R., 4th March, 1875, B. 421. 
 
 u 2
 
 292 FORMS. 
 
 ing' the reasonable charges of the dofcnilants for tlie same, 
 Take samples samples of siich plates, and upon and during such inspection to 
 make such observations as may be necessary and expedient for 
 the purpose of obtaining full information and evidence of the 
 mode by which such plates are manufactured by the defendants ; 
 and that the defendants may be ordered to permit the jjlaintiff, 
 his solicitors and agents, and two persons to be named as nfoi'e- 
 said, to enter into and upon their said premises for the purposes 
 Costs. aforesaid, and that the costs of this application may be costs in 
 
 the action (g). 
 
 9. Inspection, where for a Process and to take Samples. 
 
 [Title as ahove.] 
 
 [Formal 2^((-'i"ts as above] to enter in and upon the business 
 
 premises of the defendants, where the manufacture of is 
 
 carried on by the defendants, as mentioned in the statement of 
 claim in this action, and to inspect and examine there the 
 machines used by the said defendants in the manufacture of 
 
 , and the process by which • is manufactured by 
 
 :^rachine'^ to the said defendants, and that the said machines ^^ process may 
 be worked. ]jq p^^ ^q -work upon such inspection, rind that the plaintiff, his 
 .s.imples. servants or agents, niay be at liberty to take samples of the 
 
 made or to be made b}' the said machines or process, 
 
 upon paying to the defendants their reasonable charges for the 
 same. 
 
 10. Inspection of Plaintiff's Patented Process by 
 Defendant. 
 
 [Forin of Order given in GHjjin, P. C, at j)- 106.] 
 " That A. B. and one other indifferent person appointed by 
 him and C. D., one of the defendant's solicitors, be at liberty at 
 all such times and as often as in the opinion of the said A. B. be 
 requisite, on giving 3 days' notice to the plaintiffs to enter into 
 some business premises to be selected by the plaintiffs, where 
 the process or mode of working referred to in the specification 
 mentioned in the Statement of Claim can be seen at work, and 
 to inspect and examine there the wliole of the machinery fitted 
 in such mill, and to take such samples of the finished and un- 
 fioished products of the working of such machinery as in the 
 opinion of the said A. B. may be necessary for the purposes of 
 this action, And it is ordered that such machinery be put to 
 regular work upon such inspection. 'J'lie costs of this ;i])plication 
 are to be costs in the action " (A). 
 
 {(j) Flmocr V. Lloijd, 187(!, A. (h) The (•<nii M/lliini Co. v. 
 
 1254. " }i'(iliin,x(,ii, :>r, \j. .\. (]\. '2H7.
 
 FORMS. 'Zd-i 
 
 II. Inspection, and Order for Delivery by Defendant 
 Samples for Analysis. 
 
 [2'itle as ahuve.] 
 
 [FofjiKil 2^(ii'ts as above] may be at liberty, upon giving three 
 clays' previous notice in writing to the defendants' solicitors, to 
 enter upon the defendants' premises, and to inspect the type 
 there used by the said defendants in their printing processes, as 
 mentioned in the statement of claim in this action ; and that the f^amples fur 
 defendant may be ordered to permit the jjlaintiff. Ids solicitors "■"^^y^'*- 
 and agents, and one person to be named as aforesaid, to enter 
 upon his premises for the purpose aforesaid, and that said 
 defendant may be further ordered to deliver to the plaintiff a 
 com{:)eteiit part of tlie said type so used, on payment of a fair 
 price for the same, and that the costs of this application may be 
 costs in the action (/). 
 
 12. Order for Inspection of Defendants' process ry 
 
 Experts. 
 
 Let I. and C, of, &c. be at liberty at all seasonable times. Order for 
 and as often as requisite, on giving three days' notice to the ^■'^P'^it''- 
 defendants, to enter into the business premises of the defen- 
 dants where the process of decorating or printing tin and metal 
 plates is carried on by the defendants, as stated in the plaintiff's 
 statement of claim, and mentioned in the said affidavits, or some 
 of them, and to inspect and examine there the whole of the pro- 
 
 (/; This was the notice of motion pose of the action. Sltaw v. Bank 
 
 in The Fatent Type F'oundintj Co. v. of Eiujluiul, 22 L. J., Ex. 20. It 
 
 Walter, reported at 5 H. & N. 192 ; shoidd also show what the patent 
 
 29 L. J., E.x. 207 ; 6 Jur. N. S. is for, so that the Court or judge 
 
 103 ; 1 L. T. Rep., N. S. 382. The may see that there is necessity for 
 
 samples of type in this case were the inspection. The order will not 
 
 required for tiie purpose of analysis. be granted on the plaintilf's appli- 
 
 jS'otice of motion for inspection cation, unless the Couit is satisfied 
 
 must he supported \)\ athdavit ; that it is essential to enable him to 
 
 a fair imind facie case of validity prove his case. Batleij v. Kynod; 
 
 and infringement must be made L. E., 19 Eq. 90 ; Meadows \. Kirlc- 
 
 mit. The order for inspection is maun, 29 L. J., Ex. 205. In The 
 
 frequently made upon the applica- Singer Manufadurimj Company v. 
 
 tion for iutejh)Cutory injunction, JFilsOn, 13 W. R. 560, the Court 
 
 and is sometimes made to include a refused to give the plaintiff inspec- 
 
 cross order that the plaintilf shall tion of the defendant's stock before 
 
 permit tlie defendant to see and judgment, but ordered the defen- 
 
 inspect the patented machine at dant to verify by atti davit all the 
 
 work, and also to take samples. dilferent kinds of sewing machines 
 
 Ames V. Kelseij, 22 L. J., Q. B. 84. which he had sold since the last 
 
 The athdavit should show that there disclaimer entered by the plaintiff, 
 
 is such property or machinery as is and to produce one of each sort lor 
 
 required to be inspected, that the inspection. 
 inspection is necessary for the pur-
 
 294 FORMS. 
 
 cess by which such printed and decorated tin (j) and metal 
 plates are manufactured by the defendants, and to take, on pay- 
 ing the reasonable charges of the defendants for the same, 
 samples of such plates, and upon and during such inspection 
 to make such observations as may be necessary and expedient 
 Full iufornia- for the purpose of obtaining full information and evidence of 
 the mode by which sucli jjlates are manufactured by the de- 
 fendants (/■). 
 
 tion 
 
 13. Statement of Claim. 
 
 In the High Court of Justice. 
 
 Chancer}' [or Queen's Bench] Division. 
 
 Between A. B. . . . . Plaintiff, 
 and 
 CD Defendant. 
 
 Statement of Claim. 
 
 Infiiii^-emeiit. 1. The defendant has infringed the plaintiff's patent, num- 
 bered — , granted for the term of fourteen years from the 
 
 day of , for an invention entitled improvements. 
 
 in the manufacture of iron and steel. 
 
 Fir-i 2. The plaintiff was the first and true inventor of the said 
 
 inventor. invention. 
 
 Injuiiftion. -3. The plaintiff claims an injunction to restrain the defendant 
 
 damages. from further infringement, and that accounts may be taken of 
 the sales and profits made by the defendant by infringing tiie- 
 said letters jjatent [or in the alternative, £100 damages]. 
 Particulai'S of breaches are delivered herewith. 
 [Place of trial.] 
 
 Signed. 
 
 Delivered the day of , IN — 
 
 aff'iinit 
 
 14. Paktk'Ulaus of Breaches. 
 
 In tlic High Court of Justice. 
 
 Chancery [or Queen's Bench] Division. 
 
 Between A. B Plaintiff, 
 
 and 
 
 CD Defendant. 
 
 The following are the particulars of the breaches of the letters 
 patent complained of in the statement of claim herein : — 
 lj.,i„,_, !. 'I'lif <lefendnnt on or abnut the day of at 
 
 (./■) No okUt will l)c mail.' <.n tliis :5 K. & B. DCD. 
 apjilicatioii I'm- tin; iii.s|ii(tii/ii ni' (/,■) Flovir v. I.lniiil, C A., .")lli 
 
 Ijook.H, lor wliicli a SL-iiaiatc onlcr July, IS70, A. 12.04. 
 iiiuht be obtiiiiicd. Vidi v. Smilli.,
 
 FORMS. -295 
 
 his factory at , in the county of manufactured 
 
 acetate of soda by tiio process and with the use of the machinery 
 and appliances which form the subject-matter of the plaintiff's 
 patent. 
 
 2. On the day of the defendant sold to John Selling. 
 
 Smith of , one parcel containing tons of acetate 
 
 of soda manufactured by the defendant by the process and with 
 the use of the machiner}' and appliances which form the subject- 
 matter of the plaintiff's patent. 
 
 8. On the day of the defendant sold, &c. 
 
 Yours, &c. 
 
 Plaintiff's solicitor. 
 To Mr. E. F., 
 
 Defendant's solicitor. 
 
 [Formal parts as above.] 
 
 1. The defendant, on or about the day of , Makins-. 
 
 manufactured at his factory at , in the county of , 
 
 sewing" machines, which sewing machines were infringements of 
 
 the plaintiff's patent. 
 
 2. The defendant, on or about the ■ day of at Selling. 
 
 his shop at ■ , in the county of , sold a sewing 
 
 machine to , which sewing machine was an infringement 
 
 of the plaintiff's patent. 
 
 3. The defendant, on or about the day of , in Using. 
 
 his workshop at , in the county of , by himself, 
 
 his servants or agents, used a sewing machine, which sewing 
 machine was an infringement of the plaintiff's patent {rii). 
 
 {Further and better particulars of breaches or objections 
 obtained by summons, common form.) 
 
 15. Order for Delivery of further Particulars of 
 Breaches. 
 
 It is ordered that the plaintiffs within days from the 
 
 date of this order deUver to Messrs. , solicitors for the de- 
 fendants, further and better particulars in writing of the breaches 
 alleged to have been committed by the defendant, upon which 
 the defendants intend to rely on the trial of the questions 
 directed to be tried by the said order dated, &c., specifying by 
 reference to the pages and lines the part of the plaintiffs' speci- Pages and 
 
 (in) In the case of a patent for a portion of the combination has been 
 
 combination, or where there are infringed, or as to which of the 
 
 several distinct claims, the particn- claims infringement is alleged, 
 lars of breaches should specify what
 
 296 FORMS. 
 
 Hues of fication. in respect of w hich such alleged breaches have been 
 
 specificatioD. committed ; and let the time within which the defendants are 
 to deliver to the plaintiffs' solicitors particulars in writing of 
 the objections to the letters patent in the plaintiffs' writ men- 
 tioned, be enlarged until the twenty-first day after the delivery 
 of such further and better particulars, costs of application to be 
 costs in the cause (v). 
 
 16. State^iext of Defence. 
 
 In the High Court of Justice. 
 
 Chancery [Queen s Bench] Division. 
 
 Between A. B. . . . . Plaintiff, 
 and 
 CD Defendant. 
 
 Statement of Defence. 
 
 1. The defendant did not infringe the patent. 
 
 2. The invention was not new. 
 
 3. The plaintiff was not the first and true inventor. 
 
 4. The invention was not useful. 
 
 5. [T?ie denial of any other matter of fad affecting the 
 validity of the patent.] 
 
 6. The patent was not assigned to the plaintiff. 
 
 Particulars of objections are delivered herewith. 
 
 Signed. 
 
 Delivered the dav of , 18 — . 
 
 17. Particulars of Objections in Actions for Infringe- 
 ment, AND ON Petition for Revocation. 
 
 In the High Court of Justice. 
 
 Chancery [Queen'.s Bench] Division. 
 
 Between A. B Plaintiff, 
 
 and 
 CD Defendant. 
 
 Take notice, that the defendant [or petitioner], will, on the 
 trial of tliis cause, rely on the following objections to impeach 
 the letters patent in the statement of claim [or petition] herein 
 mentioned. 
 
 (h) Lamh V. TItc Xottiugham M. K., 14tli March, 1S74, B. 77(). 
 Manufacturer^ Company (Limited),
 
 FORMS. 297 
 
 1. That the plaintiff [or alleged inventor] was not the first First 
 aiul tnio inventor of the said invention within this realm. inventor. 
 
 2. That the alleged invention was not subject-matter of a Subject- 
 grant of letters patent, within the meaning of the 6th section '^^^t'^'- 
 of the Statute of Monopolies (that is, the act of the 21st year of 
 King James I. ch. 3). 
 
 8. That the alleged invention was not useful to the public. Utility. 
 
 4. That the specification of the said invention was not Insuiticiency 
 
 sufficient, and was unintellio^ible. '^! speeifica- 
 
 ° tion. 
 
 5. That the alleged invention was not a new invention as to Novelty. 
 the public use and exercise thereof within this realm. 
 
 6. That the alleged invention was published in a specification, Prior publica- 
 dated the day of , and numbered , and 1"'",.^" ^1^^'^'' 
 
 ^ J . , , ri cut ion, 
 
 issued by Her Majesty's Commissioners of Patents prior to the 
 date of the said letters patent. 
 
 7. That the alleged invention was, prior to the date of the Prior publica- 
 
 said letters patent, published in a book, which on the ^^*^" "* ^'^'^^• 
 
 day of , was in the British Museum Library and open 
 
 for pid)lic inspection ; the title of the said book was , and 
 
 the pages of the said book particularly referred to are numbered 
 and . 
 
 8. That the alleged invention was used prior to the date of Piior user. 
 the said letters patent in the following manner, that is to say, 
 
 by , at , on the day of . 
 
 9. That a material part of the alleged invention, namely, that Part ukl. 
 
 part which refers to , was not new at the date of the said 
 
 letters patent, having been used by , at , on the 
 
 day of . 
 
 10. That the plaintiff does not sufficiently distinguish and Combination 
 point out in his specification which of the matters and things ""t di^^m- 
 therein mentioned he claims to have invented, and which he "^ 
 
 does not claim to have invented, or admits to be old. 
 
 11. The defendant will also rely, as examples of prior publica- 
 tion, upon the following specifications, filed with the Commis- 
 sioners of Patents, and will object that the specification of the 
 plaintiff's patent claims some of the matters thereby patented 
 or specified, that is to say [enamerate sjjecijication^]. 
 
 Yours, &c., 
 L. 
 Defendant's Solicitor or Agent. 
 To Mr. A. B., 
 
 Plaintiff's Solicitor.
 
 29S FOKMS. 
 
 18. Order for Delivery of further Particulars of 
 Objections. 
 
 Let the order dated 6th July, 1876, whereby it was ordered 
 that the defendants should on or before the 20th July, 1876,. 
 deliver to the plaintiffs further and better particulars of objec- 
 tions, stating therein the names and addresses of the persons by 
 Avhom, and the places where, and the dates at, and the manner 
 in which the process of, &c., was known and publicly practised 
 in England before the 8th March, 1864 [date of letters 'patent'], 
 and that in default thereof the words from, and after the words 
 "in a dry state," in the 6th paragraph of the statement of 
 defence, which had been delivered in this action, to the end of 
 the said 6th paragraph, should be struck out ; and in that case 
 no evidence should be given by the defendants on the trial of 
 this action of such prior publication, and that defendants should 
 pay to the plaintiff's their costs of the application, to be taxed, 
 &c., be varied, and as varied be as follows : — Let the defen- 
 dants on or before the deliver to the plaintiffs further 
 
 and better particulars of objections under the paragraph 
 
 of tlie statement of defence on which they mean to rely at the 
 trial, stating therein the place or places at or in which, and in 
 what manner, the process of printing upon tin or metal surfaces 
 by direct impression by means of damp stones is alleged to 
 
 have been used or published prior to the day of , 
 
 1864 (o). 
 
 19. ()rdek for liberty to amend Particulars of Objec- 
 tions BY ADDING FrESH OBJECTIONS UPON TERMS. 
 
 Let the plaintiff, within six weeks from the date of this order 
 elect whether he will discontinue this suit, and if the plaintiff 
 shall elect to discontinue this suit, and shall give notice thereof 
 to the defendants within six weeks from the date of this order, 
 refer it to the taxing master to tax the defendants their costs 
 up to and including the 2ord Feb., l87o {deliverii of the 
 or i[/in(d particulars of objection), and to tax tiie plaintiff's costs 
 of this suit subsequently to the said 28rd Feb., 1875, to the date 
 of this order, and the taxing master is to set off" the costs of the 
 plaintiff and of the defendants to be so respectively taxed, and 
 certify to which of them the balance after such set off is due, 
 and let sucli Ijalance be paid by the party from whom, to the 
 party to whom the same sliall be certified to be due. And if 
 the phiintiff shall not give notice to the defendants of his discon- 
 tinuance of this suit within the time aforesaid let the defendants 
 be at liberty to add to the particulars of objections to the 
 
 {o) Floirer V. IJiD/d (C A.), 2ncl Varvinj,' onlor ol' V.-C. B.,Glli Julv, 
 AiiKiiHt, lH7f;, A. ir,:i:i ; 2r) W. K. 17. 187G, A. 12.-,2.
 
 FORMS. 299 
 
 validity of the plaintiff's letters patent, &c., which have been 
 already delivered by the defendants, the following further ob- 
 jections to be relied on by the defendants at the hearing of this 
 cause, viz. (paoiiculars of neiv objections 'proposed to he intro- 
 duced by amendment). And let defendants, Monies, &c., Co. 
 pay to the plaintiff, A. F. Baird, his costs of this application to 
 be taxed, kc, liberty to apply ( 2>). 
 
 20. Interrogatories. 
 
 Interrogatories maybe delivered in the comuKjn form, subject 
 to the Rules of 1883, by either party, notwithstanding the deli- 
 very of particulars. Enquiry may be made by the plaintiff as 
 to the names and addresses of the persons by whom prior user 
 is alleged to have been made as well as the places where the 
 prior user has taken place (q). 
 
 21. Oruer for Reference under Sect. 57 of the 
 Judicature Act, 1873. 
 
 [Formed ^^arfe.] 
 
 Upon bearing counsel for the plaintiff, and for the defendant 
 [or This cause coming on for trial], It is ordered that the fol- 
 lowing questions 
 
 1. As to whether the invention, the subject of his letters Novelty. 
 
 patent of the day of , was or was not, at 
 
 the date of the said letters patent, new as to the public 
 use and exercise thereof within this realm ; 
 
 2. Whether the plaintiff was the true and first inventor of Fii>t 
 
 the said invention ; iuveutov. 
 
 3. Whether the specitication of the said letters patent in the Sufficiency of 
 
 pleadings mentioned does or does not particularly de- specification. 
 scribe the nature of the said invention, and in what 
 manner the same is to be performed piirsuant to the 
 proviso in that behalf contained in the said letters 
 patent ; 
 
 4. Whether the defendant has, or has not, infringed the said lufiingemcut. 
 
 letters patent, in or by any or either, and which of the 
 apparatus manufactured by him, as in his statement of 
 defence delivered in this action mentioned, or in any 
 other maimer ; 
 
 ."). Whether the undisclaimed portions of the said alleged Disclaimer, 
 invention were used in the United Kingdom at the date 
 of the said letters patent ; 
 
 (p) See Bainl v. Monies, d-c, Co., (q) Birch v. Mather, 22 Cli. (529. 
 
 L. 1!., 17 Ch. 1). 1:39 (n.).
 
 300 FORMS. 
 
 be I'eferred, to be tried before one of the official referees [or a 
 special referee], ^vho shall have all the powers as to certifying 
 and amending of a judge at nisi prius, and shall make his- 
 report of and coucering the matters ordered to be tried as 
 aforesaid, pursuant to the statute ; and it is fnrtlier ordered 
 that the said referee shall be at liberty, if he shall think fit, to 
 examine the said parties to this action, and their respective 
 witnesses upon oath or affirmation, and that the said parties do 
 and sJiall produce before the said referee all books, deeds, papers, 
 and writings in their or either of their custody or power re- 
 lating to the matters ordered to be tried as aforesaid. And it is 
 further ordered, that neither the plaintiff nor the defendant 
 shall bring or prosecute any action against the said referee, or 
 against each other of and concerning the matters ordered to be 
 tried as aforesaid. And that if either party shall b}' atfected 
 delay, or otherwise, wilfully prevent the said referee from making 
 his report, he or they shall pay such costs to the other as the said 
 Court, or any judge thereof, shall think reasonable and just. 
 And it is further ordered, that in the event of the said referee 
 declining to act, or dying before he shall have made his report, 
 the said parties may, or if they cannot agree, one of the judges 
 of the said High Court may, upon application of either side, 
 appoint a irew referee. 
 
 22. Order for Trial of a representative Case, for the 
 purpose of determining the question of validity. 
 
 rntloi-takiiig And the plaintifif, F., by his counsel, undertaking to be bound 
 to be iwuinl. ]jy ^\^Q result of tlie trial hereinafter directed, and the said above- 
 mentioned defendants, by their respective counsel, admitting that 
 the letters patent in the pleadings mentioned are duly vested in 
 the plaintiff", and consenting to be bound by the result of the 
 trial hereinafter directed, and that the said trial shall be con- 
 ducted by B., G., B. and W., four of the above-named defend- 
 ants, on behalf of and as representing all the defendants in the 
 said suit ; let, by consent of all the said several defendants in the 
 above-mentioned suits, the said defen<h\nts, B., G., B. and W., 
 be the defendants in the said trial, and let the said defendants, 
 
 B., G., B. and W., on or before the day of , pur- 
 
 Delivciy '.£ suant to the statute, deliver to the plaintiff their objections to 
 /jLjectioiis. tlic validity of the said patents; and let, by the consent of the 
 ])laintiff and the said defendants, the following question l)e tried 
 before his lordship without a jur}', that is to say, whether the 
 patent in the pleadings mentioned, dated, (fcc, is a valid patent ; 
 and the phtintiff is to proceed to such trial on such day, &c. 
 Adjourn the consideration of the costs on the several applications 
 to the judge and to his lordship until after the said trial; and let
 
 FORMS. oOl 
 
 all further proceedings in the above-mentioned causes be stayed 
 
 until after the said trial, and any of the defendants in any suits 
 
 coninienced by the plaintiff with respect to infringement of the 
 
 said patent are to be at liberty to apply to be made parties to T-'i''<^i'ty to 
 
 this order (r). ^Pl'^-^' 
 
 23. Final Judgment— Recital of Evidence— Injunction^ 
 Inquiry as to Damages — Order, for Destruction — 
 Costs as between Soijcitor and Client — Liberty to 
 Apply. 
 
 The following Order was settled by tlie late Master of the Rolls, 
 Sir George Jessel, ijersnnally, in the case of Pllmptom v. 
 Spiller, reported L. li., Gh. D. 412. 
 
 In the High Court of Justice. 1876. P. G9. 
 
 Chancery Division. 
 
 Thursday the 19th day of April, 1877. 
 Master of the Rolls. 
 Mr. Clowes, Reg. 
 
 Between J. L. P. . . . . Plaintiff, 
 
 and 
 A. F. S., and T. C. . . Defendants. 
 This action, coming on for trial the 11th and 12th days of 
 April, 1877, and this day before this Court, in the presence of 
 counsel for the plaintiff and the defendants, upon hearing an 
 order, dated the 4th August, 1876, an affidavit of A. F. S., 
 filed the 15th March, 1876 ; an affidavit of J. I., filed the 16th Eviileuce. 
 February, 1877, the bill, answers, orders, record for trial, and 
 the certificate of the Master of the Rolls, the judge before Certificate. 
 whom the questions of fact were tried, that the validity of the 
 letters patent of the 2.5th day of August, 1865, granted to 
 A. V. N., and numbered 2190, hereinafter mentioned, came in 
 question in the cause of P. v. M., 1875, P. 39, and upon hearing 
 tlie said letters patent, and a certified printed copy of the 
 specifications and drawings, filed under the said letters patent, 
 and the indenture of assignment, dated the 10th day of 
 January, 1866, and made between the said A. V. N., therein 
 described, of the one part, and the plaintiff, J. L. P., of the other 
 part, and registered in the Great Seal Patent Office on the day 
 of the date thereof, the printed shorthand note of the evidence 
 taken orally before this Court, on the trial of the said action of 
 P. V. M., 1875, P. 39 ; of A. V. N., F. J. B., J. I., J. L. P., 
 E. A. C, R. C. M., W. W. H. and E. J. C. W. and the 
 exhibits marked 1, 2, and 4, then produced; the examination 
 
 (?•) Foxivell V. Bmdbuni, cCr., 80 other titles, L. C, 7tli Dece nljei-, 18G3, 
 A. 231)1
 
 302 
 
 FORMS. 
 
 Proof of 
 breaches. 
 
 Injunction. 
 
 Mechanical 
 equivalent-. 
 
 Enquirj- :is t 
 damages. 
 
 Payment of 
 anoiiiit. 
 
 of H. J. A., W. B. P., W. G. A., A. F. S., J. I., T. M. W., 
 G. B., C. P. B. S., E. E., W. S. M. and H. L., taken orally 
 before this Court, on the 11th, 12th, and 19th day.s of April, 
 1877, and the exhibits marked : 1. 2. 4. A. B. C. D. E. F. G. 
 H. I. L. M. N. O. P. E. E. 2. S. 1. S. 2. E. E. 1. E. Iv S. 
 W. S. M. 1. W. 1. and W. 2. and the two catalogues ^nd 
 donation book produced to W. G. A., and the volume of tiic 
 year 1863, of Jewitt's Book of Illustrations to the Report of 
 the American Commissioners of Patent, and the " Scientific 
 American " for the j-ears 1868 and 1865 ; the records from the 
 Court of Bankruptcy of an assignment, dated the 11th August, 
 186-5, by W. S. M., for the benefit of his creditors, and of a 
 composition deed by the said W. S. M., in the year 1S69, and 
 what was alleged by counsel on both sides, and this Court being 
 of opinion that the plaintiff has proved the breaches complained 
 of, in the particulars of breaches delivered by him in this action, 
 doth order that an injunction be awarded to restrain the 
 defendants, their servants, agents, and workmen during the 
 continuance of the letters patent, granted to A. V. N., dated 
 the 25th day of August, 1865, and numbered 2190, and any 
 extension of the term thereof, from using, or exercising, or 
 causing or permitting to be used or exercised, the invention 
 described in the hereinbefore mentioned specification and draw- 
 ings, filed under the said letters patent, and from selling, 
 letting for hire, or making any profitable use, or permitting the 
 sale, letting for hire, or profitable use of any roller or runner 
 skates not made by the plaintiff, or his licensees, and having 
 applied thereto rollers or runners in manner described, and for 
 the purposes mentioned in the said specification, or fitted with 
 any apparatus for causing the skate to run in curved line, in the 
 manner described in the said specifications and drawings, or 
 differing therefrom only colourably, and by the substitution of 
 mere mechanical equivalents, and it is ordered that it be referred 
 to the official referee in rotation, to inquire what sum of money 
 < is fit to be awarded to the plaintiff, to be paid by the defendants 
 in respect of any damage sustained by the plaintitf up to the 
 day of the date of this order, from the manufacture, sale, or 
 letting for hire, of skates, being the same as the " Spiller " 
 Skates, and "Wilson " Skates, in the pleadings in this action, 
 and in the said order dated the 4th August, 1876, mentioned, 
 or of any other skates made in infringement of the said letters 
 jiatent, or otherwise from the sale, or use by the ilefendants of 
 the said invention, or any apparatus in imitation of, or being 
 only a colourable deviation from the said invention. And it is 
 orrlercd, that the defendants, A. F. S. and T. C, do pay to the 
 [)laintiff, J. L. P., such sum of money as upon sucii inquiry 
 sliall be found fit, to 1)0 awarded to the plaintiff for such com- 
 pensation as aforesaid, within twenty-one days after service of 
 the official referee's rei)ort of the result of the said impiiry.
 
 FORMS. 303 
 
 -And it is ordered, that the defendants, A. F. S. and T. C, do 
 
 deliver up on oath to the phiintiff, or break up, or otherwise DestructioM. 
 
 render unfit for use, all roller skates, or parts of roller skates so 
 
 manufactured, or let for hire by, or by the order, or for the use 
 
 of the defendants in infringement of the said letters patent 
 
 ns aforesaid, which are in the possession, custody, or power of 
 
 the defendants, or either of them, or their, or either of their, 
 
 servants or agents. And it is ordered, that the said defendants, 
 
 A. F. S. and T. C, do pay to the plaintiff, J. L. P., his full Full costs. 
 
 costs, to be taxed by the taxing master as between solicitor and 
 
 client, including all costs, charges, and expenses. And any of 
 
 the parties are to be at liberty to apply, as they may be Lib^'ity to 
 
 advised. ^vv^y- 
 
 W. C. Entered. 
 
 G. L. 
 
 Registrar's Office, Entering Lib. B. Seal. 
 
 24. Judgment for Perpetual Injunctiox, under the Patent 
 Law Amendment Act, 1852, restraining Infringement 
 of Patented Skates after Trial without Jury, with 
 Ac.'couNT OF Sales and Profits, Discovery, Delivery 
 up, or Destruction. 
 
 Let an injunction be awarded to restrain the defendant, his Injunction, 
 servants, &c., during the continuance of the said letters patent 
 granted to N., dated, &c., from using or exercising, or causing, or 
 permitting to be used and exercised the invention described in 
 the hereinbefore-mentioned specification and drawings of the 
 said N., and from selling, letting for hire, or making any profit- 
 able use, or permitting the sale, letting for hire, or profitable use, 
 of any roller or runner skates not made by the plaintiff or his 
 licensees, and having applied thereto rollers or runners in manner 
 described and for the purposes mentioned in the said specifica- 
 tion, or fitted with any apparatus for causing the skate to run 
 in a curved line in the manner described in the said specification 
 and drawings, or differing therefrom only colourably and by 
 the substitution of mere mechanical equivalents ; and let an 
 account be taken of all roller skates being the same as the skates 
 sold by the defendant to G., as in the pleadings mentioned, or 
 otherwise made in infringement of the said letters patent, which 
 have been manufactured, or sold, or let for hire, by or by the • 
 order, or for the use or profit of the defendant, and also of the 
 gains and profits made by the defendant by reason of such 
 manufacture, sale, or letting for hire ; and let the defendant 
 within [seven] days after the service upon him of the chief clerk's 
 certificate of the result of such account pay to the plaintiff the 
 amount of such gains and profits, and let the defendant forth- Account of 
 
 profits.
 
 804 
 
 FORMS. 
 
 Destruction. 
 
 OrJinaiy 
 costs. 
 
 with upon oath deliver to the plaintiff, or break up, or otherwise 
 reader unfit for use, all roller skates or parts of the roller skates 
 so manufactured or let for hire, by or by the order or for the use 
 of the defendants in infringement of the said letters patent as 
 aforesaid, which are in the possession, custody, or power of the 
 defendant or his servants or agents. Defendant to pay to 
 plaintiff costs of suit (s). 
 
 Injunction. 
 
 Delivery up 
 of articles. 
 
 25. Judgment for Perpetual Injunction under the Patent 
 Law Amendment Act, 1852, restraining Infringement 
 AS TO Patented Articles (Pulleys) after refusal of 
 Motion for new Trial and for Delivery up of the 
 Articles made by Defendant to be specified by 
 Affidavit. 
 
 Let an injunction be awarded to restrain the defendant, S., 
 during the continuance of the letters patent, and any extension 
 of the terra thereof, from using or exercising, &c., and from in 
 any manner infringing the rights and privileges granted by the 
 said letters patent ; defendant within seven days to specify by 
 affidavit what apparatus constructed or arranged according to 
 the said invention and improvements, or only colourably differ- 
 ing from those described in the said specification and drawing, 
 have been manufactured by or by the order or for the use of the 
 said defendant as in the writ mentioned, and are in the posses- 
 sion, custody or power of the said defendant or his servants or 
 agents ; defendant within [seven] days after filing such affidavit 
 to deliver up to the plaintiffs all such pulleys or apparatus (t). 
 
 J M-R. 
 
 Findings of 
 jury. 
 
 Evi I'jiin 
 
 fv„^-t ■/(■• 
 
 26. Judgment FOR Perpetual Injunction under the Patent 
 Law Amendment Act, 1852, restraining Infringement 
 OF Patent for Machinery after Trial of Issues by a 
 Jury — Discovery — Account of Profits — Certificate 
 for full Costs. 
 
 And the parties having, on the day of — , pi'o- 
 
 ceeded to a trial of the questions of fact directed to be tried by 
 the order dated, &c., before this court by a jury, -when the jury 
 found that [jbiding for tlie plaintijf iii)on all the issues]. And 
 upon reading tlie letters patent, dated, &c., and tiie complete 
 spccificati(»n, <hited, ^c, in the writ respectively mentioned, an 
 affidavit of the plaintiff's, \:c. [cnfcr evidence^, this court doth 
 order [fi/iul] decree [<i.nd adjad(je\ tiiat an injunction be awarded 
 
 (/)) ['liwfitnn V. Malcolvimn, !^^. 1?., 
 28th Junuury, 187G; h. :J81. 
 
 f/) Taiupie V. HcoU, V.-C. W., 12tli 
 l''.'l)ni;uy" I8(;G, B. 4()1.
 
 FORMS. S05 
 
 to restrain the defendant, O., his agents, servants, &c., during Injunction. 
 the subsistence [continuance] of the plaintiff's letters patent in 
 the writ mentioned, or any extension thereof, from manufactur- 
 ing, or selUng, or disposing of, or using any machine of the same 
 construction as that supplied to him by the W. B. Co., in the 
 said writ mentioned, or only colourably differing therefrom, or 
 being an infringement of the plaintiff's said patent, and from in 
 any way infringing the plaintiff's said patent ; and it is ordered 
 that the defendant, O., do, within [seven] days after service of 
 this decree, make and file an affidavit stating what machines of 
 the same construction as that supplied by him to the said 
 W. B. Co., including such machines, are in his possession or 
 power ; and the plaintiffs are to be at liberty to inspect^ and Order to in- 
 mark the same for the purpose of identification. And it is^P^^k^^ 
 ordered that an account be taken of the profits made by the ^^jj^q^^^ 
 defendant by making, using, selling, or disposing of the machines 
 supplied by him to the said W. B. Co., or any other machine of 
 the same construction therewith, or otherwise by an infringe- 
 ment of the plaintiff's patent. And it is ordered that the Costs. 
 defendant, O., do, within one month after the date of the chief 
 clerk's certificate, pay unto the plaintiffs, N. and C, what shall 
 be certified to be the amount of such profits. Direction for 
 certificate that the validity of the plaintiff's patent came in 
 question. And it is ordered that the defendant, O., pay to the 
 plaintiffs their costs of this cause up to and including this hear- 
 ing, and their costs of the trial by jury of the questions of fact 
 directed to be tried by the said order, dated, &c., including the 
 costs of a special jury ; such costs to be taxed, &c. Liberty to 
 apply in chambers touching subsequent costs, and otherwise to 
 apply as advised (it). 
 
 27. Judgment for the Defendant. 
 
 [Formal pctrts as above.] 
 
 Tlie action having on the day of been tried 
 
 before Mr. Justice [and a common or special jury of 
 
 the county of , and the jury having found a verdict for 
 
 the defendant on the issues] and the said Mr. Justice 
 
 having ordered that judgment be entered for the defendant on 
 the issues [certificate as to particulars of objections as in 
 form]: therefore it is adjudged that the plaintiff recover nothing 
 against the defendant, and that the defendant recover against 
 the plaintiff £ , for his costs of defence. 
 
 {u) Needham v. Odey, V.-C . \Y., 24th June, 1863, B. 1395. f^ fjC^
 
 306 FORMS. 
 
 28. Certificates necessary under Sect. 29, Sub-sect. 6, 
 OF THE Patents, &:c., Act, 1883. 
 
 [Form of judgment for perpetual injunction, accounts of 
 profits and damages as above.] 
 
 It is certified that the plaintiff has proved to the satisfaction 
 of the Court the breaches mentioned in the particulars of 
 breaches delivered by him, and numbered respectively, 1, 2, 3, 
 4, and 5, and that the particulars numbered 6 and 7, were, 
 under the circumstances of the case, reasonable and proper. 
 
 [Form of judgment for defendant as above.] 
 
 It is certified that the defendant has proved to the satisfac- 
 tion of the Court the objections mentioned in the particulars of 
 objections delivered by him, and numbered respectively 1, 2, 3, 
 4 and 5, and that the objections numbered 6 and 7 were, under 
 the circumstances, reasonable and proper.
 
 ( ^07 ) 
 
 EXAMPLES OF SPECIFICATIONS 
 AND CLAIMS. 
 
 PROVISIONAL AND COMPLETE SPECIFICATION TO 
 A PATENT FOPt A NEW MECHANICAL APPLI- 
 ANCE AND MODE OF OPERATING— A VERY 
 GENERAL CLAIM. 1885. No. 6205. 
 
 Note. — These icere the specifications contested in Siddell v. 
 Vickers, L. R. 39 CJi. D. 92, decision of Kekeivich, J., 
 affirmed hy the Court of Appeal, Cotton, Fry and Lopes, 
 L.JJ., holding that the provisional specification was sufficient 
 and that the claim icas sufficient having regard to tiie body of 
 the complete specification and to the particidar subject-matter 
 of the invention. — Two sheets of drawings which accompany 
 the specification are not given here.* 
 
 Provisional Specification. An Improved Mechanical Title. 
 Appliance for Working or Operating on Large Forcings 
 in Iron or Steel.— This Invention relates to the construction Provisional 
 and application of an improved and more simple and eflective specification, 
 mechanical appliance or means, for working or operating on 
 large forgings in iron or steel, being such forgings as are usually 
 made under a. hydraulic forging press or machine. 
 
 My improved appliance consists of a horizontal bar or bars 
 made of suitable metal and fitted with suitable pulleys and 
 hooks, which bar or bars can be placed or fitted on either side of 
 the crosshead of the forging press, or through the "pellet" 
 or key way. 
 
 Clips or grips or ratchets are conveniently arranged so as to 
 fix on or hold the ingot or forging and hooked on the ratchet or 
 clip or grip ; and in operating, when the press lifts up or is 
 
 * It would not be wise to treat this as a model in preparing specifications, it 
 is given here as showing jirobably the extreme limits to which the courts will o-q 
 in supporting a patent. 
 
 z 2
 
 308 
 
 SPECIFICATIONS AND CLAIMS. 
 
 raised, the ingot or forging will be turned as much as required 
 at every stroke or operation of the press. 
 
 The crank bar of the press in connection with the wheel and 
 endless chain thereof will raise the forging from the anvil at the 
 same time that the clip or grip or the ratchet is turning the 
 forging, the ratchet being suitably fixed for turning the crane 
 wheel over which the endless chain passes. 
 
 The ratchet has a chain attached to the crane girder which 
 will travel along a horizontal bar suitably fixed for the purpose 
 and will turn over the ingot or forging in the furnace. 
 Dated this 20th day of May, 1885. 
 
 Complete 
 specification. 
 
 Dcscri|jtioii 
 of drawings. 
 
 Complete Specification. — This invention relates to the 
 construction adaptation and application of an improved more 
 simple and eftective mechanical appliance or means for working 
 or operating on large forgings in iron or steel, which forgings 
 are such as are usually made under a hydraulic forging press or 
 machine or a steam hammer ; and in order that the carrying 
 out of my invention in practice may be fully understood, I have 
 illustrated it on the accompanying two sheets of explanatory 
 drawings, and have marked the same with letters of reference 
 corresponding with those in the following description thereof, 
 that is to say : — 
 
 Figure 1, on Sheet 1, is an end elevation or view, and Figure 2, 
 is a front or face view of one arrangement of my mechanical 
 appliance for working large forgings. 
 
 A, is the hydraulic forging press or machine. Gr, is the 
 endless chain which is attached to the crank bar of the press, 
 and which passes over the wheel W, and under the ingot or 
 forging or mandril F, which is being operated upon by the 
 press A. 
 
 The wheel W, is held in position by means of the crane block 
 hook h, and shackle or bridle a ; the crane with the horizontal 
 bar and carriage are not shown on the drawings. 
 
 On or to the centre pin of the wheel W, is attached a double or 
 single lever L, having pawls or ratchets B (one only being shown 
 on the drawings) working on pins. The ratchets engage in 
 tcotli provided for them on the wheel W. — When the endless 
 chain G, is slack the ratchet lever L, falls or is forced in towards 
 the centre so as to crank or bend the chain to any required 
 (;xt(;nt, and when tin; weight of the forging comes on the chain 
 it tends to straighten it, and the pressure on the end of the
 
 SPECIFICATIONS AND CLAIMS. 309 
 
 lever L, is transferred to the pawl or ratchet R, and thence to 
 the teeth of the wheel, which will cause it to rotate on its axis 
 to the desired extent. An eye or other convenient appliance E, 
 is attached to the end of the ratchet lever L, in order to work 
 the ratchet and rotate or turn the wheel independently of the 
 endless chain G. 
 
 Figure 3, on Sheet 1, shows the appliance arranged and 
 applied in another manner ; the centre pin of the wheel is 
 connected with a cranked bar K, or by other convenient means 
 to the pellet or crosshead of the press, whereby the wheel W, 
 and endless chain G, are simultaneously raised when the pellet 
 is lifted. The chain Avhen slack is cranked or bent as before 
 mentioned, and when the pellet rises the ingot or forging rises 
 with it, and the consequent straightening of the chain forces 
 round the wheel W, by means of the ratchet lever (not shown in 
 this Figure) and so turns over the forging at the same time that 
 it rises from the anvil ; or it can be made to turn the forging by 
 means of the eye provided at the end of the ratchet lever L, and 
 thus this arrangement of the appliance can be made either 
 automatic or self-acting, or it can be worked by steam or other 
 power independently of the appliances shown at Figures 1, G, 
 and 7 ; for the working of the forging under the steam hammer. 
 
 This appliance can likewise be used to turn over the ingot or 
 forging when in the furnace, and it is operated by the crane as 
 an automatic appliance, or when suspended the forging can be 
 turned by working the ratchet lever L, by any convenient means, 
 such as by steam or other power. 
 
 In the combination and arrangement of the appliance, as 
 shown at Figures 4 and 5 on Sheet 2, a horizontal bar B, is 
 provided and fixed ou or through the crosshead or pellet of the 
 press, this bar carries one or more bridles c, and rollers d, with 
 one or more hooks or shackles H attached to them. An 
 adjustable clip or ratchet grip X, is put on to the ingot or forging 
 or mandril F, and an eye e, on the end of the screw or lever/, is 
 attached to the hook or shackle H. When the pellet or cross- 
 head of the press rises, the clips or ratchet grips X, engage with 
 or grip the ingot or forging or mandril, and the leverage so 
 obtained will turn over the forging, and when the pellet descends 
 the appliance will release itself and will slip round to obtain a 
 fresh hold for the next lift. 
 
