::'■••■■.■■-<■;■;■■■>■•■■■■■-■■■ £88&£ '--"• ■.■^;- ■■;■■■'■■ Sg lip —HE hmHE ■gBtt « NE Wm. CI PrifiUrs and . 27, FI BRETT'S C( 01 ENGLAND R A. n \ and Kqui ke and Bret 1 .i-cs ii %* The main idea o to deal with pasj law, ( to understand the presi The Lain 3 recommend th< lly popular. . . I he man: that Mr. l'rett UNIVERSITY OF CALIFORNIA LOS ANGELES SCHOOL OF LAW LIBRARY P MITED, aw Reporting e!c, Snt laws ,;w, LL. Pi. London Exhibitioner in Keal 169 ; Joint Author of Act, 1883;" and of rated Law Society, living law, and only to enable the reader able confidently to they will become and we have little We are of opinion LEADING CASES IN MODERN EQUITY. By Thomas Brett, of ' t Law, LL.P., Joint Author of " Clerke and Brett's Conveyancing ," and Lecturer in Equity to the. Incorporated Law Society, &c. " There 1 1 im which the student can learn the most important decisions " — Jurist. Specially recommended as a Text Book for "The Final " by the Solicitors' Journal. In 1 published, royal 8vo, cloth. 5$. A SYNOPSIS OF THE NEW ESTATE DUTY (Finance Act, iS.,4 . With a copious and useful Index. The Forms used and Instructions as to the Duty. To which 1 iii rm used in the payment of the Death I'uties. I E. H RRis, of the ! 1 - ■■ \ Duty Office, Somerset House, Author of the "Table of the English ! ' tii -," &c. Just published. Second Edition, revised, demy 8vo, cloth, 10s. 6d. THE SALE OF GOODS ACT, 1893, including the Factors Acts, Appendices, containing Statutes and Notes, &c. By Dial i i of the Act). lalifi) d l" write a text l>'>.,k on the above subjects than !, and the Sale of Goods Bill, 1889." — Law Times. Editi li my 8vo, cloth, 25.?. DARBY AND BOSANQUET ON THE STATUTES OF II Ml I VTIONS. Second Edition. By F. A. Bosamqvbt, Q.C., and J. R. V.Marchant, Barrister- 1 kinv 8vo„ cloth, 20J. THE LAW OF HUSBAND AND WIFE. By Charles Crawley., h n, Barrister-at-Law, late Fellow of Downing College, Cambridge, and Author of i and well-written treatise on a subject with regard to which such a work was greatly • ntil. rehensive and valuable one on the law of husband and wife with which we Mr, 27. FLEET STREET, LONDON, E.C. WM. CLOWES AND SONS, Limited, LAW PUBLISHERS, Demy 8vo, cloth, 12s. CATHOLICS. A Manual of the Law Specially Affecting Catholics. ByW, S. Lilly, LL.M., of the Inner Temple, Barrister-at-Law, Secretary to the Catholic Union of Great Britain, and J. P. Wallis, M.A., of the Middle Temple, Barrister-at-Law. Second Edition, Revised and Enlarged, crown 8vo, cloth, 7J. 6d. THE INSTITUTES OP JUSTINIAN. Illustrated by English Law. Intended chiefly for Students at the Universities and Inns of Court. By James Williams B.C.L., M.A., of Lincoln's Inn, Barrister-at-Law. *** In this Work the Institutes are, as far as possible, compared paragraph by paragraph with English Law upon the same subjects. "A commentary upon the Institutes, which will be of great use to candidates for legal honours at the Universities." — Law Times. " We can hardly speak too highly of the design of this small work, and the labour bestowed upon it."— Law Student's Journal. Second Edition, thoroughly revised, demy 8vo, cloth, 12$. 6d. THE LAW OF COPYRIGHT. Including the American Copyright Act, the "Berne Convention, the Consequent Order in Council and Cases to Date. By Thomas Edward Scruttox, M.A., LL.B., Barrister-at-Law, Author of "Charter Parties and Bills of Lading," &c, and Lecturer in Common Law to the Incorporated Law Society. "Mr. Scrutton's book is well written and has been carefully revised, and will be found a safe and acceptable guide through the mazes of the existing law." — Lam Journal. " We think it is not only the easiest, but the most useful and practical work on copyright." — Law Quarterly Review. Fifth Edition, royal 8vo., cloth, 17.?. 6d. FORMS AND PRECEDENTS FOR USE UNDER THE CONVEYANCING ACTS, 1881 and 1882, and the SETTLED LAND ACTS, 1882 to 1890. By Edward Parker Wolsthnholme, M.A., of Lincoln's Inn, Barrister-at-Law, one of tne Con- veyancing Counsel of the Court. Fourth Edition, thoroughly reused, demy 8vo, 1100 pages, cloth, 35J. EMDEN'S PRACTICE IN WINDING-UP COMPANIES AND FORMS ; a Concise and Practical Treatise upon the Law and Practice relating to the. Winding-up of Companies, with all the necessary Forms for use in winding-up. By His° Honour Judge Emden, Author of " The Law of Building, Building Leases, and Building Contracts," &c. Demy 8vo, cloth, -js. 6d. ; cash price, 6s. THE ANNUAL (WINDING-UP) PRACTICE FOR 1894. By His Honour Judge Emden and Thomas Snow, M.A. (Editor of "The Annual Practice"). Thi* book is Intended to form a Supplement to the Fourth Edition of Mr. Emden's " Practice and Forms in the Winding-up of Companies." It is a handy work upon the Practice in the Winding-up of Companies under the Companies (Winding-up) Act, i8go. It contains the cases decided under the Act, and the Rules, Regulations, and Orders thereunder and relating thereto. Second Edition, revised, royal 8vo, cloth, 35^. THE LAW OF TRADING COMPANIES. Including the recent Acts. Arranged in a Series of Titles in Alphabetical Order. By Edward Manson, of the Chancery Bar. An invaluable digest of easy reference, not only to the legal profession, but also to directors secretaries, and managers of public companies. " We do not agree with the initial words of Mr. Manson's preface that ' some apology is needed for a new book on company law.' Books are much needed on every branch of law which treat law as this does. ... A genuine effort in a very desirable direction has been made. It deserves cofdial recognition " — Law Times. Seventh Edition, royal 8vo, cloth, 38.?. ROBSON'S LAW OF BANKRUPTCY. Containing a Full Exposi- tion of the Principles and Practice of the Law. By George Young Robson, Esq Barrister- at-Law. "We know of no better treatise on this branch of our law, and, looking to the number of edition* through which it has passed, our opinion is apparently shared by the profession." — Law Times. Demy 8vo, cloth, ioj. ARTISTIC COPYRIGHT (The Law of), including Copyright in Paintings, Drawings, Photographs, Engravings, Sculpture, and Designs. With an Appendix- of Statutes and Collection of Precedents. By Reginald Winslow, M.A., LL.B., of Lincoln's Inn Barrister-at-Law. * ' "This is a book we can thoroughly recommend to any person, whether lawyer or artist who is interested in the subject." — Athenaum. *'Mr. Winslow . . . . is clear, accurate, and practical, and has made a valuable contribution to the subject with which he deals."— Law Journal. " The object of this book is. to explain the rights of Authors of artistic works of every description and t is so satisfactorily attained, that the work is one that should be in the hands of every artist."— Magazine 27, FLEET STREET. LONDON. FT ENGLISH PATENT PRACTICE. WITH ACTS, RULES, FORMS, AND PRECEDENTS. HENRY CUNYNGHAME, M.A., hi ' OF THE INNER TEMPLE, BARRISTER-AT-LAW ; M.I.E.E. ; LATE ROVAL ENGINEERS. Author of "A Treatise on the Law of Electric Lighting." ILLUSTRATED. LONDON: WILLIAM CLOWES AND SONS, Limited, 27, FLEET STREET. 1894. 