 The wheels and endless chains shown at Figures 6, and 7, on 
 Sheet 2, which are similar to those describecl as shown at
 
 '310 SPECIFICATIONS AXD CLAIMS. 
 
 Eigure 3, on Sheet 1, can also be used in combination with the 
 appliances represented at Figures 4, and 5, on Sheet 2, and the 
 forging wiU be lifted up from the anvil and turned over to the 
 required extent, at the same time that the press rises. 
 
 The appliance as shown at Figures 1, and 2, on Sheet 1, can 
 also be used in combination ; in fact each arrangement of appli- 
 ance can be used either separately or combined, for the purposes 
 of lifting slinging or turning over the ingot or forging when in 
 the furnace, under the press or hammer, or when being other- 
 wise operated on. 
 
 The ratchet appliance has a chain attached to the crane 
 girder, which will travel along a horizontal bar provided and 
 fixed for that purpose, or with the crane carriage and will turn 
 over the ingot or forging in the furnace. 
 
 Having now particularly described and ascertained the nature 
 of my said invention, and in what manner the same is to be and 
 can be performed, I here declare that I do not limit myself to 
 the precise details of m}' invention as hereinbefore specified 
 and as illustrated on the accompanying drawings, because 
 equivalent modifications or variations can be made in such 
 details, and quite consistent with the principles or characteristic 
 features of my invention ; and in conclusion I declare that what 
 I claim is 
 Claim. The general construction, adaptation or application, and the 
 
 combination and use of the several parts, in the whole, con- 
 stituting improved, more simple, and efficient ai^pliances or 
 means for working or operating on iron or steel forgings, 
 substantially as hereinbefore set forth, and as illustrated on the 
 accompanying drawings. 
 
 Dated this 19th dav of September, 1885.
 
 SPECIFICATIONS AND CLAIMS. 311 
 
 COMPLETE SPECIFICATION.— APPLICATION OF AN 
 OLD ARTICLE IN A NEW MANNER. 1876. 
 No. 4216. 
 
 Note. — Tliis was the specification contested in Morgan & Co. 
 V. Windover d; Co., 5 P. 0. R. 295, held hy the Court of 
 Appeal, Lord Coleridge, L.C.J. , and Cotton and Boiven, 
 L.JJ., amongst other findings to he sufficient in all respects 
 and to disclose good subject-matter for a patent. Decision of 
 Kekewich, J., affirmed. {One sheet of drawings not inserted 
 here.) 
 
 George Henry Morgan of Long Acre in the County of Title. 
 Middlesex. " Improvements in Carriages." 
 
 The invention has for its object improvements in carriages Description. 
 and relates to that description of carriage in which the body is 
 supported by C springs at both the front and back thereof. 
 Heretofore in such description of carriage the lower parts of the 
 front C springs have been fixed to the top " beds " of the 
 " under carriage " and elliptic springs have been fixed to the 
 axle to support the "under carriage" whilst a "perch" was 
 necessary to hold the front under carriage and the hind under 
 carriage together. This arrangement of parts was expensive, 
 cumbrous and inconvenient. 
 
 Now according to my invention I am enabled to dispense with 
 the " perch " and with the front elliptic springs whilst I obtain 
 a " full lock " to the under carriage and produce a cheaper, 
 more elegant, more compact and otherwise convenient form of 
 carriage. For this purpose I fix the lower parts of the front C 
 springs to the axle and I give support to the tails of such 
 springs by connecting them to a cross spring fixed at its centre 
 to a stay or stays fixed to the " framing pieces " of the " bottom 
 bed " or I connect the tails of such C springs to "half springs " 
 fixed to the " bottom bed." 
 
 The bows of the C springs are connected by links or loops to 
 bearings fixed to the "bottom bed" of the "under carriage" 
 and the body of the carriage is bolted to the " top beds " of the 
 under carriage as has been the usual practice when common 
 elliptic springs have been used to carry the body. 
 
 And in order that my said invention may be more clearly
 
 312 SPECIFICATIONS AND CLAIMS. 
 
 understood and readily carried into effect I will proceed aided by 
 the accompanying drawings more fully to describe the same. 
 Description Desceiption OF THE DRAWINGS.— Figure 1 is an elevation 
 
 o rawings. ^^^ Figure 2 is a plan of parts of a carriage with my invention 
 applied thereto and showing the tails of the front C springs 
 supported by a cross spring and Figures 3 and 4 are respectively 
 an elevation and plan of parts of a carriage having my invention 
 applied thereto but showing the tails of the C springs at both 
 the front and back supported by " half springs." 
 
 Like parts are marked with similar letters of reference in all 
 the Figures. 
 
 a is the body of the carriage, h are the front C springs and 
 c are the back C springs. 
 
 According to my invention I dispense with the "perch" 
 heretofore employed in carriages having the body supported by 
 C springs at both the front and back thereof and I fix the lower 
 parts of the C front springs h to the axle d and according to 
 the arrangement shown at Figures 1 and 2 I support the tails 
 b^ of such springs h by connecting them to a cross spring e 
 which is fixed at its centre to a stay or stays /^ fixed to the 
 framing pieces /" of the bottom bed / or according to the 
 modification shown at Figures 3 and 4 I support the tails h^ of 
 the front C springs h by connecting them to half springs g 
 fixed to the " bottom bed " and in this last arrangement I have 
 shown the tails c^ of the back C springs c supported by half 
 springs li fixed to the " pump handles" i. 
 
 The bows of the front C springs are according to my inven- 
 tion connected by links or loops j to bearings /'^ fixed to the 
 " bottom bed " / of the under carriage and the body of the 
 carriage is bolted to the " top beds " A; of the under carriage as 
 has been the usual practice when common elliptic springs have 
 been used to support the carriage body. 
 
 The links or loops j I also form of leather as has heretofore 
 been the case but I prevent the stretching thereof by connecting 
 thereto or covering the same on one side and the two ends with 
 a plate j^ as shown more clearly at Figure 5. 
 
 According to my invention in " locking," the front C springs 
 pass under the " boot " of the carriage and in addition to the 
 advantages before mentioned I obviate the lateral motion of the 
 carriage body which is inseparable from the former mode of 
 using C springs for both the front and back thereof. 
 
 Having thus described the nature of my said invention and
 
 SPECIFICATIONS AND CLAIMS. 313 
 
 tlie mode in wLicli I carry the same into effect I ^vould have it 
 understood that what I claim is : — 
 
 First. The mode herein described of supporting the front of Claims. 
 a carriage by C springs having their lower parts fixed to the 
 axle and their bows connected by links or hoops to bearings 
 fixed to the bottom bed of the under carriage substantially as 
 and for the purposes herein shown and described. 
 
 And Secondly. I claim giving support to the tails of the front 
 C springs by connecting them to a cross spring fixed at its 
 centre to a stay or stays fixed to the framing pieces of the 
 bottom bed in manner and for the purpose substantially as 
 herein shown and described. 
 
 In witness whereof, &c. 
 
 COMPLETE SPECIFICATION FOR A CHEMICAL IN- 
 VENTION.— FOUR PROCESSES.— TWO CLAIMS. 
 1878. No. 786. 
 
 Note. — This is the specification to the Patent in The Badische 
 Anilin, dc., Co. v. Levinstein and others, tried before Mr. 
 Justice Pearson, reported L. R. ^14. Ch. D. 156, and held good 
 subject-matter, sufiicient and tvorkable. hi the Court of Appeal, 
 by Bowen and Fry, L.JJ., Baggallay dissenting, L. II. 29 
 Ch. D. 366, to be bad for ambiguity. In the House of Lords, 
 by Lord Halsbury, L.C., Lords Herschell and Macnaughten, 
 L. R. 12 App. Cases, 710, the judgment of Pearson, J., upheld 
 on all grounds. The particidars of objections in this action, 
 after dealing ivith alleged instances of anticipation, ivere in 
 these terms : — 5. " That the specification j^urporting to be filed 
 *' in pursuance of the condition in that behalf in the said letters 
 " patent does not sufjiciently describe and ascertain the nature 
 " of the said alleged invention, or in ichat manner the same is 
 " to be j^etformcd, and does not sufficiently distinguish ivhich 
 '* of the matters and things therein described the said John 
 " Henry Johnson claims to be neiv or as being comprised in 
 " the said letters patent, and ivhich of the same he does not so 
 " claim and admits to be old, the said specification is in other 
 " respects vague and insufficient, and framed so as to mislead.
 
 314 
 
 SPECIFICATIONS AND CLAIMS. 
 
 " 6. That the alleged invention claimed in the said specijica- 
 " tion is not the alleged invention for which the said letters 
 " patent ivere granted. 7. That the said alleged invention is 
 " not useful. 8 {added at trial). The said invention is not 
 " proper subject-matter for which letters patent can he vcdidly 
 " circuited.'^ 
 
 Communica- 
 tion from 
 abroad and 
 title. 
 
 First process. 
 
 iixample. 
 
 John Henry Johnson, of 47, Lincolu's Inn Fields, in the 
 county of Middlesex, Gentleman. " Improvements in the pro- 
 
 DL'CTION OF colouring MATTERS SUITABLE FOR DyEING AND 
 
 Printing." A communication to me from abroad by Heinrich 
 Caro, chemist to the Badische Aniline and Soda Works of 
 Mannheim in the Empire of Germany. 
 
 This invention consists in the production of red and brown 
 colouring matters which in chemical language may be termed 
 the " Sulphoacids of Oxyazonapthaline " and the following pro- 
 cesses may be employed for their preparation. 
 
 First Process. — Napthylamine is converted into its diazo 
 compound by the action of nitrous acid and in a manner well 
 known to chemists and equal molecules of the diazo compound 
 thus obtained and of napthol or napthylic alcohol are allowed 
 to react upon one another by preference in an alkaline solution. 
 
 According to the emplojTnent of either of the two isomeric 
 modifications of napthylic alcohol known as alpha-napthol and 
 beta- napthol the result of this operation is a precipitate con- 
 taining either of the two corresponding and isomeric modifica- 
 tions of oxyazonapthaline and which may be termed "Alpha 
 and Beta- Oxyazonapthaline " respectively. — These azo com- 
 pounds are further converted into their sulpho-acids by any 
 method now in use for the preparation of organic sulpho-acids 
 such as for instance by heating them with fuming sulphuric 
 acid. The excess of sulphuric acid may then be removed by any 
 of the known means for eflecting this purpose and the colour- 
 ing matter may be obtained in a solid state by precipitation or 
 evaporation. 
 
 In this manner brown colouring matters are obtained from 
 alpiia oxyazonapthaline and red colouring matters from beta- 
 oxyazo-napthalinc. 
 
 As an example of the manner in which this first process may 
 be carried out I proceed as follows : — About ten pounds of 
 napthylaiiiinc aio mixed with or dissolved in about two gallons
 
 SPECIFICATIONS AND CLAIMS. 315 
 
 of concentrated or strong muriatic acid and about 100 gallons of 
 cold water and thereto an aqueous solution of nitrite of sodium 
 is added containing about 4*8 (four and eight-tenths) pounds of 
 pure nitrite of sodium or as much as will be found necessary to 
 convert the napthylamine into its diazo compound or into hydro- 
 chlorate of diazonapthaline. The solution thus obtained is added 
 to an aqueous and strongly alkaline solution of about ten pounds 
 of either of the two isomeric napthols or of mixtures of the same 
 when a dark red or brown precipitate will be produced consist- 
 ing of oxyazonapthaline, which is to be filtered washed and 
 dried. In order to obtain the sulpho-acids of oxyazonapthaline 
 I dissolve about ten pounds of the oxyazo-napthaline in about 
 20 lbs. of fuming sulphuric acid containing about 80 per cent, 
 of anhydrous sulphuric acid and the mixture is heated at a tem- 
 perature of about 100° Centigrade for about two hours or until 
 a sample of the mixture will be found to produce a solution with 
 water. — The further treatment consists in removing the free 
 sulphuric acid contained in the mixture by any of the known 
 means for effecting this purpose such as for instance b}' 
 neutralization with caustic lime and the colouring matter may 
 be obtained in a solid state by preference in the state of a sodium 
 salt in a manner well understood by chemists. 
 
 Second Process. — Napthylamine is converted into its diazo Secoud 
 compound as before stated and equal molecules of the diazo pio'^ess. 
 compound thus obtained and of the sulpho-acids of either 
 alpha-napthol or beta-napthol are allowed to react upon each 
 other by preference in an alkaline solution. In this instance 
 red colouring matters are the result of the operation and may 
 be obtained in a solid state by precipitation or evaporation. 
 
 The above said sulpho-acids of either alpha-napthol or beta- 
 napthol are produced as is well known by heating napthol with 
 excess of sulphuric acid at a temperature of about 100" Centi- 
 grade. — The resulting product is a mixture of several napthol 
 sulpho-acids and as my process may be applied not only to the 
 mono-sulpho-acids of napthol contained in that mixture but 
 also to the other sulpho-acids which result from the treatment 
 of napthol with sulphuric acid I wish it to be understood that 
 Avhat I consider as my invention under this second process for 
 preparing the sulpho-acids of oxy-azo-napthaline is the action of 
 diazonapthaline upon all sulpho-acids of either alpha or beta- 
 napthol and substantially in the manner aforesaid. And as an Example- 
 example of the manner in which I prefer to carry out this
 
 316 SPECIFICATIONS AND CLAIMS, 
 
 second process I take a solution of hydrochlorate of diazonap- 
 thaline prepared from about ten pounds of napthylamine sub- 
 stantially in the manner described in the first process and the 
 solution of the diazo compound is added to a cold and strongly 
 alkaline solution of the sodium salts of the napthol sulpho acids 
 such as result from the treatment of about ten pounds of napthol 
 with about twenty or thirty pounds of sulphuric acid. — This 
 mixture which throughout this operation is to be kept alkaline 
 is precipitated with chloride of sodium and the precipitate of the 
 colouring matter thus obtained is filtered washed pressed and 
 dried. 
 
 Third process. Third PROCESS. — The sulpho acids of napthylamine are con- 
 verted into their respective diazo compounds and equal mole- 
 cules of the diazo compounds thus obtained and of either alpha - 
 napthol or beta-napthol are allowed to react upon each other by 
 preference in an alkaline solution and substantially in the 
 manner above described in the first and second processes. In 
 this instance alpha-napthol produces brown colouring matters 
 while red colouring matters result from the employment of 
 beta-napthol. 
 
 As is well known the said sulpho acids of napthylamine may 
 be produced in various ways such as for instance by the direct 
 action of sulphuric acid upon napthylamine or in a less direct 
 manner by treating nitro-napthaline with sulphite of ammonium 
 or by submitting the sulpho acids of nitro napthaline to the 
 action of reducing agents. By the said methods as is well 
 known several modifications of the sulpho acids of napthylamine 
 are obtained chiefly diflering from each other by their various 
 degrees of solubility in water some of them being nearly in- 
 soluble such as the so-called napthionic acid. 
 
 F.xample. As an example of the manner in which the sulpho acids of 
 
 napthylamine may be prepared from the sulpho acids of nitro- 
 napthaline I proceed as follows : — One part by v/eight of nitro- 
 napthaline is mixed with about two parts by Avcight of rectified 
 sulphuric acid and with about one part by weight of fuming 
 sulphuric acid containing about 80 per cent, of anhydrous sul- 
 ])hnric acid and the mixture is treated at a temperature of 
 about 100° Centigrade until the conversion into the sulpho- 
 acids of nitronapthuline is perfect or until a sample of the 
 nnxture produces a clear solution with an excess of caustic 
 idkali. 'J'ho result of this operation is then mixed with about 
 ten parts of water and treated with reducing agents such as
 
 SPECIFICATIONS AND CLAIMS. 317 
 
 metallic iron and in a manner well known in order to obtain 
 the sulplio acids of napthylaminc which may bo further purified 
 in the following manner : — 
 
 The reduction of the nitronapthaline compounds being com- 
 plete the mixture is treated with an excess of milk of lime 
 filtered and the filtered solution of the lime salts is strongly 
 concentrated and decomposed by an excess of muriatic acid 
 when the difficultly soluble sulpho acids will become precipi- 
 tated and may be separated from the more soluble modifications 
 by filtration or otherwise. 
 
 As an example of the manner in which the sulpho acids of Example of 
 napthylamine may be prepared by the direct action of sulphuric process"^^ ^ 
 acid upon napthylamine I proceed as follows : — 
 
 One part by weight of napthylamine is mixed with about three 
 parts by weight of fuming sulphuric acid containing about 80 
 per cent, of anhydrous sulphuric acid and the mixture is heated 
 at a temperature of about 70° to 80° Centigrade until a sample 
 of the mixture produces a clear solution with an excess of caustic 
 alkali. The result of this operation is then mixed with about 
 twenty parts of water when the difficultly soluble sulpho acids 
 will become precipitated and may be separated from the easily 
 soluble modifications by filtration or otherwise. All these modifi- 
 cations of the sulpho acids of napthylamine may be converted 
 into the corresponding sulpho acids of oxyazonapthaline in the 
 manner above described and thus colours obtained differing in a 
 similar ratio in their various degrees of solubility. 
 
 Fourth Process. — The sulpho acids of napthylamine are con- Fourth 
 verted into their respective diazo compounds and equal molecules P'^°'^®^^' 
 of the diazo compounds thus obtained and of any of the various 
 sulpho acids of either alpha-napthol or of beta-napthol are allowed 
 to react upon each other by preference in an alkaline solution 
 and substantially in the manner described in the foregoing pro- 
 cesses. In this instance the sulpho acids of oxyazonapthaline 
 thus produced are red colouring matters. 
 
 This invention further consists in the production of similar Alternative 
 colouring matters and which may be termed " The Sulpho acids I*^"^^^®' 
 of Dioxyazonapthaline " by substituting dioxynapthaline or the 
 diatomic napthylic alcohol for either of the two isomeric napthols 
 in any of the before-mentioned processes. 
 
 Having now described and particularly ascertained the nature 
 of ihe said invention and the manner in which the same is or 
 may be used or carried into effect I would observe in conclusion
 
 oiS SPECIFICATIONS AND CLAIMS. 
 
 that what I consider to be novel and original and therefore claim 
 as the invention secured to me by the hereinbefore in part recited 
 letters patent is : — 
 Clabns. First. The production of red and brown colouring matters 
 
 which in chemical language may be termed the sulpho acids of 
 osyazonapthaline by the action of the diazo compounds which 
 may be prepared from napthylamine or from the sulpho acids of 
 napthylamiue upon any of the isomeric napthols or of mixtures 
 of the same or upon any of the sulpho acids which may be pre- 
 pared from either alpha-napthol or from beta-napthol or from 
 mixtures of the same substantially by the processes above 
 described. 
 
 Secondly. The production of similar colouring matters and 
 which in chemical language may be termed the sulpho acids of 
 dioxyazonapthaline by substituting dioxynapthaliue for either 
 of the two isomeric napthols in any of the processes above 
 described for the preparation of the sulpho acids of oxyazonap- 
 thaline substantially as hereinbefore described. 
 
 In witness whereof I the said John Henry Johnson have 
 to this my specification set my hand and seal this ninth 
 day of August one thousand eight hundred and seventy- 
 eight. 
 
 J. HENRY JOHNSON (l.s.).
 
 SPECIFICATIONS AND CLAIMS. 319 
 
 COMPLETE SPECIFICATION.— A NEW PRINCIPLE, 
 COUPLED WITH THE METHOD OF CAPtRYING 
 THE PRINCIPLE INTO EFFECT — SUPPORTED 
 BY A COMBINATION CLAIM. 1882, No. 8G60. 
 
 Note. — T]iis Specification icas attacked as disclosing no subject- 
 matter and want of utility. Held by the Court of Appeal, 
 Cotton, Boicen, and Fry, L.JJ., affirming Kekeivich, J., to 
 be good subject-ynatter : that tJie claims were sufficient and the 
 patent valid. 6 P. 0. R. 437. 
 
 Paul Ehrlich, resident at Gohlis near Leipsic, Saxony, Title. 
 German Empire, "Improvements in mechanical musical 
 
 INSTRUMENTS." 
 
 This invention relates to that class of mechanical musical Complete 
 instruments in which the notes or sounds are produced by the specification, 
 passage of a perforated sheet or surface across the levers operating 
 the valves of reeds or pipes, and it consists substantially in the 
 employment of a perforated disk of circular form or of a number 
 of like semi-circular disks, instead of the ordinary strip or band 
 hitherto used in such instruments. 
 
 The invention is represented on the annexed sheet of drawings. Description 
 Fig. 1 is a sectional elevation, and Fig. 2 a sectional plan of the ^ drat?n"&^^ 
 instrument. Fig. 3, x, y z are three diagrams showing the 
 relative position and arrangement of the air-holes in the reeds 
 or pipes. Fig. 4 is a plan of a perforated circular disk ; Fig. 5 
 a top view of a part of the instrument ; Fig. 6 a top view of the 
 instrument with semi-circular disks, one of which only is shown, 
 and Fig. 7 a like view with both semi-circular disks in their 
 place. 
 
 The disk a is made of thin sheet metal, card-board, paper or 
 other suitable material, and perforated in the manner required 
 for producing a given melody. The same is carried by a plate b 
 forming the head of the vertical shaft c, and provided with a 
 driving-pin or pins engaging with holes in the disk. The shaft 
 c is slowly rotated from the main-shaft c^ by worm-wheel gearing 
 or otherwise. The main- shaft also operates the bellows k and 
 k^ by means of a crank and connecting rods, h are the pipes 
 or reeds. 
 
 The valve-levers d, which have their fulcrum at s, are provided
 
 320 
 
 SPECIFICATIONS AND CLAIMS. 
 
 Description 
 and reference 
 to draw-inc^s. 
 
 eacli witli a projecting stud or finger, which hears hy virtue of a 
 spring 71 against the under side of the disk a, so that when, 
 during the rotation of the disk, a perforation thereof comes 
 opposite to one of the said fingers, this finger enters into the 
 perforation, thus permitting the valve to which it belongs, to 
 open, and the note to sound. 
 
 In order to prevent the fingers of the valve-levers from lifting 
 the disk and from coming out of line with the perforations with 
 which they are to register, the grates or combs e and e^ are 
 arranged, the former being fixed to a bar /Figs. 1 and 5, the 
 latter to the top of the chest x>- The disk a rotates between these 
 grates, wlule the fingers of the valve-levers are guided in the 
 slits between the bars thereof, the said slits registering with the 
 perforations of the disk when these are in a line with the fingers. 
 The latter are thus always guided accurately into the correspond- 
 ing perforations. The bar /is hinged at one end to the chest 2>, 
 while at the other end it is secured in such a manner that it may 
 with facility be released and lifted, in order to allow the disk a to 
 be exchanged. It may, when hinged at one end, also be kept in 
 its place by a spring in the manner of a clasp-knife. 
 
 The valves r and their levers are arranged in a compartment q 
 hermetically separated from the rest of the inside space of the 
 instrument, and communicating with the outer air by the holes 
 
 [/> ^^ 9~> ff> *-^'C. 
 
 In case a piece of music be too long for one disk, a number of 
 semi-circular disks A, B, C, &c., Figs. 6 and 7, may be used, 
 each of which contains a part of the notes, and which may be 
 inserted into the instrument one after the other without inter- 
 rupting the playing. The bar /with the grate e is in this case 
 by preference made of a length as not to reach to the centre of 
 the plate h, as otherwise it would prevent, or at least render 
 difficult the exchange of the disk-parts. 
 
 In perforated music sheets of all kinds it is desirable that the 
 perforations for the lower notes have a comparatively greater 
 length than those for the higher ones. Considering that in the 
 circular disk the length of the perforations for notes of the same 
 duration must be in proportion to the distance of these perfora- 
 tions from their centre of rotation, the disk presents the advan- 
 tage that the aforesaid condition will be naturally fulfilled simply 
 ])y the arrangement of the reeds and the valves in such a manner 
 that the outer perforations will correspond to the lower notes, 
 tho inner ones to those of higher pitch.
 
 SPECIFICATIONS AND CLAIMS. 321 
 
 111 order to reduce as much as possible the diameter of the 
 disk, the valve-levers d must be brought together as close as 
 possible. To this effect the reeds or pipes h are placed in verti- 
 cal ranges, but each reed or pipe is shifted laterally by so much 
 in respect to the one which is below or above it, as is required 
 for allowing the valve-levers to pass freely by the side of each 
 other. 
 
 For the purpose of reducing the requisite lift of the valves, I 
 prefer to provide each pipe or reed with two air-holes as shown 
 in section by Fig. 1, and in front view by Fig, 3 x, or with three 
 holes as in Fig. 3 i/, and to form the valve of as many separate 
 bars, each of which is adapted to cover one of the said holes. 
 The valves may also be arranged in the manner of slide-valves, 
 and in some cases two valves may be connected together in order 
 to produce double notes ; see Fig. 3 z. In Figs. 3 x and 
 S y is also shown the relative position of the air-holes of the 
 different reeds ; I, II, III being the first range, IV, V, VI the 
 second, &c. 
 
 The reeds h communicate with the main chamber T of the 
 instrument. This chamber is hermetically closed and contains 
 the bellows k, k^ and the driving mechanism. The air sucked 
 in by the said bellows is delivered into the chamber T with 
 Avhich is combined the regulating bellows I. The bellows k, k^ 
 may, however, also operate in the contrary manner by sucking 
 the air from the chamber T ; the pipes or reeds and the 
 regulating bellows I having, in this case, of course to be arranged 
 accordingly. 
 
 Having thus described the nature and object of my invention, 
 and the manner in which it is to be carried out in practice, I 
 hereby claim as new and important features of the same : 
 
 1. In a mechanical musical instrument, the rotative music Claims 
 sheet a, consisting of a disk perforated in accordance with the P?™^^*^<1 
 notes to be produced and co-operating with the valve-levers d, 
 substantially as and for the purpose described, 
 
 2. The combination with the valve-levers d of a perforated Combination. 
 disk consisting of two parts A and B, either of which may be 
 exchanged, as and for the purpose specified. 
 
 In witness whereof, I, &c.
 
 ( ^-21 ) 
 
 A FEW PRECEDENTS FOR THE TRANSFER 
 OF INTERESTS IN LETTERS PATENT. 
 
 Agreement 
 to assign to 
 company. 
 
 SALE OF PATENT RIGHTS TO A PROPOSED 
 COMPANY. 
 
 1. Preliminary Agreement witJi Promoter. 
 
 An Agreement made this day of 
 
 188,- 
 
 •, C. D. of 
 
 -, and E. F. of • 
 
 Bet\Yeeu A. B. of — 
 
 hereinafter called the vendors of the first part, and X. Y. 
 
 of hereinafter called the promoter of the other part. 
 
 Whereas the vendors are the owners of certain letters patent 
 
 dated and numbered , for an invention entitled . 
 
 And whereas it is intended that the promoter shall procure 
 forth^Yith the incorporation by registration under the Companies 
 
 Acts, 1862 to 1883, of a company to be called Limited, 
 
 and that the vendors shall for the considerations hereinafter 
 mentioned sell and assign the said letters patent to the said 
 
 Limited. And whereas a print of the memorandum 
 
 and articles of association of the Limited has been 
 
 approved by the parties hereto and is annexed to this agreement. 
 Now it is agreed as follows : 
 Promoter 1. The promoter shall and will forthwith procure the in- 
 
 incon^olatiou. corporation under the above-mentioned acts of the said 
 
 Limited, and shall and will duly register as the memorandum 
 and articles of association of the said company the memorandum 
 and articles of association hereinbefore referred to and which 
 are set forth in the schedule hereto. 
 Assignment to 2. With as little delay as possible after incorporation the 
 Ir couj'wnv vendors shall execute and the said promoter shall procure the 
 
 execution by the said Limited of a contract similar to 
 
 that set forth in the schedule hereto or such other contract as 
 
 the parties hereto and the Limited shall agree upon. 
 
 Notice of 3. If the promoter shall not before the day of 
 
 dcteniiiiia- i8g_^ perform his part of this agreement, then it shall be 
 lawful for the vendors or either of them to deicrminc the same
 
 PRECEDENTS. 323 
 
 by giving notice in writing of such determination to the pro- 
 moter, and if the said Limited shall at that time have 
 
 been incorporated also to the said Limited. 
 
 Schedule. 
 
 2. Af/rconcnt to Assign to the Conip'un/. 
 
 An Agreement made this day of 1888, Between 
 
 A. B. of , C. D. of , and E. F. of -, herein- 
 after called the vendors of the one part, and the Limited 
 
 hereinafter called the purchasers of the other part. Whereas 
 
 the vendors are the owners of certain letters patent dated 
 
 and numbered and entitled . And whereas by Recital of 
 
 agreement dated and made between the vendors of the at)ove 
 
 , fi^reemtiit. 
 
 one part and ■ therein called the promoter of the other, " 
 
 it was agreed that for certain considerations therein and herein 
 
 mentioned the vendors should sell the said letters patent to the 
 
 purchasers. Now it is agreed as follows : 
 
 1. The vendors shall upon the completion of the purchase Agreement 
 as hereinafter provided for, assign unto the purchasers the said *° assign, 
 letters patent and all the right, title and interest of the vendors 
 therein, free from all incumbrances save as regards assignments 
 
 for districts and licences already granted as hereinafter men- 
 tioned, and the vendors shall do all things necessary and 
 execute all documents necessary for rendering the said assign- 
 ment valid and effectual. 
 
 2. Tlie purchasers shall pay to the vendors on or before the Pa3Miieut of 
 
 day of the sum of £ in cash, and shall aHotinl'lit 
 
 allot to the vendors o]' to such other person or persons as the of shares. 
 
 vendors shall nominate fii^y P^id up shares in the 
 
 vendors' company, and immediately upon such payment being 
 
 made and the said shares being allotted the vendors shall assign 
 the said letters patent as in the first clause hereof provided. 
 
 3. The said assignment shall be subject to assignments for Assignment 
 
 districts and licences in the schedule hereof mentioned, but such f}^^J®'^^ *'' 
 
 licenses, &c. 
 
 assignment shall include all the rights and benefits from time 
 to time hereafter accruing to the vendors under or by virtue of 
 such assignments for districts or licences. 
 
 4. The vendors do not warrant or represent the validity of No warranty 
 the said letters patent. "^ validity. 
 
 5. Should the said purchase price not be paid or the shares Determiua- 
 not be allotted on or before the said day of the V*^" "1'°'^ 
 
 •^ „ default. 
 
 Y 2
 
 3 2 J. PRECEDENTS. | 
 
 vendors shall be entitled to interest upon the said purchase 
 price and upon the nominal value of the said shares after the 
 rate of 5 per cent, per annum until payment and allotment, or 
 at their option to determine this contract by notice under their 
 hands delivered at the registered office of the company. Provided 
 always that the vendors shall not be entitled to sue iov or 
 recover damages against the purchasers in respect of the breach 
 of the said agreement. 
 
 6. The said A. B. shall be deemed the agent of the said 
 C. D. and E. F. for the purpose of receiving the said purchase 
 money and shares and giving an eflectual discharge for the 
 same. 
 
 Schedule. 
 
 AGREEMENT TO OBTAIN AND ASSIGN LETTERS 
 PATENT FOR AN INVENTION IN CONSIDERA- 
 TION OF A SUM OF MONEY AND DELIVERY 
 OF CERTAIN NUMBER OF THE PATENT 
 ARTICLES (a). 
 
 Panics. An Agreement made the day of , Between 
 
 (inventor) of, &c., of the one part and (jyurchaser) of, &c., 
 of the other part. Whereas the said (inventor) claims to have 
 
 invented a new and improved kind of ■ , a plan or drawing 
 
 Af,Teeiiient to of which is hereunto annexed. And whereas the said (jJiO'- 
 i.^'s^Mi patent, ^^''^s*^'") ^^s arranged with the said (inventor) for the sale to 
 him of the benefit of the said invention in the manner and upon 
 IJccital of the terms hereinafter expressed. Now Witness that in con- 
 
 iiiveii ion. siJeration of the sum of £ to the said (inventor) now 
 
 ..' paid by the said (purchaser) the receipt whereof is hereby 
 tioii of a sum acknowledged and also in consideration of the agreements 
 
 and of the hereinafter contained on the part of the said ( purcliaser) he 
 purcha''er s •■• _ . , . 
 
 covfiiiints, the said (inventor) hereby agrees with the said (purchaser) in 
 
 inventor manner following (that is to say) that he the said (inventor) 
 
 covenants '-' ^ . . 
 
 with i>ur- will at any time or times hereafter within the term of fourteen 
 
 Kolicit' 'rant .vears to be computed from the day of the date of these presents 
 of letters upon the request and at the cost of the said (purchaser), his 
 |>!itent : 
 
 (a) Extrncteil by permi.ssion of the pnblishors from Bythewood and Jarman's 
 Conveyancing.
 
 PRECEDENTS. 325 
 
 i'xeciitors, administrators, or assigns, take and use all such 
 ■steps, means, and proceeding's as shall be requisite or proper 
 for obtaining, and use bis tbe said (inrentorys utmost en- 
 deavours to obtain, in tbe name of bim tbe said (i>iveNtor), a 
 patent for tbe sole and exclusive making, using, exercising, and 
 vending of tbe said invention witbin tbe United Kingdom of 
 Oreat Britain and Ireland, and tbe Isle of Man, as tbe said 
 (purcJidser), bis executors, administrators, and assigns, may 
 Jesire, during tbe term or terms for wliicb patents for inventions 
 are usually granted. And further, tbat tbe said {inventor), his and to assign 
 executors, or administrators, will at any time or times after .^r^^^^^^ . 
 obtaining any such patent upon tbe request and at tbe cost of 
 tbe said {purcliaser), his executors, administrators, or assigns, 
 make, do, and execute all such assignments, deeds, matters, 
 ■and things, as the said {imreliaser), his executors, adminis- 
 trators, and assigns, shall reasonably require for assigning, and 
 transferring unto tbe said {purcliaser), bis executors, adminis- 
 trators, and assigns, for his or their absolute benefit, the said 
 patent, and the full benefit and advantage thereof ; And further, to iustnic 
 that be the said {inventor) will, at any time or times hereafter, R"'*^:,^'!!" '/;!!„ 
 
 \ ' ' d ' tile uw ''iiTiou 
 
 upon every reasonable request of tbe said {purchase}'), his 
 executors, administrators, or assigns, more particularly and 
 sufficiently describe to him or them, or his or their agents or 
 workmen, either in writing or by personal explanation and 
 instruction, or otherwise, the nature of tbe said invention, and 
 in what manner tbe same, and every part thereof, and every 
 process relating thereto, are to be performed or carried into 
 €fi"ect and used; And further, that he tbe said {inventor), his Not to use 
 executors or administrators, will not, nor shall any person or "-^thout '^ 
 persons claiming by, from, through, or under bim or them, at purchasei-'s 
 any time or times hereafter, during tbe term of fourteen years '^"'^ " 
 to be computed from the day of tbe date of these presents, 
 without tbe consent or licence of the said {jnirclidsi'i-), his 
 executors, administrators, and assigns, either alone or in 
 <jopartnership, or in any other manner, howsoever, directly or 
 
 indirectly, make or assist in the making of any of tbe 
 
 new and improved kind hereinbefore mentioned, or in tbe con- 
 struction of which tbe aforesaid invention shall be used ; or 
 (except by any specification or specifications which may have to nor, except i)y 
 be executed and enrolled for the purposes of the application for to^aisclose'"' 
 the said patent) described, either in writing or otherwise, to invention ; 
 any person or persons other than the said {pi(rcli(isvr), his
 
 326 PRECEDENTS. 
 
 executors, administrators, or assigns, the nature of tlie said 
 invention, or in what manner the same is to be performed or 
 carried into effect, or give any information, or do or permit or 
 be party or privy to, any act, matter, or thing whereby or by 
 means whereof the same respectively may be known by any 
 person or persons other than as aforesaid, or whereby or by 
 means whereof the said (inventor) ma_y be prevented or hindered, 
 from obtaining the said patent for the purposes hereinbefore 
 that inventor mentioned. And further, that he the said {inventor) has not 
 hath not ^^ ^ time or times heretofore described, either in writing, or 
 
 disclosed '' . 
 
 invention, otherwise, to any j)erson or persons other than the said 
 and IS not (^purchaser), the nature of the said invention, or in what 
 from manner the same is to be performed or carried into effect, or 
 
 mtenT"° given any information, or done or permitted, or been party or 
 privy to, any act, matter, or thing, whereby or by means 
 whereof the same respectively may have been or may be known 
 by any person or persons other than as aforesaid, or whereby 
 or by means whereof he may be prevented or hindered from 
 obtaining the said patent for the purposes hereinbefore men- 
 fur further tioned ; And further, that he the said {inventor) will, at any 
 assurance, \^iYne or times hereinafter, upon every request and at the cost of 
 the said {purdutser), his executors, administrators, or assigns, 
 make, do, execute, and perfect all such lawful acts, deeds, dis- 
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 better or more satisfactorily or effectually sustaining or main- 
 taining such patent as aforesaid, and assuring the same, and the 
 full benefit thereof, and of the said invention unto the said 
 (purchaser), his executors, administrators, and assigns, as by 
 l.urcliaser him or them shall be reasonably required. And in considera- 
 
 a^ees to ^.-^jj q£ ^j^g agreements hereinbefore contained on the iiart of the 
 
 make a certain ° • i i 
 
 numbf-r of ■•ii\\({ (inventor), nc the said (;/)»?Y7/^f.s7';-) hereby agrees with the 
 
 articlfs and ^^j^ (inventor), his executors and administrators, that he the 
 
 dcdiver them ^ '' 
 
 to tlie said (piircluisrr), hh executors or administrators, will, v.ithin 
 
 inventor ; ^^^ space of one year, to be computed from the day of the date 
 
 of the patent to be so obtained as aforesaid, at his or their cost, 
 
 make and deliver, for and to the said (inventor), his executors 
 
 and administrators, — complete, perfet-t, and well made and 
 
 finished, — of the new and improved kind hereinbefore men- 
 
 lo indemnity tioned. And will, fi-c)Ui timi! to time and at all tinu.>s hereafter, 
 
 inv«-n tor from cjavo, defend, and keep harmless and ijidemnified the said 
 
 costs >•{ . . . "^ . . 1 1 • 1 
 
 ol.tuininf,' (inventor), his heirs, executors, and adiuinistrators, and his and 
 letters juitenf. [],(.j,. estates iiiid cfl'ccis wliatsoever and wlicresoever, of, from,
 
 PRECEDENTS. 327 
 
 and against all costs and charges to be incurred or sustained in, 
 about, or in anywise relating to the obtaining of the said patent, 
 and the preparing any specifications which may be necessary for 
 the purposes of the application for the same, and of, from, and 
 against all claims and demands on account thereof. Provided Proviso that 
 always, and it is hereby agreed and declared, that the solicitor Fii'^taser is 
 or agent to be employed in obtaining the said patent, and in solicitor, or 
 preparing any such specification or specifications as aforesaid, ti^'at mveutor 
 shall be appointed by the said (purchaser), his executors, shall not bo. 
 administrators, or assigns; And that the said (inventor), his J^^jg^^^gf^^j^ ^'^ 
 heirs, executors, or administrators, shall not be answerable or 
 accountable for any neglect or default of such solicitor or agent 
 anything hereinbefore contained to the contrary thereof in 
 anywise notwithstanding. 
 As witness, &c. 
 
 AGREEMENT BETWEEN JOINT OWNERS OF A 
 PATENT FOR PARTITION. 
 
 An Agreement made the day of 188 — , Between 
 
 A. B. of of the one part, and C. D. of of the 
 
 other part. Whereas the said A. B. and C. D. are joint owners 
 
 of certain letters patent dated and numbered and 
 
 entitled . And whereas they have agreed to divide the Agreement 
 
 special licence, full power, sole privilege, and authority by the ° "'^ ^' 
 said letters patent granted in the manner and upon the terms 
 hereinafter appearing. Now it is agreed as follows : 
 
 1. The said A. B. shall be solely entitled henceforth to use, Assignment 
 worlc and vend the invention forming the subject matter of the ^^ ^^ g^ 
 said letters patent in the following counties and shall 
 
 be solely entitled within the said counties to grant assignments 
 for districts or special or general licences upon any terms which 
 the said A. B. shall see fit, and the said C. D. shall whenever 
 required to do so by the said A. B., execute a valid assignment 
 of all his interest in the said letters patent within the said 
 counties to the said A. B. 
 
 2. The said C. D. shall be solely entitled henceforth to use, Assignment 
 work, and vend the said invention in the following counties °^ "^P ^''^ 
 , and shall be solely entitled within the said counties to 
 
 grant assignments for districts or special or general licences
 
 328 
 
 PRECEDENTS. 
 
 'Neither party 
 to account. 
 
 Paymeut of 
 fees, &c. 
 
 Future 
 patents 
 elective. 
 
 No aiiicnd- 
 ment witliout 
 consent. 
 
 upon any terms which the said C. D. shall see fit, and the said 
 A. B. shall, whenever required to do so by the said C. D., 
 execute a valid assignment of all his interest in the said letters 
 patent within the said counties to the said C. D. 
 
 2. Neither party shall be bound to account to the other for 
 any profits, royalties, or payments received by him with respect 
 to the using, vending, or working the said invention within the 
 counties or districts assigned to him hereby. 
 
 3. The said C. D. shall from time to time and as they 
 become due pay the fees for the continuance and renewal of the 
 said letters patent, and shall be entitled to recover one moiety 
 of the sums of money so paid from the said A. B. 
 
 4. This agreement and all the provisions thereof shall apply 
 to any letters patent obtained or acquired by either party hereto 
 for any improvements upon the said patented invention, and 
 neither party shall be bound to make any payments in respect 
 of any such improvements to the other. Provided always, that 
 immediately after applying for any such letters patent the party 
 seeking to obtain the same shall give notice in writing to the 
 other of the said improvement and full particulars respecting 
 the same, together with a copy of the specification filed, and 
 thereupon the other party shall elect whether he shall take the 
 benefit of the said invention or not, and if he elects to take the 
 benefit thereof shall from time to time pay to the party applying 
 for such letters patent one moiety of all the costs, fees, and 
 charges incurred in obtaining or seeking to obtain such letters 
 patent, and then the said letters patent and the said invention 
 shall be deemed to be within this agreement, but should he 
 elect not to pay the said moiety of costs, fees, and charges, then 
 he shall be deemed to have abandoned all claim to the said 
 letters patent and invention, and the party applying for such 
 letters patent shall thenceforth be the sole owner thereof. 
 
 5. Neither party shall apply for leave to amend the specifica- 
 tions to any letters patent within this agreement without the 
 consent of the other first had and obtahied. 
 