09(35 p 1654- LONDON I PRINTED BY WILLIAM CLOWES AND SONS, LIMITED, 8TAMFORD STUEET AKD CHARIXO CKOSS. ft PREFACE. The Law of Patents depends upon the prerogative of the Crown as protector of trade to grant monopolies for the use of new inventions, but has been modified and restricted by statute. From this two main principles follow, from which have been derived most of the rules of Patent Law. In the first place the Crown acts for the encouragement, not of science or of meritorious discoverers, but of trade ; and hence the novelty and utility demanded of a patent must be trade novelty and trade utility, and not merely scientific excellence or importance. It is for this reason that the commercial success or failure of an invention plays so important a part in determining the validity of a patent for it, and a short chapter has been devoted to this subject. In the next place, since a patent exists only by virtue of a royal grant, it must be interpreted according to the rules which govern the interpretation of grants by the Crown, which stand on a very different footing from grants between subjects. It is for this reason that failure in any part of a patent avoids the whole, and that, although in the construction of a patent the natural meaning of words is adopted, yet the grant is con- strued more strictly against the grantee than in cases of ordinary grants. In order to compress the subject into the compass of a . moderate-sized book, and yet to insert all the useful cases, it ^ has been necessary to condense the style, to avoid repetition, and to make a liberal use of cross-references. 4 a 2 ^ 795680 IV PREFACE. For convenience of reference, the various rules of law have been arranged so far as is practicable in a series of propositions or sectional headings distinguished by thicker type. In the table of cases the dates are given, and also the subject-matter of the patent, The new circular of information issued by the Board of Trade has also been inserted. The index, it is believed, will be found sufficiently exhaustive. This book is mainly intended for professional men. Those unaccustomed to drawing patents will, if their inventions are of any real value, find it greatly to their interest to have their patents well drawn from the beginning by some competent adviser. It is quite as difficult, and even much more difficult, to draw a good specification, as it is to draw a will or conveyance of property, and bad drafting inevitably leads to expense, if not to a total loss of the patent. On the other hand, an inventor, even when he has secured competent professional assistance, should not neglect to peruse carefully the whole draft, so as to see that his ideas have been well interpreted, and nothing omitted. There is a tendency on the part of inventors to make appli- cation before their inventions are really ripe. This arises from the very natural fear of anticipation, or of their secrets being discovered by others. There is some foundation for this fear, for an examination of the patents taken out in various years will shew the extraordinary tendency of the human mind to run in grooves. One year will abound in inventions for electric lamps, the next will perhaps be notable for refrigera- ting apparatus ; then will come a tide of new proposals for pencils and pens, and in the next few years a remarkable crop of patents for paraffin lamps. Most extraordinary instances have come within the author's knowledge of inventions which were certainly made indepen- dently, and yet which corresponded even in minute details. PREFACE. V Therefore, when an inventor is working on a subject that happens to be in fashion, he should be rapid. Where, how- ever, he is at work on some new or neglected branch of inven- tion, he can afford to be slow, and in this latter case the advantage to his patent will be very great. Before developing his idea, it is in general better not to consult what has been previously done, for this often tends to divert the mind and to destroy originality ; but once the idea is well developed and clear, the inventor should make himself master of the principal prior patents connected with it. He is certain in this way to find something to avoid, and almost as certain to find something which he may carefully adopt in combination with parts of his own proposals. In almost every case it is wise to have working-models made, for small unexpected defects often delay and even defeat the most ingenious inventions. Before having these models made he should carefully plan them out in detail. The author has seen very large sums of money wasted which might have been saved if more care had been devoted, before the models were made, to the development and perfection of details. Machinery design almost always pro- ceeds from the complex to the simple ; one can hardly take up a patent without seeing a lever which might have been suppressed, or a part which might have been simplified with advantage. Care should be taken to see not merely that the design is theoretically correct, but that it is one that can be carried out cheaply and successfully. It is a great mistake in general to order finished models at once ; the first working models should be utterly devoid of ornamentation, or of any finish whatever, except in the working parts, for only in the very simplest cases is it possible to avoid the necessity of more than one model. On the other hand, when preparing a model to exhibit to commercial men, it is well to have it properly VI PREFACE. finished and good-looking, for it takes a good mechanician to recognise the value of a model in the rough. It is above all needful before starting to work out an inven- tion to see that sufficient funds are available to complete it. In all the stages of application for a patent those who can afford it will do well to consult a patent agent. The services these gentlemen can render are usually worth to the inventor far more than the cost of obtaining them. Unfortunately, owing to the present state of the law, a body of ignorant pretenders has sprung up, who pass themselves off as patent agents without having been regularly placed on the roll, and are therefore not under any control nor have passed any examinations. They thus possess no credentials of character or competency. Inventors are recommended to see that the patent agents they employ are duly on the roll of patent agents, a printed list of whom can be obtained at the Patent Office. Lastly, inventors may be reminded that it is not enough to make a clever invention; when the invention has been perfected, the hardest part of all comes, namely, to cause it to be adopted and worked to the advantage of the inventor. The words of Sir Hugh Piatt in 1589 are as true now as they were when he wrote them : " I have always found it in mine own experience an easier matter to devise manie and profitable inventions, than to dispose of one of them to the good of the author." 1 have to thank Mr. Lloyd Wise, President of the Chartered Institute of Patent Agents, for many valuable suggestions, too numerous to specify in detail. H. CUNYNGHAME. 2 Papeb Buildings, Temple, April, 1894. TABLE OF CONTENTS. INTRODUCTION. PAGE 1. Nature of inventions ; no property in them at common law . . 1 2. The origin of the law of patents 3 3. General view of the present law . .... 20 CHAPTER I. THE SUBJECT-MATTER OP LETTERS PATENT. 1. No patent can derogate from a former grant .... 37 2. A patent must be for some kind of manufacture .... 3^ 3. A patent cannot be granted for a bare principle .... 45 4. A patent may be granted for a process which simply omits a step in an already known process . . . . . .52 5. Patents for combinations and improvements .... 53 6. It is no derogation from a patent to grant another for an improve- ment upon it, although the patent for the improvement cannot be used without the consent of the prior patentee ... 59 7. A patent may cover not only machines as they exist, but also the same machines as subsequently improved .... 60 8. If any substantial or essential part of an invention fails, the whole patent is void, for the grant is indivisible, and goes to the whole consideration ......... 60 9. The subject-matter must not be contrary to public policy . . 63 CHAPTEE II. UTILITY. 1. An invention must possess utility at the time it is patented . 2. It is the invention that must be useful, not merely the result o the invention ........ 3. The degree of utility may be slight ..... 4. Effect of failure of utility in a material part of the patent 65 69 70 70 Vlll TABLE OF CONTENTS. CHAPTER III. NOVELTY AND THE AMOUNT OF INVENTION OR INGENUITY NECESSARY TO CONSTITUTE IT. PAGE 1. General remarks, ambiguous use of the term " novelty" . . 74 2. Ingenuity is to be judged in the light of the state of public know- ledge at the time of the invention ..... 77 3. The use of an old machine or thing for a merely analogous purpose is not the subject of a patent ...... 87 4. The substitution of what is afterwards discovered to be a mere analogue, or mechanical equivalent, will not avoid a patent, if, in the state of knowledge at the time of the patent, it was not known to be an analogue ....... 94 5. If there be invention, the degree of it may be slight ... 94 6. Examples of cases in which the invention was held to be sufficient 97 7. Examples of patents held bad, for want of ingenuity . . .118 8. Want of ingenuity in part of the subject-matter of a patent will render it void ......... 133 CHAPTER IV. THE EFFECT OF COMMERCIAL SUCCESS ON THE VALIDITY OF A PATENT. 1. General remarks ......... 134 2. The effect of commercial success as evidence of utility . . .134 3. Commercial success as evidence of novelty . . . .136 4. Commercial success as evidence of ingenuity .... 136 CHAPTER V. ANTICIPATION. 1. A patent will be bad if prior public knowledge of it can be shewn . 138 2. Effect of prior user of a public character ..... 140 3. Effect of prior user of a private or experimental character . . 142 4. Prior user of such a character that the results of the invention are published, but not the means whereby those results were obtained .......... 145 5. Prior user by sale or offering for sale ..... 148 6. The prior user must be in the United Kingdom .... 148 7. Prior user at public exhibitions, under the Act of 1883 . . 149 8. Prior user which has been abandoned ..... 149 9. Prior publication by documents in general, and sufficiency of de- scriptinn in the anticipating documents . .... lol TABLE OF CONTENTS. IX PAGE 10. Prior publication in a provisional specification . 11. Prior publication by a complete specification 12. Prior publication in a bouk . - . 13. A book in a foreign language ..... 14. Prior publication by drawings without description 15. Prior publication by models ..... 16. The prior publication must have been accessible to the public 17. Want of novelty in a part of an invention will invalidate the whole patent .......... 15G 157 157 158 358 158 1G0 CHAPTEE VI. THE SPECIFICATIONS AND TITLE OF THE PATENT. 1. General principles regulating the choice of a title . . . 10'J CHAPTER VII. THE PROVISIONAL SPECIFICATION. 1. General remarks . . . . • • • • .108 2. The object of a provisional specification is not to dtsciibe how the invention is to be performed ...... 169 3. The complete specification will not be allowed to travel outside the limits of the provisional — Disconformity . . . .170 4. A provisional specification may be consulted to explain the com- plete specification, but not to cure defects in it . . . 176 5. If needful the provisional specification must have drawings attached 177 6. Abandonment of a provisional specification .... 177 7. The effect of provisional protection is to prevent public user between the date of application and the sealing of the patent . 177 CHAPTER VIII. THE COMPLETE SPECIFICATION. 1. General remarks ......... 178 2. The specification should point out whether the invention be a thing, a process, a combination, or an improvement .... 178 3. Patent for a new machine ....... 179 4. Claim lor an improvement ....... 179 5. Claim for a combination . . . . . . . .180 6. A complete specification must particularly describe and ascertain (1) The natuie of the invention, (2) In what manner it is to be performed, and (.".) Must be accompanied by drawings if required 184 X TABLE OF CONTENTS. PAGB 7. The subject-matter must be proper 135 8. The complete specification must conform to the provisional . . 185 9. If the specification fail in a material point the whole patent fails . 185 10. The specification must be clear and unambiguous . . . 185 11. The specification must clearly distinguish what is new from what is old .......... 186 12. And what is useful from what is useless ..... 186 13. In claiming an improvement it is not necessary to explain why it is an improvement ........ 187 14. Not needful to describe any obvious or well-known step . . 187 15. Not necessary formally to disclaim what is obviously old . . 187 16. Not vitiated by the claim of some non-material part, which turns out not to be useful (in the absence of fraud) .... 187 17. Not necessary to describe every known method .... 188 18. Not necessary to describe the best method, but necessary to describe the best method known to the patentee ..... 188 19. The specification must be intelligible to an ordinary workman . 188 20. Without further experiment ....... 190 21. The inventor must reveal the best method with which he is acquainted ......... 191 22. The specification must not contain any misltading or false state- ments or suggestions . . . . . . . .192 23. An obvious error will not vitiate a patent ..... 193 CHAPTER IX. THE CLAIMS. 1. The nature, functions, and objects of claims .... 195 2. Everything not claimed is treated as disclaimed .... 196 3. Claims must be unambiguous and clear ..... 196 4. The claim must be considered with reference to the specification . 196 5. A claim of " every method by which a thing can be done " is bad . 197 6. A patentee is strictly held to his claims ..... 197 7. Where a claim may be read as merely ancillary, this will be done to save the patent . . . . • « • 1^8 CHAPTER X. THE DRAWINGS. 1. Drawings are to be attached to specifications if required . . 201 2. Drawings are to be taken as part of the specification . . . 201 3. But it is not sufficient to shew an improvement by a drawing, if it is not claimed ......... 202 TABLE OF CONTENTS. XI l'AGB 4. Drawings, if intelligible, need not be well executed . . . 202 5. Anticipation by drawings ....... 202 6. If the provisional specification has a drawing, reference to it may be made in the complete specification ...... 202 CHAPTER XI. CONSTRUCTION OF SPECIFICATIONS. 1. The beneficial construction ....... 203 2. The title-specification and claims may all be looked at to explain one another . . . ... . . . . 209 3. A patent is to be construed with reference to public knowledge at the time 210 4. A patent which has stood the test of time should be favourably construed . . . . . . . . . .211 5. Effect of the use in specifications of foreign words ; " manufacture"; "as above described"; "other substances"; "mechanical equivalents"; "analogous"; " more or less " ; "effect '; "a"; "and"; "etc."; "or"; "s" 211 CHAPTER XII. AMENDMENT OF THE SPECIFICATION. 1. Practice prior to the Patents Act, 1883 .... 2. Amendment under the Patents Act, 1883 .... 3. Procedure when no action is pending .... 4. Procedure when an action is pending .... 5. Opposition to the amendment ...... 6. Hearing of the application, and conditions imposed 7. Nature of amendments allowed ..... 8. Amendment dates back to date of patent .... 9. Title, provisional, complete, and drawings, all may be amended 10. Effect of an amendment widening scope of the patent would be to invalidate it ....... . 