 6. So fur as practicable this agreement shall apply to and be 
 binding on the executors, administrators, or assigns of the 
 parties hereto.
 
 PRECEDENTS. 329 
 
 AGREEMENT FOR WORKING AND SELLING AN 
 INVENTION, IN RESPECT OF WHICH AN AP- 
 PLICATION FOR A PATENT HAS BEEN MADE, 
 FOR THE JOINT BENEFIT OF THE INVENTOR 
 AND ANOTHER PERSON (a). 
 
 An Agreement made the day of , 18 — , Between Parties. 
 
 (inventor), of, &c., of the one part: and (capitalist), of, &c., of ^^ecitak of 
 \ .^ , \^, M -n /• X -1 \ ,1 application 
 
 the other part. Whereas the said (inrentor) has, under the for patent ; 
 
 Patents, Designs, and Trade Marks Act, 1883, made an applica- 
 tion, dated the day of 18 — , number , for 
 
 a patent for an invention of (title of invention), which appHca- 
 tion was accompanied by a complete specification : And whereas of acceptance 
 the said complete specification has been accepted : And whereas tion'-^'^' 
 the parties thereto have agreed to enter into the arrangements of agreement 
 
 hereinafter mentioned in respect of the said invention and ap- ^or anange- 
 
 T ■ T 1 1 1 , • 1 1 1 iiient as to 
 
 plication, and the patent to be obtained thereupon. Now these working, &c., 
 
 Presents witness that it is hereby agreed as follows, that is to *'^^ nivention. 
 „,, . Testatum. 
 
 1. The said (capitalist) shall immediately upon the execution ° . .. 
 
 of these presents, pay to the said {inventor) a sum of £ , contribute 
 
 to be applied by him towards the expenses of workinsr and ™"^ ^°^" 
 -, t , expenses. 
 
 developing the said invention. 
 
 2. In consideration of the payment so agreed to be made as Inventor to 
 aforesaid, and of the agreements on the part of the said o"t,^f,) patent 
 (capitalist) hereinafter contained, the said (inventor) shall use and assign the 
 his best endeavours to perfect the said invention, and to obtain rl^ii'ifiied*^'^ 
 the grant of the said patent in his own name, and shall, when- 
 ever required by the said (capitalist) after the granting of sach 
 
 patent, assign the same, so that the same premises may be 
 legally and beneficially vested in the said parties hereto as 
 tenants in common in equal shares, and the said parties hereto 
 shall as well before as after such assignment, be entitled to the 
 said patent in the shares aforesaid. 
 
 3. The said (inventor), without any further remuneration than Inventor to 
 the monies hereinafter agreed to be paid by the said {capitalist), iu^prove-''^'^*'^ 
 will communicate to the said (capitalist) all improvements which ments. 
 
 the said (inventor) has already invented, discovered, or made, 
 or may during the continuance of the said patent, or of any other 
 
 (a) Extracted by permission of the publishers from Bythewood and Jarman's . 
 
 Conveyancing.
 
 380 PRECEDENTS. 
 
 patent M'hich may become subject to the provisions of tbese 
 presents, invent, discover, or make in, or in connection with the 
 said invention ; and also all improvements whether patented or 
 not in or in connection with the said invention, of which the 
 said {inventor) shall become the owner, or have the control, 
 luventoi- to 4. The said (inventor) will also, at the expense in the first 
 
 foreiin^aiid instance of the said (ccqntalist), such expense to be considered 
 colouial as an advance, and to be reimbursed as hereinafter mentioned, 
 
 pa en s. apply for and endeavour to obtain in such foreign countries, 
 
 or British Colonies, or dependencies, as the said (cajntalist) shall 
 think proper, and shall require, the like privilege for the in- 
 vention comprised in the application, and for any such improve- 
 ments as aforesaid ; and will, as far as practicable, at the request 
 and expense, in the first instance, of the said {capital ist), such 
 expense to be considered as an advance, and to be reimbursed as 
 hereinafter mentioned, render all such foreign and colonial 
 patents, and the said improvements available for the exclusive 
 use of the said parties hereto in equal shares ; and execute and 
 do every act, deed, and thing which may be necessary or ex- 
 pedient for effectually vesting the same in the said parties 
 hereto in the shares aforesaid. 
 Capitalist to 5. The Said (cajntalist) shall advance from time to time such 
 "q^ ^^j^!]Jj^"' ^^ monies as he shall think fit for working and developing the 
 and develop- patent to be obtained on the aforesaid application numbered 
 
 ing unen ion. ^ ^^. ^j^^ ^^^^ foreign and colonial patents or like privileges, 
 
 or any such patents for improvements as aforesaid (all which 
 patents and privileges are collectively referred to as the "said 
 patents " ), and for defraying the costs and expenses of obtaining 
 and completing the said patents resj)ectively, and keeping the 
 same on foot, and for protecting or defending the same from, 
 or obtaining damages or other compensation for infringements 
 or otherwise defending the said patents, or of obtaining renewals 
 and extension of the term of the said patents, or amending the 
 sjiecifi cation thereof, or working or developing the working com- 
 prised in the said patents (hereinafter referred to as the said 
 patented inventions), or introducing the same to the public, or 
 exercising or using the said patented inventions, or any of them, 
 or any parts thereof respectively, or for any purpose whatever 
 in connection with the said patents, or any of them ; and the 
 
 said udvano(!S, and also the aforesaid sum of £ shall be 
 
 repaid to the said (capitalist) as hereinafter mentioned ; and if 
 there shall at any one time during the continuance of this 
 
 I
 
 PRECEDENTS. 331 
 
 agreement be owing to the said {capitalist) in respect of such 
 
 advances in the aggregate, the sum of £, , or upwards, 
 
 then any excess of such advances over the sum of £ , shall 
 
 carry interest at the rate of £5 per cent, per annum, from the 
 date when such excess shall have become due to the said 
 {capitalist) until the same shall be paid. 
 
 G. All advances made by the said {capitalist) as aforesaid, and Chuig.- of 
 all interest shall be, and the same are hereby charged upon the patents, 
 said patents as a first charge upon the same. 
 
 7. All monies which shall be received by way of royalties, or Axjplirutioii 
 otherwise, as the consideration for any licence granted for the proceeds of 
 use of the said patented inventions, or any of them, or any part sale of patent 
 thereof respectively, or which shall be received as the proceeds 
 
 of the sale, or other disposition of the said patents, or any share 
 or interest therein, or which shall be received in respect of any 
 working, using, or exercising by or on behalf of the said parties 
 hereto, or either of them, of the said patented inventions, or any 
 of them, or any part thereof respectively, or which shall in any 
 manner whatever arise, or be received out of, or in respect of the 
 said patents, or any of them, all which monies are hereinafter 
 referred to as " the proceeds of all the said patents," shall be 
 applied as follows : — that is to say, in the first place, in payment 
 of the costs and charges incurred with the consent of the said 
 {capitalist) attending the licence, sale, disposition, or working 
 in respect of which the same respectively shall be received ; and 
 in the next place, and as a charge upon the said proceeds of the 
 said patents, and in priority to any other payments hereinafter 
 mentioned, in payment to the said {capitalist) of all advances 
 made by the said {capitalist) as aforesaid with the interest 
 thereon, in the events, and at the rate, and in manner afore- 
 said ; and in the next place, in payment of all expenses of 
 working the said patents (hereinafter referred to as the patent 
 expenses, and defined as hereinafter mentioned) ; and the 
 balances which shall remain of the proceeds of the said patents,, 
 after making the same payments aforesaid, shall be divided 
 between the parties hereto in equal shares. 
 
 8. For the purposes of this agreement the expression " patent DefiDition of 
 expenses " shall mean and include all monies which, with the gxpeuses " 
 consent of the said {capitalist), shall be expended for any of the 
 purposes mentioned in the 5th clause of these presents, which 
 
 shall not have been defrayed by monies advanced by the said 
 {capitalist).
 
 33-2 
 
 PRECEDENTS. 
 
 Reserve fund. 
 
 Inventor 
 to devote 
 attention to 
 working 
 patent. 
 
 XeitJier 2)ai ty 
 to grant 
 licences, kc, 
 witliout 
 ■•onsent of 
 the other. 
 
 Inventor 
 alone to work 
 the iiatent ; 
 ren<riiii<; 
 accounts to 
 'apitalisl. 
 
 9. There shall be set aside yearly out of the aforesaid proceeds 
 of the said patents and premises, after payment of the said 
 costs, charges, and interest (if any), and of the said patent 
 
 expenses, such a sum not exceeding £ in any one year, 
 
 as the said (cajyitalist) shall think proper, as a reserve fund for 
 meeting contingencies, and providing monies for working and 
 developing the patents, or for any of the pui-poses mentioned in 
 the 5th clause of these presents, and such reserve fund may 
 from time to time be drawn upon and applied for any of the 
 purposes aforesaid, as and whenever the said (capitalist) shall 
 think fit. 
 
 10. The said (inveyitor) shall give as much time and attention 
 as may be necessary for working and developing the said patented 
 inventions, and shall use his best endeavours to promote the 
 success thereof, but the said {cajntalist) shall not be bound to 
 give more time or attention thereto than he shall think propf-r, 
 
 11. During the continuance of the arrangement hereby made 
 neither of the said parties hereto shall, without the consent of 
 the other of them, grant or agree to grant any licence for work- 
 ing the patented inventions, or any of them, or any part thereof, 
 or sell or dispose of his share or interest in the said patents or 
 any of them, or any part thereof, or use or exercise the said in- 
 vention, or make any payment, or incur any expenses, debts, or 
 liabilities in respect of the said patents or patented inventions, 
 and in case any payment, debt, or liability shall be so made or 
 incurred without such consent, the same shall be made or 
 incurred on the separate and individual account of the party 
 making or incurring the same, and shall be borne by him ex- 
 clusively, without any right to resort to the proceads aforesaid 
 of the said patents, and the other of the said parties hereto shall 
 be indemnified by him in respect of the same. 
 
 12. The said patents, patented inventions, and premises shall 
 be worked, and the business thereof shall be carried on in the 
 name of the said {i)ivcntor) alone as patentee ; and proper 
 accounts shall be kept by him of all payments made, and monies 
 received, and liabilities incurred in respect thereof, and of all 
 transactions relating thereto, and all monies received in respect 
 of licences, sales, and dispositions or otherwise, in respect of the 
 said patents, shall be paid into a bank to an account to be kept 
 in the joint names of the said partiis hereto, and shall not be 
 paid out except upon the joint cheque of both parties. The 
 books of account and other documents shall be kept in the
 
 PRECEDENTS. 333 
 
 custody of the said {inventor) at his office or such other place 
 in London as the said parties hereto may agree upon, but so as 
 that the said {capitalist) may at any time have access thereto. 
 The accounts rehiting to the said patents, patented inventions, 
 and premises shall he made up and balanced half-yearly on the 
 
 day of , and the day of — , or oftener 
 
 if the said parties hereto shall so agree. 
 
 13. The said {inrcfitor) shall, during the continuance of the Inventor 
 
 arrangements hereby made, take all such proceediuffs as the said to take all 
 
 . ,. , 1 ,1 . p 1 . proceedings 
 
 {cajntalist) shall require for keepmg up the said patents and necessary for 
 
 protecting and defending the same from and obtainino- damasres P^t^ctiug 
 to ... to c> patents. 
 
 or other compensation for infringement or otherwise defending 
 
 the said patents or any of them, obtaining renewals or extensions of 
 the term of the said patents or any of them, or amending the specifi- 
 cations thereof, and the costs and expenses of all such proceedings 
 as last aforesaid shall be defrayed in the first instance by the 
 said {cajntalist) , and shall be considered as advances by him 
 within the meaning of the 5th clause of these presents, and 
 so far as not defrayed by the said {cajntalist) shall be considered 
 as part of the patent expenses as hereinbefore defined. 
 
 14. Nothing herein contained shall be construed as con- clause 
 
 stituting a partnership between the said parties hereto. negatiWng 
 
 " *■ partnership. 
 
 15. 1 he arrangement hereby entered mto shall remain in force Dm..itio,i of 
 
 until the expiration of the term of the patent to be granted in arrangement. 
 
 respect of the said application numbered aforesaid, and of 
 
 any renewal or extension thereof, and during any further patents, 
 
 whether British, colonial, or foreign, to be obtained for the said 
 
 invention, or any such improvements as aforesaid in case both 
 
 the said parties hereto shall so long live. 
 
 Provided always that it shall be lawful for the said (capitalist) Proviso for 
 
 at any time hereafter to determine the said arrangement upon ^l^tsi''"ii^i"o 
 •^ . . . tor" arrangement 
 
 giving to the said {inventor), or leaving for him at his last known by notice. 
 
 place of business or abode in England, calendar months 
 
 previous notice in writing of an intention so to do ; And in the 
 event of the said arrangement being determined by the death of 
 either party, or by notice as aforesaid, the said patents and any 
 extension or renewal thereof, and the proceeds of the said patents 
 to be received in respect of any licences, sales, working, or usino- 
 of the patented inventions which have been granted, efl:ected, or 
 taken place previously to such determination as aforesaid shall, 
 subject to the payment thereout of the costs, charges, advances, 
 interest, and patent expenses as aforesaid (subject to any charge
 
 334 PRECEDENTS. 
 
 thereon under the provisions hereinbefore contained in favour of 
 the said {capitalist) for unpaid advances and interest) belong to 
 the said parties hereto in equal shares, and each of the parties 
 hereto, or their respective executors, administrators, or assigns, 
 shall thenceforward be at liberty and entitled to work, use, and 
 exercise the said patented inventions, and to grant Hcences (not 
 being exclusive licences) for working and using the same, or to 
 sell, assign, or other^-ise dispose of his share and interest in the 
 said patents without being liable to account to the other of such 
 parties, his executors, administrators, or assigns, for the profits, 
 royalties, or monies to be derived from the same. 
 As witness, &c. 
 
 ASSIGNMENT OF A PATENT. 
 
 This Indenture made the day of 18 — , Betv.een 
 
 X, B. of of the one part, and C. D. of of the 
 
 other part. 
 
 Whereas by letters patent under the seal of the Patent Office, 
 
 numbered and dated day of , 18 — , and 
 
 entitled, " Improvements, &c. ," Her Majesty the Queen 
 
 gave and granted unto the said A. B., his executors, administra- 
 tors, and assigns. Her Majesty's especial Hcense, full power, sole 
 privilege and authority, that he the said A. B., his executors, 
 Ceneral administrators, and assigns, and every of them during the term 
 
 lecitals. therein expressed should and lawfully might make, use, exercise, 
 
 and vend his said invention within the United Kingdom of Great 
 Britain and Ireland and the Isle of Man, and the whole profit and 
 advantage from time to time accruing by reason of the said inven- 
 tion during the term of years therein mentioned to have, hold, 
 exercise and enjoy the said licence, power, privileges and advan- 
 tages thereinbefore granted unto the said A. B., his executors, 
 administrators and assigns, for and during and unto the full 
 end and term of fourteen years from the date of the now reciting 
 letters patent next ensuing subject to the conditions and pro- 
 visoes therein contained. And whereas the said A. B. has agreed 
 
 for the sum of £ to assign unto the said C. D. the said 
 
 invention and the said letters patent and uU the licence, power, 
 privilege and advantage thereby granted, and any extension of the 
 same, together with all improvements and additions useful to the
 
 PRECEDENTS. 335 
 
 manufacture, the subject-matter of the said letters patent now 
 ah-eady in the knowledge or possession of or which may hereafter 
 he made by the said A. B. 
 
 Now this Indenture witnesseth that in pursuance of the said Testatum. 
 
 agreement and in consideration of the sum of £ , this day 
 
 paid by the said C. D. to the said A. B. (the receipt whereof is 
 hereby acknowledged) he the said A. B. as beneficial oivner {a), 
 doth hereby assign unto the said C. D., his executors, adminis- 
 ters and assigns, all that the said special licence, full power, 
 sole privilege and authority, and the said invention and all and 
 every of the rights, privileges, profits, benefits, commodities and 
 advantages in and by the said hereinbefore recited letters patent 
 granted, together with the said hereinbefore recited letters 
 
 {a) By the Conveyancing Act, 1881, s. 7 (a), it is provided "In a convey- 
 ance for valuable consideration, other tlmn a mortgage, the following covenant by 
 a jievson who conveys and is expressed to convey as benericial owner (namely) : — 
 ' That, notwithstanding anything by the person who so conveys, or any one 
 throu.nh whom he deiives title, otherwise than by purchase for value, made, done, 
 executed, or omitted, or knowingly suftered, the person who so conveys, has, with 
 the concurrence of every other person, if any, conveying by his direction, full 
 power to convey the subject-matter expressed to be conveyed, subject as, if so 
 expressed, and in the manner in which it is expressed to be conveyed, and that 
 notwithstanding anything as aforesaid that subject matter shall remain to and be 
 quietly entered upon, received and held, occuptied, engaged and taken by the per- 
 son to whom the conveyance is expressed to be made and any person deriving 
 title under him, and the benefit thereof shall be received and taken accordingly 
 without any lawful interruption or disturbance by the person who so conveys or 
 any person conveying by his direction or rightfully claiming, or to claim by, 
 througli, iinder, or in trust for the person who so conveys or any person conveying 
 by his direction or by, through, or under anyone, not being a person claiming in 
 respect of an estate or interest subject whereto the conveyam'e is expressly made 
 through whom the person who so conveys derives title otherwise than by purchase 
 for vahie ; and that freed and discharged from or otherwise by the person who so 
 conveys sufticiently indemnified against all such estates, incumbrances, clain)sand 
 demands other than those subject to which the conveyance is expressly made as 
 either before or after the date of the conveyance, have been or shall be made, 
 occasioned or sutTered by that person or by any person conveying by his direction 
 or by any person rightfully claiming by, through, under, or in trust for the 
 person who so conveys or by, through, or under any person conveying by his 
 direction or by, through, oi- under any one through whom the person who so con- 
 veys derives title otherwise than by purchase for value, and further that the 
 person who so conveys and any person conveying by his direction and every other 
 person having or rightfully claiming any estate or interest in the subject matter 
 of conveyance other than an estate or interest subject whereto the conveyance is 
 expressly nnxde by, through, under, or in trust for the person who so conveys or 
 by, through, or under, any person conveying by his direction or by, through, or 
 under any one through whom the person who so conveys derives title otherwise 
 than by purchase for value will from time to time, and at all times after the date 
 of the conveyance on the request and at the cost of any person to whom tlie con- 
 veyance is expressed to be made or of any person deriving title under him execute 
 and do all such lawful assurances and things for further or more perfectly assuring 
 the subject matter of the conv^eyance to the person to whom the conveyance is 
 made and to those deriving title under him subject as if so expressed and in the 
 manner in which the conveyance is expressed to be made as by him or them or 
 any of them sliall be reasonably required : (in Avhich covenant a purchase for 
 value shall uot be deemed to include a conveyance in consideration of marriage).' "
 
 336 
 
 PKECEDENTS. 
 
 Habendum. 
 
 Covenant as 
 to validity 
 
 and as to 
 specification 
 being 
 snfficicnt, kc. 
 
 patent, and also all the right, title, interest, claim and demand 
 whatsoever of him the said A. B., his executors, administrators 
 and assigns, or any of them, to apply and petition for, obtain and 
 procure a prolongation, or extension of the said licence, privilege 
 and authority, and of the said term of fourteen years granted by 
 the said hereinbefore recited letters patent, and to apply and 
 petition for, obtain and procure any new or other letters patent 
 to be granted for any new or additional term or terms of years. 
 
 To have, hold, and receive, take, exercise and enjoy the said 
 especial licence, sole privilege and authority, invention, letters 
 patent, rights, privileges, and all and singular the premises 
 hereby assigned or intended so to be unto and by the said C. D., 
 his executors, administrators, and assigns for and during all the 
 rest, residue and remainder which is now to come and unexpired 
 of the said term of fourteen years granted and created by the 
 said hereinbefore recited letters patent, and for and during all 
 other the term right and interest of him the said A. B. under or 
 by virtue of the said hereinbefore recited letters patent or other- 
 wise howsoever to and for the sole use, benefit and advantage 
 of the said C. D., his executors, administrators and assigns. 
 
 And the said A. B. for himself, his heirs, executors and 
 administrators doth covenant with the said C. D., his executors, 
 administrators and assigns, by these presents in manner follow- 
 ing, (that is to say) that notwithstanding any act, deed, matter 
 or thing by the said A. B. done, executed or permitted, the said 
 hereinbefore recited letters patent are at the time of the sealing 
 and delivery of these presents, good, valid and sufficient in the 
 law for all and every of the purposes therein mentioned and 
 expressed, and that the same letters patent or the grant therein 
 expressed or contained have not been and are not surrendered, 
 forfeited or become void or voidable in an3^wise whatsoever {!>). 
 
 And that the specification filed by the said A. B. at the Patent 
 Office pursuant to the conditions upon which the hereinbefore 
 recited letters patent were granted, well and sufficiently describes 
 and ascertains the nature of the invention mentioned in the said 
 letters patent, and in what manner the same is to be performed, 
 and that the same specification was truly and duly made and 
 filed according to and well, truly, fully and sufficiently performed 
 
 (b) It is obvious that this is a stringent covenant on tlio part of the patentee, 
 inasmuch as it renders him responsible should it hereafter appear tliat foi any 
 reason sucli as anticipation, kc, tlie letters patent were invalid, tliis covenant 
 and tlio next sliould be carefully considered befoie tliey nr either of them are 
 inserted.
 
 PRECEDENTS. 837 
 
 and complied with the conditions in that behalf in the same 
 hereinbefore reaited letters patent expressed and contained. 
 In witness. 
 
 Additional Recitals. 
 
 And whereas the said A. B. has agreed for the sum of £ , -Substituted 
 
 and for other sums by way of percentage as hereinafter men- afVeemeut for 
 tioned, and subject to the contracts on the part of the said C. D., a «uni down 
 hereinafter contained to assign {&c., as before). payments!^ 
 
 Sec Covenant 
 and Condi- 
 tions in such 
 And whereas the said A. B. has applied for and obtahicd ^ case, 
 letters iiatent or a Brevet d'Invention, for the said invention in the Foreign and 
 
 .. . T., colonial 
 
 following foreign states and countries and m the patents 
 
 following British Colonies whereby the said i'<^cital. 
 
 A. B., his executors, administrators and assigns, have acquired 
 the sole right i)rivilege and authority to work, use, or vend the 
 said invention in the said Foreign States and British Colonies 
 for the terms of years limited respectively by the said letters 
 patent and Brevet d'Invention, and whereas in consideration of 
 the sum of money hereinbefore expressed, the said A. B. has 
 agreed to assign the said letters patent and Brevets d'Invention 
 to the said C. D. 
 
 And whereas the said A. B. has represented himself to the True and tu-st 
 said C. I), to be to the best of his knowledge, information and ""'^^^^^i- 
 belief, the true and first inventor of the said invention within 
 this realm. 
 
 And whereas the said A. B. has assigned the said letters Previous 
 patent and all the rights, powers, privileges and advantages of fof district? 
 he the said A. B. in the said letters patent, and the said inven- (c), 
 tion for the counties of to G. H. his executors, admin- 
 istrators or assigns, and for the counties of to J. K. his 
 
 executors, administrators or assigns, Sec, cl'c. 
 
 (c) See special covenant necessary in sucli cases as to apjdicatious to amend. 
 kc, &c.
 
 838 
 
 PRECEDENTS. 
 
 ami of inten- 
 tion to assiL:;n 
 for other 
 district. 
 
 And whereas the said A. B. contemplates and intends to 
 assign the said L-^tters patent and all the rights, powers, 
 privileges and advantages of he the said A. B. in the said letters 
 patent and the said invention for other districts so soon as a 
 purchaser shall he found therefor. 
 
 Eecital of 
 
 licence 
 
 srantecl. 
 
 And whereas the said A. B., hy indenture dated , has 
 
 granted a license unto E. F. of , his executors, administra- 
 tors and assigns, to manufacture, use and vend the said invention 
 during the continuance of the said letters patent or any exten- 
 sion or renewal thereof, upon certain terms and conditions as to 
 the payment of royalties and otherwise in the said indenture 
 made and provided [d). 
 
 SuLstitiitetl 
 recital of 
 agreement to 
 assign for a 
 district. 
 
 And whereas the said A. B. has agreed in consideration of the 
 
 sum of £ to assign unto the said C. D., henefit of the said 
 
 letters patent so far as the same relates to the counties of • , 
 
 but not elsewhere, and so far as the same relates to the said 
 counties, all the licence, power, privilege and advantage thereby 
 granted, and any extension of the said letters patent together 
 with all improvements and additions useful to the manufacture 
 the subject matter of the said letters patent now already in the 
 knowledge or possession of or which may hereafter be made by 
 tne said A. B. 
 
 Assignment 
 foraconntv''/ 
 
 Now this Indenture witnesseth that in pursuance of the said 
 
 a<'reement, and in consideration of the sum of £ this day 
 
 paid by the said C. D. to the said A. B. (the receipt whereof is 
 hereby acknowledged) the said A. B., as hcncficial owner, doth 
 liereby assign unto the said C. D., his executors, administrators 
 and assigns, all that the said especial license, full power, sole 
 privilege and authority, and the said invention, and all and 
 every the rights, privileges, profits, benefits, commodities and 
 advantages in and by the said hereinbefore recited letters patent 
 
 granted so I'ar as the same relate to the counties of , and 
 
 not elsewhere. 
 
 (f/) This may he varicil hy reciting " an exclusive li>'cnee '' or " an exclusive 
 
 licence for the connty of " 
 
 (/•) See ]iroviso restricting actions for infringement.
 
 PEPXE DENTS. 339 
 
 Together with ull license, powers, privileges and advantages l*'«ieign and 
 granted to the said A, B., his executors, administrators and pateuts(/). 
 assigns : by virtue of the said recited Letters Patent and Brevets 
 d'Invention for Foreign States and British Colonies. 
 
 Together with all the rights, royalties, benefits and advantages Assignment of 
 of the said A. B., under and by virtue of the said recited licence jj^^cuces*^ 
 granted by the said A. B. unto E. F., his executors, ad- 
 ministrators and assigns. 
 
 Additional Covenants. {See Recitals.) 
 
 And the said C. D. hereby covenants with the said A. B. that if Covenant as 
 and so soon as the said C. D., his executors, administrators, or ^^.|jg|j g^^^.]^ fj. 
 assigns, shall have received out of the net profits (to be calculated stipulated for 
 as hereinafter mentioned) arising from or by means of the said 
 invention, or such improvements as aforesaid (patents for which 
 improvements shall have been assigned to or become vested in 
 the said C. D., his executors, administrators, or assigns, or from 
 or by moans of any sales, or licences, or dispositions of, or deal- 
 ings with the same invention, or patented improvements, or 
 otherwise, from, or by means of the using, exercising, vending,. 
 or making the said invention or any such patented im- 
 provement as aforesaid, or the said patent, the sum of 
 
 £ , he, the said C. D., his executors, administrators, or 
 
 assigns, shall pay to the said A. B., his executors, administrators,, 
 or assigns, at the times and in the manner hereinafter men- 
 tioned, such a sum or sums of money as shall be equal to a per- 
 centage of £ per cent, upon the net profits (to be calculated 
 
 as hereinafter mentioned), arising as aforesaid, from the time 
 when the said C. D., his executors, administrators, or assigns, 
 
 shall have received the aforesaid sum of £ , and thenceforth 
 
 during the remainder of the period in which the said patent hereby 
 assigned, or any such patent for improvements as aforesaid as 
 shall be assigned to or become vested in the said C. D., his 
 executors, administrators, or assigns, shall continue in force. 
 And further, that the said C. D., his executors, administrators, 
 
 (/) Sec covenants as to niaintiii-aing sueli foreign patents. 
 
 z 2
 
 340 
 
 PRECEDENTS. 
 
 or assi<.ns, ^\ill, f o soon as be or they sLall have received from 
 
 the net profits arising as aforesaid the sum of i,' thenceforth 
 
 twice in every yeai- on the day of , and the day of 
 
 , or within 14 days thereafter respectively, furnihli to the 
 
 said A. 1). an account showing the amount for the half year in 
 respect of which the account is furnished, of the net jsrofits 
 arising as aforesaid ; and shall within one calendar month after 
 the date up to which such half-yearly account is furnished, pay 
 to the said A. B., his executors, administrators, or assigns, the 
 percentage by the said account appearing to be due. 
 
 Covenant not 
 to apply for 
 leave to 
 amend appli- 
 cable to 
 assignments 
 for a district 
 
 And the said C. D. covenants with the said A. B, that he the said 
 C. D.,his executors, administrators and assigns, will not apply for 
 leave to amend, or amend, or cause to be amended, the said specifica- 
 tion or the drawings thereof, in any way whatsoever without the 
 consent of the said A. B., his executors, administrators or 
 assigns, in writing, first had and obtained — such consent not to 
 be unreasonably withheld (//). 
 
 Covenants'Jiy 
 assignor as to 
 taking future 
 patents in 
 assignment 
 for a district 
 only. 
 
 And that in case he, the said A. B., shall obtain letters patent 
 in respect of any improvements, additions to, or discovery useful 
 to the manufacture the subject-matter of the said recited letters 
 patent, he shall, at the expense of the said C. I)., his executors, 
 administrators or assigns (if and when requiring him to do so), 
 execute and do all such assurances and things as shall be neces- 
 sary or convenient for vesting the same letters patent, and the 
 exclusive benefit thereof,, /or the said counties in the said C. D., 
 his executors, administrators or assigns. 
 
 (//) In sonic cases where tlie di.striet assigned is large a converse Cuvenant on 
 the part of the assignor should be inserted. 
 
 (/() A great ditlieulty is introduced by section 36 of the Act of 188:i : "A 
 patentee may assign his patent fur any place in oi' ])art of the Uniteil Kingdom or 
 Isle of Jlan as etlectually as if tlie ]iateiit were originally granted to extend to 
 that place or part oidy." Jt will he observed that under this section a patentee 
 can create innumerable patentees all with coetiual rights, not only amongst 
 tliemselves but with the original patentee, but still all jiosscssiug only oiio 
 onginal patent and one specilication. It was clearly not the intention of the 
 IcgTihiture that the specilication might be split up and aim luled in one c( nuly and 
 rot in another and so on ; but on the other hand tlic whole validity ami value of 
 ,1 patent may very often depend upon the i|uestion of amendmciit or non- 
 amendment— if one assignee amends he might by doing so ruin all the others, on 
 the otlier haml by refusing to consent to an amendment he might do tlie same 
 filing. The author has drafted a precedent clause which imglit do for some 
 instances, but it in chiefly introdiu'cd to call the attention of conveyancers to the 
 dilll 'ulty of the position.
 
 PRECEDENTS. 311 
 
 And also tliathethe said A. B., his executors, administrators or Covenant to 
 assigns, will pay all fees necessary for the renewal of the said lenewal when 
 letters patent respectively during the respective terms comprised I'/^tent as- 
 therein one calendar month at least before the times provided by district only, 
 the Patents, See, Act, 1888, or the Rules made in pursuance 
 thereof in that behalf, but in case of non-payment thereof as 
 aforesaid, will, if required by the said C. D., his executors, 
 administrators or assigns, permit him or them to pay the same, 
 and any sum if so paid by him or them shall be repayable on 
 demand, together with interest thereon at the rate of 5 per cent, 
 per annum from the time of payment thereof and until repay- 
 ment, and shall together with the interest aforesaid, be a charge 
 upon the interest of the said A. B. and his executors, adminis- 
 trators or assigns, in the said letters patent respectively. 
 
 And the said A. B. hereby covenants with the said C. D. that Covenant to 
 
 the said A. ]>. will without any further remuneration or royalties communicate 
 
 '' _ '' and assign 
 
 communicate to the said C. D. all improvements which the said future im- 
 A. B. may during the continuance of the said patent invent, P'o^'f^n^ents. 
 discover, or make for or in connection with the said invention, and 
 also all improvements, whether patented or not, of which the 
 said A. B. shall become the owner or of which the said A. B. 
 shall have the control, and will, so far as practicable, at the 
 request and expense of the said C. D., render the same available 
 for the exclusive use of the said C. D., and do every act, deed, and 
 thing which may be necessary or expedient for obtaining and 
 perfecting patents for all or any such improvements, and for 
 assigning or vestinj:; the same to or in the said C. D. 
 
 And it is hereby further agreed and declared between and by Conditions to 
 
 the said parties hereto as follows : ^-"; "I'^erted 
 
 ^ ^ _ _ wlien a per- 
 
 1. For the purpose of calculating the moneys to be derived as ceutageisto 
 
 aforesaid, there shall be deducted from the gross moneys re- ^ u^as a^um 
 ceived from or by means of the said inventions, or such patented down. 
 improvements as aforesaid, or any sales, or licences, or other 
 dispositions and dealings with the same, or otherwise, from, or 
 by means of the using, exercising, vending, or working the in- 
 vention, or patented improvements, or patent, which moneys are 
 hereinafter called the gross receipts, all costs, charges, losses, 
 damages, and expenses whatsoever, which the said C. D,, his 
 executors, administrators, or assigns, may have already paid or
 
 342 
 
 PRECEDENTS. 
 
 Keei)ing 
 accounts. 
 
 Assignee not 
 to he bomul 
 to apply for 
 patent for ini 
 proverneiits. 
 
 iucurred, or ma}" liereafter pay or incur, in or uLout the oLtain- 
 ing, or endeavouring to obtain, or the keeping in force any such 
 patent for improvements as aforesaid, or the assigning the same 
 to the said C. D., his executors, administrators, or assigns, or in or 
 about the introducing to the pubhc the said patents, inventions, 
 and patented improvements, or any of them, or in or about any 
 such sales, Keences, or other dispositions, or deahngs as afore- 
 said, or in or about any legal, or other proceedings, which may 
 be taken for the purpose of restraining infringement of the said 
 patents, or any of them, or for recovering damages for infringe- 
 ments, or which may be taken in respect of any sale, or proposed 
 sale of the said patents, or any interest therein, or any licence 
 or proposed licence for working the said invention and patented 
 improvements, or any of them, or any part thereof; or generally 
 in any manner in or about the said patents, or any of them, or 
 the using, exercising, vending, or working the said invention, or 
 patented improvements, or any of them, or patents, all which 
 costs, charges, losses, damages, and expenses are hereinafter 
 referred to as patent expenses, together with interest at the rate 
 of £ per cent, per annum, upon such patent expenses re- 
 spectively from the time of the payment thereof, and the 
 difference between the gross receipts for any half year and the 
 patent expenses for the same half year, shall be the net profits 
 arising as aforesaid, upon which the percentage aforesaid is to be 
 paid. 
 
 2. Proper books of account shall be kept by the said C. D., his 
 executors, administrators, and assigns, in which true, plain and 
 perfect entries shall be made of all the j)ayments, eixpenses, and 
 gross receipts aforesaid, and such books of account shall at all 
 reasonable times be open to the inspection of the said A. B., his 
 executors, administrators, or assigns, or any agent duly appointed 
 by him or them in Avriting. 
 
 3. Nothing herein contained shall bo construed as obliging 
 the said C. 1)., his executors, administrators, or assigns to 
 obtain, or endeavour to obtain, any patent for any such improve- 
 ments as aforesaid, or to accept any assignment of any patent 
 for such improvements, or to pay the stamp duty upon, or to 
 defend, or maintain the said patent hereby assigned, or an}' such 
 patent for improvements as aforesaid, wliich may be assigned to, 
 or become veslerl in him or them, in performance of the cove- 
 nants in that behalf hereinbefore contained, or to take any steps 
 for restraining infringements of the same patents, or any of
 
 PRECEDENTS. 843 
 
 them, or recovering damugcs for any infringement, or to make 
 any sale or sales of the said patents, or any interest therein, or 
 to grant any licence, or licences for the use of the said invention, 
 or any such patented imi)roveraents as aforesaid, or any part 
 thereof respectively, or in any manner to use, exercise, vend, or 
 work the said invention, improvements or patents, or any of 
 them ; it being herehy expressly agreed and declared that the 
 said 0. D., his executors, administrators or assigns, is and are 
 and shall he the absolute owners of the said patent hereby 
 assigned and of any patent or patents for improvements which 
 may be assigned to or vested in him or them as aforesaid, or 
 which he or they may under the covenants aforesaid, require to 
 be assigned to him or them ; and that the said C. D., his 
 executors, administrators, or assigns, shall not in regard to the 
 said patents, or any of them, be subject to any control or inter- 
 ference whatsoever of the said A. B., his executors, administra- 
 tors or assigns. 
 
 4. During the continuance of the said patent hereby assigned. Assignor not 
 and during the continuance of any patent or patents for improve- i,"terrT^ 
 ments which may be assigned to or become vested in the said without 
 
 C D., his executors, administrators, or assigns as aforesaid, the '-■°'''^®'^'' 
 said A. B., his executors, administrators, or assigns, shall not 
 sell or dispose of the percentage payable to him or them as 
 aforesaid without the consent in writing of the said C. D., his 
 •executors, administrators, or assigns ; nor shall the said C. D., Assignor not 
 his executors, administrators, or assigns, sell, or dispose of the ^"ithont'"^ 
 said patents, or any of them, without the consent in writing of consent. 
 the said A. B., his executors, administrators, or assigns. 
 
 5. Nothing herein contained shall be considered as constituting No partner- 
 a partnership between the said parties hereto. ^ ^^^'' 
 
 6. Nothing herein contained shall be construed as a warranty No warranty, 
 by the said A. B., of the novelty or utility of the said invention, of validity. 
 or of the validity of the said patent hereby assigned. 
 
 Provided always, and it is hereby further agreed and declared, Tioviso to be 
 
 that no action at law or enuitv shall be brought by the said ^'^'^^'^'^'^'^ "^, 
 
 ^ ' n J assignment 
 
 for a district 
 
 of certain 
 
 (i) It is evident that sonu' such proviso as this is of the utmost importan , inventions(t). 
 
 v.'hen the patent is for an article of common use. The words of sect. 36 are : — " A 
 
 patentee may assign his patent for any place in or part of the Unitetl Kingdom or 
 
 isle of Man as ell'ectually as if the patent were origin all}- granted to extend to that 
 
 j)lace or part only." It would create great confusion and injury to all parties 
 
 if a man travelling from London to "i'ork were liable to actiiJiis by ditfereiil 
 
 assignees of the districts throiigh which he travelled on account of wearing a 
 
 particular collar stud.
 
 8U 
 
 PEECEDENTS. 
 
 C. D. against any person or persons to restrain infringements or 
 to recover damages in respect of the mere user of {collar studs 
 made in pursuance of the said patented inventio)i) within the 
 
 said country of provided that such user he not for profit or 
 
 for sale, or in the way of trade. 
 
 NON-EXCLUSIYE LICENCP] TO USE PATENTED IX- 
 YEXTIOX IX COXSIDERATIOX OF AX AXXUAL 
 PAYMEXT AXD THE PURCHASE OF THE 
 PATEXTED ARTICLES FROM THE IXYEXTOR. 
 
 raitics. 
 
 Recitals. 
 
 day of 
 
 18 — , Betweeit 
 
 Payment's l>y 
 lifcnsee. 
 
 roviiiaiit to 
 
 liurcliasc 
 
 j.ati!ntc<l 
 
 urti'Mfs. 
 
 This Indenture made the 
 
 A. B. of , hereinafter called the patentee of the one part, 
 
 and C. D. of , hereinafter called the licensee of the other 
 
 part. 
 
 Whereas the patentee is in possession of and entitled to the 
 
 full henetit of certain letters patent dated and numbered 
 
 for an invention entitled , And whereas the 
 
 patentee has agreed to grant to the licensee a licence to use the 
 
 said invention at , in the course of his trade and business 
 
 as a upon the terms and conditions hereinafter set forth. 
 
 Now this Indenture witnesseth that in pursuance of the said agree- 
 ment and in consideration of the payments and covenants herein- 
 after reserved, contained, and on the part of the licensee to be paid 
 and performed, he the patentee grants to the licensee full and 
 free licence and authority during all the residue now to come 
 and unexpired of the term of fourteen years by the said patent 
 to use the said invention in the course of his trade and business 
 
 as a , upon the terms and conditions following, that is 
 
 to say : 
 
 1. The licensee shall pay to the patentee upon the execution 
 
 of this indenture the sum of £ , and further shall once in 
 
 every year during the continuance of the said letters patent, in- 
 cluding any extended term thereof, pay the sum of £ , 
 
 the first of such payments to be made on or before the 
 
 day of— , I'S — . 
 
 2. The licensee shall })urchase of the patentee and the patentee 
 shall S(!ll and deliver to the licensee all the {here insert name and 
 description of patenti (I artidts) which the licensee shall from
 
 ]M{K(i:j)Ents. 345 
 
 time to time require, payin<f for tlic same after the rate of 
 
 per {dozen or //ro.ss) witli iiett cash within one month 
 
 after delivery. 
 
 3. The licensee shall not manufacture or vend any of the said Covenant 
 , but shall only he entitled to use the same in the course ""'^ *° 
 
 uiaiiufacture 
 of his trade or business, and the licensee shall not purchase or oi sell. 
 
 otherwise acquire any of the said other than of the 
 
 patentee. 
 
 4. The licensee shall be at liberty upon giving months' Power to 
 
 notice in writing to the patentee to determine the licence and all ''*^f"'''^^ ^^ 
 the terms and conditions thereof, provided always that upon any licence. 
 such determination the licensee shall deliver to the patentee free 
 
 of charge all the which at that time shall be in his 
 
 possession, or in the possession of any of his servants, agents, 
 or customers. 
 
 5. In the event of the infringement of the said patent 1)y any r'ovenant by- 
 person or persons the licensee shall at the cost of the patentee '"=eii.see to 
 
 , , . ... render 
 
 render to him all the information and assistance in his ])ower to assistance 
 
 enable the patentee to restrain further infringements of the said ^'^ l'''tei>tL'o 
 
 patent, and to recover damages for any past infringements 
 
 thereof : Provided always that nothing herein contained shall be Proviso 
 
 construed as placing the patentee under any obligation to take pro- |',')'^i';"bo^und^ 
 
 ceedings for the purpose of restraining or recovering damages for to take 
 
 infringements, or as in any manner exonerating the licensee from '''^■^'°'^' 
 
 payment of the amounts and observance of the covenants herein 
 
 reserved and contained by reason that the profits of the licensee 
 
 from the use of the said invention may be diminished on account 
 
 of such infringements being permitted. 
 