11. No damages for infringements prior to amendment except by leave 225 12. Amendments made out of caution 13. Amendment of clerical errors . 14. Costs ..... 215 215 216 216 218 219 221 224 224 225 225 226 226 Xll TABLE OF CONTENTS. CHAPTER XIII. PATENTEES. 1. Who may be ......... 2. Patents granted to infants, lunatics, married women, and aliens 3. Legal representatives .... 4. International giants for foreign inventions 5. First and true inventor .... 6. Assistance of servants and workmen 7. Communications from abroad . 8. Meaning of the word patentee . 228 228 229 229 229 230 232 231 CHAPTER XIV. PATENT AGENTS. 1. Patent agents, under tbe Act of 1883 235 CHAPTER XV. PROCEDURE TO OBTAIN A PATENT. 1. Whether to send in a provisional or a complete specification first instance .... 2. Procedure in sending in an application 3. Patents contrary to law or morality refused 4. Report of the examiner . 5. Acceptance of tbe application . 6. Sending in the complete specification 7. Acceptance of the complete specification 8. Sending in the complete specification with ihe applicat 9. Rival applications, intei ference 10. Powers of the comptroller 11. Appeals ..... 12. Amendment of the specifications 13. Constitution of the Patent Office, and powers of the comptrol in tbe 237 239 241 241 241 242 244 244 244 245 245 245 245 CHAPTER XVI. OPPOSITION TO THE GRANT. 1. Practice before Patents Act, 1883 246 2. Procedure under Patents Act, 1883 246 3. Grounds of opposition . . . . ... • • 247 4. Opposition on ground that the invention was got from the opponent 247 TABLE OF CONTENTS. Xlll 5. Opposition on ground of prior grant on prior application C. Opposition on ground that patentee is seeking to put into his patent his opponent's interim invention . . 7. Hearing before the comptroller ...... 8. Appeals to the law officer ....... 9. Opposition on ground of fraud ...... CHAPTER XVII. GRANT OF THE PATENT. Form of the grant ..... Note (a). No estoppels against the Crown „ (b). Meaning of the word patentee „ (c). Great Britain and Isle of Man „ (d). Powers of search obsolete „ (e). Revocation clause . „ (/). Beneficial construction clause Duration of the grant Lost patents .... 1. 2. 3. 4. 5. 6. 7. 8. 9. 10. Sealing of a patent notwithstanding prior seal CHAPTEE XVIII. REGISTER OF PATENTS. 1. The keeping of the register, and what will be entered thereon TAGE 24y 253 254 255 256 258 2(51 263 263 263 263 265 265 266 266 267 CHAPTEE XIX. FEES. 1. Fees under the new rules, 1892 2. Enlargement of time for paying fees 3. Stamps .... 4. Privy Council fees. 270 270 271 271 CHAPTER XX. CKOWN RIGHTS. 1. Crown now cannot use patent without compensation to patentee CHAPTEE XXI. FOREIGN GOVERNMENTS. 1. Cannot bo made amenable to English law . 273 XIV TABLE OF CONTENTS. CHAPTER XXII. ASSIGNMENT, DIVISION, MORTGAGE AND DEVOLUTION OF PATEN DEATH OR BANKRUPTCY, CO-OWNERSHIP AND PARTNERSHIP IN PA 1. Assignments ..... SJ. Division of a patent .... 3. Agreements to assign .... 4. Warranties and estoppels in assignments . 5. Assignment with notice of prior covenants 6. Mortgage ...... 7. Death and devolution to personal lepiesentativcs 8. Bankruptcy ...... 9. Co-ownership and partnership in patents . 10. Assignments to Secretary of State for War IS BY rENTS. PACK 274 275 277 278 280 280 281 281 282 283 CHAPTEE XXIII. LICENSES. 1. License (what amounts to a) . 2. Estoppel by a license, by deed, by conduct or by record 3. Compulsory licenses ...... 284 288 290 CHAPTER XXIV. INFRINGEMENT. 9. 10. 11. 12. 13. Tnfringment in general . . . . . . . .291 The essence of the invention must be infringed in order to consti- tute an infringement . . . . . . . . 292 The ambit of an invention 299 Infringement by the substitution of equivalents or analogues . 302 Infringement of a combination ...... 305 A patent is not infringed by the use of the same means for a different purpose ........ 313 It is no answer to say that the means used in the infringement are an improvement on the original patent .... 314 Co-extension of anticipations anH infringements .... 314 Time when an infringement may be committed .... 315 The intention to infringe is not material ..... 316 In order to constitute an infringement the act complained of must be one calculated to injure the trade profits of the patentee . 316 Infringement by manufacture ....... 317 Mere experimental user is no infringement. .... 318 TABLE OF CONTENTS. XV 14. Infringement by user ........ 15. After a patent has been granted, a man who has used the invention secretly may not now do it publicly 16. Infringement by sale ..... 17. The sale in Great Britain of an article made abroad is an infringe ment ....... 18. It is no infringement to sell materials for infringing 19. Repairs to a patented article .... 20. Use on board ships 21. Manufacture, use and sale by agents 22. Question of infringement is one of fact 23. Opinions of experts . TAGR 318 319 320 321 321 322 322 323 324 325 CHAPTER XXV. EXTENSION OF LETTERS PATENT. 1. Old practice 326 2. Practice under the present law . 326 3. Persons who may petition . 327 4. Procedure ..... . 329 5. Inspection of accounts . 330 6. Advertisements .... . 330 7. The petition . 330 8. Time for presenting the petition . 331 9. Caveats and caveators . 332 10. Notice of objections to the extension . 332 11. Lodging documents at the Privy Council . 332 12. The hearing ..... . 332 13. Grounds on which a petition is granted . 333 14. Accounts . . . . . . 338 15. The period of extension .... . 344 16. No second extension allowed . . , . 345 17. Conditions of extension .... . 345 18. Costs . 346 19. The extension and new grant . . 347 20. Petition to revoke an order for extension which had not been acted upon ...... . 348 CHAPTER XXVI. CONFIRMATION OF LETTERS TATENr. 1. Confirmation of Utters patent .... 349 XVI TABLE OF CONTENTS. CHAPTER XXVII. INTERIM INJUNCTIONS. PAGE 1. General principles ......... 351 2. Effect of long and uninterrupted user ..... 351 3. Prior judicial establishment of the patent ..... 353 4. The inability of the defendant, if defeated in the action, to com- pensate the plaintiff, or to pay costs, is also considered . .353 5. Delay greatly prejudices an application for an interim injunction . 353 6. In rare cases interim injunctions are granted ex parte . . . 354 7. The infringement must be plain and clear ..... 354 8. Affidavits in support of the application . . . . . 354 0. In granting interim injunctions the Court endeavours to avoid a premature expression of opinion upon the merits of the case . 355 10. The injunction is most often refused, defendant agreeing to keep an account .......... 355 11. Sometimes the application is ordered to stand over till the hearing, without an undertaking to keep an account .... 355 12. Terms upon which interlocutory injunctions are granted . . 355 13. By consent the hearing of the interim injunction is sometimes treated as the final hearing ....... 356 14. An interim injunction when granted may be dissolved . . 356 15. Breach of the interim injunction, and committal . . . 35G CHAPTER XXVIII. ACTION OF INFRINGEMENT. 1. Courts in which actions can be brought 2. Parties — plaintiffs 3. Parties — defendants . 4. Time when the action can be brought 5. Writ in a patent action .... 6. Consolidation of actions .... 7. Statement of claim .... 8. Particulars of breaches .... (a) The plaintiff must specifically point out what part of his invention has been infringed (b) The plaintiff must point out what portions or characteristics of the articles complained of infringe his patent OOl 357 360 361 361 361 362 362 362 363 TABLE OF CONTENTS. XV] 1 (c) The plaintiff must give such instances of infringement as he knows of .... (d) The plaintiff is not permitted to group together geuevally infringements which differ in type 9. Amendment of particulars of breaches 10. The defence ...... 