 0. Should the licensee make default in the payment of the Determina- 
 
 annual sum hereinbefore provided for, within twenty-one days ^^°" °^ 
 
 •/ •/ licGncG oil 
 
 after the same shall have become due, or commit any breach of default by 
 the covenants herein contained as on his part to be observed, it l^^'^^'^^^- 
 shall be lawful for the patentee by writing under his hand to give 
 to the licensee, or leave at his usual or last known place of 
 business in England notice of the patentee to determine 
 this present licence, and thereupon this licence shall be 
 deemed to be determined, and the licensee shall deliver to the 
 
 patentee as soon as practicable, free of charge, all the 
 
 which at that time shall be in his possession or in the possession 
 of any of his servants, agents, or customers. 
 
 7. If during the continuance of the licence hereby granted the Determina- 
 said patent shall be pronounced to be invalid by a decision of \^at^i°f bgj
 
 346 
 
 PRECEDEXTS. 
 
 declared 
 invalid. 
 
 Reduction of 
 payments to 
 level of other 
 licence.?. 
 
 Power of 
 patentee 
 to amend 
 specification. 
 
 Transmission 
 clause and 
 cost as 
 " beneficial 
 owner." 
 
 Licence not to 
 be estopped 
 after deter- 
 mination 
 of licence. 
 
 Arbitration 
 clause. 
 
 the House of Lords, these presents shall bo voul as to the future 
 operation thereof, hut without prejudice to any rights or liabilities 
 Avhicli shall be then subsisting on either side with respect to any 
 prior breach of any of the covenants and agreements herein 
 contained. 
 
 8. If whilst this licence is in force the patentee shall at any 
 time grant any licence or premium to any other person or persons 
 for the use of the said invention in the United Kingdom, and 
 shall reserve any annual payment or charge any price for the 
 
 said lower than the annual payments and price reserved 
 
 under and by virtue of this indenture, then that the annual pay- 
 ments and price thenceforward payable to the patentee shall be 
 reduced to an amount equal to the lowest price reserved and 
 payable for the use of the said invention bj' such otlier person. 
 
 9. The patentee shall be at liberty from time to time, and at 
 all times hereafter, without the consent or concurrence of the 
 licensee to apply for and procure the amendment of the specifica- 
 tion or specifications of the said invention, whether by way of 
 disclaimer, amendment or alteration. 
 
 10. The word patentee herein shall include the patentee, his 
 executors, administrators, or assigns, and he shall be deemed to 
 covenant as beneficial owner with like eftect as if this indenture 
 were a conveyance within the meaning of the Conveyancing and 
 Law of Property Act, 1881. The word licensee shall include 
 the licensee, his executors, administrators, and assigns. 
 
 11. Nothing in this indenture contained shall preclude or 
 estop the licensee from disputing the validity of the said patent 
 after the determination of the licence by notice or otherwise. 
 
 12. If any dispute, question, or difterence shall arise between 
 the parties to these presents touching these presents or any clause 
 or thing herein contained, or the construction hereof, or any 
 matter in any way connected with these presents, or the opera- 
 tion hereof, or the rights, duties, or liabilities of either of the 
 said parties h-creto in connection with the premises then and in 
 every or any such case the matters in dift'ercnce shall be referred 
 to two arbitrators or the umpire, pursuant to and so as with 
 regard to the mode and consequences of the reference, and in 
 other respects to conform to the provisions in that behalf con- 
 tained in the Common Law Procedure Act, 1851, or any otlier 
 subsisting statutory modification thereof, and upon every or any 
 such reference the arbitrators and umpire shall resi)ectivoly have 
 power to examine the parties and witnesses upon oath or allirma-
 
 PRECEDENTS. 347 
 
 tion, and either to fix, settle, and determine the amount of cost 
 of the reference and award respectively or incidents^l thereto to 
 be paid by both parties or either party, or to direct the same 
 to be taxed either as between solicitor and client, or otherwise 
 to direct and award when, by, and to whom such costs shall 
 be paid. 
 As witness. 
 
 EXCLUSIVE LICENCE FOR A DISTRICT. 
 
 This Indenture made the day of 188 — , Between 
 
 A. B. of , hereinafter called the g-rantor of the one part 
 
 and C. D. of hereinafter called the grantee of the other 
 
 part. Whereas the grantor is the registered legal owner of l^ccitals. 
 
 certain letters patent dated and numbered granted 
 
 for an invention entitled . And whereas the grantor has 
 
 agreed to grant to the grantee the sole and exclusive licence to 
 make, use, exercise, or vend the said invention within the 
 
 counties of upon the terms and conditions hereinafter 
 
 appearing. Now this Indenture witnesseth and it is agreed as 
 follows : — 
 
 1. The grantor as henejicial owner and with like efiect as if Giant, 
 these presents were a conveyance, doth hereby grant unto the 
 grantee, his executors, administrators and assigns, the sole and 
 exclusive licence to make, use, exercise or vend the said inven- 
 tion within the counties of and during the con- 
 tinuance of the said letters patent or any extended time thereof, 
 together with all improvements and additions useful to the 
 manufacture the subject-matter of the said letters patent now 
 already in the knowledge or possession of or which may here- 
 after be made by the grantor. 
 
 2. The grantee shall upon the execution of these presents pay Considera- 
 
 to the grantor the sum of £ , and shall further pay to the ^^^^ ^^^ 
 
 grantor during the continuance of the licence once in every yenv reserved. 
 on the day of or within twenty-one days there- 
 after the sum of £ by way of annual royalty. Provided 
 
 always that in the event of the said letters patent being adjudged 
 
 invalid by any court of competent jurisdiction and within 
 
 months of the said judgment the grantor, his executors, adminis- 
 trators, or assigns, shall not have done all things necessary for
 
 34S 
 
 TKECEDENTs 
 
 Grantor uot 
 to amend. 
 
 Grantee to be 
 at liberty to 
 determine. 
 
 As to actions. 
 
 Payment of 
 fees, kc. 
 
 Ini|jrovc- 
 nicnts. 
 
 the pm-pose of appealing from the said judgment, or in the event 
 of the said letters patent having heen adjudged invalid by the 
 House of Lords, then that these presents shall be deemed to be 
 cancelled, and all pa}-ments accruing thereafter from the grantee 
 to the grantor shall cease, but without prejudice to the recovery 
 by the gi-antor of any monies then already due. 
 
 3. The gi-antor shall not without the consent of the grantee, 
 his executors, administrators, or assigns, in writing first had 
 and obtained apply for leave to amend the specification to the 
 said letters patent in any way whatsoever (a). 
 
 4. The grantee shall be at liberty upon giving months' 
 
 notice in -writing to the grantor to determine this licence am! all 
 the terms and conditions thereof, and thereupon the said letters 
 patent for the district hereinbefore defined, and all the rights 
 and privileges thereby granted shall revert in the grantor abso- 
 lutely, and the annual payments hereinbefore provided for shall 
 cease. 
 
 5. The grantee shall be at liberty either in his own name or 
 in the name of the grantor, or both, as he may be advised, to 
 bring any action or proceeding for the purpose of restraining the 
 infringement of the said letters patent within the district herein- 
 before defined. Provided always that before in any way making 
 use of the name of the grantor in any such action or proceeding 
 the grantee shall give security to the satisfaction of the grantor 
 to indemnify him in respect of any costs or damages which he 
 may become liable for by reason of any such action or pro- 
 ceeding. 
 
 6. The grantor shall pay all f<}es necessary for the renewal 
 and maintenance of the said letters patent during the term 
 comprised therein one calendar month at least before the times 
 provided by the Patents Sec. Act, 1883, or the rules made in pursu- 
 ance in that behalf thereof and in case of non-payment thereof as 
 aforesaid, the grantee shall be at liberty to pay the same and to 
 deduct any monies so paid by him from the annual payments 
 hereinbefore provided for, or to recover the same from the grantor 
 at the grantee's option. 
 
 7. Should the grantor during the continuance of this licence 
 obtain letters patent in respect of any improvements, additions 
 to, or discovery useful to the manufacture the subject-matter of 
 
 (a) See last prcc f<liiig i.reecdint for tlic convrrsc— in a gonci-al licence the 
 patentee sliould rcsc-rvf iiowcr to :niiiiKl, but in an exclusive licen.e it is obviously 
 otherwi.''<'.
 
 PRECEDENTS. 34.9 
 
 the said letters patent, lie shall at the expense of tho grantee 
 grant to him an exclusive licence to make exercise use or vend 
 the invention the suhject-matter of the said further letters patent 
 within the said district without any extra or additional payment 
 on the part of the grantee. Provided always that the grantor 
 shall not be bound to maintain or keep in force the said further 
 letters patent by payment of the prescribed fees or otherwise. 
 
 8. Should the gi-antee make default in the payment of the Defiuiltia 
 annual royalty reserved by the second clause hereof as therein T'^y'^ent ot 
 provided, it shall be lawful for the grantor to serve upon the 
 grantee by leaving the same at his last known place of business 
 
 or abode notice in writing determining these presents, and there- 
 upon the licence hereby granted shall cease but without prejudice 
 to the right of the grantor to sue for and recover an}* arrears of 
 the said annual royalty which may then be due, 
 
 9. The licensor notwithstanding anything herein to the contrary ^q wanauty 
 shall not be deemed in any way to warrant or represent the of validity, 
 validity of the said letters patent. 
 
 In witness, &c. 
 
 MORTGAGE OF A PATENT. 
 
 This Indenture made the day of 188 — , Parties. 
 
 Between A. B. of , hereinafter called the mortgagor of 
 
 the one part, and C. D. of , hereinafter called the mort- 
 gagee of the other part. Whereas the mortgagor is the regis- itooitals. 
 
 tered owner of certain letters patent dated 18 — and 
 
 numbered for an invention entitled Improvements, &c. 
 
 . And whereas the mortgagee has agreed to lend to the 
 
 mortgagor the sum of J6 to be secured together Avith 
 
 interest thereon by mortgage of the said letters patent as herein- 
 after expressed. Now this Indenture witnesseth that in considera- Testatum. 
 
 tion of the sum of £ this day paid by the mortgagee 
 
 to the mortgagor (the receipt whereof is hereby acknow- 
 ledged) the mortgagor doth covenant with the mortgagee 
 that he the mortgagor will pay to the mortgagee on the 
 
 day of 188 — , the sum of £ together with 
 
 interest thereon at the rate of £ per cent, per annum. 
 
 And this Indenture also witnc^^eth that for the consideration
 
 850 
 
 PEECEDENTS. 
 
 Assignment. 
 
 Proviso for 
 
 redemption. 
 
 aforesaid the mortgagor as hcneficial owner doth hereby assign 
 to the mortgagee the said letters patent and the sole and 
 exelusiye benefit thereof and all extensions thereof and all the 
 rights, privileges, profits, benefits, commodities and advantages 
 by the said letters patent granted to have and to hold the same 
 to the mortgagee subject to the proviso for redemption herein- 
 after contained. Provided always that if the mortgagor shall 
 
 pay to the mortgagee the sum of 4' • with interest for the 
 
 same at the rate aforesaid then that the mortgagee will at any 
 time thereafter at the request and cost of the mortgagor re-assign 
 to him the said letters patent and the sole and exclusive benefit 
 thereof. And the mortgagor doth hereby covenant with the 
 
 mortgagee that if the said sum of £, or any part thereof 
 
 shall remain unpaid after the said day of 18 — , he 
 
 the mortgagor will pay to the mortgagee so long as the said sum of 
 
 £ or any part thereof shall remain unpaid interest upon 
 
 such sum as shall from time to time remain unpaid after the 
 rate of £ per cent, per annum by equal half-yearly pay- 
 ments on the day of and the day of 
 
 in every year. Provided also that if the mortgagor shall 
 
 on eveiy day of and day of until the 
 
 day of 18 — , or within — days after the 
 
 said days respectively pay to the mortgagee all interest then due 
 and shall perform and observe all the covenants on his part to 
 be performed or observed then the mortgagee will not before the 
 
 day of 18 — call in the principal sum aforesaid 
 
 or any part thereof. Provided also that the mortgagor shall not 
 
 before the day of 18 — compel the mortgagee to 
 
 receive the said principal sum or any part thereof. And that 
 the mortgagor during the continuance of the security will take 
 all steps necessary for the protection of the said letters patent 
 and maintaining the same in full force and eftect and for the 
 prevention of any infringement thereof and will pay all fees 
 necessary for the continuance of the said letters patent one 
 calendar month at least before the same shall become due and 
 payable and will whenever required to do so produce to the 
 mortgagee or his agent the receipts for the said fees and in 
 default of the mortgagor taking any such steps as aforesaid or 
 protecting the said letters patent from infringement or making 
 payment of the said fees it shall be lawful for the mortgagee to 
 do or pay the same either in his own name or in the name of 
 the mortgagor as he the mortgagee shall elect and to sue for and
 
 PRECEDENTS. 351 
 
 recover from the mortgagor any costs, charges or expenses 
 which he may incur in so doing or at his option to allow the 
 same to remain on the security hereof as monies advanced as 
 aforesaid. Provided always that until the mortgagee shall be- Mortgagee to 
 come entitled to exercise the power of sale to be implied herein |^° ^^ lil:>crtj' 
 
 to use 0.11(1 
 
 the moi-tgagor shall be at liberty to use and work the said work invcii- 
 
 invention without interruption from the mortgagee and also may ^^'^"' 
 
 (but so that he shall in each case give to the mortgagee — 
 
 days at least notice in writing of his intention so to do and of 
 
 the particulars thereof) with the consent of the mortgagee in 
 
 writing but not otherwise grant licences to use and work the and grant 
 
 said invention as from the dates thereof respectively for the ^^'^^'^'^^S' 
 
 whole or any part of the term comprised in the said letters 
 
 patent. And further the mortgagor shall within fourteen days to su])ply 
 
 after the execution of every such licence furnish the mortgagee ^'^I'J' ^° 
 
 ' luort^'acec. 
 
 with a copy of the same. Provided also that from and after the „ " °/ 
 ' "^ • _ • rroviso for 
 
 time when the mortgagee shall first become entitled to exercise foreclosure. 
 the statutory power of sale to be implied herein but subject to 
 any licences which may have been granted as hereinbefore 
 authorised it shall be lawful for him alone to work the said 
 invention and to grant licences in respect thereof or to assign 
 the said letters patent and invention for districts or otherwise to 
 deal with the same in any manner that he shall think fit. And 
 the mortgagor doth hereby further covenant with the mortgagee Commuuica 
 that he will communicate to the mortgagee during the continu- pTOvemeuts 
 ance of this security all improvements V\'hich he may discover or 
 make in connection with the said invention and also all im- 
 provements which during the said time he shall have control of 
 or acquire by purchase or otherwise and whether patented or not 
 and such improvements and letters patent if any shall be deemed 
 to be comprised within this security and the mortgagor will 
 execute all documents and do all things necessary to extend the 
 operation of this security to all such imj)rovements or letters 
 patent. And that during the continuance of this security the As to ameml 
 mortgagor will not without the consent of the mortgagee first ^"®"*'^' 
 had and obtained amend or apply for leave to amend the speci- 
 fications to the said letters patent or either of them in any way 
 v/katsoever. And lastly that it shall be lawful for the mortgagee As to applica- 
 if the monies secured hereby shall not have been repaid within tion for ex- 
 one year from the expiration of the term of fourteen years for 
 which the said letters patent were originally granted to apply 
 ^or an extension of such term in his own name or in the name
 
 •'553 PP.ECEDEXTS. 
 
 of the mortgagor or of both of them as he shall think fit and the 
 mortgagee shall do all acts and things and execute all docu- 
 ments and i^repare all accounts necessary for such application. 
 TransDiisbion And it is hereby declared that except where the context requires 
 a difi'erent interpretation, each of the expressions " the mort- 
 gagor " and "the mortgagee" shall wherever used herein be 
 also applicable as far as possible to the executors administrators 
 and assigns of the person designated thereby. 
 In witness, &:c.
 
 APPENDIX. 
 
 PATENTS, DESIGNS and TRADE MARKS 
 ACT, 1883. 
 
 (SO FAR AS THE SAME RELATES TO LETTERS PATENT.) 
 
 46 & 47 Vict. c. 57. 
 
 yin Act to amend and consolidate the Lair relating to Patents 
 for Inventums, Reqistration of Designs, and of Trade Marks. 
 
 [25tli August, 1883.] 
 
 Be it ENACTED by the Queen's most excelleut Majesty, by and with 
 the advice and consent of the lords spiritual and temporal, and com- 
 mons, in this present Parliament assembled, and by the authority of 
 the same, as follows : 
 
 PART I.— Preliminary. 
 
 1. This act may be cited as the Patents, Designs, and Trade shoit title. 
 Marks Act, 1883. 
 
 2. This act is divided into parts, as follows : — Dh-ision of act. 
 
 Part I. — Preliminary. into parts. 
 
 Part II, — Patents. 
 
 Part 111. — Designs. 
 
 Part IV.— Trade Marks. 
 
 Part V. — General. 
 
 3. This act, except where it is otherwise expressed, shall commence Commencc- 
 from and immediately after the 31st day of December, 1883. mentof act. 
 
 PART II.— Patents. 
 
 Application, for and Grant of Patent. 
 
 4. (1) Any person, whether a British subject or not, may make an Persons eji- 
 application for a patent, {^page 5] fo-^"if"ii"''^^^ 
 
 (2) Two or more persons may make a joint application for a patent, T'. ^''^ '^^ '. 
 and a patent may be granted to them jointly. S^page 5J xiwi. '^'^ ^"^~ 
 
 5. (1) An application for a patent must be made in the form set AppUcation 
 forth in the first schedule to this act, or in such other form as may ^.'"^ specitica- 
 be from time to time prescribed ; and must be left at, or sent by *^°"' 
 
 p03t to, the patent office m the prescribed manner, \_pages 5, 58] 
 
 (2) An application must contain a declaration to the eflFect that Declaration. 
 T. A A
 
 35i 
 
 APPENDIX. 
 
 ProAisional 
 speiitication . 
 
 Complete 
 specificatioii. 
 
 Xecessaiy 
 contents of 
 specification. 
 
 Keference of 
 application to 
 examiner. 
 
 Power for 
 comptroller to 
 refuse apjjlica- 
 tion or require 
 amendment. 
 
 .\|)]>cal from 
 comptroller. 
 
 Law officer 
 may make 
 order, 
 
 Notice to be 
 ^iven to 
 applicant. 
 
 AVliere subse- 
 •liient ajiplica- 
 t ion l)cf<ire 
 I'ist scaled 
 bears similar 
 title, examiner 
 to rcpdit to 
 comptroller 
 and ;;ive notice 
 to :ip]di(:tnt8. 
 
 Cotiipfrollcr 
 di teniiincfl 
 wlictliiT apj>li- 
 catioiis :ire si- 
 milar, and may 
 rcfiiHc to wal 
 M'coiid |)utcnt. 
 
 the applicant is in possession of an invention, whereof he, oi' 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, and for which he 
 or they desires or desire to obtain a patent ; and must be accompanied 
 by either a provisional or complete specification, [pfiffes 5, 5G] (a) 
 
 (3) A provisional s[ecification must describe the nature of the 
 invention, and be accompanied l)y drawings, if required. \_ pages 
 bl, 64] 
 
 (4) A complete specification, whether left on application or subse- 
 quently, 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, [^pac/es 57, 69 et sfq.^ (b) 
 
 (5) A specification, whether provisional or complete, must com- 
 mence with the title, and in the case of a complete specification must 
 end with a distinct statement of the invention claimed. [ pages 57,14] 
 
 6. The comptroUer shall refer every application to an examiner, 
 who shall ascertain and report to the comptroller whether the nature 
 of the invention has been fairly described, and the application, specifi- 
 cation, and drawings (if any) have been prepared in the prescribed 
 manner, and the title sufficiently indicates the subject matter of the 
 iuA-ention. [pages 57, 64] 
 
 (f) 7. (1) If the examiner reports that the nature of the invention 
 is not fairly described, or that the application, specification, 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 the inven- 
 tion, the comptroller may require that the application, specification, 
 or drawings be amended before he proceeds with the application. 
 [pages bl, lu2] 
 
 (2) "Where the comptroller 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 ap])lication shall be accepted. 
 
 (4) The comptroller shall, when an application has been acce})ted, 
 give notice thereof to the applicant. 
 
 (5) If after an application has been made, but before a patent has 
 been sealed, an application is made, accompanied by a specification 
 bearing the same or a similar title, it shall be the duty of the exa- 
 miner to report to the comptroller whether the specification appears 
 to him to comprise the same invention ; and, if he reports in the 
 affirmative, the comptroller shall give notice to the applicants that 
 he lias so reported. 
 
 (f)) "Where the examiner reports in the affirmative, the comptroller 
 may determine, subject to an appeal to the law officer, whether the 
 invention comprised in both applications is the same, and if so he 
 may icfuse t(j seal a patent on the application of the second applicant. 
 
 (") Aiiicntled and altered hy sect. 2 
 of the Patents, &c., Act, 1885, hi/ra. 
 
 {h) Kxplained liy sect. 2 of Patents, 
 kr.. Act, 188'J. 
 
 (r) This is printed as the section 
 orif^inally stood. It is now amended 
 and altered hy sect. 2 of the Patents, 
 &c. , Act, 18^8, see ivfra.
 
 PATENTS, DESIGNS, AND TRADE MARKS ACT, 1883. 355 
 
 8. (1) If the applicant does nob leave a complete specification with Time for leav- 
 his application, he may leave it at any subsequent time within nine ^"^ ^fl"!l'-J;*'^ 
 months from the date of application, [pat/es 57, 64] (d) ^^^^^ 
 
 (2) Unless a complete specification is left within that time the When spocifi- 
 application shall be deemed to be abandoned (d). ^?^**"" deemed 
 
 ^'^ ^ ' abandoned. 
 
 9. (1) Where a complete specification is left after a provisional Comparison of 
 specification, the comptroller shall refer both specifications to an and^complete 
 examiner for the purpose of ascertaining whether the complete specification. 
 specification has been prepared in the prescribed manner, and 
 
 whether the invention particularly described in the complete specifi- 
 cation is substantially the same as that which is described in the pro- 
 visional specification. \_i'>agcs 58, 102, 104] {d) 
 
 (2) If the examiner reports that the conditions hereinbefore con- Power of 
 tained have not been complied with, the comptroller may refuse to refuse^mtii *'^' 
 accept the complete specification unless and until the same shall have amended. 
 been amended to his satisfaction ; but any such refusal shall be sub- 
 ject to appeal to the law officer. \_'pcuje 58] 
 
 (3) The law officer shall, if required, hear the applicant and the Power of law 
 comptroller, and may make an oi«der determining whether and sub- officer, 
 ject to what conditions, if any, the complete specification shall be 
 accepted. S^fages 58, 102] 
 
 (4) Unless a complete specification is accepted within twelve "When speci- 
 raonths from the date of application, then (save in the case of an fi''=^tion void, 
 appeal having been lodged against the refusal to accept) the applica- 
 tion shall, at the expiration of those twelve months, become void. 
 
 (5) Reports of examiners shall not in any case be published or be Keports of 
 open to public inspection, and shall not be liable to production or j^g^^'iliy^te ^^ 
 inspection in any legal proceeding, oilier than an appeal to the taw 
 
 officer under this act {e), unless the court or officer having power to 
 order discovery in such legal proceeding shall certify that such pro- 
 duction or inspection is desirable in the interests of justice, and ought 
 to be allowed, 
 
 10. On the acceptance of the complete specification the comptroller Advertisement 
 shall advertise the acceptance ; and the application and specification °j? acceptance 
 or specifications with the drawings (if any; shall be open to public specification, 
 inspection. \_2)ages 58, IIG] 
 
 11. (1) Any person may at any time within two months from the Opposition to 
 date of the advertisement of the acceptance of a complete specifica- s^"'"!* ot 
 tion give notice at the patent office of opposition to the grant of the ^^. ^^ * 
 patent UQ the ground of the applicant having obtained the invention groirad"for. 
 from him, or from a person of whom he is the legal representative, or 
 
 on the ground that the invention has been patented in this country 
 on an application of prior date, or on the ground of an examiner 
 having reported to the comptroller that the specification appears to 
 him to comprise the. same invention as is comprised in a specification 
 bearing the same or a similar title and accompanying a previous 
 application, but on no other ground, \_page 116] (/) 
 
 {d) The times mentioned in these sect. 3 of the Patents, &c., Act, 1888. 
 sections are altered by sect. 3 of the (/) This section is materially 
 
 Patents, &c., Act, 1885, infra. altered by sect. 4 of the Patents, &c., 
 
 (e) These words are struck out by Act, 1888, see infra. 
 
 A A 2
 
 55G 
 
 APPENDIX. 
 
 (2) Where such notice is given the comptroUer shall give notice of 
 the opposition to the applicant, and shall, on the expiration of those 
 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. \_P'^^ifJ^ 120] 
 
 (3) 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. \^page 121] 
 
 (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, [j^'ff^e 121] 
 
 12. (1) If there is no opposition, or, in case of opposition, if the 
 determination is in favour of the grant of a patent, the comptroller 
 shall cause a patent to be sealed with the seal of the patent office. 
 [pages 121, 123] 
 
 (2) A patent so sealed shall have the same effect as if it were sealed 
 with the great seal of the united kingdom. \_'pages 123, 255] 
 
 (3) A patent shall be sealed as soon as may be, and not after the 
 expiration of fifteen months from the date of the 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. 
 
 Date of patent. 13. Every patent shall be dated and sealed as of the day of the 
 
 applicatioij : provided that no proceedings shall be taken in respect 
 of an infringement committed before the publication of the complete 
 specification : ])rovided also, that in case of more than one applica- 
 tion 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. 
 
 Provisiondl Proiedion. 
 
 Provisional 14. Where an application for a patent in respect of an invention 
 
 protection. }^as been accepted, the invention may during the period between the 
 date of the apjilication and the date of sealing such ]iatent be used 
 and ])ublishe(l without prejudice to the patent to be granted for the 
 same ; and such protection from the consec|uences of use and publica- 
 tion is in this aft referred to as ])rovisi()nal ]ii-otection. \_pogc 17] 
 
 After notice 
 comptroller 
 to decide. 
 
 Or on appeal, 
 law officer. 
 
 "Who may 
 obtain expert's 
 assistance. 
 
 Sealing of 
 patent. 
 
 Wlieu sealc 
 
 Great seal 
 abolished for 
 patents. 
 
 Time for 
 sealing. 
 
 Exceptions to 
 limit. 
 
 (a) For legal 
 proceedings. 
 
 (b) "When ap- 
 plicant dead. 
 
 FflTect of 
 affcptiincf! of 
 complete 
 Mpeciticution. 
 
 15. 
 
 Proli'clion by Cojnplete tSpecificaiion. 
 After the acceptance of a com])lete sj)ecification and until the 
 
 date of sealing a j)atent in respect thereof, or tlie expiration of the 
 time for sealing, the applicant shall have the like pri\ileges and 
 rights .'18 if a pa'ent f»»r the invention had been sealed on the date of 
 the acceptance of the comjilete specification : provided that an appli-
 
 PATENTS, DESIGNS, AND TRADE MARKS ACT, 1883. 357 
 
 cant shall not be entitled to institute any proceeding for infringement 
 unless and until a patent for the invention has been granted to him. 
 [pages G'J et scq.^ 
 
 Fa tent. 
 
 16. Every patent when sealed shall have effect throughout the Extent of 
 united kingdom and the Isle of Man. \_2Mges 123 et seq.'] patent. 
 
 17. (1) The term limited in every patent for the duration thereof Tenu of 
 shall be fourteen years from its date. patent. 
 
 (2) But every patent shall, notwithstanding anything therein or in Ceases on 
 this act, cease if the patentee fails to make the prescribed payments failure of 
 
 .,,.., -Ill- payments. 
 
 Within the prescribed times. ^ 
 
 (3) If, nevertheless, in any case, by accident, mistake or inadvert- Exception by 
 euce, a patentee fails to make any prescribed payment within the pre- con^ptroikr,*** 
 scribed time, he may apply to the comptroller for an enlargement of 
 
 the time ior making that payment. 
 
 (4) Thereupon the comptroller shall, if satisfied that the failure Extension of 
 has arisen from any of the above-mentioned causes, on receipt of the ^^^^^^ upon 
 prescribed fee for enlargement, not exceeding ten pounds, enlarge the terms. 
 
 time accordingly, subject to the following conditions : 
 
 (a) The time for making any payment shall not in any case be 00 Period of 
 
 enlarged for more than three months. extension. 
 
 (b) If any proceeding shall be taken in respect of an infringement W Daiuages 
 
 of the patent committed after a failure to make any payment °^^l^ ii"tfie' 
 within the prescribed time, and before the enlargement thereof, interval, 
 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. 
 
 18. (1) An applicant or a patentee may, fi'om time to time, by ^^«'«^.f^i»?'it of 
 request in writing left at the patent office, seek leave to amend his ''^'"^^ 
 specification, including drawings forming part thereof, by way of dis- 
 claimer, correction, or explanation, stating the nature of such amend- 
 ment and his reasons for the same, [pages 58, 102 to 115] 
 
 (2) The request and the nature of such proposed amendment shall Advertisement 
 be advertised in the prescribed manner, and at any time within one ;,'|i|™otTc'"uf* 
 month from its first advertisement any person may give notice at the opposition to 
 patent office of opposition to the amendment. ^^ given. 
 
 (3) Where such notice is given the comptroller shall give notice of ^"here notice 
 the opposition to the person making the request, and shall hear and fi-oUerXcidos. 
 decide the case subject to an appeal to the law officer'] 
 
 (4) The law officer shall, if required, hear the person making the -^PP*^^^ *'^ ^-'^^ 
 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 detennine whether and subject to what conditions, if any, the 
 amendment oughTto be allowed. 
 
 (5) Where no notice of opposition is given, or the person so giving ^^ J^""*^ ^'^ 
 notice does not appear, the comptroller shall determine whether and troller deter- 
 subject to what conditions, if any, the amendment ought to be "liues condi- 
 
 ,] „-! tions of 
 
 allowed. amendment.
 
 858 
 
 APPENDIX. 
 
 A])j)eal to law 
 officer. 
 
 Xu aiiu'uclmeut 
 allowed so as to 
 enlarge or alter 
 materially 
 speciticatioii. 
 
 Leave conclu- 
 sive except in 
 case of fraud ; 
 amendment 
 fonns ])art of 
 specification. 
 
 Power to 
 disclaim ])art 
 of invention 
 durinif action, 
 &c. 
 
 ilestriction on 
 recovery of 
 damajres. 
 
 Advertisement 
 of amendment. 
 
 Power for 
 board of trade 
 to order ^rant 
 of licenses. 
 
 (6) When leave to amend is refused by the comptroller, the person 
 making the request may appeal fi'om 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 would make the specifica- 
 tion, as amended, claim an invention substantially larger than or sub- 
 stantially 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) The foregoing provisions of this section do not apply when 
 and so long as any action for infringement or other legal proceeding 
 in relation to a patent is pending. \ page 109] {g) 
 
 19. — (1) In an action for infringement of a patent, and in a pro- 
 ceeding 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 bear- 
 ing of the action shall be postponed, [pages 110 et seq.'] 
 
 20. Where an amendment by way of disclaimer, correction, or 
 explanation, has been allowed under this act, no damages shall be 
 given in any action in respect of the use of the invention before the 
 disclaimer, correction or explanation, unless the patentee establishes 
 to the satisfaction of the court, that his original claim was framed in 
 good faith and with reasonal:)le skill and knowledge, [pages 111 
 et seq.'] 
 
 21. Every amendment of a specification shall be advertised in the 
 prescriljed manner. 
 
 Compulsory Licenses. 
 
 22. If on the petition of any person interested it is proved to the 
 Ijoard of trade that by reason of the default of a patentee to grant 
 licenses on reasonable terms — [page 141] 
 
 Ca) The patent is not being worked in the united kingdom ; or 
 (i») The reasonable requirements of the public with respect to the 
 
 invention cannot be sujjplied ; or 
 (c) Any person is prevented from working or using to the best 
 advantage an invention of which he is possessed, 
 the bo:iiil may order the jjatentee to grant licenses on such terms as 
 to the iimount of royiiUicR, sectn'ity for payment, or otherwise, as the 
 boai'd, having regard to I lui nature of the invention and the circum- 
 stances of tlif case, may deem just, and any such oi'dcr may Ije 
 enforced hy mandamuK. 
 
 (</) This HubHcction i.s uIIck 
 Patents, &c., Act, 1888, injni,. 
 
 ami liiiiiti<l in its ojuaation by sect. 5 of tlie
 
 PATENTS, DESIGNS, AND TKADE MARKS ACT, ISSS. 359 
 
 Register of Patenis. 
 
 23. — (1) There shall be kept at the patent oflfice a book called the Register of 
 Register of Patents, wherein shall be entered the names and addresses P'l*'-'"^*- 
 of grantees of patents, notifications of assignments and of transmis- Where to be 
 gious of patents, of licenses under patents, and of amendments, exten- contents, 
 sions, and revocations of patents, and such other matters afPeeting 
 the validity or proprietorshij) of patents as may from time to time be 
 )>rescribed. [p/'i/es 2(1, 148] 
 
 (2) The register of })ateuts shall be prima facie evidence of any is evidence, 
 matters by this act directed or authorized to be inserted therein. 
 
 (3) Copies of deeds, licenses, and any other documents affecting Copies for 
 the proprietorship in any letters patent or in any license thereunder, ^''^^^s- 
 must be supplied to the comptroller in the prescribed manner for 
 
 filing in the patent office. 
 
 Fees. 
 
 24. — (1) There shall be paid in respect of the several instruments Fees payable, 
 described in the second schedule to this act, the fees in that schedule 
 mentioned, and there shall likewise be paid, in respect of other matters 
 under this part of the act, such fees as may be from time to time, with 
 the sanction of the treasury, prescribed by the board of trade ; and 
 such fees shall be levied and paid to the account of her majesty's 
 exchequer in such maimer as the treasury may from time to time 
 direct. 
 
 (2) The board of trade may from time to time, if they think fit, Power to 
 with the consent of the treasury, reduce any of those fees. reduce tees. 
 
 Extension of Term of Patent. 
 
 25. — (1) A patentee may, after advertising in manner directed by Extension of 
 -any rules made under this section his intention to do so, present a t^'™\'l*' F**'-'^*' 
 petition to her majesty in council, praying that his patent may be Queeii'in" " 
 -extended for a further term ; but such petition must be jDresented at council. 
 least six months before the time limited for the expiration of the Wiien applied 
 patent, \_pages 14.5 et seq.'] ^^^'• 
 
 (2) Any person may enter a caveat, addressed to the registrar of Kntry of 
 the council at the council office, against the extension. caveat. 
 
 (3) If her majesty shall be pleased to refer any such petition to Privy Council 
 the judicial committee of the pri^-y council, the said committee shall i"''^^'^"^*^""- 
 proceed to consider the same, and the petitioner and any person who 
 
 has entered a caveat shall be entitled to be heard by himself or by 
 <30unsel on the petition. 
 
 (4) The judicial committee shall, in considering their decision. Powers of 
 have regard to the nature and merits of the invention in relation to ^"j|i,"it\ee 
 the public, to the profits made by the patentee as such, and to all the 
 ■circumstances of the case, [page 15.o] 
 
 (5) If the judicial committee report that the patentee has been On their report 
 inadequately remunerated by his patent, it shall be lawful for o'^^^nte'jl^ojj 
 her majesty in council to extend the terra of the patent for a fiu'ther conditions. 
 term not exceeding seven, or in exceptional cases fourteen, years ; or 
 
 to order the grant of a new patent Ibr the term therein mentioned, 
 and containing any restrictions, conditions, and provisions that the 
 judicial committee may think fit.
 
 300 APPENDIX. 
 
 Power to make (6) It sliall be lawful for her majesty in council to make, from time 
 ™|r,fr "ii^,*^^' to time, rules of procedure and i)ractice for reg-ulating proceedings on 
 pi( .01 Mings. ^^^^ petitions, and subject thereto such proceedings shall be regu- 
 lated according to the existing procedure and practice in patent 
 matters of the judicial committee, [page 154.] 
 Costs. (7) The costs of all parties of and incident to such proceedings 
 
 shall be in the discretion of the judicial committee ; and the orders of 
 the committee respecting costs shall be enforceable as if they were 
 orders of a division of the high court of justice. 
 
 Eevocatiun. 
 
 Abolition of 26. (1) "l-'be proceeding by scire facias to repeal a patent is hereby 
 
 scire fatias. abolished, [pages 114, 116, 208, 253, 277] 
 
 Revocation of (2) Eevocation of a patent may I>e obtained on petition to the 
 
 patent. ^q^^j.^;. 
 
 How revoca- (3) Every ground on which a patent might, at the commencement 
 
 tiou obtained, ^^f j.[-jjg ^^^^ ^^ repealed by scire facias shall be available by way of 
 lA-ocatfon. defence to an action of infringement and shall also be a ground of 
 
 reYocation, 
 Petition for (4) A petition for revocation of a patent may be presented by — 
 
 ivvocation, ^j^j The attomey-geueral in England or Ireland, or the lord 
 
 present!"* advocatc iu Scotland : [pages 20<s et seq."] 
 
 (b) Any person authorized by the attorney-general in England or 
 
 Ireland, or the lord advocate in Scotland : 
 
 (c) Any person alleging that the patent was obtained in fraud of 
 
 his rights, or of the rights of any person under or through 
 whom he claims : 
 
 (d) Any person alleging that he, or any person under or through 
 
 whom he claims, was the true inventor of any invention in- 
 cluded in the claim of the patentee : 
 
 (e) Any person alleging that he, or any person under or tbi'ough 
 
 whom he claims an interest in any trade, business, or manu- 
 facture, had i)ublicly manufactured, used, or sold, within this 
 realm, before the date of the patent, anything claimed by the 
 patentee as his invention. 
 I'laintit! iiiur,t (5j The plaiutili' uiust deli\er witli his petition particulars of the 
 deliver amnie olijectioiis ou wliich lic lucaus to rely, aud no evidence shall, except 
 ti'.-MUr-''^ ''■"" by leave of the court or a judge, be admitted in jiroof of any objec- 
 tion of wliich j)articulars are not so delivered, [page 277] 
 .\inendineiit of (()) l^articiilais delivered maybe from time to time amended by 
 partieulars. jgj^y^. ,jf the court or a judge, '[page 27.S] 
 
 Patent. e (7) The defendant shall be entitled to begin, and give evidence in 
 
 tiioii-fli d.-fen- support of the patent, and if the plaintiff gives evidence impeaching 
 KlVorXln'.' <^'>^ validity of the patent, the defendant shall be entitled to reply, 
 fuT lit trial. [pages 251, 27'.)] 
 
 wiiere patent (H) Where a patent has been revoked on the ground of fraud, the 
 r.vokiii (or coinj)troller may, on the ap])lication of the true inventor, made iu 
 i\'i veVtor ^nav '' iicconlaucc witli the pro\isions of this act, grant to him a patent iu 
 ol.tain puicii't. h'cu of aiid beai'iiig the same date as the date of revocation of the 
 patent ho revoked, i)Ut the j)atent so granted shall cease on the ex- 
 ])iration of the term for which the revoked patent was granted.
 
 PATENTS, DESIGNS, AND TRADE MARKS ACT, iSS'i. 361 
 
 Croirn. 
 
 27. — (1) A ])ateiit shall liave to all intents the like effect as afjainst Patent t.. i.in.i 
 lier majesty the queen, her heirs and successors, as it has against a ^^'^^"•''"^^^ 
 subject, [pages 128, l.Sf)] 
 
 i'2) But the officers or authorities administering any department of Exceptions, 
 the service of the crown may, by themselves, their agents, contractors, 
 or others, at any time after the application, use the invention for the 
 services of the crown on terras to l)e before or after the use thereof 
 agreed on, with the approval of the treasury, between those officers or 
 authorities and the patentee, or, in default of such agreement, on such 
 terms as may be settled by the treasury after hearing all parties 
 interested. 
 
 Legal Proceedinys. 
 
 28. — (1) 111 an action or proceeding for infringement or revocation Hearing with 
 of a patent, the court may, if it thinks fit, and shall, on the request of assessor, 
 either of the parties to the proceeding, call in the aid of an assessor By court, 
 specially qualified, and try and hear the case wholly or partially with 
 his assistance ; the action shall be tried without a jury unless the 
 court shall otherwise direct, [pages 251, 277, 278] 
 
 (2) The court of appeal or the judicial committee of the privy Court of appeal 
 council may, if they see fit, in any proceeding before them respec- °'' P^'\y>' '^°'^^^^' 
 tively, call in the aid of an assessor as aforesaid. assessors!*^^ 
 
 (3) The remuneration, if any, to be paid to an assessor under this Assessors' fees, 
 section shall be determined by the court or the court of appeal or 
 
 judicial committee, as the case may be, and be paid in the same manner 
 as the other expenses of the execution of this act. 
 
 29. — (0 In an action for infringement of a patent the plaintiff Delivery of 
 must deliver with his statement of claim, or by order of the court or Particulars ^ 
 the judge, at any subsequent time, particulars of the breaches com- 
 plained of ['pages 222 et seq., 270, 279] 
 
 (2) The defendant must deliver, with his statement of defence, or, of oi>jections. 
 by order of the court or a judge, at any subsequent time, particulars 
 of any objections on which he relies in support thereof, [pages 229 
 et seq.^ 
 
 (o) If the defendant disputes the validity of the patent, the Grounds must 
 particulars delivered by him must state on what grounds he disputes Restated. 
 it, and if one of those grounds is want of novelty, must state the time and 
 place of the previous publication or user alleged by him. [page 29G] 
 
 (4) At the hearing no evidence shall, except by leave of the court Evidence must 
 or a judge, be admitted in proof of any alleged infringement or objec- partfciaars""'^ 
 tion of which particulars are not so delivered, [page 222] 
 
 (5) Particulars delivered may be, from time to time, amended, by Amendment, 
 leave of the cottrt or a judge, [page 222] 
 
 (6) On taxation of costs, regard shall be had to the particulars de- Costs, 
 livered by the plaintiff and by the defendant ; and they respectively 
 shall not be allowed any costs in respect of any particular 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, [images 271 ef seq.']
 
 362 
 
 APPENDIX. 
 
 Order for in- 
 spection, iS:c. 
 in action. 
 
 Cei-tificate 
 that validity 
 questioned. 
 
 Remedy in case 
 of groundless 
 tlu-eats of legal 
 proceedings. 
 
 30. — In ail action for infringemeut of a patent, the couii or a 
 judge may, on the apphcation 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. \_p((gc 246] 
 
 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 coiu't or a judge so certifies, then in any subsequent action 
 for infringement, the pUiintiff" in that action, on obtaining a final 
 order 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. 
 \_pages 2(;9, 272, 277] 
 
 32. 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 manu- 
 facture, 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 re- 
 cover such damage (if any) as may have been sustained thereby, if 
 the alleged manufacture, use, sale, or ptu'chase to which the threats 
 related was not, in fact, an infringement of any legal rights of the 
 person making such threats : Provided that this section shall not 
 apply if the person making such threats with due diligence commences 
 and prosecutes an action for infringement of his patent. [_paije 281] 
 
 Miscellaneous. 
 
 Patent for one 33. Every patent may be in the form in the first schedule to this 
 invention only, act, and shall be granted for one invention only, but may 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. \_pMje 
 164] 
 
 34. — (1) If a person possessed of an invention dies without making- 
 application for a patent for the invention, application may be made 
 by, and a patent for the invention granted to, his legal representative. 
 {pages 8, J;J4] 
 
 (2) Every such application must be made within six mouths 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 
 in\entor of the invention. 
 
 35. A patent granted to the true and iirst inventor shall noL be 
 invalidated by an application in fraud of him, or by provisional pro- 
 tection ol)tained thereon, or by any useor itublication of the invention 
 subsequent to that fraudulent application during the period of pro- 
 \iHi(niaI jirotection. [ /xige 16] 
 
 36. A j)at('ntce may assign his jjatent i'oi' any j)hu'e in or part ol 
 the iMiited kingdom, or Jsle ol" Man, a.s eilectually as if the patent 
 
 Patent on 
 ap))lication of 
 representative 
 of (leecased 
 inventor. 
 
 Time and 
 •contents of 
 Jippliration. 
 
 I'at.nt to thht 
 inventor not 
 invalidatrd liy 
 :i|i]dii-atir.n in 
 fraud of liim. 
 
 AHMigiMiieiit 
 for pai-ticiilar 
 jilnrex.
 
 PATENTS, DESIGNS, AND TRADE MARKS ACT, 1883. 363 
 
 were originally granted to extend to that i)lace, or part only. \_ pages 
 135, IGO, 163, 216] 
 
 37- l^f a patent is lost or destroyed, or its non-production is Loss or 
 accounted for to the satisfaction of the comptroller, the comptroller ^f p.'i{",it*" 
 may, at any time, cause a duplicate thereof to be sealed. 
 
 38- The law officers may examine witnesses on oath, and administer Proceedings 
 oaths for that purpose under this part of this act, and may, from time ^efor "law 
 to time, make, alter, and rescind rules regulating references and officer, 
 aj^peals 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, \_pages 103, 121] 
 
 39. The exhibition of an invention at an industrial or international Exhiintion at 
 exhibition, certified as such by the board of trade, or the publication i"fen|adoiial 
 of any description of the invention during the period of the holding exhibition not 
 of the exhibition, or the use of the invention for the purpose of the ^^ prejudice 
 exhibition in the place where the exhibition is held, or the use of the ^^'^ ^"^ "^'^ '^ 
 invention during the period of the holding of the exhibition by any 
 person elsewheiv, 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 the invention or the validity of any patent 
 granted on the application, provided that both the following con- 
 ditions are com2)lied with, namely, — 
 
 (a) The exhibitor must, before exhibiting the invention, give the Conditions: 
 
 comptroller the prescribed notice of his intention to do so ; (a) Notice; 
 and 
 
 (b) The application for a patent must be made before or within (b) Patent 
 
 six months from the date of the opening of the exhibition. "^"':* \\. 
 
 ' ° applied tor. 
 
 See Patents, &e., Act, 1886, sect. 3. 
 
 40- — (1) The comptroller shall cause to be issued periodically an Publication of 
 illustrated journal of patented inventions, as well as reports of patent illustrated 
 cases decided by courts of law, and any other information that the ind™ts'. &c. 
 comptroller may deem generally useful or important. 
 
 (2) Provision shall be made by the comptroller for keeping on sale Copies to be 
 copies of such journal, and also of all complete specifications of °^^ ®^ ^* 
 patents for the time being in force, with their accompanying drawings, 
 if any. 
 
 (o) The comptroller shall continue, in such form as he may deem Continuation 
 expedient, the indexes and abridgments of specifications hitherto "f P^l^lifntion 
 pul)lished, and shall from time to time prepare and publish such 
 other indexes, abridgments of specifications, catalogues and other 
 works relating to inventions, as he may see fit. 
 
 41. The control and management of the existing patent museum Patent 
 and its contents shall, from and after the commencement of this act, '""^f'l'u. 
 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 "ive.
 
 364 
 
 APPENDIX. 
 
 Power to re- 
 quire models 
 on pityiiient. 
 
 Foreign vessels 
 in British 
 waters. 
 
 Exception. 
 
 Assignmeut to 
 secretary for 
 war of certain 
 inventions. 
 
 Extent of 
 assiprnnunt. 
 
 Power of secre- 
 taiy of state for 
 war to kei]) 
 iiiventinii secret 
 on certifying 
 that it is in 
 l)nblic interest 
 
 to do HO. 
 
 In which ease 
 sjMcifieatinnH 
 unil documents 
 are Hcaied ii|). 
 
 F'lr term ..| 
 patent. 
 
 42. 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. 
 
 43. — (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 kingdom, or 
 Isle of Man, or the use of an invention in a foreign vessel within that 
 jurisdiction, provided it is not used therein for or in connexion with 
 the manufacture or preparation of anything intended to be sold in or 
 exported from the united kingdom or Isle of Man. \_page 187] 
 
 (1) But this section shall not extend to vessels of any foreign 
 state of which the laws authorize subjects of such foreign state, 
 having patents or like privileges for the exclusive use or exercise of 
 inventions within its territories, to prevent or interfere with the use 
 of such inventions in British vessels whde 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 
 munitions of war^ his executors, administrators, or assigns (who are 
 in this section comprised in the expression the inventor), may (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 secretarv of state may be a party to the assignment. 
 \_2Jage 133] 
 
 (2) The assignment shall effectually vest the benefit of the inven- 
 tion and patent in the secretary of state for the time being on behalf 
 of her majesty, and all covenants and agreements therein contained for 
 keejung 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. 
 
 {?)) Where any such assignment has been made to the secretary of 
 state, he may at any time ))elbre the application for a patent for the 
 invention, or l)cfore publication of the specification or specifications, 
 certify to the comptroller liis o])inion that, in the interest of the 
 public service, the ])articidars of the invention and of the manner in 
 which it is to be performed sliould be kept secret. 
 
 (4 ) If the secretary of state so certifies, the application and 
 specification or specifications with the drawings (if any), and any 
 amenilment of the specification or specifications, and any copies of 
 sucli documents and drawings, shall, instead of being left in the 
 ordinary manner at the ])atent office, l)e delivered to the comi)troller 
 in a ])acket sealed by authority of the secretary of state. 
 
 (;")) Such packet siiall, until the ex])iratioii of the term or extended 
 term during which a patent for i\w invention may be in force, be 
 kept sealed by the coin] il/roller, and shall not be opened save under the 
 authority of an order of tiie secretary of state, or of the law officers.
 
 PATENTS, DESIGNS; AND TRADE MARKS ACT, 1883. ^65 
 
 (6) Such sealed packet sliall be delivered at auy time during the Delivery of 
 continuance of the patent to any person authorized by writing under p^K^ket under 
 the hand of the secretary of state to receive the same, and shall if stato'^s'luith,,- 
 retui'ned to the comptroller be again kept sealed by him. rity during 
 
 (7) On the expiration of the term or extended term of the patent, ^'''■'"• 
 
 such sealed packet shall be delivered to any person authorized by ^^ <'xpir.itir.n, 
 writing under the hand of the secretary of state to receive it. 
 
 (8) Where the secretary of state certifies as aforesaid, after an Foregoing 
 application for a patent has been left at the patent office, but before sub-sechons to 
 the publication of the specification or specifications, the application, pateiit^appUed 
 specification or sjjecificatious, with tlie drawings (if any), shall be for but specifi- 
 forthwith placed in a packet sealed by authority of the comptroller, ^'J,V,i'i"^,"j'' 
 and such packet shall be subject to the foregoing provisions respecting 
 
 a packet sealed by authority of the secretary of state. 
 
 (9) No proceeding by jDetition or otherwise shall lie for revocation Wia-ri' certified 
 of a patent granted for an invention in relation to which the secretary ^> secretary 
 of state has certified as aforesaid. petition 'for 
 
 (10) No copy of any specification or other document or drawing revocation. 
 
 by this section required to be placed in a sealed packet, shall in any No copy of any 
 manner whatever be published or open to the inspection of the ^^^^y^ specifi- 
 public, but save as in this section otherwise directed, the provisions m^de pubiiT. 
 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 Power of 
 hand, waive the benefit of this section with respect to any particular secretary of 
 invention, and the specifications, documents and drawings shall be bencfit°of ^'^^ 
 thenceforth kept and dealt with in the ordinary way. section. 
 
 (12) The communication of any invention for any improvement in Coiniimmca- 
 instruments or munitions of war to the secretary of state, or to any tion to secre- 
 persou or persons authorized by him to investigate the same or the for^war^not\o 
 merits thereof, shall not, nor shall anything done for the purposes of be deemed 
 the investigation, be deemed use or publication of such invention so P^i^li^ation. 
 as to prejudice the grant or validity of any patent for the same. 
 
 Existing Patents. 
 
 45. — (1) The provisions of this act relating to applications for Provisions 
 patents and proceedings thereon shall have effect in respect only of yespecting ex- 
 applications made after the commencement of this act. ^'^ ^° ^^^ ^° ^* 
 
 (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 licenses. \_l^nge 158] 
 
 (3) In all other respects (including the amount and time of pay- 
 ment of fees) this act shall extend to all patents granted before the 
 commencement of this act, or on applications then pending, in 
 substitution for such enactments as would have applied thereto if this 
 act had not been passed, \_page 158] 
 
 (4) All instruments relating to patents granted before the com- Documents left 
 mencement of this act required to be left or filed in the great seaH^ sreat seal 
 patent office shall be deemed to be so left or filed if left or filed before deemed°ieit^at 
 or after the commencement of this act in the patent office. pat^'ut office on 
 
 commencement 
 of this act.
 
 '66Q 
 
 APPENDIX. 
 
 Uutinitioiis of 
 " Patent:"' 
 '' I'ateutei' ; "' 
 
 " Invention ; ' 
 
 '■ luj miction ' 
 in Scotland. 
 
 Definitions. 
 
 46. In and for the purposes of this act — 
 
 " Patent " means letters patent for an invention : 
 
 " Patentee " means the person for the time being entitled to the 
 benefit of a patent : \_page 5] 
 
 " Invention " means any manner of new manufacture the subject 
 of letters patent and grant of privilege within sect. ('> of the Statute 
 of Monopolies (that is, the act of the twenty-first year of the reign of 
 King James the First, chapter .3, intituled, " An Act concerning 
 monopolies and dispensations with penal laws and the forfeiture 
 thereof "), and includes an alleged invention, \_page 22] 
 
 In Scotland "injunction" means "interdict." 
 
 Patent office. 
 
 Control. 
 
 Officers and 
 clerks. 
 
 Salal^c^ 
 
 Seal of patent 
 ..Hire. 
 
 'I'ni.Ht not to 
 Ix; I'Mtcicd ill 
 
 rcjo*«ter!«. 
 
 Uf'hiMnl to 
 );rnnt |iiiteiit, 
 &c., in certain 
 cawcH. 
 
 PART Y.— General. 
 Patent Office and Proceedings thereat. 
 
 82. — (1) The treasury may provide for the purposes of this act an 
 office with all requisite buildings and conveniences, which shall be 
 called, and is in this act referred to as, the patent office. 
 
 (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 this act 
 shall be the patent office within the meaning of this act. 
 
 (3) The patent office shall be under the immediate control of an 
 officer called the comptroller general of patents, designs, and trade 
 rcarks, who shall act under the superintendence and direction of the 
 board of trade. 
 
 (4) Any act or thing directed to be done by or to the comptroller 
 may, in his absence, be done by or to any officer for the time being 
 in that behalf authorised by the board of trade. 
 
 83. — (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 stich d(.'signations and duties as the board of trade think fit, and 
 may from time to time remove any of those officers and clerks. 
 
 (2) Til e salaries of those officers and clerks shall be appointed by 
 tiie board of trade, with the concurrence of the treasury, and the 
 same and tlie other expenses 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 impressions 
 hereof shall be judicially noticed and admitted in evidence, \jmge 128] 
 
 85. Thci-c shall not be entered in any register kept under this act, 
 or bi' receivai)Ic by the comptroller, any notice of any trust expressed, 
 ini])lied or constructive. \_]>ages 20, 11;}] 
 
 86. The comptroller may refuse to grant a patent fur an invention 
 or to i-egister a design or trade mark, of which the use would, in his 
 opinion, be fontrary to law or morality. \^i>«go 127]
 
 PATENTS, DESIGNS, AND TRADE MARKS ACT, 1883. 3G7 
 
 87. Where a person becomes enfcitled by assignment, transmission, Entry of 
 or other operation of law to a patent, or to the copyright in a assi-^nments 
 registered design, or to a registered trade mark, the comptroller shall Inissions in 
 on request, and on proof of title to his satisfaction, cause the name of register.s. 
 such person to be entered as proprietor of the patent, copyright in 
 
 the design, or trade mark, in the register of j^atents, designs, or trade 
 marks, as the case may be. The person for the time being entered in 
 the register of patents, designs, or trade marks, as proprietor of a 
 patent, copyright in a design or trade mark as the case may be, shall, 
 subject {h) to any rights appearing from such register to be vested in 
 any other person, have power absolutely to assign, grant licenses as 
 to, or otherwise deal with, the same and to give effectual receipts for 
 any consideration for such assignment, license, or dealing. Provided 
 that any equities in respect of such patent, design, or trade mark may 
 be enforced in like manner as in respect of any other personal 
 property. \_p(tgo 1-43] 
 
 88. Every register kept under this act shall at all convenient times Inspoctiou of 
 be open to the inspection of the public, subject (A) to such regulations f^^ ^^}'^j^^l^. 
 as may be prescribed ; and certified copies, sealed with the seal of " 
 the patent office, of any entry in any such register shall be given to 
 
 any person requiring the same on payment of the prescribed fee. 
 
 89. Printed or wTitten copies or extracts, purporting to be certified Sealed copies 
 
 - - - - - - - to be receive' 
 
 m evidence. 
 
 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 in her majesty's dominions, 
 and in all proceedings, without further proof or production of the 
 originals, \_pages 143, 255] 
 
 90. — (1) The court may on the application of any person aggrieved Rectificatioii 
 by the omission without sufficient cause of the name of any person (/) o^ ^'''Sisto-s 
 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. \_pnge 143] 
 
 (2) The court may in any proceeding under this section decide Powers of 
 any question that it may be necessary or expedient to decide for the <'°^"'*^ *^° decide 
 rectification of a register, and may direct an issue to be tried for the mlesdonT^^ 
 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 Notice. 
 due notice of the rectification be given to the comptroller. 
 
 91. The comptroller may, on request in writing accompanied by Power for 
 the prescribed fee,— \page 144] comptroller to 
 
 '- T \.j. J J correct clerical 
 
 {/() The wonls "to the provisions of {i) The words "or of any other par- 
 
 this act and to," are here inserted by ticulars," are here inserted by sect. 23 
 sects. 21 & 22 of the Patents, &c., Act, of the Patents, &c., Act, 1888, infra. 
 188>^, infra. 
 
 en'ors.
 
 36S 
 
 APPENDIX. 
 
 Alteration of 
 
 regristered 
 
 mark. 
 
 Notice to lie 
 u-iveii. 
 
 <'<)ini)troller to 
 alter in 
 accordance 
 witli order. 
 
 Falsification 
 of entries in 
 reu-isfers. 
 
 Kxercise of 
 discretionary 
 ])o\ver bv 
 <-oniptroller. 
 
 Power of 
 eoni|itroller to 
 take directions 
 of law officers. 
 
 Certificate of 
 comptroller to 
 be evidence. 
 
 Applications 
 mill notices 
 liy |KiHf. 
 
 (a) Correct any clerical error in or in connect'on with an applica- 
 
 tion for a patent, or for registration of a design or trade 
 mark ; or 
 
 (b) Correct any clerical error in the name, style or address of the 
 
 registered proprietor of a patent, design, or trade mark ; 
 
 (c) Cancel the entry or part of the entry of a trade mark oil the 
 
 register : Provided that the applicant accompanies his request 
 by a statutory declaration made by himself, stating his name, 
 address, and calling, and that he is the person whose name 
 appears on the register as the proprietor of the said trademark. 
 
 92. — (1) The registered proprietor of any registered trade mark 
 may apply to the court for leave to add to or alter such mark in any 
 particular, not being an essential particular within the meaning of 
 this act, and the court may refuse or grant leave on such terms as it 
 may think fit. 
 
 (2) Notice of any intended application to the court under this 
 section shall be given to the comptroller by the applicant ; and the 
 comptroller shall be entitled to be heard on the application. 
 
 (3) If the court grants leave, the comptroller shall, on proof 
 thereof and on payment of the prescribed fee, cause the register to be 
 altered iu conformity with the order of leave. 
 
 93. If any person makes or causes to be made a false entry in any 
 register kept under this act, or a writing falsely purporting 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 mis- 
 demeanor. 
 
 94. Where any discretionary power is by this act given to the 
 comptroller, be shall not exercise that power adversely to the appli- 
 cant for a patent, or for amendment of a specification, or for regis- 
 tration of a trade mark or design, without (if so required within the 
 proscribed time by the applicant) giving the applicant an opportunity 
 of being heard personally or by his agent. \_'page 103] 
 
 95. The comptroller may, in any case of doubt or difficulty arising 
 in the administration of any of the provisions of this act, apply to 
 either of the law officers for directions in the matter. 
 
 96. A certificate purporting to be under the hand of the comp- 
 troller as to any entry, matter, or thing which he is authorized by 
 this act, or any general rules made thereunder, to make or do, shall 
 be prima facie evidence of the entry having been made, and of the 
 coiiLents thereof, and of the matter or thing having been done or left 
 undone. \_i)a(je 255] 
 
 97. — (1) Any application, notice, or other document authorized 
 or required to Ije left, made, or given at the patent office, or to the 
 (•oini)tr()ller, or to any other person under tliis act, may be sent by a 
 pp'j)aid lett(!r thnnigli the post ; and if bo sent shall be deemed to 
 liave been h;ft, made, or given respeclively at the time when the 
 letter containing tlie tame would be delivered in the ordinary course 
 of post.
 
 PATENTS, DESIGNS, AND TRADE MARKS ACT, 1883. 3G9 
 
 (2) In proving such service or sending, it shall be sufficient to Proof, 
 prove that the letter was properly addressed and put into the post. 
 
 98. Whenever the last day fixed by this act, or by any rule for the Provision as 
 time being- in force, for leaving any document or paying any fee at \^ '^y^ ^^^ 
 the patent office shall fall on Cbristmas Day, Good Friday, or on a dooiments at 
 Saturday or Sunday, or any day observed as a holiday at the Bank of office. 
 England, or any day observed as a day of public fast or thanksgiving, 
 
 herein referred to as excluded days, it shall be lawful to leave such 
 document, or to pay such fee, on the day next following such excluded 
 day, or days if two or more of them occur consecutively. 
 
 99. If any person is, by reason of infancy, lunacy, or other Declaration 
 inability, incapable of making any declaration or doing anything ^y "ifan^ 
 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 done by the person for whom he is sub- 
 stituted, [jjage 6] 
 
 100. Copies of all specifications, drawings, and amendments left Transmission 
 at the patent office after the commencement of this act, printed for of certified 
 and sealed with the seal of the patent office, shall be transmitted to of^peeifica-''* 
 the Edinburgh museum of science and art, and to the enrolments tions, &c. 
 office of the chancery division in Ireland, and to the rolls office in 
 
 the Isle of Man, within twenty-one days after the same shall 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 payment of the prescribed fee ; and any 
 such copy or extract shall be admitted in evidence in all courts in 
 Scotland and Ireland and in the Isle of Man without further proof or 
 production of the originals. 
 
 101. — (1) The board of trade may from time to time make such Power for 
 general rules and do such things as they think expedient, subject to i^oard of trade 
 the provisions of this act— [page 141] lai'ruks for'"" 
 
 (a) For regulating the practice of registration under this act : classifying 
 
 (b) For classifying goods for the purposes of designs and trade "''°'^f ^}^^ 
 
 imrks . •' ° ° ^ regulatmg 
 
 JUdlKSs . business of 
 
 (c) For making or requiring duplicates of specifications, amend- patent offic?. 
 
 ments, drawings, and other documents : 
 
 (d) For securing and regulating the publishing and selling of 
 copies, at such prices and in such manner as the board of 
 trade think fit, of specifications, drawings, amendments, and 
 other documents : 
 
 (e) For securing and regulating the making, printing, publishing. 
 
 and selling of indexes to, and abridgments of, specifications 
 T. B B
 
 370 
 
 APFEXDIX. 
 
 Alteratiou of 
 forms. 
 
 General nile? : 
 
 to be laid 
 before parlia- 
 ment and 
 advertised. 
 
 Annnal report: 
 of comptroller. 
 
 and otlier doeuiiicnts in the patent office ; and providing for the 
 inspection of indexes and abridgments and other documents : 
 
 (f) For regulating (with the approval of the treasury) the pre- 
 
 sentation of copies of patent office publications to patentees 
 and to public authorities, bodies, and institutions at home and 
 abroad : 
 
 (g) Generally for regulating the business of the patent office, and 
 all things by this act placed under the direction or control of 
 the comptroller, or of the board of trade. 
 
 (2) Any of the forms in the first schedule to this act may be altered 
 or amended by rules made by the board afoi-esaid. 
 
 (3) General rules may be made under this section at auy time after 
 the pa.«sing of this act, but not so as to take effect before the com- 
 mencement of this act, and shall (subject as hereinafter mentioned) 
 be of the same effect as if they were contained in this act, and sh.all 
 be judicially noticed. 
 
 (4) Any rules made in purenance of this section shall be laid 
 before both houses of parliament, if parliament be in session at the 
 time of making thereof, or, if not, then as soon as practicable after 
 the beginning of the then next session of parliament, and they shall 
 also be advertised twice in the official journal to be issued hj the 
 comptroller. 
 
 (5) If either house of parliament, within the next forty days after 
 any rules have been so laid before such hotise, resolve that such rules 
 or any of them ought to be anntdled, the same shall after the date of 
 such resolution be of no effect, without prejudice to the validity of 
 anything done in the meantime under such rules or ride or to the 
 making of any new rules or rule. 
 
 102. The comptroller shall, before the first day of June in every 
 year, cause a report respecting the execution by or under him of this 
 act to be laid Ijefore both houses of parliament, and therein shall 
 include for the year to which each report relates all general rules 
 made in that year under or for the purposes of this act, and an 
 account of all fees, salaries, and allowances, and other money received 
 and paid under this act. 
 
 Tntematii.iial 
 arrangements 
 for protection 
 of inventions, 
 designs, and 
 trade mark=. 
 
 rnternationaJ and Colonial Arranflemenfs. 
 
 103. — (Ij If ber majesty is pleased to make any arrangement 
 with the government or governments of any foreign state or states for 
 mutual protection of inventions, designs, and trade marks, or any of 
 them, then any person who has applied for protection for any inven- 
 tion, design, or trade mark in any such state shall be entitled to a 
 patent for his invention or to registration of his design or trade 
 mark (as the case may be) under this act. in priority to other appli- 
 cants ; and such patent or registration shall have the same date 
 as f/te date of Ihf prolrrtion obiaincd in such foreign state. 
 [pafjesn?>,2\\'\ 
 
 Read "Date of Appli.ation " in substitution for " D.ite of tho Pro- 
 tectiou obtained." Tatonts, &c., Act, 1885, sect. 6.
 
 PATENTS, DESIGNS, AND TRADE MARKS AUT, ISSo. 371. 
 
 Provided that his application is made, in the case of a patent Timo. 
 ■within seven months, and in the case of a design or trade mark 
 within four months, from his applying for protection in the foreign 
 state with which the arrangement is in force 
 
 Provided that nothing in this section contained shall entitle the No protection 
 patentee or proprietor of the design or trade mark to reco^'er damages ^g^a^'f^,*" or*^°^' 
 for infringements happening prior to the date of the actual accept- registration. 
 ance of his complete specification, or the actual registration of his 
 design or trade mark in this country, as the case may b\ 
 
 (2) The publication in the united kingdom or the Isle of Man, Pubiioation at 
 during the respective periods aforesaid, of any description of the y^^^^^ "ot'^f,!"" 
 invention or the use therein during such periods of the invention, or mvaiidate 
 the exhibition or use therein during such periods of the design, or patent or trade 
 the publication therein during such periods of a description or '"^ 
 representation of the design, or the use therein during such periods 
 
 of the trade mark, shall not invalidate the patent which may bo 
 granted for the invention, or the registration of the design or trade 
 mark : 
 
 (3) The application for the grant of a patent, or the registration Applicatioii 
 of a design, or the registration of a trade mark under this section, under this 
 must be made in the same manner as an ordinary application under made'in same 
 this act : Provided that, in the case of trade marks, any trade mark manner as 
 the registration of which has been duly applied for in the country of oi'dinarv 
 origin may be registered under this act : ^^^^^ ^'^^ ^°^' 
 
 (4) The provisions of this section shall apply only in the case of Application of 
 those foreign states with respect to which her majesty shall from time ^^^ section, 
 to time by order in council declare them to be applicable, and so long 
 
 only in the case of each state as the order in council shall continue 
 in force Avith respect to that state. 
 
 104. — (1) Where it is made to appear to her majesty that the Provision for 
 legislature of any British possession has made satisfactory provision polonies and 
 for the protection of inventions, designs, and trade marks, patentel 
 or registered in this country, it shall be lawful for her majesty, 
 from time to time, by order in council, to apply the provisions of 
 the last preceding section, with such variations or additions, if any, 
 as to her majesty in council may seem fit, to such British possession. 
 \_ pages 213, 214] 
 
 (2) An order in council under this act shall, from a date to be Y'^^'^'^ of order 
 mentioned for the purpose in the order, take effect as if its provisions "^ '^"""'-'^ • 
 had been contained in this act ; but it shall be lawful for her 
 majesty in council to revoke any order in council made under 
 this act. 
 
 Offences. 
 
 105. — (1) Any person who represents that any article sold by him Penalty on 
 is a patented article, when no patent has ])een granted for the same, falsel\M-eprc- 
 or describes any design or trade mark applied to any article sold by to'brpatented.^ 
 him as registered which is not so, shall be liable for every offence on 
 summary conviction to a fine not exceeding five pounds. 
 
 (2) A person shall be deemed, for the purposes of this enactment, Definition of 
 to represent that an article is patented or a design or a trade mark is ^'^^'^ ''^P"" 
 
 I? R 2
 
 S72 
 
 APPENDIX. 
 
 sentation 
 imder tliis 
 section. 
 
 Penalty on 
 iinauthoiized 
 assumption of 
 ro3-al anns. 
 
 registered, if lie sells the article with the word "patent," "patented,'* 
 " registered," or any word or words expressing or implying that a 
 patent or registration has been obtained for the article stamped, 
 engraved, or impressed on, or otherwise applied to the article. 
 
 106. Any person who, without the authority of her majesty, or 
 any of the royal family, or of any government department, 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 calcu- 
 lated 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 authority as aforesaid, shall V)e liable 
 on summary conviction to a fine not exceeding twenty pounds. 
 
 Saving for 
 courts in 
 Scotland. 
 
 Definition of 
 " court of 
 appeal." 
 
 Summary 
 jjroceedingrs 
 in Scotland. 
 
 Proceedings 
 for revocation 
 of patent in 
 Scotland. 
 
 Service in 
 Scotland. 
 
 Scotland; Ireland; A-c. 
 
 107. Ill ^iiy iiction 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 dh'ect, 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 resjiecting 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. 
 
 108. In Scotland any offence under this act declared to be punish- 
 able on summary conviction may be prosecuted in the sheriff court. 
 
 109. — (1) Proceedings in Scotland for revocation of a patent shall 
 be in the form of an action of reduction at the instance of the lord 
 advocate, or at the instance of a party having interest with his con- 
 currence, which concurrence may be given on just cause shown only. 
 \_parie 210] 
 
 (2) Service of all writs and summonses in that action shall be made 
 according to the forms and practice existing at the commencement of 
 this act. 
 
 Reservation of HO. All parties shall, notwithstanding anything in this act, have 
 remedies in in Ireland their remedies under or in respect of a patent as if the 
 Ireland. ^;,„^,. \y^y^\ ]^^.^.^^ gnintcd to extend to Ireland only. \_pa(jc 211] 
 
 GeneraHavin- HI.— (0 'I'''^ provisions of this act conferring a special jurisdic- 
 for juri.sdiction tioii on the court as defined by this act, shall not, except so far as the 
 of courts. juiisdiction extends, affect tlie jurisdiction of any court in Scotland 
 
 or Ireland in any proceedings relating to patents or to designs or to 
 trade marks ; and with reference to any such proccedii'igs in Scotland, 
 the term "the court" shall mean any lord ordinary of the court of 
 session, and the term " court of api)eal " shall mean either division of 
 the said court ; and with reference to any such proceedings in Ireland, 
 the t(!nns " the court" and " the court of ajipeal " respectively mean 
 the hitrh court of justice in Jrehmd and her majesty's court of appeal 
 in Ii'iiiunl.
 
 PATENTS, DESIGNS, AXD TRADE MAUKS ACT, 1SS3. 373 
 
 (2) If any rectification of a register under this act is required iu lipctificution 
 pursuance of any proceeding- in a court in Scotland or Ireland, a copy "* register. 
 of the order, decree, or other authority ibr tiie rectification, shall oc 
 served on the comptroller, and he shall rectily the register accordingly. 
 
 112. This act shall extend to the Isle of j\Ian, and — Isle of Man. 
 
 (1) Nothing ill this act shall aOect the jurisdiction of the courts in jurisdiction 
 
 the Isle of ]Man, iu pi-oceedings for iniringement or in any of courts, 
 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 Puni^iliments. 
 
 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 : 
 
 (3) Any offence under this act committed in the Isle of Man which offences and 
 
 would in England be punishable on summary con\iction may penalties 
 be prosecuted, and any fine in respect thereof recovered at the England under 
 instance of any person aggrieved, in the manner iu which this act. 
 offences punishable on summary conviction may for the time 
 being be prosecuted. 
 
 See sect. 112a added here by sect. 2G of the Patents, kc, Act, 1883, 
 printed infra. 
 
 Iicpeal ; Transitional Provisions ; Savings. 
 
 113. The enactments described iu the third schedule to this act iiepeal and 
 are hereby repealed. But this repeal of enactments shall not — saving for past 
 
 (a) Affect the past operation of any of those enactments, or any repealed^ °^ 
 
 patent or copyright or right to use a trade mark granted or enactments, 
 acquired, or application pending, or appointment made, or '^'''• 
 compensation granted, or order or direction made or given, Exceptions. 
 or right, privilege, obligation, or liability acquired, accrued, 
 or incurred, or anything duly done or suffered under or by 
 any of those enactments before or at the commeucemenb of 
 this 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 act had not been 
 passed ; or 
 
 (c) Take away or abridge any protection or benefit in relation to 
 
 any such action or proceeding. 
 
 114. — (1) The registers of patents and of proprietors kept under Former 
 any enactment repealed by this act shall respectively be deemed parts re-isters to 
 <jf the same book as the register of patents kept under this act. ^ontiuu d^ 
 
 (2) The registers of designs and of trade marks kept under any 
 enactment repealed by this act shall respectively be deemed parts of 
 the same book as the register of designs and the register of trade 
 marks kept under this act. 
 
 115. All general rules made by the lord chancellor or by any other Saving for 
 authority under any enactment repealed by this act, and iu force at existing rules, 
 the commencement of this act, may at any time after the passing of 
 this act bo repealed, alSerod, or amended by the board of trade, as if
 
 374 
 
 APPENDIX. 
 
 Saring for 
 prerogative. 
 
 they liad beeu made by the board uuder this act, but su that uo such 
 repeal, alteration, or amendment shall take effect before the com- 
 mencement 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. Xothing in this act shall take away, abridge, or prejudicially 
 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. 
 
 General 117. — (1) I^ «ii<l l^^r the ptirposes of this act, unless the context 
 
 definitions. otherwise requires, — 
 
 •' Person." " Person " includes a body corporate : 
 
 "Coxirt."' '* The Court " meaus (subject to the provisions for Scotland, Ire- 
 
 land, and the Isle of Man) her majesty's high coiut of justice iu 
 England : 
 
 '•Law officer." " Law officer " meaus her majesty's attorney-general or solicitor- 
 general for England : 
 
 " Treasuiy." " The Treasury " means the commissioners of her majesty's 
 treasury. 
 
 "Comp- -'Comptroller"' means the comptroller general of patents, designs, 
 
 troller." ^j^^ trade marks : 
 
 "Prescribed." "Prescribed"' means prescribed by any of the schedules to this 
 act, or by general rules imder or within the meaning of this act : 
 
 "British "British possession" means any temtory or place situate within 
 
 possession." Jiej- 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 defined, are 
 deemed to Ije one British possession for the purposes of this act : 
 Legislature. " Legislature " includes any person or persons who exercise legis- 
 lative authority in the British possession ; and where there are local 
 legislatm-es as weU as a central legislature, means the central legisla- 
 ture only. 
 
 "Summary jn \^q application of this act to Ireland, -' summary couAiction " 
 
 appUed to ^ means a conviction under the Summary Jiuisdiction Acts, that is to 
 
 Ireland. 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, is.jl, and any act amending it. 
 
 SCHEDULES. 
 The First Schedule. 
 
 P'ORMS OF Applicatiox, A:c. 
 
 Fonnfi A, B .iml C of this first scheilulc arc altered Ly the substitution of 
 thoee given in the second sche<lu!e to the I'atent Rules, 1885.
 
 PATENTS, DE.SIGNS, AND TRADE MARKS ACT, 1883. 375 
 
 Form D. Scctiou 33. 
 
 Form of Patent. 
 
 Victoria, by the grace of God, of the Uniteil Kingdom of Great Britain and The addicts. 
 Ireland, queen, defender of the faith : To all to whom these presents shall come 
 greeting : 
 
 Whereas John Smith, oi 2d, Per}-i/ Street, Birmingham, in the county of First recital, 
 Waricick engineer, hath by his solemn declaration represented unto us that he 
 is in possession of an invention for •' Inq)rocniicnt-f in Sewing Machines,^'' that 
 he is the true and first inventor thereof, and tliat the same is not in use by any 
 other person to the best of his knowledge and belief : 
 
 And whereas the said inventor hath humbly prayed that we would be Second recital, 
 gi'aciously pleased to grant unto him (hereinafter together with his executors, 
 administrators, and assigns, or any of them, referred to as the said patentee) 
 our royal letters patent for the sole use and advantage of his said invention : 
 
 And whereas the said inventor hath by and in his complete specification Thii'd recital. 
 particularly tlescribed the nature of his invention : 
 
 And whereas we being willing to encourage all inventions which may be for Fourth recital, 
 the public good, are graciously pleased to condescend to his request : 
 
 Know ye, therefore, that we, of our especial grace, certain knowledge, and The grant, 
 mere motion, do by these presents, fm* us, our heirs and successors, give and 
 grant unto the said patentee our especial license, full power, sole privilege, and 
 authority, that the said patentee by himself, his agents or licensees, and no 
 others, may at all times hereafter during the term of years herein mentioned, 
 make, use, exercise, and vend the said invention within our united kingdom of 
 Great Britain and Ireland and Isle of Man, in such manner as to him or them 
 may seem meet, and that the said patentee shall have and enjoy the whole 
 profit and advantage from time to time accruing by reason of the said invention, 
 during the teim of fourteen years from the date hereunder written of these 
 presents : And to the end that the said patentee may have and enjoy the sole The pvohibi- 
 use and exercise, and the full benefit of the said invention, we do by these tion. 
 presents, for us, our heirs and successors, strictly command all our subjects 
 whatsoever within our united kingdom of Great Britain and Ireland and the 
 Isle of Man, that they do not at any time during the continuance of the said 
 term of fourteen years, either directly or indirectly make use of or put in 
 practice the said invention, or any part of the same, nor in anywise imitate the 
 same, nor make or cause to be made anj' addition thereto or subtraction therefrom, 
 whereby to pretend themselves the inventors thereof without the consent, 
 license, or agreement of the said patentee in writing under his hand and seal, 
 on pain of incurring such penalties as may be justly inflicted on such offenders 
 for their contempt of this our royal command, and of being answerable to the 
 patentee according to law for his damages thereby occasioned : Provided that The conditions, 
 these our letters patent are on this condition, that, if at any time during the 
 said term it be made to appear to us, our heirs or successors, or any six or more 
 of our privy council, that this our grant is contrary to law, or prejudicial or 
 inconvenient to our subjects in general, or that the said invention is not a new 
 invention as to the public use and exercise thereof within our united kingdom 
 of Great Britain and Ireland, and isle of 3Ian, or that the said patentee is not 
 the first and true inventor thereof within this realm as aforesaid, these our 
 letters patent shall forthwith determine, and be void to all intents and purposes, 
 notwithstanding anything hereinbefore contained : Provided also, that if the 
 said patentee shall not pay all fees by law required to be paid in respect of the 
 grant of these letters patent, or in respect of any matter relating thereto at the 
 time or times, and in manner for the time being by law provided ; and also if 
 the said patentee shall not supply or cause to be supplied, for our service all such 
 articles of the said invention as may be required by the oflicers or commissioners 
 administering any department of our service in such manner, at such times, and 
 at and upon such reasonable prices and terms as shall be settled in manner for the 
 time being by law provided, then, and in any of the said cases, these our letters 
 patent, and all privileges and advantages whatever hereby granted shall deter- 
 mine and become void notwithstanding anything hereinbefore contained : 
 Provided also, that nothing herein contained shall prevent the granting of 
 licences in such manner and for such considerations as they may by law be 
 granted : And Ir.stly, we do by these presents for us, our heirs and successors,
 
 376 APPENDIX. 
 
 The constiT.c- grant unto the said patentee that these our letters patent shall be construed in 
 ti<^Q- the most beneficial sense for the advantage of the said patentee. In witness 
 
 whereof we have caused these our letters to be made patent this 18 
 
 and to be sealed as of the 18 . 
 
 [Seal of Patent Office.] 
 
 Section 24. ThE SeCOXD SCHEDULE. 
 
 Feci on Ijixtrumentx for ohtaining Patents and ItcneuaJ. 
 
 (a.) I'j^ to scalhifj. £ s. rl. £ x. d. 
 
 On application for provisional protection . . . 1 U 
 
 On tiling complete specification 3 
 
 4 
 
 On filing complete specification with first application . . .400 
 
 (b.) Fvrther "before end of four ycarx from date of patent. 
 On certificate of renewal 50 
 
 (c.) Further before end of .lercn years, or in the ease of j:atcnts granted after 
 the commencement of this act, before the end of eight years from date of 
 jiatent. 
 
 On certificate of renewal 100 
 
 Or in lieu of the fees of £50 and £100 the following annual fees : — 
 
 £ s. d. 
 
 Before the expiration of the fourth vearfrom the date of the patent 10 
 
 fifth " ,, „ 10 
 
 ,, „ sixth „ „ 10 
 
 „ „ seventh „ „ 10 
 
 „ „ eighth „ „ 15 
 
 „ „ ninth ,. „ 15 
 
 „ „ tenth „ „ 20 
 
 „ „ eleventh „ „ 20 
 
 „ „ twelfth ,. „ 20 
 
 „ ,, thirteenth ,, „ 20 
 
 Section 113. The ThIRD SCHEDULE. 
 
 Enactments Repealed. 
 
 21 James 1, c. 3 (1623). — The Statute of Monopolies. In part ; ramclv, 
 sections 10, 11 and 12. 
 
 .-. k. G Will. A, c. 62 (1835) [In part].— The Statutory Declarations Act, 1835. 
 Ill part ; namely, .section 11. 
 
 5 ii C Will. 4, c. 83 (1835). — An act to amend the law touching letters patent 
 for inventions. 
 
 2 ic 3 Vict. c. 67 (1830). — An act to amend an act of the fifth and sixth years 
 of the reign of king William the Fourth, intituled "An Act to amend the law 
 touching letters patent fur inventions."' 
 
 5 ik 6 Vict. c. 100 (1842). — An act to consolidate and amend the laws rehiting 
 to the copyright of designs for oinanieiiting articles of manufacture. 
 
 6 ii 7 Vict. c. 05 (1843). — An act to amend the laws relating to the copyright 
 of designs. 
 
 7 &, H Vict. c. 60* (1814) [In part]. — .\n act f ^r amending an act passed in 
 
 • yotr. — Sects. 6 and 7 of this .ict arc rciic.ilcd by the Statute Law Revision 
 (No. 2) Act, 1874.
 
 PATENTS, DESIGNS, AND TEADE MARKS ACT, 1883. 377 
 
 the fourth year of the reign of his late majesty, intituled •' An act for the better 
 administration of justice in his majesty's privy council, and to extend its juris- 
 diction and powers." In part ; namely, sections 2 to 5, both included. 
 
 13 k 14 Vict. c. 104 (185U). — An act to extend and amend the acts relating 
 to the copyright of designs. 
 
 15 & 16 Vict. c. 83 (1852).— The Patent Law Amendment Act, 18.52. 
 
 16 & 17 Vict. c. 5 (1853).— An act to substitute stamp duties for fees on 
 passing letters patent for inventions, and to provide fur the iiurchase for the 
 public use of certain indexes of specifications. 
 
 16 & 17 A''ict. c. 115 (1853).— An act to amend certain provisions of the 
 Patent Law Amendment Act, 1852, in respect of the transmission of certified 
 copies of letters patent and specifications to certain offices in Edinburgh and 
 Dublin, and otherwise to amend the said act. 
 
 21 & 22 Vict. c. 70 (1858). — An act to amend the act of the fifth and sixth 
 years of her present majesty, to consolidate and amend the laws relating to the 
 copyright of designs for ornamenting articles of manufacture. 
 
 22 Vict. c. 13 (1859).— An act to amend the law concerning patents for 
 inventions with respect to inventions for improvements in instruments and 
 munitions of war. 
 
 24 & 25 Vict. c. 73 (1861). — An act to amend the law relating to the copyright 
 of designs. 
 
 28 & 29 Vict. c. 3 (18G.5).— The Industrial Exhibitions Act, 1865. 
 33 & 34 Vict. c. 27 (1870).— The Protection of Inventions Act, 1870. 
 