11. Particulars of objections, old practice 12. Practice as to particulars of objections under the Patents Act 1883, sect. 29 . . . ' . (a) Denial of plaintiff's title (b) Denial of infringement .... (c) Plaintiff not true and first inventor . (d) Invention not proper subject of a patent . (e) The patent a derogation from a former grant (/) Want of utility ((/) Want of novelty ..... (1) By reason of public common knowledge (2) Prior publication (a) By a prior specification (/3) By a book or other publication (■y) By prior user . (h) Specification imperfect .... (1) Disconformity ...... (2) Disconformity produced by amendment (3) New not distinguished from old (4) Ambiguity .... (5) False suggestions (6) Insufficient description to enable a workman to make it .... (7) Concealment of the most beneficial mel 13. Amendment of defence and particulars 14. Amendment of particulars of defence before hearing 15. Amendments at the hearing .... 16. Amendment of particulars of objections on appeal 17. Inspection — old practice .... 18. Inspection under Patents Act, 1883, sect. 30 19. Discovery and production of documents 20. Interrogatories 21. Mode of trial (assessors) . 22. Change of venue . 23. The hearing ; evidence . 24. Questions of law and fact 25. Construction of documents is for the Court 26. Determination of the quantum of invention id 364 364 365 365 365 367 368 368 368 368 369 369 370 370 371 371 372 372 373 873 373 373 374 374 374 374 374 37r, 376 377 378 379 382 3S2 385 387 387 394 395 395 XV111 TABLE OF CONTENTS. 27. Questions of anticipation 28. Questions of utility 29. Questions of intelligibility 30. Judgment . 31. Judgment for an account 32. Damages 33. Perpetual injunction 34. Disobedience to an injunction 35. Delivery up of the infringing articles 36. Discovery in aid of execution 37. Stay of execution . 38. Certificate of validity 39. Costs .... 40. Costs of separate issues . 41. Certificate of particulars . 42. Apportionment of costs . 43. Costs on the higher scale PAGE 395 395 396 397 398 400 401 402 404 404 405 406 408 409 409 411 413 CHAPTER XXIX. ACTIONS FOR THREATS. 1. Old practice ....... 2. Modern practice ...... 3. What constitutes a threat .... 4. What issues may be raised in an action for threats 5. Interim injunction to restrain threats 6. Damages for threats ..... 7. Issuing warning circulars .... 415 415 416 417 417 419 419 CHAPTER XXX. PROCEDURE FOR REVOCATION OF THE PATENT. 1. Old method 421 2. New procedure ......... 422 3. Attorney-General's fiat . . . . . . . .422 4. Locus of petitioner. ........ 423 5. A petitioner who has a locus may impeach the patent on any ground .......... 424 6. A petition for revocation analogous to an action . . . .424 7. Particulars of objections ........ 425 TABLE OF CONTENTS. 8. Tn a petition for revocation the defendant begins and supports the patent . . . . . . . 9. Copy of order for revocation to be left at the Patent Office 10. Revocation on ground of fraud — Grant to true inventor XIX 425 425 425 CHAPTER XXXI. APPEALS. 1. Appeals are now by re-hearing 2. Court of Appeal may hear fresh evidence . 3. Judge's notes ..... 4. Costs on appeal ..... 426 426 428 428 CHAPTER XXXII. OFFENCES. 1. Selling unpatented articles as patented 2. Falsification of registers .... 3. Assuming the Royal Arms 430 431 431 CHAPTER XXXIII. International Arrangements 432 APPENDIX. Statutes : — Statute of Monopolies, 21 Jac. T. c. 3 Patents Act, 1883-1888, 46 & 47 Vict. c. 57 Patents Act, 1885, 48 & 49 Vict. c. 63 . Patents Act, 1886, 49 & 50 Vict, c. 37 . Patents Act, 1888, 51 & 52 Vict. c. 50 . 435 4K) 475 477 479 b 2 XX TABLE OF CONTENTS. PAGE Patent Kules, 1890 483 Short title, sect. 1 483 Commencement, sect. 2 . . . . . . . 483 Interpretation, sect. 3 ...... 483 Fees, sect. 4 483 Forms, sects. 5, 6 . . . . . . . . 483 General, sects. 7-1 7a 484 Application with provisional or complete specification, sects. 18-22 487 Application on communication from abroad, sect. 23 . . 488 International and colonial arrangements, sects. 24-29 . . 488 Sizes and methods of preparing drawing, sects. 30-33 . . 489 Opposition to grants of patents, sects. 34-44 . . . 491 Certificates of payment or renewal, sects. 45-48 . . . 493 Enlargement of time, sects. 49-51 ..... 493 Amendment of specification, sects. 52-59 .... 494 Compulsory licenses, 60-66 . . . . . . 495 Register of patents, 67-79 ...... 496 Power to dispense with evidence, 80 . . . . . 499 Repeal of previous rules, 81 ..... . 499 Law officers' Appeal Rules ....... 500 Patent Rules, 1892 (first set) 503 Patent Rules, 1892 (second set, table of fees) .... 504 Patent Official Forms — A. Form of application for patent ..... 508 A. 1 „ „ „ communicated from abroad. 510 A. 2 „ „ „ (international) . . . 512 B. Provisional specification . . . . . .513 C. Complete ,, ...... 515 D. Opposition to grant of patent ..... 516 E. Application for hearing by comptroller .... 517 F. „ to amend specification or drawings . . 518 G. Opposition to amendment of specification or drawings . 519 H. Application lor compulsory grant of license . . . 520 H. 1 Petition for compulsory grant of licenses . . .521 J. Opposition to compulsory grant of licenses . . . 522 J. Application for certificate of payment or renewal . . 523 K. „ for enlargement of time to pay renewal fees . 524 L. Request to enter name on register of patents . . . 524 M. Request to enter notification of license upon register . 525 N. Application for duplicate of letters patent . . . 526 O. Notice of intended exhibition of unpatented invention . 527 P. Request for correction of clerical error .... 528 Q. Certificate of comptroller ...... 528 TABLE OF CONTENTS. XXI Patent Official Forms — continued. R. Notice for alteration of an address in register . . . 529 S. Application for entry of order of P. C. in register . . 530 T. Appeal to law officer ....... 530 U. Application for extension of time for leaving a complete specification ....... 531 V- Application for extension of time for acceptance of complete specification . . . . . . 532 Register of Patent Agents Rules, 1889 533 Circular of Information of the Patent Office, 1892 . . .541 International Convention for the Protection of Industrial Property . 558 Privy Council Rules ........ 567 Privy Council Fees ........ 568 Forms — Opposition to grant of patent ...... 569 Indorsement on writ ....... 569 Motion for interlocutory injunction ..... 569 . Order for interlocutory injunction ..... 570 Undertaking to keep an account ..... 570 Statement of claim ....... 571 Particulars of breaches ....... 573 Application for further and better particulars of breaches . 574 Order for further and better particulars of breaches . . 575 Statement of defence ....... 576 Particulars of objections ....... 576 1. Plaintiff not first and true inventor .... 577 2. Patent bad, as being ...... 578 (a) For a bare principle . . . . .578 (V) Contra bonos mores ..... 578 3. Patent bad for want of utility .... 578 4. Patent bad on the ground of public general knowledge 578 5. Patent anticipated by prior publications . . . 579 6. Patent anticipated by prior user .... 581 7. Specification bad on the grounds following . . 581 (a) Disconformity ...... 582 (b) New not sufficiently distinguished from old . 582 (c) Ambiguity ....... 583 (d) Misleading 583 (e) Contains false suggestions . 583 (/) Insufficient directions ..... 