 33 & 34 Vict. c. 97 (1870).— The Stamp Act, 1870. In part ; namely, sections 
 65, and in the schedule the words and figures, " Certificate of the registration 
 of a design . . £5 0. And see section 65." 
 
 38 & 39 Vict. c. 91 (1875).— The Trade Marks Piegistration Act, 1875. 
 
 38 & 39 Vict. c. 93 (1875).— The Copyright of Designs Act, 1875. 
 
 39 & 40 Vict. c. 33 (1876).— The Trade Marks Itegistratioii Amendment Act. 
 1876. 
 
 40 & 41 Vict. c. 37 (1877).— The Trade Marks FiCgistration Extension Act, 
 1877. 
 
 43 & 44 Vict. c. 10 (1880).— The Great Seal Act, 1880. In part ; namely, 
 section 5. 
 
 45 & 46 Vict. c. 72 (1882). — The Revenue, Friendly Societies, and National 
 Debt Act, 1882. In part ; namely, section 16.
 
 378 APPENDIX. 
 
 PATENTS, ETC., ACT, 1885. 
 
 48 & 49 TiCT. c. 63. 
 
 All Ait to amend the Patents, Designs, a)td Trade Marks 
 Act, 1883. 
 
 Be it enacted by the queen's most excellent majesty, by and 
 with the advice and consent of the lords spiritual and temporal, 
 and commons, in this present parliament assembled, and by ihe 
 authority of the same, as follows : 
 
 1. This act shall be construed as one with the Patents, Designs, 
 and Trade Marks Act, 1883 (in this act refen-ed to as 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 l88"o. 
 
 Amendment of 2. AVliereas subsection two of section five of the principal act 
 sect. 5, sub- requires a declaration to be made by an applicant for a patent to the 
 ^'^' ^' effect in that subsection mentioned, and doubts have aiiseu as to the 
 
 nature of that declaration, and it is expedient to remove such doubts : 
 
 Be it therefore enacted that : 
 
 The declaration mentioned in subsection two of section five of 
 
 the principal act may be either a statutory declaration under the 
 
 Statutory Declarations Act, 1835, or not, as may be from time to 
 
 time prescribed. 
 
 Amendment of 3. Whereas Under the principal act, a complete specification is 
 sects. 8 and 0. required (by section eight) to be left within nine months, and (by 
 section nine) to be accepted within twelve months, from the date of 
 applicatidu, and a patent is required by section twelve to be sealed 
 within lifteen months from the date of application, and it is expedient 
 to empower the comptroller to extend in certain cases the said times : 
 Be it therefore enacted as follows : 
 
 A complete specification may be left and accepted within such 
 extended times, uot exceediug one month and three months respectively 
 after the said nine and twelve months respectively as the comptroller 
 may on the payment of the jirescribcd fee allow, and where such 
 extension of time has been allowed, a further extension of four 
 months after the said fifteen months shall be 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. 
 
 Abandoned 4. Wlicro an a])i)lication for a patent h;is been abandoned, or 
 
 application. ixicome Void, the specification or specifications and drawings (if any)
 
 PATENTS, ETC., ACT, 1885. 379 
 
 accompanying or left in connexion with such application, shall not 
 at any time be open to public inspection or be publislied ])y the 
 com})troller. 
 
 5. Whereas doubts have arisen whether under the principal act a Joiut patent, 
 patent may lawfully be granted to several persons jointly, some or one 
 
 of whom only are or is the true and first inventors or inventor ; be it 
 therefore enacted and declared that it has been and is lawful under 
 the principal act to grant such a patent. 
 
 6. In subsection one of section one hundred and three of the Ameudment of 
 principal act, the words " date of the application" shall be sub- ^*^'^*- J'^"^* •'*^'^- 
 stituted for the words " date of the protection obtained." ^'^'^^' ' 
 
 PATENTS, ETC., ACT, 1886. 
 49 & 50 Vict. c. 37. 
 
 An Act to remove certain donhts respecting the construction of 
 the Patents, Designs, and Trade Marks Act, 1883, so far as 
 respects the drawings by ivhicli specifications are I'equired to he 
 accompanied, and as respects exhibitions. 
 
 Whereas by section five of the Patents, Designs, and Trade 
 Marks Act, 1883, specifications, whether provisional or complete, 
 must be accompanied by drawings if required, and doubts have 
 arisen as to whether it is sufficient that a complete specification refers 
 to the drawings by which the provisional specification was accom- 
 panied, and it is expedient to remove such doubts : 
 
 Be it therefore enacted by the queen's most excellent majesty, by 
 and with the advice and consent of the lords spiritual and temporal, 
 and commons, in this present parliament assembled, and by the 
 authority of the same, as follows : 
 
 1. This act may be cited as the Patents Act, 1S8G, and shall be Title. 
 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 188G. 
 
 2. The requirement of sub-section four of section five of the Explanation of 
 Patents, Designs, and Trade Marks Act, 1 883, as to di-awings shall sect. 5, sub- 
 not be deemed to be insufficiently complied with by reason only that pi-i^'cipai act. 
 instead of being accompanied by drawings the complete specification 
 
 refers to the drawings which accompanied the provisional specifica- 
 tion. 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 tlie provisional specification. 
 
 3. Whereas by section thirty-nine of the Patents, Designs, and Extension of 
 
 sect. 39 of 
 principal act.
 
 SSO APPENDIX. 
 
 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 descrij^tion of the design, give the controller the 
 prescribed notice of his intention to do so : 
 
 And whereas it is expedient to provide for the extension of the 
 said sections to industrial and international exhibitions held out of 
 the united kingdom, be it therefore enacted as follows : 
 
 It shall be lawful for her majesty, by order in council, from time 
 to time to declare that sections thirty -nine and fifty-seven of the 
 Patents, Designs, and Trade Marks Act, 1883, or either of those 
 sections, shall apply to any exhibition mentioned in the order in 
 like manner as if it were an industrial or international exhibition 
 certified by the board of trade, and to provide that the exhibitor 
 shall be reheved from the conditions, specified in the said sections, of 
 giving notice to the controller of his intention to exhibit, and shall 
 be so relieved either absolutely or upon such terms and conditions as 
 to her majesty in council may seem fit. 
 
 PATENTS, ETC., ACT, 1! 
 
 (SO FAR AS THE SAME RELATES TO LETTERS PATEXT.) 
 51 & ')•> YlCT. C. 50. 
 
 An Act to amend the Patents, Vcsiqns, and Trade Marks 
 Act, 1883. [24th December, 1888.] 
 
 "Whereas it is expedient to amend the Patents, Designs, and 
 
 46&47Yict. Trade ]\Iarks Act, 1883, herein-after referred to as the principal act : 
 
 c. 67. ' Be it therefore enacted by the queen's most excellent majesty, by 
 
 and with the advice and consent of the lords si)iritual and temporal, 
 
 and commons, in this present parliament assembled, and by the 
 
 authority of the same, as follows : 
 
 Kcpstcrof 1. — n.) After the first day of .July one thousand eight hundred 
 
 patent ajjcnts. and eighty-nine a person shall not be entitled to describe himself as 
 
 a patent agent, whether by advertisement, by description on his place 
 
 of Imsiness, by any document issued by him, or otherwise, unless he 
 
 is registered as a patent agent in pursuance of this act. 
 
 (2.) ^I'he board of trade shall, as scion 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 iioard rc(juired for giving eifect to this 
 Pectioii, and the provisions of scctidii one hundred and one of the 
 ])rin(;ipal act Fhali apply to all ruji-s so made as if they were made in 
 pursuance of that section.
 
 PATENTS, ETC., ACT, IS 88. 381 
 
 (3.) Provided that eveiy person wlio proves to the satisfaction of 
 the board of trade that prior to tlie passiiii^^ of this act he had been 
 bond fide practisino- as a patent a,u,-cnt shall be entitled to be registered 
 as a patent agent in pnrsnance of this act. 
 
 (4.) If any person knowingly describes himself as a patent agent 
 in contravention of this section he shall be liable on summary 
 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 shall Amendments 
 
 be substituted, namely : — \pnijcs «">7 and 1021 of 4G &47 
 
 Vict. c. 57. 
 
 "7. (1.) — If the examiner reports that the nature of the inven- g. 7 as 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 the invention, the comptroller may refuse to accept the 
 apiilication, or require that the application, specification, or drawings 
 l)e 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 w^hen the retptirement 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 ac- 
 cepted, give notice thereof to the applicant. 
 
 " (5.) If, after an application for a patent has been made, but 
 before the patent thei'eon 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 sub-section 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 " shall disclosure of 
 be omitted. pvo?,\ir ° 
 
 examiners. 
 
 4. In sub-section one of section eleven of the principal act thes. 11, asto 
 words from " or on the ground of an examiner " to " a previous opposition 
 apphcation," both inclusive, shall be omitted, and there shall be mtfu"^ °^ 
 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 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 speci- 
 fication and the leaving of the complete specification." \_2Mge 11*)] 
 
 5. For sub-section ten of section eighteen of the principal act the s. I8, as to 
 following sub-section shall be substituted, namelv : — \ ixifin lo:)] amcndc<i 
 
 ° - L^ ^ J specifications.
 
 38? 
 
 APr'ENDIX. 
 
 s. 87, as to 
 entry of as- 
 signments, &c. 
 
 P. 88, as to 
 inspection. 
 
 f . 90, as to 
 rectification of 
 
 register. 
 
 Proceedings 
 of boai'd of 
 trade. 
 
 Jurisdiction 
 of Lancashire 
 palatine court 
 
 Conetruction o 
 principal act 
 
 Commencc- 
 m<nt of act. 
 
 .Short title. 
 
 '■(10.) The forcgoiii": 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." 
 
 21. In section eighty-seven of the principal act, after the words 
 " subject to," shall be added the words " the provisions of tliis act 
 and to." [^jjage 143] 
 
 22. Ill section eighty-eight of the principal act, after the words 
 " subject to," shall be added the words " the provisions of this act 
 and to." \_2Mge 143] 
 
 23. Ill section ninety of the principal act, after the words "of 
 the name of any person," shall be added the words " or of any other 
 particulars." [p«^e 143] 
 
 25. After section one hundred and two of the principal act the 
 following section shall be added and numbered 102a ; namely, 
 
 " (1.) All things required or authorised under this 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 boai'd, or to be 
 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. 
 
 "(3.) A certificate, signed by the president of the Itoard of trade, 
 that any order made or act doiie is the order or act of the board, 
 shall be conclusive evidence of the fact so certified." 
 
 £6. After section one hundred and twelve of the principal act the 
 following section shall be added and numbered 112a ; namely, 
 
 " The court of chancery of the county palatine of Lancaster shall, 
 with respect to any action or other proceeding in relation to trade 
 marks the registration whereof is applied for in the IManchester oflfice, 
 have the like jurisdiction under this act as her majesty's high court 
 of justice in England, and the expression ' the court ' in this act shall 
 be construed and have elfect accordingly. \_pc(ge 273] 
 
 " Provided that every decision of the court of ciiancery of the 
 county palatine of Lancaster in pursuance of this section shall be 
 subject to the like appeal as decisions of that court in other cases." 
 
 f 27. The principal act shall, as from the commencement of this 
 act, take effect subject to the additions, omissions, and substitutions 
 required by this act, but nothing in this act shall aflect the validity 
 of any act done, right acquired, or liability incurred before the 
 commencement of this act. 
 
 28. This act shall, except so far as is by this act otherwise 
 specially pi'ovided, commence and come into ()])eratiun on the first 
 (lay of .lanuary one thousand eight hundred and eighty-nine. 
 
 29. 'J'liis act may be cited as the Patents, Designs, and Trade 
 Marks Act, 1S8H, and this act and the Patents, Designs, and Trade 
 IMarks Acts, 1883 to 1880, may be cited collectively as the Patents, 
 Dcsi-nis. ami 'Vvw\r Marks Acts, 1883 to 1888.
 
 PATENTS RULES, 1883. 383 
 
 KULES AND PEACTICE OF THE PATENT 
 OFFICE AND BEFORE THE LAW OFFICERS 
 AND COMPTROLLER GENERAL. 
 
 PATENTS RULES, 1883. 
 
 By virtue of the provisions of the Patents, Designs, and Trade 
 Marks Act, 1883, the board of trade do hereby make the following 
 rules : — 
 
 Short Title, 
 
 1. These rules may be cited as the Patents Rules, 1883. siiort title. 
 
 Commencement. 
 
 2. These rules shall come into operation from and immediately Commence- 
 after the 31st day of December, 1883. ™eut. 
 
 Interpretation. 
 
 3. In the construction of these rules, any words herein used Interpretation, 
 defined by the said act shall have tlie meanings thereby assigned to 
 
 them respectively. 
 
 Fees. 
 
 4. The fees to be paid under the above-mentioned act, in addition Feas. 
 to the fees mentioned in the second schedule thereto, so far as it 
 relates to patents, shall be those specified in the list of fees in the 
 first schedule to these rules. 
 
 Forms. 
 5 and 6. Repealed by Patent Rules, 1885, infra.
 
 APPENDIX. 
 
 Hours of 
 business. 
 
 Agency. 
 
 Statement of 
 address. 
 
 Size, &c. of 
 documents. 
 
 Exercise of 
 fliscretionary 
 jiower b.v 
 comptroiler. 
 
 Notice of 
 hoarin''. 
 
 Notice by 
 applicant. 
 
 Comptroller 
 may rermire 
 otiifcmont, &c. 
 
 General. 
 
 7. The patent office sliall be open to the public every weekday 
 during the hours of ten and four, except on the days and times 
 following : — 
 
 Christmas Day. 
 Good Friday. 
 
 The day observed as her majesty's birthday. 
 The days observed as days of public fast or thanksgiving, 
 or as holidays at the Bank of England. 
 
 8. An application for a patent must be signed by the applicant, but 
 all other communications between the applicant and the comptroller 
 and all attendances by the applicant upon the comptroller may be 
 made bv or through an agent duly authorised to the satisfaction of 
 the comptroller, and if he so require resident 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 the united 
 kingdom. 
 
 10. All documents and copies of documents 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 
 chai-acters 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 two 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 documents shall at any time be left, if 
 required by the comptroller. 
 
 11. Before exercising any discretionary power given to the 
 comptroller by the said act 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 think fit, to the 
 a])plicant of the time when he may be heard personally or by his 
 agent before the comptroller. 
 
 12. "Within five days from the date when such notice would be 
 delivei-ed in the ordinary course of post, or such longer time as the 
 comptroller may appoint in such notice, the applicant shall notify 
 to the comptrijlier whether or not he intends to be heard upon the 
 matter. 
 
 13. "Wlicther the ajiplicant desires to be heard or not, the 
 comi)'trollcr may at any time require him to submit a statement in 
 writing within a time to be notified l)y the comptroller, or to attend 
 beforeliim and make oral ex[)lanati()ns with respect to such matters 
 as the comptroller m-'y require.
 
 PATENTS RULES, 1883. 385 
 
 14. The decision or determination of tlie comptroller in the Decision to be 
 exercise of any such discretionary power as aforesaid shall be notified parties! ^" 
 by him to the applicant, and any other person aflFected thereby. 
 
 15. The term "applicant " in Rules 11, 12, and 13, shall include Definition of 
 an applicant whose specification bears a title the same as or similar to " '^PP^i*^^"*^-" 
 that of the specification of a prior applicant, and has been reported 
 
 on by the examiner. 
 
 16. Such prior and second applicant respectively may attend the Prior and 
 hearing of the question whether the invention comprised in both ap- ^''"""^ ■'^PP^- 
 
 T i^- ■ L^ 1 , ■ 1 1 n 1 iM ■ ^ cant may 
 
 plications is the same, but neither party sliall be at liberty to inspect attend hearing. 
 the specification of the other. 
 
 17. Any person desirous of exhibiting an invention at an industrial industrial or 
 or international exhibition, or of publishing any description of the international 
 invention during the period of the holding of the exhibition, or of ^'^"^^^t^''"^- 
 using the invention for the purpose of the exhibition in the place 
 
 where the exhibition is held, shall, after having obtained from the 
 Board of Trade a certificate that the exhibition is an industrial or in- 
 ternational one, give to the comptroller seven days' notice of his 
 intention to exhibit, publish, or use the invention, as the case may be. 
 
 For the purpose of identifying the invention, in the event of an 
 application for a patent being subsequently made, the applicant shall 
 furnish to the comptroller a brief description of his invention, ac- 
 companied, if necessary, by drawings, and such other information as 
 the comptroller may in each case require. 
 
 18. Any document for the amending of which no special provision Power of 
 
 is made by the said act may be amended, and any irregularity in ainendment, 
 procedure, which in the opinion of the comptroller may be ob\'iated 
 without detriment to the interests of any person, may be corrected, if 
 and on such terms as the comptroller may think fit. 
 
 19. Any application, notice, or other document authorised or re- Documents 
 quired to be left, made, or given at the patent oflBce or to the comp- ^3' post. 
 troller, or to any other person under these Eules, may be sent by a 
 prepaid letter through the post, and if so sent shall be deemed to have 
 
 been left, made, or given respectively at the time when the 
 letter containing the same would be delivered in the ordinary course 
 of post. 
 
 In proving such service or sending, it shall be sufiicient to prove 
 that the letter was properly addi'essed and put into the post. 
 
 20. Affidavits may, except where otherwise prescribed by these Affidavits. 
 rules, be used as evidence in any proceedings thereunder when sworn 
 
 to in any of the following ways, viz. : — 
 
 (1.) In the United Kingdom before any person authorised to ad- 
 minister oaths in the Supreme Court of Judicature or before a 
 justice of the peace for the county or place where it is sworn or 
 made. 
 (2.) In any place in the British dominions out of the United 
 Kingdom before any court, judge, or justice of the peace or 
 any person authorised to administer oaths there in any court. 
 T. C C
 
 SbQ 
 
 APPENDIX. 
 
 Statutory 
 declarations. 
 
 (3.) In any place out of the British dominions before a British 
 minister, or person exercising the functions of a British 
 minister, or a British consul, vice-consul, or other person 
 exercising the functions of a British consul, or a notary pul)lic, 
 or before a judge or magistrate. 
 
 21. Where any statutory declaration prescribed by these Rules, or 
 used in any proceedings thereunder, is made out of tlie United King- 
 dom, the words, " and by virtue of the Statutory Declarations Act, 
 1835," must be omitted, and the declaration shall (unless the context 
 otherwise requires) be made in the manner prescribed in Rule 20, 
 sub-section (3). 
 
 Application with Provisional or Complete Specification. 
 
 Order of 
 recording 
 applications. 
 
 AppUcatinu 
 for separate 
 patents hy way 
 of amendment. 
 
 Application by 
 represenUitive 
 of deceased 
 inventor. 
 
 Notice and 
 advcrtisf-mcnt 
 of acceptan<e. 
 
 Iiivpi ctioii on 
 ;icrcptan'c of 
 •■omiilctr- 
 fipuciticution. 
 
 22. Applications for a patent sent by prepaid letter through the 
 post shall, as far as may be practicable, be opened and numbered in 
 the order in which the letters containing the same have been respec- 
 tively delivered in the ordinary course of post. 
 
 Ap])lications left at the patent office otherwise than through the 
 post shall l)e in like manner numbered in the order of their receipt at 
 the patent office. 
 
 23. AVhere a person making application for a patent includes 
 therein by mistake, inadvertence, or otherwise, more than one inven- 
 tion, he may, after the refusal of the comptroller to accept such 
 application, amend the same so as to apply to one invention only, and 
 may make application for separate patents for each such invention 
 accordingly. 
 
 Every such application shall bear the date of the first application, 
 and shall, together therewith, be proceeded with in the manner 
 prescribed by the said act and by these rules, as if every such 
 application had been originally made on that date for one invention 
 only. 
 
 24. An application for a patent by the legal representative of a 
 person wlio has died possessed of an invention shall be accompanied 
 by an official copy of or extract from his will, or the letters of ad- 
 ministn^tion granted of his estate and effects in proof of the appli- 
 cant's title as such legal representative. 
 
 25. On the acceptance of an application with a provisional or 
 complete specification the comptroller shall give notice thereof to the 
 api)licant, and shall advertise such acceptan(;e in the official journal 
 ol the patent office. 
 
 26. Upon the publication of such advertisement of acceptance in 
 the case of an apj)lication with a complete specification, the apjjlica- 
 tion and Kpecitication oi- specirK;ation8 with the drawings (if any) 
 may be inspected at the jiatent office upon })aynient of the prescribed 
 fee.
 
 PATENTS KULE8, 1883. '387 
 
 Application on communication from Abroad. 
 
 27. An application for a patent for an invention communicated Commuiii-a- 
 from abroad shall be made in the form A 1 set forth in the Second *\^",,[Ji"''' 
 Schedule hereto. 
 
 (Rules 28, 29, 30, and 31 repealed, and other rules substituted by Patent 
 Rules, 1886, infra.) 
 
 Opposition to Grants of Patents. 
 
 32. A notice of opposition to the grant of a patent shall state the Notice of 
 ground or grounds on which the person giving such notice (herein- opposition, 
 after called the opponent) intends to oppose the grant, and shall be 
 signed by him. Such notice shall state his address for service in the 
 united kingdom. 
 
 33. On receipt of such notice a copy thereof shall be furnished by Copv for 
 the comptroller to the applicant. "^^ ^^^" ' 
 
 34. Where the ground or cue of the grounds of opposition is tliat Particulars of 
 the invention has been patented in this country on an application of P™^' P"^™^- 
 prior date, the title, number, and date of the patent granted in such 
 
 prior application shall be specified in the notice. 
 
 35. Within 14 days after the expiration of two months from the Opponent's 
 date of the advertisement of the acceptance of a complete specifica- ^^^ ^^^^'^' 
 tion, the opponent shall leave at the patent office statutory declara- 
 tions in support of his opposition, and deliver to the applicant a list 
 thereof. 
 
 36- Within 14 days fi-om the delivery of such list the applicant Applicant's 
 shall leave at the patent office statutory declarations in answer, and ^'^'idenci-. 
 deliver to the opponent a list thereof, and within seven days from such 
 delivery the opponent shall leave at the patent office his statutory Evidence in 
 declarations in reply, and deliver to the applicant a list thereof. Such ^■*'P'>"- 
 last-mentioned declarations shall be confined to matters strictly in 
 reply. 
 
 Copies of the declarations mentioned in this and the last preceding 
 rule may be obtained either from the patent office or from the opposite 
 party. 
 
 37. No further evidence shall be left on either side except by leave Closing of 
 of the comptrollei- upon the writteu consent of the parties duly notified e^^ence. 
 to him, or by special leave of the comptroller on application made to 
 
 him for that purpose. 
 
 38. Either party making such application shall give notice thereof 
 to the opposite party, who shall be entitled to oppose the application. 
 
 39. On the completion of the evidence the comptroller shall appoint Notice of 
 a time for the hearing of the case, and shall give to the parties seven ht'ai""!?- 
 days' notice at the least of such appointment. 
 
 c c 2
 
 388 APPENDIX. 
 
 Disallowance 40. Oil the hearing of tlie case no opposition sliall be allowed in 
 cem''°*cases "^ ^'^^P®^'' ^^ anj gi'ouutl not stated in the notice of opposition, and 
 where the gi'ound or one of the grounds is that the invention has 
 been patented in this country on an application of prior date, the 
 opposition shall not be allowed upon such ground unless the title, 
 number, and date of the patent granted on such prior application shall 
 have been duly specified in the notice of opposition. 
 
 If it appears to tlie Comptroller-General that the specification of the 
 applicant should be amended, he may make such amendment a con- 
 dition of the patent being sealed, such amendment will be made so as 
 to limit the claim, and to make it clear that that which is sought to 
 be claimed is not the same invention as that referred to in the speci- 
 fication which forms the ground of opposition (a) ; and when the op])o- 
 sition is on the ground that the invention was obtained from the 
 opponent by the applicant, the Comptroller-General or Law Officer 
 will sometimes order the patent to be sealed in both names {b), or one 
 party to execiite an assignment of a share to the other as a condition 
 of sealing (c). 
 
 When it appears that the applicant's invention contains really an im- 
 provement upon the opponent's invention, the Law Offictr as a con- 
 dition of sealing the applicant's patent, will require a distinct state- 
 ment to be inserted in the specification that it is oul}' for an improve- 
 ment upon the opponent's patent, giving the date and number of such 
 patent (d). 
 
 Decision to be 4^. The decision of the comi)troller in the case shall be notified by 
 J-uS ^"^ ^1™ to the parties. 
 
 When the Comptroller-General requires an amendment as a condition of 
 sealing, the time for appealing will run from the date when the 
 amendment is accepted, and not from the date of the notification that 
 such amendment will be required (e). 
 
 Certificates of Payment or Renewal. 
 
 Payment of 42. If a patentee intends at the expiration of the fourth or eighth 
 
 looVf'^''^^*^ y®^^ from the date of his patent to make the prescribed payment for 
 
 tinuiince of " keeping the same in force, he shall seven days at least before such ex- 
 
 PMtent. piration give notice to the comptroller of such intention, and shall 
 
 before the expiration of such fourth or eighth year, as the case may 
 
 be, leave at the patent office a form of certificate of payment, duly 
 
 stamped, subject as hereinafter provided, with the prescribed fee of 
 
 50/. or 100/., as the case may be. 
 
 Xa to patents 43. In the case of patents granted before the commencement of the 
 conlmenJl-**'^^ Said act, the above rule shall be read as if the words "seventh year " 
 iiient of act. Were therein written instead of the words " eighth year." 
 
 I'ayment of _ 44_ Jf the patentee intends to pay annual fees in lieu of the above 
 
 anntiiil fees in 
 Vu-n of oO/. and 
 
 ^^*'- (a) ClMiidlcr's Palmt, Griffin P. C. Griffin P. C. 284. 
 
 270 ; Cooper and Ford's Patent, Griffin {d) Hosk ins Patent, Grifiln P. C. 29L 
 
 P. C. 275. (e) Chandlers Patent, Griffin P. C. 
 
 [b) Eadie's Patent, Griffin P. C. 279. 270 ; Cooper and Ford's Patent, Griffin 
 
 (c) Evan^ and Olvjay's Patent, Griffin P. C. at p. '276. 
 P. C. 279 ; and Oarthwaite's Paten/.,
 
 PATENTS RULES, 1883. 389 
 
 mentioned fees of 50/. and 1007., he shall seven days at least before 
 the expiration of the fourth and each succcedinoycar durino-the term 
 of the patent, until and inclusive of the 13th year thereof, give notice 
 to the comptroller of such intention, and shall, before the expiration 
 of such respective periods as aforesaid, leave at the patent office a form 
 of certificate of payment, duly stamped with the fee prescribed to be 
 paid at such periods respectively. 
 
 45. On due compliance with these rules, and as soon as may be Cei-tificatc of 
 after such respective periods as aforesaid, or any enlargement thereof r'ljment. 
 respectively duly granted, the comptroller shall give to the patentee 
 
 a certificate that the prescribed payment has been duly made. 
 
 Enlargement of Tbie. 
 
 46. An application for an enlargement of the time for making a Enlargement 
 prescribed payment shall state in detail the circumstances in which "^'^ *-™'' '"*' 
 the patentee by accident, mistake or inadvertence has failed to make ''' " 
 
 such payment, and the comptroller may require the 23atentee to sulj- 
 stantiate by such proof as he may think necessary the allegations 
 contained in the application for enlargement. 
 
 47. I'lie time prescribed by these rules for doing any act, or taking in other cases, 
 any jjroceeding thereunder, may be enlarged by the comptroller if he 
 
 thiidv fit, and ui)on such notice to other parties, and proceedings 
 thereon, and upon such terms, as he may direct. 
 
 Amendment of Specification. 
 
 48. A request for leave to amend a specification shall be signed Request for 
 by the applicant or patentee and accompanied by a copy of the *^''*^*^ oamenc. 
 original specification and drawings, showing in red ink the proposed 
 amendment, and shall be advertised by publication of the request and Advertisement, 
 the nature of the proposed amendment in the official journal of the 
 
 patent office, and in such other manner (if any) as the comptroller 
 may in each case direct. 
 
 49. A notice of opposition to the amendment shall state the Notice of 
 ground or grounds on which the person giving such notice (herein- opposition. 
 after called the opponent) intends to oppose the amendment, and 
 
 shall be signed by him. Such notice shall state his address for 
 service in the united kingdom. 
 
 50. On receipt of such notice a copy thereof shall be furnished by Copv tor tiie 
 the comptroller to the applicant or patentee, as the case may be '>i'pi"'i>nt- 
 (hereinafter called the applicant). 
 
 51. Within fourteen days after the expiration of one month from Opponent's 
 the first advertisement of the application for leave to amend, the f^^'^ie^f''- 
 opponent shall leave at the patent office statutory declarations in 
 support of his opposition and deliver to the applicant a list thereof 
 
 52 Upon such declarations being left, and such list being delivered, Fiirther 
 " ^ D ' o ;- proceedings.
 
 390 
 
 APPENDIX, 
 
 Decision to be 
 notiticd to 
 parties. 
 
 Kequiiemeuts 
 thereon. 
 
 the provisions of Rules 36, 37, 38, and 39 shall apply to the case, and 
 the further proceedings therein shall be regulated in accordance with 
 such provisions as if they were here repeated. 
 
 53. The decision of the comptroller in the case shall be notified l^y 
 him to the parties. 
 
 54. Where leave to amend is given the applicant shall, if the 
 comptroller so require, and within a time to be limited by him, leave 
 at the patent office a new specification and drawings as amended, to 
 be prepared in accordance with Rules l(j, 28, and 29. 
 
 Leave by order 55. Where a request for leave to amend is made by or in pursu- 
 of court. ance of an order of the court or a judge, an official or verified copy of 
 
 the order shall be left with the request at the patent office. 
 
 In Codd's Patent (/) the Comptroller-General held proceedings irregular 
 ab initio, because the order of the court had not been filed pursuant 
 to this rule (there was another objection) ; the application to amend 
 was dismissed. 
 
 Advertisement 56. Every amendment of a specification shall be forthwith adver- 
 of amendment, j^jg^^i \)j ^he comptroller in the official journal of the patent office, and 
 in such otlier manner (if any) as the comptroller may direct. 
 
 Petition for 
 compulsory 
 srant of 
 li<'ons('s. 
 
 To l)c left with 
 cvidenre at 
 patent oftice. 
 
 Directions as 
 to furtlicr 
 ]>n)(ce<linf;s 
 unless petition 
 refused. 
 
 I'l'ocedine. 
 
 J'elition<'i's 
 evidcnii f. 
 
 J'atcntec's 
 pvid«'ni<;. 
 
 Compulsory Licenses. 
 
 57. -^ petition to the board of trade for an order upon a patentee 
 to grant a license shall show clearly the nature of the petitioner's 
 interest, and the ground or grounds upon which he claims to be en- 
 titled to relief, and shall state in detail the circumstances of the case, 
 the terms upon which he asks that an order may be made, and the 
 purport of such order. 
 
 58. The petition and an examined copy thereof shall be left at the 
 patent office, accompanied by the affidavits, or statutory declarations, 
 and other dociunentary evidence (if any) tendered by the petitioner 
 in proof of the alleged defiudt of the patentee. 
 
 59. Upon perusing the petition and evidence, unless the boaixl of 
 trade shall be of opinion that the order sliould be at once refused, they 
 may require the petitioner to attend before the comptroller, or other 
 pei'son or ]jers<)ns appointed by them, to receive his or their directions 
 as to fui'tlicr ])roceedings upon the petition. 
 
 60. If and when a prima facie case for relief has been maile 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 piiteiitee copies of the ])etition and of the alfidavits or statutory 
 (lecliiralious and ntlicr (l(»cuini'nt;iry evidence (if any) tendered in 
 sn|)port tlicnMil'. 
 
 Ql. W'itliiii I'DurLccMi days after the day of sui^h delivery the 
 patentee shall leave at the j);iteiit ollice his allida\iLs or statut(.)ry 
 
 (/) (Jrillin r. C. 30G.
 
 PATENTS RULES, 1883. 391 
 
 declarations in opposition to the petition, and deliver copies thereof 
 to the petitioner. 
 
 62. The petitioner within fourteen days from such delivery shall Evidence m 
 leave at the patent office his affidavits, or statutory declarations in '"'-'P^^'" 
 reply, and deliver copies thereof to the petitioner ; such last men- 
 tioned affidavits or declarations shall he confined to matters strictly 
 
 in reply. 
 
 63. Subject to any further directions which the board of trade may Further 
 give, the parties shall then be heard at such time, before such person proceedings, 
 or persons, in such manner, and in accordance with such procedure as 
 
 the board of trade may, in the circumstances of the case, direct, but 
 so that full opportunity shall be given to the patentee to show cause 
 against the petition. 
 
 Register of Patents. 
 
 64. Upon the sealing of a patent the comptroller shall cause to be Entry of grant, 
 entered in the register of patents the name, address, and description 
 
 of the patentee as the grantee thereof, and the title of the invention. 
 
 65. Where a person becomes entitled to a patent or to any share Request for 
 or interest therein, by assignment either throughout the united ^"^''^ ''^ , 
 
 SUDSPQilf lit 
 
 kingdom aiid the Isle of Man, or for any place or places therein, or proprietorship. 
 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 addi'essed to the comptroller, and left at the patent office. 
 
 66. Such request shall in the case of individuals be made and Signature of 
 signed by the person requiring to be registered as proprietor, or by request, 
 his agent duly authorised to the satisfaction of the comptroller, and 
 
 in the case of a body corporate by their agent, authorised in like 
 manner. 
 
 67. Every such request shall state the name, address, and descrip- Particuhirs to 
 tion of the person claiming to be entitled to the patent, or to any '^® stated in 
 share or interest therein, as the case may be (hereinafter 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. 
 
 68. Every assignment and every other document containing, giving Troduetion of 
 effect to, or being evidence of, the transmission of a patent or affecting documents of 
 the proprietorship thereof as claimed by such request, except such proof"*"' 
 documents as are matters of record, shall be produced to the comp- 
 troller, 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 c^^^p 
 troller.
 
 392 
 
 APPENDIX. 
 
 pXnt office ^^' 7^^^^'^ s^^^^ ''^^so be left with the request an examined copy of 
 
 the assignment or other document above required to be produced. 
 
 As to a document which is a matter of record, an official or 
 certified copy shall be left with the request in lieu of an examined 
 copy. 
 
 Body corporate. 70. A body Corporate may be registered as proprietor by its 
 corporate name. 
 
 71. Where an order has been made by her majesty in council for 
 the extension of a patent for a further term or for the grant of a new 
 patent, or where an order has been made by the court for the revoca- 
 tion of a patent or the rectification of the register under section 90 
 of the said act 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 otherwise be duly entered in the register, as the case may be. 
 
 72. Upon the issue of a certificate of payment under rule 45, the 
 comptroller shall cause to be entered in the register of patents a 
 
 Entry of 
 orders of the 
 pri\7- council 
 or of the court. 
 
 Entry of 
 pajTnent of 
 
 certificate"^ °^ record of the amount and date of payment ol" the fee^ on such 
 certificate. 
 
 Entry of 
 failure to 
 pay fees. 
 
 Entry of 
 licenses. 
 
 Hours of 
 inspection of 
 register. 
 
 73. If a patentee fails to make any i^rescribed payment within the 
 prescribed time or any enlargement thereof duly granted, such failure 
 shall be duly entered in the register. 
 
 74. An examined copy of every license granted under a patent 
 shall be left at the parent office by the licensee, with a request that 
 a notification thereof may be entered in the register. The licensee 
 shall cause the accuracy of such copy to be certified as the comp- 
 troller may direct, and the original license shall at the same time be 
 produced and left at the patent office if required for further 
 verification. 
 
 75. The register of patents shall be open to the inspection of the 
 public on every week day between the hours of ten and four, except 
 on the days and the times following : — 
 
 (a) Christmas Day, Good Friday, the day observed as her majesty's 
 
 birthday, days observed as days of public fast or thanksgiving, 
 and days observed as holidays at the Bank of England ; or 
 
 (b) Days which may from time to time be notified by a placard 
 
 posted in a conspicuous place at the patent office ; 
 
 (c) Times when the register is required for any purpose of official 
 
 use. 
 
 Certified copies 76. Certified copies of any entry in the register, or certified copies 
 of documents, ^f^ (^j, extracts from, patents, si)ecificationK, disclaimers, affidavits, 
 statutory declarations, and otiier public documents in the patent 
 offii:c, or of or from i-egisters and other books kept there, may be fur- 
 nished l)y the conq)troller on payment of" the prescribed fee.
 
 PATENTS RULES, 18 S3. 393 
 
 Power to Dispense with Evidence, &c. 
 
 77. Where, under these rules, any person is required to do any act 
 or thing, or to sign any document, or to make any declaration 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 fi'om any reasonable cause such person is unable to 
 do such act or thing, or to sign such document, or make such de- 
 claration, or that such document or evidence cannot be produced or 
 left as aforesaid, it shall be lawful for the comptroller, with the 
 sanction of the board of trade, and upon the production of such 
 other evidence, and subject to such terms as they may think fit, 
 to dispense with any such act or thing, document, declaration, or 
 evidence. 
 
 Eepeal. 
 
 78. All general rules made by the lord chancellor, or by any other Repeal, 
 authority, under the Patent Law Amendment Acts, and in force on 
 
 the 31st day of December, 1883, shall be and they are hereby repealed 
 as from that date, without prejudice, nevertheless, to any application 
 then pending. 
 
 Dated the 21st day of December, 1883. 
 
 (Signed) J. CHAMBERLAIN, 
 
 President of the Board of Trade,
 
 394 APPENDIX. 
 
 EULES REGULATING THE PRACTICE AND 
 PROCEDURE 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 act, he shall wi thin 14 days fi'om the date of the decision 
 appealed against file in the palent "office a notice of such his 
 intention. 
 
 When an amendment has been ordered by the comptroller-general as a 
 condition of sealing, the time for appeal will run from the date when 
 the amendment has been accepted, and not from the date of the 
 decision requiring amendment to be made (a). 
 
 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 intendiug to appeal to the law officers' 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 forth- 
 with transmit to the law officers' 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 
 lea^•e upon application to the law officer. 
 
 VI. Seven days' notice, at least, of the time and place appointed 
 for the hearing of any appeal, shall be given by the law officers' clerk, 
 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 comptroller and 
 the appellant ; and, when there has been an opposition before the 
 compti-ollei", to the opponent or opponents ; and, when the comp- 
 troller has refused to seal a patent on the ground that an applica- 
 ti(Mi for a patent for the same invention is pending, to the prior 
 uppli(;aiit. 
 
 (a) Chatuller's Patent, GrifTin P. C. 270 ; Coo2>cr and Ford's Patoit, Griffiu 
 P. C. at p. 276.
 
 RULES RE(iULATINO PROCEDURE ON APPEAL. 395 
 
 VIII. The evidence used on appeal to the h\w offi(;er shall be the 
 same as that used at the hearing before the comptroller ; and no 
 further evidence shall be given, save as to matters which have 
 occurred or come to the knowledge of either party, after the date of 
 the decision appealed against, except with the leave of the law officer 
 upon application for that purpose. 
 
 Where upon the lieaiing application before the law officer application 
 was made by the opponent to amend by putting in another specifica- 
 tion which it was alleged anticipated the a]ii)lication, leave refused 
 upon the ground that the application was to oppose ujion new grounds, 
 and not merely to adduce further evidence {h). 
 
 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 declai'ation, 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. 
 
 Summonses under this rule are issued by the law officei-'s clerk. 
 
 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 iix the amount of such costs, and if he shall 
 not think tit to fix the amount thereof, he shall direct by whom and 
 in what manner the amount of such costs shall be ascertained. 
 
 As a general rule costs will follow the event, even though it appears 
 dou))tful whether there is really any material difference between the 
 invention sought to be patented and that upon which the opposition 
 ' is based (c). The law officer in a simple case will generally fix the 
 
 costs at 5 guineas {d}, in other cases at 10 guineas ; but when wit- 
 nesses have been brought from a distance the costs will be ordered to 
 be taxed. This was done in Mcllwain's application by Clark, S.-G., \ 
 on Nov. 19, 1887 (not reported). And where the appeal is against a 
 decision of the comptroller-general, and there is no opposition. Sir ) 
 R. Webster laid it down that the comptroller-general should, except 
 under very special circumstances, neither give nor receive costs (e). 
 
 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 re- 
 spects, 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. 
 
 (b) In re Bailey's Patent, Griffin at p. 274 ; Stiibbs' Patent, rule laid 
 P. C. at p. 270. down by Webster, A.-G., Griffin P. C. 
 
 (c) Cochrane s Patent, Griffin P. C. 298 ; Anderton's Patent, 2 Griffin P. C. 
 304. 25. 
 
 {d) Cummincfs Patent, Griffin P. C. (e) Lake's Patent, 2 Gvi^n P. C. 16. 
 
 277 ; Chandler's Patent, Griffin P. C.
 
 396 
 
 APPENDIX. 
 
 XIV. Any notice or other document required to be given to the 
 law officers' clerk, under these rules, may be sent by a prepaid letter 
 through the post. 
 
 Henry .James, A.-G. 
 
 Farrer Herschell, S.-G. 
 
 Revocation. — When it is desired to obtain the attorney-general's 
 authority under sect. 26, it is necessary to send the following papers 
 to the patent clerk to the law officers : — (1) ]\Iemorial to the attorney- 
 general asking for his authority, and stating all the circumstances ; 
 {2) Statutory declaration verifying the statements in the memorial ; 
 (3) Two copies of the proposed petition and of the particulars pro- 
 posed to be delivered with it, under sect. 26 (5) ; (4) Certificate of a 
 barrister that the petition is proper to be authorized by the attorney- 
 general ; (5) Certificate by a solicitor that the proposed petitioner is 
 a proper person to be a petitioner, and that he is competent to answer 
 the costs of all proceedings in connection with the petition if unsuc- 
 cessful. 
 
 The attorney-general sometimes gives or refuses his authority ex 
 parte. In some cases he directs notice to be given to the patentee, 
 and directs the parties to be heard before him. 
 
 FIRST SCHEDULE. 
 
 List of Fees payable on and in connexion with Letters 
 
 Patent. 
 
 Up to Sealing. 
 
 £ 
 
 1. On application for provisional protection . 1 
 
 2. On filing complete specification . . 3 
 
 d. 
 
 (J 
 
 
 or 
 
 6. 
 
 On filing complete specification with first application 
 
 On appeal from comptroller to law officer. By appel- 
 lant ......... 
 
 On notice of opposition to grant of patent. By 
 opponent 
 
 On hearing by comptroller. By applicant and by 
 opponent respectixely ..... 
 
 7. On application to amend sj)ecification : — 
 
 Up to sealing. By appHcant . . ... 
 
 8. After scaling. By patentee .... 
 
 9. On notice of opposition to ;imendment. By opponent 
 10. On hearing ])y compd-oller. By ajiplicant and by 
 
 opponent i-espectively ..... 
 
 On application to amend specification during action 
 
 or proceeding. By patentee ... . . 
 On ajjplicati(jn to the board of trade for a compulsory 
 
 license. By person applying .... 
 13. On opposition to grant of compulsory license. By 
 
 patentee 
 
 11 
 
 12 
 
 £ s. d. 
 
 4 
 
 4 
 
 3 
 
 10 
 
 10 
 
 1 10 
 
 
 
 3 
 
 
 
 10 
 
 
 
 1 
 
 
 
 5 
 
 6
 
 LIST OF FEES. 
 
 897 
 
 £ s. d. 
 
 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 
 
 or in lieu of the fees of 50?. and 100/., the follow- 
 ing annual fees : — 
 IG. Before the expiration of the 4th year from the date 
 
 of the patent 10 
 
 17. „ „ 5th „ „ . 10 
 
 18. „ „ Gth „ „ . 10 
 
 19. „ „ 7th „ „ . 10 
 
 20. „ „ 8th „ „ . 15 
 
 21. „ „ 9th „ „ . 15 
 
 22. „ „ 10th „ „ . 20 
 
 23. „ „ 11th „ „ . 20 
 
 24. „ „ 12th „ „ . 20 
 
 25. ,, „ 13th „ „ . 20 
 On enlargement of time for payment of renewal 
 
 fees : — 
 
 26. Not exceeding 1 month . . . . . .300 
 
 27. „ 2 months 7 
 
 28. „ 3 months 10 
 
 29. For every entry of an assignment, transmission, 
 
 agreement, license, or extension of patent . . 10 
 
 30. For duplicate of letters patent . . . each 2 
 
 31. On notice to comptroller of intended exhibition of a 
 
 patent under sect. 39 . . . . . . 10 
 
 32. Search or inspection fee each 10 
 
 33. For office copies . . . every 100 words 
 
 (but never less than one shilling) 4 
 
 34. „ of drawings, cost according to agree- 
 ment. 
 
 35. For certifying office copies MSS. or printed . each 10 
 
 36. On request to comptroller to correct a clerical error . 5 
 
 37. For certificate of comptroller under sect. 96 . .050 
 
 38. For altering address in register . . . ..050 
 
 (Signed) J. CHAMBERLAIN", 
 
 President of the Board of Trade. 
 
 21st December, 1883. 
 
 Approved : 
 
 4th December, 1883. 
 
 (Signed) Charles C. Cotes, 
 
 Herbert J. Gladstone, 
 Lords Commissioners of 
 
 Her Majesty's Treasury.
 
 398 APPENDIX. 
 
 THE SECOND SCHEDULE. 
 Forms. 
 
 PAGE 
 
 A -Form of Application for Patent . ^ g^^ g^^^^^ 
 
 Al. — „ „ „ communicated « i. j i j. 
 
 from abroad i S^^^d^l^ to 
 B. — „ Provisional Specification . . .1 ^^tent Rules, 
 C— „ Complete „ . . . J 1985. 
 
 D. — „ Opposition to Grant of Patent . . . .399 
 E. — „ Application for Hearing by Comptroller . . .399 
 F. — „ „ to amend Specification or Drawings . 399 
 
 G. — „ Opposition to Amendment of Specification or 
 
 Drawings ........ 400 
 
 H. — „ Application for Compulsory Grant of License . 400 
 
 Hi. — „ Petition for Compulsory Grant of Licenses . . 400 
 
 I. — „ Opposition to Compulsory Grant of License . . 401 
 
 J. — „ Application for Certificate of Payment or Renewal 402 
 
 K. — „ Application for Enlargement of Time for Payment 
 
 of Renewal Fee 402 
 
 L. — „ Request to enter Name upon the Register of 
 
 Patents 403 
 
 M, — „ Request to enter Notification of License in Register 403 
 
 N. — „ Application for Duplicate of Letters Patent . . 404 
 
 0. — ,, Notice of Intended Exhibition of Unpatented 
 
 Invention 40 c 
 
 P. — ,, Request for Correction of Clerical Error . . . 404 
 
 Q. — „ Certificate of Comptroller 405 
 
 R. — „ Notice for Alteration of an Address in Register . 405 
 
 S. — „ Application for Entry of Order of Privy Council in 
 
 Register ....... 405 
 
 T. — „ Appeal to Law Officer 406 
 
 U. — See Second Schedule to Patent Rules, 1885.
 
 FORMS. 399 
 
 Patents, Designs, and Trade Marks Act, 1883. 
 [patent.] Form D. 
 
 Form of Opposition to grant of Patent. 
 \_To he accompanied hy an unstamped copy.'] 
 
 *I hereby give notice of my intention to oppose the grant of 
 
 letters patent npon application No. of applied foi' by 
 
 upon the ground f . 
 
 (Signed) X . 
 
 To ihe Compir oiler, 
 
 Patent Office, 25, Southampton Buildings, 
 Chancery Lane, London, W.C. 
 
 * Here state name and full address. 
 
 t Here state upon which of the grounds of opposition permitted by section 11 
 of the Act the grant is opposed. 
 
 + Here insert signature of opponent or agent. 
 
 Patents, Designs, and Trade Marks Act, 1883. 
 [patent]. Form E. 
 
 Form of Application for Hearing by the Comptroller. 
 
 In Cases of Eefusal to Accept, Opposition, or Applications 
 FOR Amendments, &c. 
 Sir, 
 
 of («) hereby apply to be heard in reference to 
 
 and request that I may receive due notice of the day fixed for the 
 
 hearing. 
 
 Sir, 
 Your obedient Servant, 
 To the Comptroller, 
 
 Patent Office, 25, Southampton Buildings, 
 Chancery Lane, London, W.C. 
 
 (a) Here insert address. 
 
 Patents, Designs, and Trade Marks Act, 1883. 
 [patent.] Form F. 
 
 Form of Application for Amendment of Specification or Drawings. 
 
 * seek leave to amend the specification of letters patent 
 
 No. of 188 — , as shown in red ink in the cojiy of the original 
 
 specification hereunto annexed . 
 
 My reasons for making this amendment are as follows f . 
 
 (Signed) . 
 
 To the Comptroller, 
 
 Patent Office, 25, Southampton Buildings, 
 Chancery Lane, London, W.C. 
 
 * Here state name and full address of applicant or patentee. 
 
 t Here state reasons for seeking amendment ; and where tlie applicant is not 
 the patentee, state what interest he possesses in the letters patent.
 
 400 APPENDIX. 
 
 Patents, Designs, and Trade Marks Act, 1883, 
 [patent.] Form G, 
 
 Form of Opposition to Amendment of Specification or Drawings. 
 
 [To le accompanied hy an unstamped copy.'] 
 
 * hereby give notice of objection to the proposed amendment 
 
 of the specification or drawings of letters patent No. of 188 — 
 
 for the following reason : f . 
 
 (Signed) . 
 
 To the ComptroUer, 
 
 Patent Office, 25, Southampton Buildings, 
 Chancery Lane, London, W.C. 
 
 * Here state name and full addi-ess of opponent. 
 + Here state reason of opposition. 
 
 Patents, Designs, and Trade Marks Act, 1883. 
 [patent.] Form H. 
 
 Form of Application for Compulsory Grant of License. 
 
 [To be accompanied by an unstamped copy.] 
 
 * hereby request you to bring to the notice of the board 
 
 of trade the accompanying petition for the grant of a license to me 
 
 byt . 
 
 (Signed) . 
 
 Note. — The petition must clearly set forth the facts of the case 
 and be accompanied by an examined copy thereof. See fomi below. 
 
 To tlie Comptrottcr, 
 
 Patent Office, 25, Southampton Buildings, 
 Chancery Lane, London, W.C. 
 
 * Here state name and full address of applicant. 
 
 + Here state naine and address of patentee, and number and date of his patent. 
 
 Patents, Designs, and Trade Marks Act, 1883. 
 
 Form III. 
 
 Form of Petition for Compulsory Grant of Licenses. 
 
 To the Lords of the Committee of Privy Council for Trade. 
 
 TiiH Petition of {a) of in the county of , being 
 
 a person interested in the matter of this petition as hereinafter 
 described : — 
 
 (a) Here insert name, full address, and description.
 
 FOKMS. 101 
 
 Sheweth as follows : — 
 
 1. A patent dated No. was duly granted to for an 
 
 invention of (b) . 
 
 2. The nature of my interest in the matter of this petition is as 
 follows : — (c) 
 
 3. (d) 
 
 Having- regard to the circumstances above stated, the petitioner 
 alleges that by reason of the aforesaid default of the patentee to grant 
 licenses on reasonable terms (e) 
 
 Your petitioner therefore prays that 
 an order may be made by the board of 
 trade (/) 
 
 or that the petitioner may have such 
 other relief in the premises as the board 
 of trade may deem just. 
 
 (b) Here insert title of invention. 
 
 (c) Here state fully the nature of petitioner's interest. 
 
 (d) Here state iu detail the circumstances of the case under section 22 of the 
 said Act, and show that it arises by reason of the default of the patentee to grant 
 licenses on reasonable terms. The statement of the case should also show as far 
 as possible that the terms of the proposed order are just and reasonable. The 
 paragraphs should be niimbered consecutively. 
 
 (c) Here state the gi'ound or grounds on which relief is claimed in the language 
 of section 22 subsection («), {b), or (c), as the case may be. 
 
 (/) Here state the purport and effect of the proposed order and the terras as to 
 the amount of royalties, security for payment or otherwise, upon which the 
 petitioner claims to be entitled to the relief in question. 
 
 Patents, Designs, and Trade Marks Act, 1883. 
 [patent.] Form I. 
 
 Form of Opposition to Compulsory Grant of License. 
 
 * hereby give notice of objection to the application of 
 
 for the compulsory grant of a license under patent No. of 
 
 188—. 
 
 (Signed) . 
 
 To ihe Comptroller, 
 
 Patent Office, 25, Southampton Buildings, 
 CJuincery Lane, London, W.C. 
 
 * Here state name and full address. 
 
 D D
 
 402 APPENDIX. 
 
 Patents, Designs, and Trade Marks Act, 1883. 
 
 Form J. 
 
 Application for Certificate of Payment or Renewal. 
 
 hereby transmit the fee prescriljcd for the continuation in 
 
 force of patent No. , of 18 — , for a further period of . 
 
 Name * . 
 
 Address . 
 
 To the ComptroJln, 
 
 Patent Office, 2b , Southampton Buildings, 
 Cliancery Lane, London, W.C. 
 
 * Here insert name and full address of patentee or his agent. 
 Certificate of Payment or Renewal. 
 
 [PATEXT.] 
 
 Letters patent No. of 188 — , 
 
 18—. 
 
 This is to certify that did this day of 18 — , make 
 
 the prescribed payment of £ in respect of a period of from 
 
 and that by virtue of such payment the rights of remain 
 
 in force.* 
 
 (Seal.) 
 Payment Office, London. 
 
 * See section 17 of the Patents, Designs, and Trade Marks Act, 1883. 
 
 Patents, Designs, and Trade Marks Act, 1883. 
 [patent.] Form K. 
 
 Form of Application for Enlargement of Time for Payment of 
 Renewal Fee. 
 
 I HEREBY apply for an enlargement of time for month — m 
 
 which to make the payment of £ upon my patent, No. , 
 
 of 188—. 
 
 I am, 
 Sir, 
 Your obedient Servant, 
 (a) 
 
 To tlie Comptroller; 
 
 Patent Office, 25, Sonthnmplon Bmldings, 
 Chancer?/ Lane, London, W.C. 
 
 (a) Here in.sert full address to which receipt is to bo .sent.
 
 FORMS. 403 
 
 Patents, Designs, and Trade Marks Act, 1883. 
 
 [patent.] Form L. 
 
 Form of Request to enter Name upon the Register of Patents, and 
 of Declarations in support thereof. 
 
 I (a), hereby request that you will enter (b) me (c) 
 
 in the register of patents : — 
 
 (d) claim to be entitled (e) of the patent No. of 
 
 188 — , granted to (/) for (g) by virtue of (h) . 
 
 And in proof whereof I transmit the accompanying (^) with 
 
 an examined copy thereof (j). 
 
 I am, 
 Sir, 
 Your obedient Servant, 
 To the Comptroller, 
 
 Patent Office, 25, Southampton Buildings, 
 Chancery Lane, London, W.C. 
 
 {a) Or We. Here insert name, full addi-ess, and description. 
 
 {b) My or our. 
 
 (c) Or names. 
 
 {d) I or We. 
 
 (e) Here insert the nature of the claim. 
 
 (/) Here give name and address, &c., of Patentee or Patentees. 
 
 (g) Here insert title of the invention. 
 
 (h) Here specify the particulars of such document, giving its date, and the 
 parties to the same, and showing how the claim here made is substantiated. 
 
 (i) Here insert the nature of the document. 
 
 (j) Where any document which is a matter of record is required to be left, a 
 certified or official copy in lieu of an examined copy must be left. 
 
 Patents, Designs, and Trade Marks Act, 1883. 
 [patent.] Form M. 
 
 Form of Request to Enter Notification of License in the Register of 
 
 Patents. 
 
 Sir, 
 
 I hereby transmit an examined copy of a license granted to 
 
 me by , under patent No. of 188 — , as well as the original 
 
 license for verification, and I have to request that a notification 
 thereof may be entered in the register. 
 
 I am, 
 Sir, 
 (a) . Your obedient Servant, 
 
 To the Comptroller, 
 
 Patent Office, 25, Southampton Buildings, 
 Chancery Lane, London, W.C. 
 
 (a) Here insert full address. 
 
 D 1) 2
 
 404 APPENDIX. 
 
 Patents, Designs, and Trade Marks Act, 1883. 
 
 [patent.] Form N. 
 
 Application for Duplicate of Patent. 
 
 Date. 
 Sir, 
 
 I resret to hare to inform yon that the letters patent, dated * 
 Xo. , granted to , for an invention of f > l^ave 
 
 been 
 
 I beg therefore to apply for the issue of a dnpHcate of such letters 
 patent. § 
 
 [Signature of Applicant,] 
 To the Comptroller, 
 
 Patent Office, 25, Southampto7i Biiildiyigs, 
 Chancery Lane, London, W.C. 
 
 * Here insert date, Xo., name, and full address of Patentee. 
 
 + Here insert title of invention. 
 
 J Here insert the word " destroyed" or " lost," as the ease may be. 
 
 § Here state interest possessed by applicant in the letters patent. 
 
 Patents, Designs, and Trade Marts Act, 1883. 
 
 [PATE^'T.] FOEM 0. 
 
 Notice of Intended Exhibition of an TJnpatented Invention. 
 
 * hereby give notice of my intention to exhibit a of 
 
 at the — '— Exliibition, ^vhicht of 18 — , under the 
 
 provisions of the Patents, Designs, and Trade Marks Act of 1883. 
 % herewith enclose . (Signed) . 
 
 To the Comptroller, 
 
 Patent Office, 25, Southampton Buildings, 
 Chancery Lane, London, W.C. 
 
 * Here state name and full address of applicant. 
 
 + State "opened" or "is to open." 
 
 + Insert brief description of invention, with drawings if necessary. 
 
 Patents, Designs, and Trade Marks Act, 1883. 
 
 [patent.] FoEii P. 
 
 Form of Request for Correction of Clerical Error. 
 Sir, 
 
 I hereby request that the following clerical error {a) may be 
 
 corrected in {b) Signature 
 
 Full address 
 
 To the Comptroller, 
 
 Patent Office, 2."), Southampton Buildings, 
 Chancery Lane, London, W.C. 
 
 {a) Or errors. 
 
 (6) Here state whether in application, specification, or register.
 
 FORMS. 405 
 
 Patents, Designs, and Trade Marks Act, 1883. 
 [patent,] Form Q. 
 
 Certificate of Comptroller-General. 
 
 Patent Office, 
 
 London, 
 
 188 
 
 T, , Comptroller-General of Patents, Designs, and Trade Marks, 
 
 hereby certify 
 
 Patents, Designs, and Trade Marks Act, 1883. 
 
 [patent.] Form Pi. 
 
 Form of Notice for Alteration of an Address in Register. 
 Sir, 
 
 (a) hereby request that address now upon the register 
 
 may be altered as follows : — 
 (b) 
 
 Sir, 
 Your obedient Servant, 
 
 To the Comjitroller, 
 
 Patent Office, 25, Southampton Buildings, 
 Chancery Lane, London, W.G. 
 
 (a) Here state name or names and full address of applicant or applicants. 
 (J) Here insert full address. 
 
 Patents, Designs, and Trade Marks Act, 1883. 
 
 [patent.] Form S. 
 
 Form of Application for Entry of Order of Privy Council in 
 Register. 
 
 (a) hereby transmit an office copy of an Order in Council 
 
 with reference to {h). 
 
 Sir, 
 Your obedient Servant, 
 To the Comptroller, 
 
 Patmit Office, 25, Souihampton Buildings, 
 CMncerij Lane, London, W.C. 
 
 (a) Here state name and full address of applicant. 
 
 (b) Here state the purport of the 'order.
 
 406 APPENDIX, 
 
 Patents, Designs, and Trade Marks Act, 1883. 
 
 [patent.] Form T. 
 
 Form of Appeal to Law Officer. 
 
 Ij (^) 0^ (^) hereby give notice of my intention to appeal 
 
 to the law oflBcer from (&) of the comptroller of the day of 
 
 188—, whereby he (c) No. (d) of the year 18S—{d). 
 
 Signature 
 
 Date . 
 
 N.B. — This notice has to be sent to the Comptroller-General at the 
 Patent Office, London, W.C., and a copy of same to the Law Officers' 
 Clerk at Room 549, Royal Courts of Justice, London. 
 21st December, 1883. 
 
 (Signed) J. Chamberlain, 
 
 President of the Board of Trade. 
 
 {a) Here insert name and full address of appellant. 
 
 (6) Here insert "the decision" or "that part of the decision," as the case 
 may be. 
 
 (c) Here insert "refused [or allowed] application for Patent," or " refiised [or 
 allowed] application for leave to amend Patent," or otherwise, as the case maybe. 
 
 (d) Insert niunber and year.
 
 PATENTS RULES, 1885. 407 
 
 PATENTS RULES. 1885. 
 
 By virtue of the provisions of the Patents Designs and Trade 
 Marks Act, 1883 (lierein-after referred to as tlie principal act,) the 
 board of trade do hereby make the following rules : — 
 
 Shoet Title. 
 
 1. These rules may be cited as the Patents Rules, 188.5. Short title. 
 
 Commencement. 
 
 2. These rules shall come into operation from and immediately Communue- 
 after the Uth day of August, 1885. '"'^"^• 
 
 Fees. 
 
 3- In addition to the fees mentioned in the second schedule to the Efts, 
 principal act so far as it relates to patents, and in the list of fees con- 
 tained in the first schedule to the Patents Eules, 1883, there shall be 
 paid under the said act and the Patents, Designs and Trade Marks 
 (Amendment) Act, 1885, the fees sj)ecified in the first schedule to 
 these rules. 
 
 Forms. 
 
 4- The Forms A, B, and C in the first schedule to the principal Eonns. 
 act shall be altered or amended by the substitution therefor Alt< i-nti<nis. 
 respectively of the Forms A, Al, B, and C in the second schedule 
 
 hereto. 
 
 5. (1.) An application for a patent containing the declaration men- Appiuaticm. 
 tioned in sub-section 2 of section 5 of the principal act shall be made 
 
 either in the Form A or the Form Al, set forth in the second 
 schedule hereto, as the case may be. 
 
 (2.) The Form B in such schedule of provisional specification and SpceitiL-ation. 
 the Form C of complete specification shall respectively be used. 
 
 (3.) The remaining Forms other than A, Al, B, and C, set forth Othm- tonus. 
 in the second schedule to the Patents Rules, 1883, and in the second 
 schedule hereto respectively, may, as far as they are applicable, be 
 used in any jiroceedings under these rules. 
 
 Extension of Time. 
 
 6. An application for extension of time for lea\ing or accepting a Extension of 
 complete specification shall be in writing and shall state in detail in |™f.*^J 
 what circumstances and upon what grounds such extension is applied accepttn""
 
 408 APPENDIX. 
 
 complete for, aiid the comptroller may require the applicant to substantiate 
 
 specification, g^^gj-^ allegations by such proof as the comptroller may think necessary. 
 
 Repeal. 
 
 Kepeal 7- Rules 5 aud 6 of the Patents P.ules, 1883, shall be and they are 
 
 hereby repealed as from the 14th day of August, 1885, without preju- 
 dice, nevertheless, to any application then pending, 
 
 (Signed) Richmond and Gordon, 
 
 President of the Board of Trade. 
 15th August, 1885. 
 
 FIRST SCHEDULE. 
 
 No. o9,— For enlargement of time for filing complete 
 
 specification not exceeding one month 
 Xo, 4U. — For enlargement of time for acceptance of 
 complete specification — 
 Not exceeding one month . . . 
 
 „ two months . 
 
 „ three months . . . 
 
 (Signed) Richmond and (xORDOn, 
 
 President of the Board of Trade. 
 15th August, 1885. 
 
 Approved 
 (Signed) Sidney Herbert, 
 W. H. Walrond, 
 
 Lords Commissioners of Her 
 Majesty's Treasury. 
 15th August, 1885. 
 
 £ 
 
 s. 
 
 d. 
 
 2 
 
 
 
 
 
 2 
 4 
 6 
 
 
 
 
 
 
 

 
 PATENTS RULES, 1SS5. 409 
 
 SECOND SCHEDULE. 
 
 Patents, Designs, and Trade Marks Acts, 1883 and 1885. 
 
 [patent.] Forji a. 
 
 Application for Patent. 
 
 (a) , do hereby declare that • in possession of an inven- 
 tion for (b) , that (c) the true and first inventor thereof ; 
 
 and that the same is not in use by any other person or persons to the 
 
 best of knowledge and belief; and humbly pray that a 
 
 patent may be granted to for the said invention. 
 
 Dated day of 188—. 
 
 (d) . 
 
 XoTE. — Where application is made through an agent (Rules 8 and 
 9 of Patents Rules, 1883), the authorization on the back (if used) 
 should be signed by the applicant or applicants. 
 
 For the convenience of applicants, suggested forms of authoriza- 
 tion to an agent and statement of address respectively are printed 
 below. T/iei/ are oiof, however, to he deemed to he binding upon 
 applicants, no particular form of these documents having been prescribed 
 by the act or rules. 
 
 (a) Here insert name and full address and calling of applicant or applicants. 
 
 (b) Here insert title of invention. 
 
 (c) In the case of more than one applicant, state whether all, or if not, who is 
 or are the inventor or inventors. 
 
 (d) To be signed by applicant or applicants. 
 
 (1.) Where Application is made through an Agent (Rules 8 
 AND 9 OF Patents Rules, 1883.) 
 
 hereby ajipoint 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 , 188—. 
 
 To be signed by applicant or apijlicants. 
 
 (2.) Where Application is made without an Agent (Rule & 
 OF Patents Rules, 1883.) 
 
 hereby request that all notices, requisitions, and communica- 
 tions in respect of the within application may be sent to 
 
 at . 
 
 day of 188—. 
 
 t 
 
 t To be signed by applicant or applicants.
 
 410 APPENDIX. 
 
 Patents, Designs, and Trade Marks Acts, 1883 and 1885. 
 [patent.] FoRii Al. 
 
 Application for Patent for Inventions communicated from Abroad. 
 
 I (a) of iu the county of do hereby declare that I 
 
 am in possession of an invention for (b) which invention has 
 
 been communicated to me from abroad by (r) that I claim to be 
 
 the true and first inventor thereof ; and that the same is not in use 
 within this realm 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 188 — . 
 
 (cF) 
 
 Note. — "Where application is made through an agent (Rules 8 and 
 9 of Patents Rules, 1883) the authorization on the back (if used) 
 should be signed by the applicant or applicants. 
 
 For the convenience of applicants, suggested forms of authorization 
 to an agent and statement of address respectively are printed below. 
 T/iey are not, however, to he deemed to he hinding upon applicants, no 
 particular form of these documents having been prescribed by the act or 
 rules. 
 
 (a) Here insert name, and full address and calling of applicant. 
 {b) Hore insert title of invention. 
 
 (c) Here insert name, address, and calliua; of commimieant. 
 (rf) To be signed by applicant or applicants. 
 
 (1.) Where Application is 3iade through an Agent (Rules 8 
 AND 9 of Patents Rules, 1883). 
 
 hereby appoint of to act as agent in respect of the 
 
 within application for a patent, and request that all notices, requisi- 
 tions, and communications relating thereto may be sent to such agent 
 at the above address. 
 
 day of 188—. 
 
 * 
 
 * To be signed by applicant or applicants. 
 
 (2.) "Whereby ArrLiCATioN is made without an Agent 
 (Rule 9 of Patents Rules, 1883). 
 
 hereby request that all notices, requisitions, and communi- 
 
 cations in respect of the within application may be sent to 
 
 at . 
 
 dav of 188—. 
 
 t 
 
 t To be signed by ap[ilicant or applicants.
 
 PATENTS RULES, 1885. 411 
 
 To be issued with Form A. or Al. 
 
 Patents, Designs, and Trade Marks Acts, 1883 and 1885. 
 
 FoRir B. 
 
 Provisional Specification. 
 
 (To be furnished in DupHcate.) 
 
 («) , (b) , do hereby declare the nature of this invention 
 
 to be as follows : — 
 (c) 
 
 XoTE. — No stamp is required on this document, which must form 
 the commencement of the Provisional Specification ; the continua- 
 tion to be upon wide-ruled foolscap paper (but on one side only) 
 with a margin of two inches on left hand of paper. The Provisional 
 Specification and the "Duplicate" thereof must be signed by the 
 applicant, or his agent, on the last sheet, the date being first inserted 
 as follows : — 
 
 " Dated this day of IS—." 
 
 (a) Here insert title as iu declaratioD. 
 
 {b) Here insert name and full address and calling of applicant or applicants as 
 in declaration. 
 
 (c) Here insert short description of invention. 
 
 Patents, Designs, and Trade Marks Acts, 1883 and 1885. 
 [patent,] Form C. 
 
 Complete Specification. 
 
 (To be furnished in Duplicate — one unstamped.) 
 
 (a) , (&) , do hereby declare the nature of this invention 
 
 and in what manner the same is to be performed, to be particularly 
 described and ascertained in and by the following statement : 
 
 (c) 
 
 Note. — This document must form the commencement of the 
 Complete Specification ; the continuation to be upon wide-ruled 
 foolscaj) paper (but on one side only) with a margin of two inches on 
 
 (a) Here insert title as in declaration. 
 
 (/)) Here insert name, and full address and calling of applicant or applicants as 
 in declaration. 
 
 (c) Here insert full description of invention, vJdch must end with a distinct 
 statcnunt of claim or claims, in the foUoicing form : — 
 
 ' ' Having now particularly described and ascertained the nature of my said 
 Invention, and in what manner the same is to be performed, I declare that what 
 I claim is — 
 "(1) 
 "(2) 
 '«(3) 
 Here state distinctly the features of novelty claimed. 
 * Where provisional specification has been left, quote No. and date. 
 No. 
 Date
 
 412 APPENDIX.' 
 
 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—." 
 
 Patents, Designs, and Trade Marks Acts, 1883 and 1885. 
 
 [patent.] Form U. 
 
 Form of Application for Extension of Time for Leaving a Complete 
 
 Specification. 
 
 Sir, 
 
 hereby apply for extension of time for one month in which 
 
 to leave a Complete Specification upon application, 
 dated . 
 
 The circmnstances in and grounds upon which this extension is 
 applied for are as follows {a) : — 
 
 Sir, 
 Your obedient Servant. 
 
 (l) . 
 
 To the Comptroller, 
 
 Pate7it Office, 25, Soidhampton Buildings, 
 Chancery Lmu, London, W.C. 
 
 («) See Eiile 6 of Patents Rules, 1885. 
 
 (b) To be signed by applicant or applicants or his or their agent. 
 
 Patents, Designs, and Trade Marks Acts, 1883 and 1885. 
 
 [patent.] Form V. 
 
 Form of Application for Extension of Time for Acceptance of a 
 Complete Specification. 
 
 Sir, 
 
 hereby apply for extension of time for months for 
 
 the acceptance of the Complete Specification upon application No. 
 dated . 
 
 The circumstances m and grounds upon which this extension is 
 applied for are as follows (a) : — 
 
 Sir, 
 Your obedient Servant, 
 
 w — • 
 
 7'o the Comptroller, 
 
 Patent Office, 25, Southampton Buildings, 
 Chancery Lane, London, W.C. 
 
 (a) See Rule 6 of Patents Rules, 1885. 
 
 (6) To be signed by applicant or applicants or liis or their agent.
 
 Specimen drawing for Specifications. 
 
 Border lirce. 2 an. vvcfo trcnn. etiye of poLper. 
 
 
 
 
 vh 
 
 
 
 
 INS. 
 
 SCALE. ^ 
 
 t I I 
 
 I I I 
 
 I, I 111 
 
 12 
 
 
 ^« 
 
 ft^ 
 
 BofcUir lirue 5 an, iivch. fi^onv ^<lffc of paper. -^ 
 
 Siz/f of paper for f III inches by 8 uudies, 
 
 >Sped(ix-£iiwn < or 
 
 dLrcLwinff. | /ii . « V6 inches.
 
 PATENT EULES, 1886. 413 
 
 PATENT EULES, 1886. 
 
 By virtue of the provisions of the Patents, Designs, and Trade 
 Marks Act, 1883, the Board of Trade do hereby make the 
 following Rules in lieu of and substitution for Rules 28, 
 29, 30, and 31, of the Patents Rules, 1883. 
 
 Sizes and methods of preparing Drawings accompanying 
 Provisional or Complete Specifications. 
 
 Rnle 28. The provisional or complete specification need not be Drawings for 
 accompanied by drawings if the specification sufficiently describes specifications, 
 the invention without them, but if furnished, they should accompany 
 the provisional or complete specification to which they refer, except 
 in the case provided for by Rule 31. No drawing or sketch such 
 as requires a special engraving for letter-press should appear in the 
 specification itself. 
 
 Rule 29. Where drawings accompany the specifications, they must 
 be delivered at the patent office eithei' 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 calen- Kequirements 
 dered drawing paper of smooth surface and good quality (a), and ^^ ^ paper, &c. 
 where possible without colour or Indian-ink w^ashes. 
 
 They must be on sheets of one of the two following sizes (the Size of 
 smaller being preferable), 13 inches at the sides by 8 inches at the drawings, 
 top and bottom, or 13 inches at the sides by 16 inches at the top and 
 bottom, including margin, which must be | an inch wide. If there 
 are more figures than can be shown on one of the smaller-sized 
 sheets tw^o 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 cojitinued on subsequent sheets. There is no 
 limit to the number of sheets that may be sent in. 
 
 To ensure their satisfactory reproduction, the drawings must be Quality of ink, 
 executed with ahsolvicly Hack Indian ink; the same strength and 
 colour of fine and shade lines to he maintained throughoid. Section 
 lines, and lines for effect, or shading lines, must not be closely 
 drawn. A specimen drawing is annexed in illustration of this re- 
 quirement. Reference figures and letters must be bold, distinct, not 
 less than \ of an inch in height, and of the character shown in the 
 specimen ; and the same letters should be used in different views of 
 the same parts. In cases of complicated drawings, the reference 
 
 (ffl) As the drawings are copied at the Patent Office for publication by tlie pro- 
 cess of photo-lithography, this rule must be strictly observed in order that correct 
 copies may be made.
 
 414 
 
 APPENDIX. 
 
 Scale of 
 di-awinsrs. 
 
 Drawings to 
 bear name of 
 applicant, &c. 
 
 Eestrictions 
 as to wood 
 enu:ravins;s. 
 
 Copies of 
 drawings. 
 
 Provisional 
 drawings used 
 for complete 
 specification. 
 
 Eepeal. 
 
 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 wherein 
 the invention consists, and only so much of the apparatus, machine, 
 &c. need be shown as effects this purpose. When the scale is shown 
 on the drawing it should be denoted, not by words, but by a drawn 
 scale, as illustrated in the specimen. 
 
 Drawings must bear the name of the applicant (and in the case of 
 drawings left with a complete specification after a provisional specifi- 
 cation, the number and year of the application) in the Jeft-lumd top 
 comer ; the number of sheets of drawings sent, and the number of 
 each sheet in the right-hand top corner ; and the signature of the 
 applicant or his agent in the right-hand bottom corner. 
 
 No written description of the invention should appear on the 
 drawings. 
 
 Wood engravings, or representations of the invention, other than 
 the drawings prepared as above described, will not be received, unless 
 of such a character as to be suitable for reproduction by the process 
 of photo-lithography. 
 
 Rule 30. A facsimile of the original drawings but without colour or 
 Indian ink washes, and prepared strictly in accordance with the 
 regulations prescribed in rule 29, must accompany the originals, and 
 be marked " true copy." 
 
 Rule 31. If an applicant desires to adopt the drawings lodged with 
 his provisional specification as the drawings for his complete specifi- 
 cation, he should refer to them as those " left with the provisional 
 specification." 
 
 Rule ?Aa. The above rules shall be in force as from the day of the 
 date hereof and Rules 28, 29, 30, and 31 of the Patents Rules, 1883, 
 shall be and they are hereby repealed without prejudice, nevercheless, 
 to any application now pending. Notwithstanding such repeal the 
 comptroller shall be at liberty during a period of three months from 
 the date hereof (or in special cases during such further time as the 
 comptroller may think fit) to accept drawings prepared in accordance 
 with such repealed rules. 
 
 Dated the lGt.h day of September, 1886. 
 
 STANLEY OF PRESTON, 
 
 President of the Board of Trade.
 
 RULES. 415 
 
 KULES 
 
 TO BE OBSERVED IN PROCEEDINGS BEFOUE THE 
 
 JUDICIAL COMMITTEE OF THE PRIVY COUNCIL 
 
 Under the Act of the oth and 6th Will. IV., intituled ''An 
 Act to amend the Laiu touchinr/ Letters Patent for 
 Inventions " (cap. 83), 
 
 Rule I. — A party intending to apply by ])etition, under section 2 
 of the said act, shall give puljlic notice by advertising in the London 
 Gazette three times, and in three London papers, and three times in 
 some country paper published in the town where or near to which he 
 carries on any manufacture of anything made according to his specifi- 
 cation, or near to or in which he resides, in case he carries on no 
 such manufacture, or published in the county where he carries on 
 such manufacture, or where he lives, in case there shall not be any 
 paper published in such town, that he intends to petition his majesty 
 under the said section, and shall in such advertisements state the 
 object of such petition, and give notice of the day on which he 
 intends to apply for a time to be fixed for hearing the matter of his 
 petition (which day shall not be less than four weeks from the date 
 of the publication of the last of the advertisements to be inserted in 
 the London Gazette), and that on or before such day, notice must be 
 given of any opposition intended to be made to the petition ; and 
 any person intending to oppose the said application, shall lodge 
 notice to that eifect at the council office, on or before such day so 
 named in the said advertisements, and having lodged such notice 
 shall be entitled to have from the petitioner four weeks' notice of the 
 time appointed for the hearing. 
 
 EuLE II. — A party intending to apply by petition, under section 4 
 of the said act, shall in the advertisements directed to be published 
 by the said section, gi\e notice of the day on which he intends to 
 apply for a time to be fixed for hearing the matter of his petition 
 (which day shall not be less than four weeks fi-om the date of the 
 publication of the last of the advertisements to be inserted in the 
 London Gazette), and that on or before such day caveats must be 
 entered ; and any person intending to enter a caveat shall enter the 
 same at the council office, on or before such day so named in the said 
 advertisements ; and having entered such caveat, shall be entitled to 
 have from the petitioner four weeks' notice of the time appointed for 
 the hearing. 
 
 Rule III. — Petitions under sections 2 and 4 of the said act must 
 be presented within one week from the insci-tion of the last of the 
 advertisements required to be published in the London Gazette.
 
 416 APPENDIX. 
 
 Rule IV. — All petitions must be accompanied with afRdavits of 
 advertisements having been inserted according to the provisions of 
 sect. 4 of the said act, and the 1st and 2nd of these rules, and the 
 matters in such affidavits may be disputed by the parties opposing 
 upon the hearing of the petitions. 
 
 Rule V. — All persons entering caveats under sect. 4 of the said 
 act, and all parties to any former suit or action touching letters 
 patent, in respect of which petitions shall have been presented under 
 sect. 2 of the said act, and all persons lodging notices of opposition 
 under the 1st of these rules, shall respectively be entitled to be served 
 with copies of petitions presented under the said sections, and no 
 application to fix a time for hearing shall be made without affidavit 
 of such service. 
 
 Rule VI. — All parties served with petitions shall lodge at the 
 Council Office, within a fortnight after such service, notice of the 
 gi-ounds of their objections to the granting of the prayers of such 
 petitions. 
 
 Rule VII. — Parties may have copies of all papers lodged in 
 respect of any application under the said act, at their own expense. 
 
 Rule VIII. — The registrar of the Privy Council, or other officer 
 to whom it may be referred to tax the costs incurred in the matter of 
 any petition presented under the said act, shall allow or disallow in 
 his discretion all payments made to persons of science or skill 
 examined as witnesses to matters of opinion chiefly. 
 
 Rule IX. — A party applying for an extension of a patent, under 
 sect. 4 of the said act, must lodge at the Council Office six printed 
 copies of the specification, and also four copies of the balance sheet 
 of expenditure and receipts relating to the patent in question, which 
 accounts are to be proved on oath before the lords of the committee 
 at the hearing. In the event of the applicant's specification not 
 having been printed, and if the expense of making six copies of any 
 drawing therein contained or referred to would be considerable, the 
 lodging of two copies only of such specification and drawing will be 
 deemed sufficient. 
 
 All copies mentioned in this rule must be lodged not less than one 
 week before the day fixed for hearing the application. 
 
 The Judicial Committee will hear the Attorney-General, or other 
 counsel, on behalf of the Crown, against granting any application 
 made under either the 2nd or 4th section of the said act, in case it 
 shall be thought fit to oppose the same on such behalf.
 
 INDEX. 
 
 Abandoned, application for patent, 58, 355, 378. 
 
 Acceptance, 
 
 of complete specification, 116. 
 of application, 354. 
 
 Accidental discovery sufficient to support patent, 54. 
 
 Accounts, 
 
 filing of, on application for extension of patent, 152. 
 must be reasonable and precise, 152 — 154. 
 •when dispensed with, 154. 
 of sales and profits, when allowed, 206. 
 not allowed when no profit made, 207. 
 injunction granted on terms of keeping, 196. 
 plaintiff must elect between damages and, 203. 
 
 of profits lost by competition, not allowed when licence has been granted, 
 205. 
 
 Action, 
 
 for infringement, 214. See Infringement. 
 
 for injunction to restrain threats. See Threats, 
 
 for revocation, ^qq Revocation. 
 
 Addition to known machine producing new result may be patented , 27. 
 
 Address, 
 
 of letters j^atent, 124. 
 
 form of notice for alteration of, in register, 405. 
 
 statement of, of applicant, 384. 
 
 Administrators. See Executors. 
 
 Advantages, claiming, 54. 
 
 Advertisement, 
 
 of amended specification, 106, 357, 358. 
 of acceptance of specification, 58, 116, 355. 
 rules relating to, 386. 
 
 Affidavit, 
 
 on motion for injunction, 220. 
 
 what it must state, ih. 
 after trial, 243. 
 rules as to, 385. 
 
 T. E E
 
 418 INDEX. 
 
 Agek^t, 
 
 patent, to be registered, 380. 
 
 duties of, 384. 
 infringement by, 182. 
 
 to sell, cannot maintain action for infringement, 217. 
 discovery of name of, infringing after judgment, 243. 
 application for patent by, 384. 
 
 Agreement, fraudulent, will be set aside, 140. 
 
 Aliex, 
 
 may obtain patent, 6. 
 liable for infringement, 166. 
 
 Ambiguity, 
 
 in specification, whether a question for jury, query, 80, 
 latent, in licence, how explained, 142. 
 
 A]ME>'DMENT. See Spccijicativ/i. 
 of specification, 58, 102, 357. 
 compulsory or voluntary, 102. 
 compulsory limited to matters of form, 103. 
 
 rules as to by comptroller, 385, 389, 399. 
 
 which appear on the face of it, 104. 
 comptroller may require, 102, 354, 381. 
 appeal to law officer, 102, 354, 381. 
 duties of examiner as to, 103. 
 by applicant or patentee, 104. 
 disclaimer, correction or alteration, 105, 112. 
 assignees might amend by disclaimer or alteration, 105. 
 now made at peril of inventor, 105. 
 statutory provisions respecting, 106. 
 must not enlarge the claim, 106. 
 prohibition to law officer does not lie. 106. 
 comptroller may impose conditions, 107. 
 conditions imposed by law officer, 107. 
 must not extend exclusive right, 1 12. 
 once made, cannot afterwards be objected to, 113. 
 discretion as to costs on application, 115. 
 opposition to, 357. 
 proceedings before law officer and comptroller in case of, 357, 358. 
 
 conditions may be imposed, ib. 
 pending action for infringement, 109, 358, 381. 
 in case of fraud, 113. 
 when allowed after action brought, 109. 
 of particulars. See I'lirticitJitrs. 
 
 Anticipation. See Prior User and Prior Puhliadion. 
 
 Apparent possession, doctrine of, does not affect patent right, 135. 
 
 Appeals, 
 
 in action, practice on, 2S0. 
 flirt hi-r evidence, when allowed, 281. 
 iiijuiictiuii suspended pending, 281. 
 to law officf-rs, rules regulating, 394. 
 form of notice of, 406.
 
 INDEX. 419 
 
 Application, 
 
 for patent, 5, oG, .'}o3. 
 
 reference of, to examiner, o7, 04, 354. 
 
 comptroller may refuse or require amendment, o7, 102, 354. 
 
 order of recording, 386. 
 
 amendment of, 386. 
 
 coi.'sidered abandoned if speciflcation not left within specified time, 355. 
 
 what it must contain, 5 
 
 bj' infants and married women, 6. 
 
 by first importer, 7. 
 
 in fraud of inventor, 16. See Oppotiitioii. 
 
 for separate patents by way of amendment, 3S6. 
 
 bj' representative of deceased inventor, ih, 
 
 on communication from abroad, 387. 
 
 /(-/•/// of, 409. 
 
 when communicated from abroad, 410. 
 
 for hearing by comptroller, 399. 
 
 for compulsory grant of licence, 400. 
 