584 (g) Non-disclosure of best method known to inventor 584 Summons for further and better particulars . . . 584 Order thereon ........ 584 Interrogatories ........ 586 XX 11 TABLE OF CONTENTS. Forms — continued. Application and order for leave to amend pending action Notice of opposition to amendment . Order for inspection of plaintiff's premises Order for inspection of defendant's premises Order for experiments by an expert . Order directing trial of issue of infringement, before issues Forms of final judgment . Form of special case Order for inquiry as to damages Report thereon Order for discovery in aid of execution Motion for a new trial Indorsement on writ in action for threats Statement of claim in an action for threats Interim injunction to restrain threats Petition for revocation Order for revocation Petition for extension Accounts sent in with petition . Register of Patent Agents Rules, 1891 other 587 587 589 589 590 591 591 591 591 591 591 592 592 593 593 593 596 597 607 613 ABBREVIATIONS. A. & E. Adolphus and Ellis' Reports. B. & Ad. Barnewall and Adolphus' Reports. B. & A. Barnewall and Alderson's Reports. B. & C. Barnewall and Cresswell's Reports. Beav. Beavan's Reports. B. & S. ' Best and Smith's Reports. Brag. N. C. Bingham's New Cases. B. & P. N. R. Bosanquet and Puller's New Reports. Brod. & Bing. Broderip and Bingham's Reports. Bull. N. P. Buller's Nisi Prius. C. P. C. Carpmael's Patent Cases. Camp. Campbell's Reports. Co. Rep. Cope's Reports. C. B. Common Bench Reports. C. B. N. S. Common Bench Reports, New Series. Car. & K. Carrington and Kirwan's Reports. Car. & P. Carrington and Payne's Reports. C. L. R. Common Law Reports. CI. & F. Clark and Finnelly's Reports. Coop. Cooper's Chancery Cases. Cr. M. & R. Crompton, Meeson, and Roscoe's Reports. Ct. Sess. Court of Session Reports. (Scotland). D. p. C. Davies' Patent Cases. De G. F. & J. De Gex, Fisher, and Jones' Reports. De G. & J. De Gex and Jones' Reports. De G. M. & G. De Gex, Macnaghten, and Gordon's Reports. De G. J. & S. De Gex, Jones, and Smith's Reports. Dowl. & Ry. Dowling and Ryland's Reports. Dr. & S. Drewry and Smale's Reports. XXIV ABBREVIATIONS. E. & B. Ellis and Blackburn's Reports. E. B. & E. Ellis, Blackburn, and Ellis' Reports. E. & E. Ellis and Ellis' Reports. Eq. Rep. Equity Reports. Ex. Exchequer Reports. P. & F. Foster and Finlason's Reports. Giffard's Reports. Goodeve's Practice Cases, 1893. Griffin's Patent Cases. Griffin's Appendix of Cases. Goodeve's Patent Cases. H. Blackstone's Reports. Hemming and Miller's Reports. Tlouse of Lords Cases. Holt's Nisi Prius Cases. Hurlstone and Norman's Exchequer Reports. Ir. Cli. Rep. Irish Chancery Reports. John. Johnson's Reports. J. & H. Johnson and Heraming's Reports. Jur. N. S. Jurist, New Series. Jur. Jurist, Old Series, vols. 1-18, 1837-1851. K. & J. Kay and Johnson's Reports. Gift". Go iod. P. C. Griff. P. C. Griff. App. G. P. C. II. Bl. II. &M. H. L. Cas. Holt N. P. H. &N. L.J. Law Journ; \\ Reports, New Series. L. R. App. Cas. Law Reports, Appeal Cases. L. R. Ch. » Chancery Appeals. L. R. Ch. D. »> Chancery Division. L. R. C. P. ?> Common Pleas Cases. L. R. E. & I. App. >) English and Irish Appeal Cases. L. R. Eq. >> Equity Cases. L. R. Ex. >> Exchequer Cases. L. R. H. L. jj House of Lords. L. R. P. C. » Privy Council Cases. L. R, Q. B. D. >> Queen's Bench Division. L. T. Law Times- , Old Series, vols. 1-34, 1831-1858, L. T. N. S. Law Times, New Series. I -otid. Jour. London Journal of Patents. Lawson. Law son's Patents Acts, 1889. ABBRE VIA TIONS. X XV M. & G. Manning and Granger's Reports. M. & W. Meeson and Welsby's Reports. Mnc. & G. Macnaghten and Gordon's Reports. M. P. C. Macrory's Patent Cases. Marsh. Marshall's Reports. Mer. Merivale's Reports. Moo. P. C. N. S. Moore's Reports of Cases in the Privy Council, New Series. Moo. P. C. Moore's Reports of Cases in the Privy Council, Old Series. My. & Cr. Mylne and Craig's Reports. N. R. The New Reports from 1863, onwards. Newt. L. J. C. S. Newton's London Journal of Arts and Sciences, Conjointed Series. Newt. L. J. N. S. Newton's London Journal of Arts and Sciences, New Series. Pari. Rep. Parliamentary Reports. Q. B. Queen's Bench Reports. R. P. C. Russ. Russ. & M. Ry. & M. Reports of Patent Cases (official), Russell's Reports. Russell and Mylne's Reports. Ryan and Moody's Reports. Scott N. R. Scot. L. R. Stark. R. Scott's New Reports. Scottish Law Reporter. Siarkie's Reports. Taunt. T. R. Taunton's Reports. Term Reports. Times R. Tyr. Times Reports. Tyrwhitt's Reports. Ves. Vesey's Reports. W.N. W. P. C. W. R. Weekly Notes. Webster's Patent Cases. The Weekly Reporter. Y. & C. Youngc and Collyer's Reports. TABLE OF CASES. 1684. A. G. v. Vernon . 1837. Abbot v. Williams 1881. Adair's Patent 1879. Adair v. Young 1873. Adams v. 1ST. B. Rail. Co. 1853. Adam's Patent . . 1856. Adamson's Patent 1886. 1888. 1888. Ainsworth's Patent . Aire & Calder "Works and Walker's Appli- cation. Airey's Application . 1887. Albocarbon Light Co. v. Kidd. 1829. Alcock v. Cooke . . 1867. Allan's Patent . . . 1887. Allen's Patent . . . 1887. Allen v. Doulton . . 1845. Allen v. Eawson . 1600. Alton Wood's Case . 1891. Alliance Pure Lead Co. v. Mclvor. 1887. American Braided Wire Co. v. Thom- son. Vernon, fo. 279 .... 2 C. P. C. 383 ; 9 Rep. Arts. 103 (Manufacture of Felt). L. R. 6 App. Cas. 176; 29 W. R. 746 (Pumps). L. R. 11 Ch. D. 136 ; 12 Ch. D. 13 ; 40 L. T., N.S., 598 ; 41 L. T., N.S., 361; 28 W. R. 85 ; W. N. 1879, 8 ( Pumps). 29 L. T., N.S. 367 . . . . 21 L. T. 38 ; 1 W. R. 259 . 6 De G. M. & G. 420 ; 25 L. J. Ch. 456; 4 W. R. 473 (Pier Building Machinery). Griff. 269 5 R. P. C. 345 (Screw Stop- pers). 5 R. P. C. 348 (Height-Measur- ing Machine). 4 R. P. C. 535 (Gaslights) . 5 Bing. 340 L. R. 1 P. C. 507 ; 4 Moo. P. C. C, N.S., 443 (Electric Conductors). Griff. App. 3 (Water-Closets) . 3 T. L. R. 655 ; 4 It. P. C. 377 (Drain-Pipes). 1 C. B. 551 (Felt-Making) . Coke's Rep., pt. i. 40 b. . . 8 R. P. C. 321 ( White Lead) . 4 R. P. C. 316 ; 5 R. P. C. 113, 375, 696; 7 R. P. C. 47, 152 ; 38 W. R. 329. (In the H. L.) 6 R. P. C. 518 (Bustles). PAGE 70 322, 338 331, 342 319, 322, 354, 404 359 226 141, 144 255 251, 256 252, 254 124 14 336 220, 223 217, 218, 587 99, 231 261 373, 383, 397 96, 114, 134, 401, 405, 413, 414, 427, 576, 591, 592 XXV111 TABLE OF CASES. 1852. Amies v. Kelsey . 1890. Anderson's Applica- tion. 1887. Anderson v. Mae- kinnelPs Applica tion. 1886. Anderson v. Pat. Ox- onite Co. 1886. Anderton's Applica- tion. 1892. Andrew v. Crossleys . 1886. Anglo-American Brush Co. v. Cromp- ton. 1785. Arkwright v. Night- ingale. 1871. Arnold v. Bradbury . 1887. Arnold's Patent . . 1886. Ashworth's Patent . 1890. Ashworth v. Law . 1890. Ashworth v. Roberts. 1889. Atherton's Applica- tion. 1892. Automatic "Weighing Machine Co. v. N. Exhibitions As- sociation. 1889. Automatic "Weighing Machine Co. v. Com- bined Weighing Machine Co. 1889. Automatic "Weighing Machine Co. v. In- ternational Hy- gienic Society. 1889. Automatic Weighing Machine Co. v. Knight. 1880. Aveling v. Maclaren . 1887. Avery's Patent 22 L. J. Q. B. 84; 16 Jur. 1047; 20 L. T. 115; 1 W. R. 54 (Braid). 7 R. P. C. 323 {Explosives) . Griff. App. 23 (Air Currents). 3 R. P. C. 279 (Blasting) . . Griff. App. 25 (Spinning- Frames). 9 R. P. C. 165 (Cas-Motors) . 4 R. P. C. 27 ; 34 Ch. D. 152 ; 56 L. J. Ch. 167 ; 55 L. T. 722 (Dynamos). D. P. C. 37 ; 1 W. P. C. 60 (Spinning). L. R. 6 Ch. 706; 24 L. T., N.S., 613; 19 W. R. 817 (Frills and Ruffles), Wright v. Hitchcock. Griff. App. 5 (Steam, Boilers). Griff. App. 6 (Cards) . 7 R. P. C. 86, 231 ; 9 R. P. C. 194 (Carding). 