 Architect, when not liable for infringement, 160. 
 
 Assessors, 
 
 at trial, 251, 277, 278, 361. 
 remuneration of, 361. 
 
 Assignee, 
 
 suing, 163. 
 
 extension of jiatent to, 158. 
 
 on what grounds, 159. 
 
 as to action hy assignee for district, 170. 
 
 can restrain infringement within assigned area, 216. 
 
 ma J' sue in his own name, 216. 
 
 amendment of specification by, 340, note. 
 
 Assignment oe Patent. See Dccolutlan. 
 precedent for, 334. 
 for a place or district, 135, 100, 163, 216, 363, 
 
 Balance Shf^t must be lodged on application for extension, 154. 
 
 B-\NKRUPTCY of patentee, effect of, 134. 
 
 Board of Trade, 
 
 may grant compulsory licences, 141. 
 powers of to make rules, 369, 380, 382. 
 
 Bona Fides necessary in specification. See Sperlficatioa. 
 
 Breaches, particulars of, 222 et seq. 
 
 Capitalist may joia inventor to obtain grant, 8. 
 Caveat, entry of, 145, 160. 
 
 K K 2
 
 420 INDEX. 
 
 Certificate, 
 
 of comptroller. See Comptroller. 
 
 of Court that validity of patent questioned, 269, 362. 
 
 in simultaneous actions, 270. 
 
 when action compromised, 273. 
 
 cannot be given by consent, 271. 
 
 of proof of particulars of breaches, 273 et seq. 
 
 no costs without, 362. 
 
 form of, 306. 
 
 Certified Copies, 255, 392. 
 
 Claim, 
 
 if too large, vitiates patent, 52. 
 
 if advantages claimed are not new, does not vitiate patent, 54. 
 
 must be distinct, 101. 
 
 sect. 5 of Patents Act, 1883, directory only, 96. 
 
 Clerical Errors, 385, 404. See Amendments. 
 
 CoLoxiAL, arrangements as to patents, 214. 
 
 Colourable Imitatiox, 175. 
 
 comijinatiox, 
 
 us subject-matter, 33. 
 
 infringement of patent for a, 172, 177. See Infringement. 
 
 elements of, may be used, 177. 
 
 use of, patented in improved, ih. 
 
 subject-matter of patent, 33, 98. 
 
 though every part old, 34. 
 
 must be claimed as such, 98. 
 
 Co it MtmiCATION', 
 
 from abroad, 20. See Importer. 
 
 in England, 20. 
 
 patent granted as for such communication, ih. 
 
 iiile relating to, 387. 
 
 Company, directors of, 144, 244. 
 
 Compound Substance, discovery of, good ground for patent, 2S. 
 
 Comptroller, 
 
 may refuse to accept unamended specification, 102. 
 
 determines when amendment allowable, 104 et seij. See also 385. 
 
 may refuse illegal patent, 127. 
 
 no appeal from this decision, ih. 
 exercise of discretionary power by, 384. 
 notice of hearing bj', ih. 
 may require statement, ih. 
 decision of, to bo notified, 385. 
 prior and second a])plicants may attend before, ih. 
 may inako clerical amendments, 385. 
 rules relating to oppositinn before, 387. 
 cases and penalties, 388. 
 
 roLating to amendment by, 389. 
 
 rclatiiig to duties of witli rcsix-ct to leri^ter, 391. 
 power of, to dicpcnse with evidence, 393. 
 /irm of certificate of, 405.
 
 INDEX. 421 
 
 CONCEALAIENT, in specification by patentee, 88 et S('(j. 
 
 Conditions of grant, 130. i^eo Grant. 
 
 Condonation of infringement, 200. 
 
 CoNFiRMATiox abolished, lii'2. 
 
 Consideration, 
 for grant, 8. 
 merit, a part of, 1 1 — 21. 
 mental labour is the, 12 — 14. 
 
 Construction, 
 
 of si^ecification, when object old and means new, 32. 
 
 of specification will be liberal, 74. 
 
 as with other documents, 7N. 
 
 dictum of Ijord ^Vestbury, ib. 
 
 of claims, 79. 
 
 of grant most beneficial, 133, 140. 
 
 Contractor, 
 
 liable for infringement, 165, 217. 
 with Crown, 217. 
 
 Co-owners, action by, 210. 
 
 Corporation, may be registered as proprietor of patent, 392. 
 
 Correction of specification. See Amendment. 
 
 <'osts, 
 
 of disclaimer, when allowed, 115. 
 
 on application for leave to amend specification, ib. 
 
 of extension of term, 146, 161. 
 
 of entry of caveat, 160, 161. 
 
 on abandonment of petition for extension, ib. 
 
 fixed sum in lieu of, ib. 
 
 security for, by licensee using patentee's name, 165. 
 
 discretion of court as to, 207. 
 
 of abandoned defences, 227. 
 
 of particulars allowed on certificate only, 271, 361. 
 
 when p irticulars are amended, 234. 
 
 between solicitor and client, when ordered, 269 et seq. 
 
 particulars considered on taxation of, 271. 
 
 of abandoned action, 273. 
 
 on higher or lower scale, 274. 
 
 appeal as to, 275. 
 
 when payable by directors personally, 276. 
 
 up to hearing, 276. 
 
 fees paj'able in connection with patents. See Fees. 
 
 Crovn, 
 
 patent to bind, 128, 185, 361. 
 
 use of invention by servants of, 132, 184, 361. 
 
 by contractor with, 185. 
 
 liable for infringement, 132, 185. 
 
 power of purchase by, 132, 361.
 
 422 INDEX. 
 
 CrO WX — rijiitin lied. 
 
 right of user without payment abolished, 132, \'V-i. 
 
 tenns of user by. il>. 
 
 arranfrements with other governments by, 213. 
 
 assignment to Secretary of War of certain inventions, 133, 3154 . 
 
 invention to be kept secret, 3(>4. 
 
 conditions of assignment, ih. 
 Royal prerogative preserved. 374. 
 
 Daiiages. See Irijundiuit and Account of Sales and Profits, Amendment. 
 when allowed after amendment, 114. 
 when plaintiff entitled to, 203. 
 measiire of, in action for infringement, 203. 
 commercial competition an element in, 204. 
 extent of infringement considered, ih. 
 where licence granted, 205. 
 against whom recoverable, ib. 
 discovery in aid of. 205. 
 
 for infiingement before amendment. 111. '3o>>. 
 do not depend on right to injunction, 207. 
 plaintiff cannot claim account and, 215. 
 must be proved when claimed, 259. 
 
 Date of patent. 356. 
 
 Death of ajjplicant, 356, 362. 
 
 Declaration. 
 
 must accompany application, 5, 5P. 353, 378. 
 what it must contain, S. 
 must distinguish inventor and importer, 8. 
 must be made by one of the applicants, 9. 
 bv infant, lunatic, &c., how to be made, 369. 
 statutory, 386. 
 
 Definitions of patent, patentee, invention. &c.. 366. See sub titnlis. 
 
 Delay, 
 
 in practising invention, 156. 
 in ai)plying for injunction, 201. 
 
 Delin'ERY up of infringing articles. 202. 
 
 Desckiition. 
 
 court will distinguish between claim ar.d, 95. 
 insufficient, in specification not fatal, 126. 
 
 Destkuctiox, 
 
 of infiinging articles, 2U2. 
 when ordered, ih. 
 of patent, 363. 
 
 Detbbmination. of patent for non-payment of fees, 132.
 
 INDEX. 423 
 
 Devolution. See Assignment, Licence. 
 by bankruptcy, 134, 135, 13G, 
 of patent by assignment, 135. 
 absolute or limited assignment, ih. 
 assignment must be by deed, ih. 
 
 may be for a district only, 136. 
 
 operates by way of estoppel, 136. 
 
 no estoppel in case of fraud, 137, 138. 
 
 executors may assign before probate, 140. 
 specific performance of agreement to assign, 140. 
 licence need not be stamped as a deed, 136. 
 
 need not be delivered, ih. 
 
 inay be verbal, 139, 142. 
 
 does not operate by way of estoppel, 138-142. 
 
 excejit where licensee has received the benefit, 139. 
 
 does not imply any warranty, 139. 
 distinction between licence and assignment, 140. 
 compulsory licence, 141. 
 licence not assignable, 142. 
 licence by parol is a licence at will, 142. 
 register of assignments, &c., 143. 
 
 Disclaimer. See Amendment. 
 
 Documents, 
 
 Patent Office rules relating to, 384, 392. 
 to be sent by post, 385. 
 certified copies of, 392. 
 
 Drawings, 
 
 do not limit claim as against specification, 80. 
 rules relating to, 415, 416. 
 
 Duplicate form of application for patent, 404. 
 
 Duration of patent, 128, 357- 
 
 Enlargement of Time, 
 for payments, 389. 
 in other cases, ib. 
 form of application for, 402. 
 
 Entry of grant on register, 391. 
 
 Equivalents, 
 
 mechanical or chemical, 85, 179. 
 description of, when necessary, 85. 
 
 Estoppel, 
 
 patentee estopped from questioning validity of patent assigned, 136, 13S, 
 
 except in case of fraud, ib. 
 
 law as to, 136. 
 
 by licence not under seal, 138. 
 
 of licensee, ib. 
 
 as between partners, ib. et seq.
 
 424 INDEX. 
 
 Evasion of jDatent, 177. 
 
 Evidence, must not go beyond particulars. See Particulars. 
 
 Examinee, 
 
 reference of specification to, 57, 64:, 354. 
 
 duty of to compare a subsequent application and give notice of similarii y, 
 
 354. 
 reports of private, 355. 
 
 may require amendment of specification, 102. 
 duties of, 103. 
 
 Exclusive, 
 
 right not extended by amendment, 112. 
 licence. See Licence. 
 
 J'^xecutoes and Administratoes, 
 may sue, 165. 
 
 property in jiatent passes to, 134. 
 powers of, ih. 
 
 may petition for extension, 158. 
 patent may be granted to, 362. 
 when assign patent, before probate, 140. 
 rules relating to application by, 386. 
 
 Exhibition, 
 
 of patent, when allowable, 363, 379. 
 
 rules as to, 385. 
 
 foini of notice of intended, 404. 
 
 Experiments, 
 
 cost of, allowed in application for extension, 153. 
 with a view to discovery, 50. 
 no infringem"ent, 183. 
 
 Expert, 
 
 may be called in by law ofiicer, 121, 356. 
 ./''/■//* of order for inspection by, 293. 
 
 Explanation of specification. See Amendment. 
 
 Exposure for sale, no infringement, 189. 
 
 Extension, 
 
 of term of patent, 145, 359. 
 
 petition for, ih. 
 
 opposition to by caveat, 145, 359. 
 
 when granted, and for how long, 146. 
 
 former practice as to, 146, 147. 
 
 evidence necessary to obtain, 148. 
 
 in the case of communicated inventions, 149. 
 
 granted to assignee, ib. 
 
 limit of the oncjuiry as to novelty and utility, 150. 
 
 accounts on ai)])lication for, 151 et seq. 
 
 profits derived from patent and as a manufacturer, 152. 
 
 costs of exp(!riiiionts, 153. 
 
 costs of litigation, ih. 
 
 costs of bringing invention into use, ib.
 
 INDEX. 425 
 
 ExTENSlOX— -co/i^i/utec/. 
 
 accounts must be clear and precise, 155. 
 must cuntiiin balance sheets, ib. 
 profits from foreign patents must be stated, ib. 
 grounds of opjjosition, loG. 
 
 invention not brought into use, ib. 
 
 negligence in restraining infringement, ib. 
 
 invention useless, ib. 
 
 intentional delay, ib. 
 
 patent obviously invalid, ib. 
 executors and assignees may apply for extension, 15^ 
 and executors of assignees, ib. 
 eflPoct of Act of 1883 : 159, 160. 
 costs of abandoned petition, IGl. 
 costs, ib. 
 
 further prolongation not allowed, ib. 
 after expiry of foreign patent, 151. 
 
 Extent of patent, 123, 357. 
 
 Extraneous matter, when fatal in specification, 94. 
 
 Ealse suggestion avoids patent, 7, 125. 
 
 Fees, 
 
 determination of patent for non-payment of, 357. 
 extension of time for payment, ib. 
 rules relating to payment of, 389, 407. 
 ••^cale of, 396, 397. 
 forms relating to, 402. 
 
 EOREIGN, 
 
 patents should be stated in petition for prolongation, 155. 
 
 country, protection of patent in, 213. 
 
 ship, use of patented invention by, 187, 364. 
 
 Fraud, 
 
 no amendment allowed in case of, 113. 
 
 no estoppel in case of, 137. 
 
 entry in register by, 144. 
 
 particulars of, 237. 
 
 must be accurately stated, ib. 
 
 application in fraud of true inventor, 16, 362. 
 
 Grant, 
 
 of letters patent, 123. 
 
 of letters patent for one invention only, 123, 124. 
 
 royal prerogative saved in, 128. 
 
 distinction between patent and trade mark, 128. 
 
 creates property in invention, 128. 
 
 form of prohibition in, 130. 
 
 conditions of, 130. 
 
 novelty of invention, 131. 
 
 rights of crown limited in, 132. 
 
 construction of, beneficial, 133.
 
 J:i«i INDEX. 
 
 lGjfoi;.\X(-E of jKiteut, no excuse for infringement, 1(59. 
 
 Imitatjox, 
 
 cilourable, 178. 
 
 of invention forbidden, 130, 178 et seq. 
 
 Immoral subject, refusal of patent for, 127, 36(3. 
 
 Importatioa', 
 
 mere, no infringement, 189. 
 
 of invention sufficient to support grant, 7. 
 
 as an invention, 19. 
 
 Imported Invention, 17. 
 
 patent for, at common law, 18. 
 statutory provisions as to, ib. 
 merit of, 149. 
 
 Jmporxer, 
 
 has the merit of invention, 20. 
 
 but less than true inventor, 21, 149. 
 
 Improvement, 
 
 of manufacture, 25. 
 
 by new process, ib. 
 
 by alteration of known machine, 27. 
 
 by new application of old invention, 28. 
 
 by new combination, 33. 
 
 on existing patent, 28. 
 
 Indorsement on ^-rit, 215. See " Writ," " Infringement" 
 
 Intani' may obtain patent, 6. 
 
 Infringement, 
 
 action for, 163, 215. 
 
 statement of claim in, 221. 
 
 form of, 294. 
 
 particulars of breaches in, 222 et seq. See Farticulun 
 
 form of particulars, 294. 
 
 fui'ther and better particulars. See Particulars. 
 
 form of order for, 295. 
 
 statement of defence in, 227, 296. 
 
 particulars of objections, 228. See Particulars. 
 
 form of, 296. 
 
 parties to, 163. 
 
 as plaintiffs, ib., 216. 
 
 giantee or assignee, 163, 216. 
 
 of a portion or for a district, 163, 216. 
 
 joint owners, 164, 216. 
 
 trustee in bankruptcy, 165. 
 
 executors and administrators, ib. 
 
 licensee cannot maintain, 165, 216. 
 
 where agent for sale cannot maintain, 217. 
 us defendants, 165. 
 
 person physically using, ib., 217. 
 
 person threatening to infringe, 217. 
 
 contractors, 165, 217. 
 
 Borvants and agents, 165. 
 
 directors, 16(i — 217. 
 
 architect, 166, 217. 
 
 alien infringing in United Kingdom, 165
 
 INDEX. 427 
 
 IxFKlNOEMENT — continued. 
 definition of, 167. 
 prohibited by royal command, ih. 
 ii question for jury, ih. 
 of invalid patent, no, 168. 
 ignorance of patent immaterial, 168, 169. 
 whiit amounts to, 170, 203. 
 where patent locally assigned, 170. 
 of l^art of invention, 170. 
 by alteration or subtraction, 17-1. 
 of patent for combination, 172. 
 by other combination of same parts, \l'i. 
 of substance of invention, 174, 176, 177. 
 bj' colourable imitation, 175. 
 by application for a different object, 175, 177. 
 other coraLination of same materials, 177. 
 the essence ol the invention, 179. 
 chemical and mechanical equivalents, 179. 
 colourable imitation, 178. 
 by evasion, 177. 
 
 sale of elements of combination, no, 183. 
 exjjeriments, no, ih. 
 
 by crown and its servants, and contractors, 132, 184. 
 hji using, definition of, 185 
 what amounts to use in action for, 185, 186. 
 mere possession, no, 187, 189. 
 by foreign or British ships, 187, 188, 200. 
 constructive, will not support action, 189. 
 !)[/ sell in//, definition of, 189. 
 
 mere purchases, exposure for sale, or importation, no, 189. 
 actual sale, an, 190. 
 
 sale of patented article made abroad, an, 190. 
 re-sale of article sold by patentee, no, 191 
 neglect to restrain, reason for not granting extension, 156. 
 injunction, remedy by, 193. !See Injitnction. 
 damages for, 203. See Damages. 
 damages, indorsement account, 215. 
 account of sales and profits. See Account, 215. 
 by tacit permission, 206. 
 defences to action for, 226 et seq. 
 costs of abandoned defences, 227. 
 defendant's particulars of objections, 228. See Particulars. 
 
 form of, 296. 
 trial of action for, 251 et seq. See Trial. 
 
 IXJUNCTION, 
 
 remedy for infringement by, 193. 
 interlocutory or perpetual, ih. 
 perpetual, when granted, 194—195. 
 interlocutory, when granted, 195, 219. 
 
 sometimes ex parte, 218. 
 
 granted or refused on terms, 196, 220. 
 
 refused where patentee not proceeded with reasonable speed, 201. 
 
 prima facie case of validity, 219. 
 
 requisites of affidavits in su2:>port, 220. 
 
 in action to restrain threats, 285. 
 
 notice of motion for, form, 289. 
 
 affidavit in support of notice, ib. 
 
 forms of interlocutory injunction, 290. 
 ditto, 291. 
 
 order refusing forra of, ih.
 
 428 INDEX. 
 
 In JtrxcTiox — con tin ued. 
 
 in cases of possession under coloui' of title, 194. 
 
 threatening to infringe patent, 198. 
 
 revoking a threat to infringe, 199. 
 suspended pending appeal, 281 
 
 in action to restrain threats, 282 d seq. See Threats. 
 against threats of action for infringement, 282. 
 alleged infringement to be strictly proved, 196. 
 evidence of intention to infringe will support, 198. 
 must be no delay in moving for, 201. 
 falls with expiry of patent, 202. 
 but not as to previously made articles, ib. 
 mandatory, when granted, 203, 215. 
 dissolved if claim disagree with affidavits, 220. 
 affidavits on motion for. See Affidavits, 220. 
 foDii of notice of motion for interlocutory, 289. 
 of affidavit in support, //). 
 of refusal on terms, 291. 
 
 Inspectiox, 
 
 power of Court to grant, 246, 362. 
 
 object of Court in granting, 247. 
 
 strong priynd facie necessary for, ih. 
 
 granted if essential, 248. 
 
 samples may be ordered for, 249. 
 
 mutual, when ordered, ib. 
 
 application for, on motion or by summons, //'., 250. 
 
 form of notice of motion for, 291. 
 
 affidavit in support of, requu-ements of, 293, note, 
 of inspection of process, and to take samples, 292. 
 of order for inspection of process by experts, 293. 
 
 by defendants, 292. 
 and for delivery of samples, 293. 
 on acceptance of complete specification, 386. 
 of register, 143. 
 
 at what houi's, 392. 
 
 IxTELLiGiBrLiTY. See Specification. 
 of specification, 74. 
 to skilled person, 80. 
 
 Im"ENTIOX of party infringing immaterial, 169. 
 
 IXTERLOCUTOBY INJUNCTION. See Iiljinidion. 
 
 IxTERXATlONAL anangemeiits as to patents, 213, 370. 
 
 1 NTERUOGATORIES, 
 
 may be administered, 239. 
 
 must be relevant, ib. 
 
 how far defendant must disclose secret process in, 240. 
 
 some evidence of infringement necessary for delivery of, 241. 
 
 differ from particulars, ib. 
 
 fishing disallowed, 242. 
 
 must be answered fully, ib. 
 
 when permitted after trial, 243. 
 
 by plaintift" and defendant dill'er, 243, 244. 
 
 «)st8 of, 245. 
 
 form of, 299.
 
 INDEX. 439 
 
 Intuoducer, first, 19. 
 
 Invalid, patent, no infiingoment of, 168. 
 
 IXVEXTIOX, 
 
 defined bj^ Act, 3. 
 
 what is an, 9. 
 
 when already public iiroperty, 15. 
 
 a new and useful, 22. 
 
 of now article, ih. 
 
 of new process, ib. 
 
 novelty of, 84. 
 
 a question of fact, 39. 
 
 secret prior user of an, 40. 
 
 public prior user of an, ib. et seq. 
 
 experiment, whether, 38. 
 
 piior publication of an, 41. 
 
 the whole must be new, 51. 
 
 utility of, 52. 
 
 distinct statement of, necessary, 101. 
 
 must not be enlarged by amendment of specification, 112. 
 
 property in, created by grant, 128. 
 
 infringement of part of, 172, 177. 
 
 of substance of, 174. See Infringeynent. 
 importance of, how estimated, 149. 
 
 Inventor, 
 
 definition of term, 10. 
 
 employment of workman to carry out ideas, 11. 
 
 importer of invention, 19. 
 
 Ireland, proceedings in, 372. 
 
 Isle of Man, 373. 
 
 Joint Applicants for patent, 5, 353. 
 
 Joint Owners, 
 
 one of, may sue, 164. 
 
 jiartition between, precedent for, 327. 
 
 Journal, 
 
 official advertisements, 389. See Advertisement. 
 
 illustrated, of inventions, 363. 
 
 copies to be on sale, ib. 
 
 abridgments of specifications to be published, ih. 
 
 Judgment, 
 
 final, for plaintiff, forms of order of, 301 — 305. 
 for defendrait, 305. 
 
 Jury, 
 
 questions for, 264 et seq. 
 
 infringement, 167. 
 
 intelligibility of specification, 266. 
 
 sufficiency of, ih. 
 
 novelty, 39, 267. 
 
 utility, 52, 267. 
 grounds of application for, 253.
 
 430 INDEX. 
 
 Known, 
 
 material, application of, to new purpose, 25 
 instrument to ditto, ib., 30, 31. 
 
 Law Officer, 
 
 proceedings before, 103, 121, 363. See Atnendment, Opposition. 
 rules and cases relating to practice before, 394, 395. 
 
 Legal personal representative, grant of patent to, 8. See Executors, 
 
 XiETTERS Patent, 
 
 origin and history of, 1. 
 
 persons entitled to apply for, 5, 353. 
 
 joint applicants for, 5, 353. 
 form of application, &c., 5, 56, 353. 
 declaration, 5, 56, 353, 37S. 
 
 provisional sjaecification, requirements of, 57, 64, 354. See Specificatiim. 
 complete specification, requirements of, 57, 69 et saj., 94, 354. 
 duties of examiner and comptroller on ajiplication for, 57, 102, 354, 3S1, 
 when deemed abandoned, 355, 378. 
 
 comptroller may refuse until specification amended, 58, 3do. 
 granted for one invention only, 124. 
 subject to appeal to law officer, 58, 102, 355. 
 
 void unless complete specification accepted within twelve months, 355. 
 opposition to, 116, 120, 121, 355, 356. 
 sealing of, 121, 123, 356. 
 provisional protection, 17, 356. 
 protection by complete specification, 69, 356. 
 extent of, 123, 357. 
 term of, 357. 
 
 fees payable to maiatain, 357. 
 compulsory licences, 358. 
 register of, 359. 
 extension of term of, 359. 
 revocation of, 114, 116, 208, 253, 277, 360. 
 rights of crown, 128, 132, 185, 361. 
 for one invention only, 164, 362. 
 loss or destruction of, 363. 
 illustrated journal of, ih. 
 museum, ib. 
 
 rights of secretary of war, 364. 
 foi-ni of, 375. 
 
 Licence, 
 
 to use patent, should be under seal, 135. 
 
 how far valid if not, (7*., 136. 
 
 is not a deed, 138. 
 
 a verbal, 139. 
 
 exclusive licensee may sue, 216. 
 
 differs from assignment, 140. 
 
 compulsory, '/'., 141, 358. 
 
 rules relating to, 390. 
 
 by whom granted, 141. 
 
 must be registered, 143. 
 
 not assignablf!, 142. 
 
 measure of damages after grant of, 205. 
 
 an exclusive, 165, 347.
 
 INDEX. i81 
 
 Licence — continued. 
 
 entry of, on register of patents, 143, 359. 
 form of application for compulsory grant of, 100. 
 of opposition thereto, 401. 
 
 of request to enter notification of licence on register, 403. 
 precedent for non-exclusive, 344. 
 exclusive, 347. 
 
 Licensee, 
 
 profits of, when considered, on question of extension, 1.33. 
 
 whether extension granted to, query, 159. 
 
 action for infringement not maintainable by ordinary, 105, 216. 
 
 exclusive, may use patentee's name in action, ib. 
 
 not exclusive user of patent in mere, ih, 
 
 security for costs by exclusive, ih. 
 
 Lost patent, how supplied, 303. 
 
 Making, 
 
 infringement by, 182. 
 
 secret, by inventor before patent, 49. 
 
 Mala fides in specification, 88. See Specification. 
 
 Mandatory orders only granted after trial, 203. 
 
 Manufacture, 
 
 what is a new, 22; 34. 
 
 a new article, 22. 
 
 a new process, ih. 
 
 a principle not a, ih. 
 
 construction of term a question of law, 38. 
 
 Manufacturer, 
 
 distinguished from inventor, 9. 
 
 profits of, distinguished from patentee's, 152. 
 
 when considered in action for infringement, 203. 
 
 Married women may obtain patent, 0. 
 
 Master liable for infringement by servant, 165. 
 
 Merit, 
 
 not necessary in importer, 20. 
 part of consideration, 53. 
 
 Misrepresentation, 
 
 in specification fatal, 88. 
 particulars of, 230. 
 
 Mistake, 
 
 in specification, 102. 
 
 by including several inventions, 386. Sec Amendment. 
 
 Monopolies, Statl^te of, 2. 
 provisions of, 3.
 
 lo:3 INDEX. 
 
 MoTiox for inspection, 249. 
 
 Museum, Patent, 363. 
 
 models to be sapplied to, 364. 
 
 XOX-USEE, 
 
 of patent, 150. 
 
 ground, for refusing extension, ib. 
 
 Novelty, 
 
 a question of fact, 39. 
 everything claimed must be new, 51. 
 claiming what is old vititates patent, 52. 
 
 want of, vitiates patent, 126. See Letters Patent, lytveiitioii, Sabjed- 
 matter. Manufacture, 
 
 OuJECTioxs, particulars of. See ParticnJars. 
 
 Offences, 
 
 falsely representing article to be patented, 371. 
 unauthorised use of royal arms, 372. 
 
 Ofkicial journal, advertisement. '&qq Advertisement. 
 
 Old. See Kaoivn. 
 
 OprosiTiox. ' __ 
 
 to grant of patent, 116, 355, 384. 
 
 rules relating to, 387. 
 
 grounds of, now available, ib. 
 
 available prior to act, ib. 
 
 where applicant has obtained invention from opponent, 117 
 
 in cases of doubt patent should be sealed, ib. 
 
 where both parties contributed to the invention, ib. 
 
 cases of workman and master, 118. 
 
 on gi-ound of previous patent, ib. 
 
 costs of opposition before law otficer to follow event, 120. 
 
 opposition to amendment of specification, 357. 
 
 notice of, by Com])troller, 120, 356. 
 
 who is entitled to be heard, 121, 122, 356. 
 
 patent sealed in absence of, 121. 
 
 to amendment of specification, ib. 
 
 notice of, 387. 
 
 form of, to grant of patent, 399. 
 
 of opposition to grant of compulsory licence, 400. 
 
 P\ur OF Invention. See Rubordinatc Integer ami ('oiiibiiiufi'ni. 
 infringoment of, 174, 176 et seq. 
 when okl, 43, 44.
 
 INDEX. 433 
 
 Particulars, 
 
 of breaches, 222, 301. 
 
 must disclose case to be made, ih. 
 
 instances of sufficient and insufficient particulars, 223 et set/. 
 must state what part of invention has been infringed, 22-1, 29j, u. 
 ordinary jurisdiction of Court as to, 225. 
 particulars postponed to discovery, ib. 
 form of order for further and better, 295. 
 of objections, 
 
 provisions of statute, 228, 361. 
 
 rules of Court, 229. 
 
 where several defendants, ib. 
 
 distinguished from particulars of breaclies, ib, 
 
 prior user, time, place and persons, 230. 
 
 prior publication, 235. 
 
 present addresses, ib. 
 
 evidence admitted of particulars sufficiently wide, 233. 
 
 instances of sufficient and insufficient particulars, 2J3 et scq. 
 
 pages of imblication to be given, 23G. 
 
 amendment of particulars (terms on which allowed), 234, 3(il. 
 
 when grantee not true inventor, 23(5. 
 
 in cases of fraud, 237. 
 
 in cases of non-conformity in specifications, 237, 238. 
 
 form of, 296. 
 
 fonn of order for further particulars, 298. 
 
 liberty to amend p)articulars, ib. 
 
 Parties to action for infringement. See Iiifrincjement. 
 
 Partners, 
 
 estoppel of retiring, 140. 
 
 plea of invalidity, when allowed, ib. 
 
 Patent, 
 
 letters, to and by whom granted, 1, 6. See Letters Patent. 
 conditions of grant, 3. 
 form of application for, 5. 
 
 what it must disclose, ib. 
 whether granted to an importer doubtful, voided by false suggestion, 8. 
 grant to joint applicants, ib. 
 or to legal personal representative, ib. 
 consideration for grant of, 8. See Cvnsideratiun. 
 determines on non-payment of fees, 357. 
 ofiice, 366. 
 
 Patentee, 
 
 construction of, 5. 
 alien may be, ib. 
 
 Penalties. See Offcnrca. 
 
 Perpetual injunction. See Injnnctvin. 
 
 Petition, 
 
 to Court sulistituted f<n- scire facias, 208. 
 
 to extend term of patent, 145. See Extension. 
 
 by whom presented, 209 et scq. 
 
 for revocation, by whom presented, 277. See Beiricediov. 
 
 form, 288. 
 
 T. F F
 
 484. INDEX. 
 
 Petitionee, 
 
 for extension, 145, 359. 
 
 may give evidence of profits, 152. 
 
 Physical user of invention, 165. See Infrimjemmt. 
 
 Portion, 
 
 action by assignee of, 163. 
 
 Possession, mere, no infringement, 189. 
 
 Post, documents may be sent bj-, 368. 
 
 Postponement of trial, 253. 
 
 Practice. See snh titulis Infrinfjement ; Injunction; Trial, &c. 
 
 Precedents for transfer of interests in patents, 
 sale to a company, 322 — 323. 
 agreement to obtain and assign, 324 — 327. 
 
 between co-owners for partition, 327. 
 for working and selling invention, &c., 329 — 334. 
 assignment of a patent, 334 — 344. 
 non-exclusive licence, 344 — 347. 
 exclusive licence for a district, 347 — 349. 
 mortgage of a patent, 349—352. 
 
 Pkeji'DICIal concealment by jjatentee, 92. 
 
 Prerogative. See Croivn. 
 
 Presumption in favour of patent with fair disclosure, 72. 
 
 Principle, 
 
 no invention can be claimed in a, 23. 
 
 discovery of a principle with the method of applying, 78, 93. 
 
 Prior Publication. See Puhlicatioii. 
 
 Prior User. Sae Infrinycment ; Particulars; Letters ratod. 
 must be public user, 37. 
 secret use does not amount to, il>. 
 no longer ground of opposition, 116. 
 confirmation of patent notwithstanding, 162. 
 wliat amount of, invalidates patent, 169 et seq. 
 objection on ground of, 231. 
 evidence of, not disclosed in particulars of objection, 233. 
 
 Phivy Council. See Extension. 
 ]»ower of, to avoid grant, 131. 
 ai>])licatiou for extension to, 145, 359. 
 will not inquire into novelty, 150. See Estension. ■ 
 may nit with assessor.s, 361. 
 mles of, 415. 
 
 I 
 
 i
 
 INDEX. ■ 135 
 
 Process. See Rahjcd-matter. 
 
 distinction between process and new snbstiinco, 23. 
 infringement of patent for, 17(i. 
 selling article made abroad by patented, 190. 
 subject-matter of patent, 24. 
 
 Profits. See Invention. 
 
 of patentee and manufacturer, 1 52. 
 
 how estimated, ih. 
 
 by licences must be added, 153. 
 
 Proloxqation of patent. Sen Extension. 
 
 Property, right of, in infringing articles, 202. 
 
 Protectiox, 
 
 by complete specification, 356. 
 provisional, 17, 356. 
 
 Provisional 
 
 protection, 16. 
 
 provisions of Act as to, 17, 356. 
 specification, 59, 64, 354. See Specification. 
 
 Public use, what amounts to, 37 — -39. 
 experiment does not, 38. 
 
 Public ATiox, 
 prior, 41. 
 
 in a siieculative specification, 43. 
 to anticipate patent must be sufficient, 45. 
 in specification, book or newspaper, 44. 
 
 book need not be sold, if exhibited for sale or open to inspection, 46. 
 British Museum Library, il>. 
 Patent Office Library, ib. 
 objections on ground of prior, 235. 
 
 Purchase, mere, of patented article no infringement, 189. 
 
 Eebutting evidence by plaintiff, 260. 
 
 Eecitals, 
 
 must be four in num.ber, 125. 
 false suggestion in, ih. 
 
 Reference, form of order for, 299. 
 
 Register, 
 
 of patent agents, 380. 
 
 of patents, 20, 143, 359, 367, 391. 
 
 inspection of, 367. 
 
 rectification of by Court, 143, 367, 373. 
 
 clerical error in, 367. 
 
 prima facie evidence of matters therein, 359, ih. 
 
 no notice of trust receivable on, ih. 
 
 inspection of, 359.
 
 •i36 INDEX. 
 
 Eegister — continued. 
 
 comptroller may correct eiTors of, 144, 367. 
 
 fraudulent entry on, 144. 
 
 entiies of grant on, 359. 
 
 orders affecting patents, to be entered, ib. 
 
 copies of necessarj' documents to be supplied to comptroller, ib. 
 
 former registers to be deemed continued, 373. 
 
 forms of application relating to, 403. 
 
 Eexetval of English, after exj^iry of foreign patent, 151. 
 
 Eepeal of statutes, 376. 
 
 Eepkesextative case, form of order for trial of, 300. 
 
 EESTRAI^■T of trade, covenant not to manufacture -^-itbout patented iiiYou- 
 tion not in, 142. 
 
 Eevocatiox, 
 
 scire facias abolished, 114, 116, 208, 253, 277, 360. 
 on petition to Court. 114, 210, 360. 
 who may petition, 208, 360. 
 provisions of the Act of 1883, 208, 209, 360. 
 grounds for revocation, 209. 
 practice on petition for, 277. 
 parties, ib. 
 particulars of objections, ib. See Particulars, 360. 
 
 amendment of, 278, 360. 
 nght to begin and rejjly at trial, 279. 
 
 ■where patent revoked on the ground of fraud, patent to true 
 inventor, 360. 
 
 Eival applicants, 16. 
 
 ECLES, 383 et seq. 
 
 under 5 & 6 Will. 4, c. 83...415 et seq. 
 
 Sale, 
 
 infringement by, 189. See Infringement. 
 
 by patentee carries right of free disposition, 191. 
 
 Samples, 
 
 of infiinging article, when ordered to be delivered, 249. 
 forra of notice of motion to take, 291. 
 of order for delivery of, 292. 
 
 Scire faclvs, proceedings by, abolished, 114. 110, 202, 253. 277, 360. 
 
 ScoTL^VND, proceedings in, 372. ' 
 
 Seal, 
 
 when affixed to patent, 121, 350. 
 of Patent Office, 123, 366.
 
 INDEX. 487 
 
 Secret, 
 
 use of invention prior to patenting, 49, 50. 
 
 of trade, 129. 
 
 no means of enforcing agreement to keep a trade, ih. 
 
 if subject of intended patent, seciis, ih. 
 
 use, anticipation by, 40. 
 
 Servant infringing, 1G5. 
 
 Ships, 
 
 use of invention by foreign, 187, 364. 
 by British, abroad, 187. 
 
 Specific performance of agreement to assign, 140. 
 
 Specification, 
 
 provisions of Act of 1883, as to, 56 et seq., 354. 
 rules relating to, 386. 
 title of, 60, 354. 
 
 requisites for, ih. 
 
 claims limited by title, ih. 
 
 must not be too general, ih. 
 
 must correspond with invention, 61. 
 
 must be consistent with invention, 63. 
 
 vagueness fatal, ih. 
 
 specification must not be at variance with, ih. 
 Provisional, 64. 
 
 not now published, 48. 
 
 must describe nature of invention, 64, 354. 
 
 and agree with complete, 65, 354, 378. 
 
 must identify invention, 66, 354. 
 
 distinguished from final, 67, 354. 
 
 must conform with provisional, 58, 102, 104, 354, 378. 
 
 rule laid down in Siddell v. VicJiers, 69. 
 
 form of, 411. 
 Complete, 
 
 what it is, 69. 
 
 must be sufficient, 70, 86, 88. 
 
 degree of sufficiency, 87. 
 
 must be precise, 71. 
 
 should make fair disclosure, 72. 
 
 must be intelligible and sufficient, 73, 74. 
 
 construction of, 74 d sty. 
 
 benignant construction, 75. 
 
 "as herein described," 77, 78. 
 
 to whom intelligible, 80, 81. 
 
 will be fairly construed, (7^, 228. 
 
 use of general words in claim of, 79. 
 
 must distinguish new from old, ih. 
 
 must be intelligible, 80. 
 
 to whom intelligible, 81, 86. 
 
 concealment in, 88. 
 
 misleading, ib. 
 
 in case of, of communication from abroad, 91. 
 
 drawings in, how used, 80. 
 
 error curable in, 85. 
 
 sufficiency, a question for jury, 73, 266.
 
 438 INDEX. 
 
 Specitication — continued. 
 Complete — coutinued. 
 
 what constitutes sufficiency, 88 — 92. 
 intelligibility, novelty, and utility, 264 et sc<2. 
 degrees of sufficiency required, 91 — 92. 
 suppression or false suggestion fatal in, 88 — 92. 
 must be read in relation to existing knowledge, 89. 
 general rule as to sufficiency, 89. 
 unnecessary and misleading details fatal, 94. 
 must contain a distinct claim, 94. 
 
 and not too large, 95. 
 distinction between describing too mucb and claiming too much, 
 
 95, 
 disclaimer of what is old, 96, 97. 
 
 Sect. 5 of Patents Act, 1883, directory (SiddellY. Vickers), 96. 
 improvements in old processes must be so claimed, 96. 
 combination of old parts, ditto, 98. 
 examples of, 307- -321. 
 
 amendment of. See Amendment. 
 extension of time for accepting, 407, 412. 
 form of, 411. 
 
 Statement 
 
 of claim, 221. 
 
 form of, 294. 
 
 of defence, 226. See Infringement, action for. . 
 
 Statute, 
 
 of Monopolies, its origin, 2. 
 
 declares common law, ih. 
 
 creates no right, 3. 
 
 of 1883, 353 et seq. 
 
 of 1885, 378. 
 
 of 1886, 379. 
 
 of 1888, 380. 
 
 Subject-matter. See Infringement, Letters Patent, Invention, cfrc, rfc, dc. 
 
 of patent must not be illegal or immoral, 127. 
 
 process may be, 24 et seq. 
 
 piinciple, when may be, 23, 25. 
 
 combination, 33, 98. 
 
 subordinate combination, 172, 177. 
 
 subordinate integer, infringement of, when, 172, 177. 
 combination, ditto, ih. et seq. 
 Substance, 
 
 now, subject-matter of patent, 23. 
 
 of invention, infringement of, 174 et seq. 
 
 Subtraction from known machine, 27. 
 
 Sufficiency, 
 
 of specification, 73. 
 question for jury, 74. 
 what is, 87. 
 
 Suogestionh, 
 
 by one person to another, 1 1 . 
 
 in book or publication, 43. 
 
 in recitals must not bo false, 125 et seq.
 
 INDEX. 439 
 
 Suppression of iuformation by patentee, 88. 
 
 Taxation of costs. Sec Costs, 
 
 Threats, 
 
 action for injunction to restrain, 282 et scq. 
 
 statutory provisions, 282, 362. 
 
 old practice, 283. 
 
 validity of patent can be questioned in action for, 283. 
 
 "by circulars, advertisements or otherwise," meaning of, ib. 
 
 provisions as to particulars do not apply to this action, 284. 
 
 must bo brought with duo diligence, 285. 
 
 interlocutory injunction, when granted, ih. 
 
 damages in, ih. 
 
 Title of specification, 60 et seq. See Specification. 
 
 Trial, 
 
 of action for infringement, 251, 277, 278, 361. 
 
 constitution of Court, ih., 252. 
 
 when by jury, 253. 
 
 postponing, 'ih. 
 
 right of opening and replying at, 254. 
 
 issues on plaintiff at, 255, 257, 258. 
 
 expert witnesses, 256. 
 
 prima facie evidence by plaintiff, 259. 
 
 when plaintiff may produce rebutting evidence, 260, 261. 
 
 defendant cannot produce further evidence, 261. 
 
 no objection to particulars allowed at, ih. 
 
 no evidence admitted not raised by pleadings, 263. 
 
 Trust, 
 
 not receivable on register, 20, 143. 
 particulars of breach of, 229. 
 
 Trustee in bankruptcy may sue, 165. See Practice ; Parties. 
 
 Undue Influence, particulars of, 229. 
 
 Use, 
 
 what constitutes infringement by, 185 et seq. See Infringement. 
 objection on ground of prior, 229 et scq. 
 
 Utility, 
 
 of invention, 53. 
 
 substantial improvement constitutes, ib. 
 
 not necessary in every part, 54, 
 
 Privy Council will not inquire into, 149. See Extension. 
 
 presumption by non-user against, (7). 
 
 Verbal licence by patentee, 139, 142.
 
 440 INDEX. 
 
 War, i^atents for munitions of, 364. 
 
 Workman', 
 
 assisting master, 10, 13. 
 
 invention by, 10. 
 
 in cases of opposition, 118. 
 
 Writ, 
 
 form, of indorsement on, 287. 
 
 in action for infringement, 215. 
 
 to restrain thi'eatened infringement, th. See Infri iifjement Action. 
 
 no action to restrain threats, form of, 287. 
 
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