9 R. P. C. 92 ; W. N. 1890, 154 ( Wire- Tempering). 6 R. P. C. 547 (Felt Hats) . 8 R. P. C. 345 ; 9 R. P. C. 41 ( Weighing Machines). 6 R. P. C. 120, 367 (Weighing Machines). 6 R. P. C. 475 (Weighing Machines). 6 R. P. C. 113, 297 ; W. N. 1888, 250; 5 T. R. 359 (Weighing Machines). 17 Ch. D. 139 (n.) .... 36 Ch. D. 307; 4 R. P. C. 152, 322 ; 56 L. J. Ch. 586, 1007; 35 W. R. 541; 36 W. E. 249 (Generating Gas). PAUE 378 253, 257, 569 252 358 255, 256 224 373 157, 188 53, 197 219 220, 224 280, 289, 410, 581 211 251 292, 296 296, 394, 397, 416, 418 296, 407 50, 208, 296, 370, 406, 579 375 233, 425 TABLE OF CASES. XXIX 1874. Axman v. Lund 1839. Bacon v. Jones. 1839. Bacon v. Spottiswoode 1888. Badham v. Bird . . 1889. Badische Anilin Fab. v. Dawson. 1883. Badische Anilin Fab. v. Levinstein. 1886. Bailey's Patent . 1886. Bailey's Patent . 1887. Be Bailey . . . 1878. Bailey v. Roberton 1886. Baillie v. Goodwin . 1810. Bainbridge v. Wigley 1876. Baird v. Moule. . . 1888. Bairstow's Applica- tion. 1892. Baker v. Kinnell . 1893. Baker v. Kinnell . 1862. Bakewell's Patent 1879. Ball's Patent . . 1881. Ball v. Lelm . . 1875. Bamlett v. Picksley 18 Eq. 330 : 43 L. J. Ch. 655 ; 22 W. R. 789; 31 L. T., N.S., 119 {Brooches). 4 My. & Cr. 433 (Gas Lamps). 1 Beav. 382 (Gas-Burners) . 5 R. P. C. 238 (Sewer Man- holes). 6 R. P. C. 387 (Aniline Dyes) 24 Ch. D. 156; 29 Ch. D. 366; 52 L. J. Ch. 704; 48 L. T., N.S., 822; 31 W. R. 913; 2 R. P. C. 73, 143. (In H. L.) 12 App. C. 710; 2 R. P. C. 91 ; 4 R. P. C. 449 (Aniline Dyes). 1 R. P. C. 1 (Registering Figures). Griff. 269 (Locks) .... Good. Prac. Cas. 57 L. R. 3 App. Cas. 1055; 38 L. T., N.S., 854 ; 27 W. R. 17 (Preserving Meat). 3 R. P. C. 2d3 (Corrugated Plates). Pari Rep, 1829, 197 ; 10 Rep. Arts. 127; 1 C. P. C. 270 (Flutes). 17 Ch. D. 139 (n.) (Earth Closets). 5R. P. C. 28Q (Velvet) . . 9 R. P. C. 441 (Hot-Water Coils). 10 R. P. C. 441 . . . . 15 Moo. P. C. C. 385 (Electric Telegraphy). L. R. 4 App. Cas. 171; 48 L. J. P. C. 24 (Sheep Shears). Times, April 14, 1881 (Copying Machine). Grid'. 40 (Moiving Machines; Making Iron Tubes by Squeezing like Macaroni). PAGE 288, 415 353 399 141, 387, 413 114 46, 52, 67, 136, 153, 187, 190, 211, 389, 412, 5'J0 240 250 251 87, 147, 170, 184, 30 L 361 163, 214 366, 375 247, 250 133 576. 578, 582 337 332 407 57, 94, 103 XXX TABLE OF CASES. 1823. Barber v. Walduck . 1847. Barber v. Grace . 1823. Barker v. Shaw . . 1884. Barnett v. Barrett's Screw-stopper Co. 1884. Barney v. U. Tele- phone Co. 1876. Barrett v. Vernon 1836. Bate's Patent . . 1856. Bateman v. Gray . 1854. Bateman's Patent 1869. Bates v. Redgate . 1874. Batley v. Kynoch . 1849. Baxter's Patent . 1850. Baxter v. Coombe . 1887. Beanland's Patent 1846. Beard v. Egerton . 1815. Beaumont v. George 1886. Beck & Justice's Patent. 1830. Beeston v. Ford . . 1887. Bell's Patent . . . 1846. Bell's Patent (In re) . 1886. Bell & Colman's Patent. 1893. Benno Jaffe v. Ric- hardson & Co. 1844. Bentley v. Fleming . 1 C. P. C. 438; 1 W. P. C. 126 (Hats). 1 Ex. 339 ; 17 L. J. Ex. 122 (Hot-Pressing Cloth). 1 C. P. C. 438; 1 W. P. C. 126 (Hats). 1 E. P. C. 9 (Bottle Stoppers). 28 Ch. D. 394; 2 R. P. C. 173; 33 W. R. 576 (Tele- phones). 25 W. R. 343 ; 35 L. T., N.S., 755 (Bottle Stoppers). 1 W. P. C. 739 (n.) (Hydro- meters). 22 L. J. Ex. 290; M. P. C. 93; 1 C. L. Rep. 512 ( Valves). M. P. C. 116 (Water Valves) . L. R. 4 Ch. 577; 38 L. J. Ch. 501; 21 L. T., N.S., 410. L. R. 19 Eq. 229; 20 Eq. 632; 44 L. J. Ch. 89; 31 L. T., N.S., 573 (Cart- ridges). 13 Jur. 593 (Colour-Print- ing). 1 Ir. Ch. R. 284; 3 Ir. Ch. R. 245 (Dressing Flax). 4 R. P. C. 489; 4 T. R. 30 (Window Fasteners). 3 C. B. 97; 8 C. B. 165; 15 L. J. C. P. 270; 10 Jur. 643 ; 19 L. J. C. P. 36 ; 13 Jur. 1004 (Photography). 1 C. P. C. 294; 27 Rep. Arts, 2nd Series, 252 (Refining Sugar). Griff. App. 10 (Steam Nozzles) 2 Coop. Cb. C. 58 . . . . Griff. App. 10 (Matches). . . 10 Jur. 363 ; 2 W. P. C. 160 (Lucifer Matches). Griff. 320 10 R. P. C. 136 (Making Fat) 1 C. & R. 587; 1 C. B. 479 (Curds). PAGE 229 212 231 419, 593 418 304 341 303 222 253 363, 364, 389, 408 346 353 334, 336, 343 165, 189, 192, 194, 232 359 224 352 219, 227 332 423 385, 586 143 TABLE OF CASES. XX XI 1844. Bentley v. Keighley . 1875. Berdan's Patent . . 1881. Bergman v. Mae- millan. 1864. Bernard v. Levinstein 1850. Berry's Patent. . . 1872. Betts v. Cleaver . . 1860. Betts v. Clifford . . 1862. Bett's Patent . . . 1864. Betts v. De Vitre 1868. »» » 1873. >> »> 1857. Betts v. Menzies 1859. >> ,» 1862. 9» >> 1865. Betts v. Neilson 1868. S» 99 1871. »» »» 1850. Betts v. "Walker . 1870. Betts v. Wilmot . 1871. 1856. Bewley v. Hancock 1838. Bickford v. Skewes 1891. Billington v. Hill 13 L. J. C. P. 167 ; 7 M. & G. 652; 8 Scott N. R. 372 (Cards). L. R. 20 Eq. 346 ; 44 L. J. Ch. 544. 17 Ch. D. 423 ; 29 W. R. 890 (Buttons and Umbrellas). 10 L. T., N.S., 177 (Purple Bye). 7 M«>o. P. C. C. 187 (Cleansing Wheat). L. R. 7 Ch. 513; 41 L. J. Ch. 663. 1J.&H. 74 1 Moo. P. C. C, N.S., 49 ; 9 Jur., N.S., 137; 11 W. R. 221 ; 7 L. T., N.S., 577 (Lead Capsules for Wine Bottles). 34 L. J. Ch. 289 ; 11 L. T., N.S., 445, 533 ; 5 N. R. 165. (Lead Capsules for Wine Bottles). L. R. 3 Ch. 429 ; 37 L. J. Ch. 325. L. It. 6 H. L. 319; 21 W. R. 705. 3 Jur., N.S , 357 . . . . 8 E. & B 937 ; 1 Ell. & Ell. 990 ; 28 L. J. Q. B. 361. 10 H. L. C. 117 ; 31 L. J. Q. B. 233; 7 L. T., N.S., 110. 3 De G-. J. & S. 22 ; 34 L. J. Ch. 537; 13 W. R. 804; 6 N. R. 221; 11 Jur., N.S., 679 ; 81 L. T., N.S., 719. L.R. 3 Ch. 429 ; 37 L. J. Ch.321; 18 L. T., N.S,, 159. L. R. 5 H. L. 1 ; 40 L. J. Ch. 317. 14 Q. B. 363 18 W.R.946; L. K. 6 Ch. 239 L. R. 6 Ch. 239 ; 25 L. T., X.S., 188; 19 W. R. 369. 6 De G. M. & G. 391 ; 2 Jur., N.S., 289 (Gutta Percha). 1 W. P. C. 211 ; 1 Q. B. 938 ; 10 L. J. Q. B. 302 ; 1 W. P. C. 214 (Safety Fuses). 8 R. P. C. 332' (Bottle Clean- ing). l'AUK 366 226 358, 399 352 329 408 101, QQ9 335 , 340, 341 , 343, 348 154, 155 324, 360 398, 429 Q£;9 OD6 143 140, 154, 156 396 154, 324 157, 318, 400 152, 198, 211, 379, 398 366 408 321, 389 100 188, 189, 204, 212, 352, 396 411 xxxn TABLE OF CASES. 1875. Binney v. Feldtman 1883. Birch v. Mather . 1568. Bircot's Case . . 1884. Bischof s Patent . 1889. Blakey v. Latham . I860. Blamoud's Patent 1888. Blank v. Footman 1833. Blofield v. Payne . 1825. Bloxam v. Elsee . 1827. 1849. Bodmer's Patent 1856. Booth v. Kennard 1893. Boult's Patent . 1795. Boulton v. Bull 1865. Bovill v. Crate . . 1865. Bovill v. Goodier . 1857. Bovill v. Keyworth 1815. Bovill v. Moore . 1856. Bovill v. Pimm 1866. Bovill v. Smith 1863. Bovill's Patent . 1853. Bower v. Hodges . Griff. 49 {Stuffing Boxes). L. R. 22 ; Ch. D. 629 ; 52 L. J. Ch. 292. 1 W. P. C. 31; Year Book, 15 Eliz. 4, Easier Terra. 1 R. P. C. 162 {Purification of Water). 6 R. P. C. 29, 184; W. N. 1888, 126 {Iron Plates for Boots). 3 L. T., N.S., 800 . . . . 5 R. P. C. 661 {Trimming for Corsets). 4 B. & Ad. 410 1 C. & P. 558 ; 1 C. P. C. 434 {Paper Making). 6 B. & C. 169 ; 1 W. P. C. 132 (n.); 1 C. P. C. 440; 9 1). & R. 215 {Paper Making). 6 Moo. P. C. Tools). 1 H.&N.527 26 L. J. Ex. C. 468 {Metal ; 2 H. & N. 84 ; 23, 305 ; 28 L. T. 160 ; 5 W. R. 85, 607 {Making Gas from Seeds). 10 R. P. C. 275 {Cellulose) . 2H. B. 463; D. P. C. 162; 1 C. P. C. 117 (Fuel). L. R. 1 Eq. 388 ; Griff. App. 46 {Flour Grinding). L. R. 1 Eq. 35 ; 2 Eq. 195 ; 35 Beav. 264, 427 ; 35 L J. Ch. 174, 432 ; 36 L. J. Ch. 360 (Flour Grinding). 7 Ell. & Bl. 725; 5 W. R. 686; 29 L. T. 194; 3 Jur., N.S., 817 (Flour Grind- ing). 2 Coop. 56 (n.) ; D. P. C. 361 (Flour Grinding). 11 Ex. 718 (Flour Grinding) L. R. 2 Eq. 459 ; Griff. App. 49 (Flour Grinding). 1 Moo. P. C. C, N.S., 348 (Flour Grinding). 13 C. B. 765 ; 22 L. J. C. P. 194; 1 C, L. R. 807 (Iron Pipes). PAUE 213 366, 383 17,56 342 128, 376, 413,427, 580 226 413 430 186, 201, 212, 231 164, 198, 213, 228, 282, 358, 3^)6 327, 328, 345, 347 53, 197 251 9, 20, 41, 42,52,57, 58, (58, 187, 358 310, 353 150, 353, 363, 366, 377 58, 101, 310 68, 191, 202, 378 300 310, 356, 366 329 2t8 TABLE OF CASES. XXX111 1834. Bowman v. Taylor 1889. Bown v. Humber Co. . 1888. Bown v. Sanson . 1887. Boyd v. Farrar . . 1886. Boyd v. Horrocks . . 1890. Bracher v. Bracher . 1789. Bramah v. Hardcastle 1884. Brandon's Patent . . 1885. Brauer v. Sharp . 1887. Bray v. Gardner . 1861. Brennaud's Patent . 1884. Brereton v. Richardson 1849. Bridson v. Benecke . 1845. Bridson v. M' Alpine . 1852. Bridson's Patent . . 1884. Briggs v. Lardeur 1888. Britain v. Hirsch . . 1879. British Dynamite Co. v. Krebs. 1889. British Tanning Co. v. Groth. 1857. Brook v. Aston. 1849. Brown v. Annandale . 1816. Brown v. Moore . 1887. Brown's Patent . 1889. Brownhill's Applica- tion. 1821. Brunton v. Hawkes . 2 A. & E. 278 (Looms) . . 6E.P.C.9(%fe). . . 5 R. P. C. 510 (Bicycles) . . 5 H. P. C. 33; 57 L. T. 866 (Winding Yarn). 3 R. P. C. 285; 5 R. P. C. 557; 6 R. P. C. 152, 528; 9 H. P. C. 77 ( Winding Yarn). 7 R. P. C. 422 (Hat Linings). 1 C. P. C. 168 ; 1 W. P. C. 44 (a.) (Water Closets). 1 R. P. C. 154 ; 9 App. Cas. 589; 53 L. J. P. C. 84 (Oils for Lighting). See Sharp v. Brauer. 34 Ch. D. 668 ; 4 R. P. C. 40, 400; 5HP.C. 151; 56 L. J. Ch. 497 ; 35 W. R. 341 (Boot Lams). 3 De G. F. & J. 695 ; 7 Jur., N.S., 690 (Ornamental Lappets). 1 R. P. C. 165 (Tricycles). . 12 Beav. 1 (Stretching Woven Fabrics). 8Beav. 229 7 Moo. P. C. C. 499 (Stretching Woven Fabrics). 1 R. P. C. 126, 192 ; 2 R. P. C. 13 (Printing Fabrics). 5 R. P. (J. 74, 226 (Dancing Dolls). 1 Good. P. C. 88 (Dynamite) . 7 P. P. C. 1 ; 8 R. P. C. 113 (Electric Tanning). 8 El. & B. 478; 27 L.J. Q. B. 145; 28 L. J. Q. B. 175; 6 W. 11.42 (Finishing Yarn). 1 W. P.O. 433; 8 CI. &F. 437 3 Swan. 264 Gritt'. App. 1 ; 3 R. P. C. 212 (Casks). 6 R. P. C. 135 (Gas-iMeters) . 1 C. P. C. 405 ; 4 B. & Aid. 541 (Anchors). PAGE 279, 289 286 382 371, 372, 581, 585 59, 311, 370, 371, 373, 390, 410, 579, 580, 584, 351 230 327, 349 152, 184, 190, 212, 217, 587, 246 141 353 351 330, 347 352, 355, 360 127, 198, 200, 367, 376, 428 190, 199 352, 355, 433 119 148 167, 213 12, 59, 61, 75, 118, 178, 185, 201 XXXIV TABLE OF CASES. 1837. Bulnois v. Mackenzie 1858. Burgess v. Hately 1882. Burnett v. Tak . . 1887. Burt v. Morgan . . 1854. Bush v. Fox . . . 1661. Butler, Sir Oliver's Case. 1890. C.'s Application . . 1851. Caldwell v. Vanvlis- sengen. Calvert v. Ashburn . 1821. Campion v. Benyon . 1871. Cannington v. Nuttall 1848. Card's Patent . . . 1856. Card well's Patent . 1889. Carez's Application . 1841. Carpenter v. Smith . Carpenter v. "Walker 1854. Carpenter's Patent . 1873. Carr's Patent . . . 1884. Cartsburn Co. v. Sharp. 1799. Cartwright v. Amatt 1800. Cartwright v. Earner 1891. Cassella v. Levinstein 1887. Challender v. Royle . 4Bing. N. C. 127; 1 W. P. C. 260; 5 Scott, 419 (Cab- riolets). 26 Beav. 249 (Trade-Mark Case). 45 L. T., N.S., 743 (Cube Sugar). 4 E. P. C. 278 ; 3 T. E. 666 ( Carriage- Spr in gs). M. P. C. 152, 166, 178; 23 L. J. Ex. 257 ; 5 H. L. C. 707; 25 L. J. Ex. 251 (Caw- sows /or Piers). 3 Lev. 220 7 E. P. C. 250 21 L. J. Oh. 97 ; 9 Hare, 415 ; l(j Jur. 115 (Screiu-Propel- lers). John. 34 ; 7 Prac. Mech. Jour- nal , 2nd Series, 97 (Starch). 3 B. & B. 5; 6 B. Moo. 71 (Mahinq Canvas). L. E. 5 H. L. 205 ; 40 L. J. Ch. 739 (Glass Furnaces). 6 Moo. P. C. C. 207 ; 2 W. P. C. 161 (Candle Wicks). 10 Moo. P. C. C. 488 (Cotton Presses). 6 R. P. C. 552 1 W. P. C. 530, 540 ; 9 M. & W. 300; 11 L.J. Ex. 213 (Locks). 1 W. P. C. 268 (n.) (Locks) . 2 Moo. P. C. C, N.S., 191 (n.) (Steering Vessels). L. E. 4 P. C. 539; 9 Moo. P. C. C, N.S., 379 (Manure). 1 E. P. C. 181 (Sugar- Making) 2 B. & P. 43 ; D. P. C. 240 . 14 Vesey, 131, 136 ... 8 E. P. C. 473 (Azo-Dyes) . 4 E. P. 0. 363 ; 36 Ch. D. 425 ; 56 L. J. Ch. 995 ; 57 L. T., N.S., 734; 36 W. E. 357 (Tap-Unions). PAGE 365 409 415 416 41, 45, 88, 118, 212, 395 37 241 315, 319, 323 ,352 120 163, 185 46,52,222, 313 350 333 433 59, 141, 148, 179, 232 365 346 340 180, 321, 388 277 12,1' '8, 190, 212, 364, 574 416, 417, 418, 593 TABLE OF CASES. ' XXXV 1864. Chambers v. Crichley 1887. Chandler's Patent 1844. Chanter v. Dewhurst 1845. Chanter v. Johnson . 1838. Chanter v. Leese . 1893. Chartered Institute of Patent Agents v. Lockwood. 1873. Chatwood's Patent . 1877. Cheavin v. Walker 1884. Cheeseborough's Pa- tent. 1888. Cheetham v. Oldham 1874. Chevasse v. Stevens . 1883. Child's Patent . . . 1857. Chollet v. Hoffman . 1886. Church's Patent . 188G. Church's Engineer- ing Co. v. Wilson. 1851. Claridge's Patent . 1873. Clark v. Adie . . . 1870. Clark's Patent . 1881. Clark v. Bradlaugh . 1615. Clothworkers of Ips- wich Case. 1830. Cochrane v. Braith- waite. 33 Beav. 374 Grift'. 270 (Gas-Burners) . . 12 M.& W.823; 13 L. J. Ex. 108 (Furnace). 14 L. J. Ex. 289 ; 14 M. & W. 408 (Furnace). 4 M. & W. 295 ; 5 M. & W. 698 ; 9 L. J. Ex. 327 ; 1 H. & H. 224 (Furnace). 10 R. P. C. 167 .... L. R. 5 P. C. 88 (n.) . . . L. R. 5 Ch. D. 850; 46 L. J. Ch. 265 (Filters). Griff. 303 (Electric Lamps) . 5 R. P. C. 617, 624 ; 7 R. P. C. 116; 8 11. P. C. 168 (Felt Huts). W. N. 1874, 193 (Ice Safes) . John. 214 (Bread) . . . 7 Ell. & Bl. 686; 26 L. J. Q. B. 249 ; 5 W. R. 573 ; 29 L. T. 158 (Preserved Vege- tables). 3 R. P. C. 95 (Steam-Engines) 3 R. P. C. 123 (Steam-Engines) 7 Moo. P. C. C. 394 (As- phalte). 21 W. R. 256, 764 ; 24 W. R. 1007 ; 26 \V. R. 45 ; L. R. 3 Ch. D. 134, 141 ; 10 Ch. App. 667; 2 A pp. Cas. 315, 423; 45 L.J. Cb. 228; 46 L.J.Ch.585; 33L.T.,N.S., 295, 923; 35 L. T., N.S., 349; 37 L. T., N.S., 1 ( Horse Clipiiers). L. R. 3 P. C. 421 ; 7 Moo. P. C. C, N.S., 255 (Float- ing Docks). L. R. 8 Q. B. D. 63 . . . Godbolt, 252 1 C. P. C. 493 ; 3 Lond. Jour. 42 (Steam- Boilers) PAGE 2711 255 285 286 286 236 340 228 220, 221 142, 147, 363, 380, 574 277 342 268, 359, 366 328, 332, 335, 346, 348 363, 365, 575 329 99. 182, 198, 200, 202, 20K, 211, '-'87, 289, 305, 310, 395 338 38 1'.) 29S c 2 XXXVI TABLE OF CASES. 1816. Cochrane v. Smeth- urst. 1885. Cooking's Patent . . 1884. Codd v. Bratby . . 1884. Codd's Patent . . . 1843. Colbourn v. Sims 1888. Cole v. Saqui . . . 1839. Collard v. Allison 1888. Colley v. Hart . . 1834. Collinge v. Bowman 1851. Cook & Wheatstone's Patent. 1843. Cook v. Pearce 1886. Cooper & Ford's Pa- tent. 1880. Cooper v. Whitting- ham. 1862. Copeland v. Webb . 1835. Cornish v. Keene . 1837. Cornish v. Keene . 1870. Cornish v. Stubbs . . 1884. Couchman v. Greener 1888. Crampton v. Patent Investments Co. 1886. Crampton v. Swete. 1842. Crane v. Price . 1850. Croll v. Edge . . . 1828. Crompton v. Ibbotson 1887. Crompton v. Anglo- American British Co. 1 Stark. 205; D. P {Lighting Cities), ! R. P. C. 151 {Making Splints), 1 R. P. C. 209 Griff. 305 2 Hare, 543 5 R. P. C. 489 ; 6 R. P. C. 41 ; 40 Ch. D. 132 ; 58 L. J. Ch. 237; 59 L. T. 877; 37 W. R. 109 {Dancing Dolls). 4 My. & C. 487 .... 6 R, P. C. 17 ; 7 R. P. C. 101 ; 44 Ch. D. 179; 59 L. J. Ch. 308 {Toilet Paper). I W. P. C. 294 {Looms) . . 38 Lond. Jour. 223 .. . 12 L. J. Q. B. 187 ; 13 L. J. Q. B. 189; 8 Q. B. 1044; 7 Jur. 764 {Carriages). Griff. 275 {Knitting-Machines) L. R. 15 Ch. D. 501 {Copy- right Case). II W. R. 134; 1 N. R. 119 {Blasting Cartridges). 1 W. P. C. 501 ; 2 C. P. C. 314; 6 L. J. C. P. 225 ( Weaving Elastic Goods). 5 Bins;. N. C. 588 ; 6 L. J. C. P. 225; 1 W. P. C. 501; 2 C. P. C. 371 2 Hodg. 294 ( Weaving Elastic Goods). L. R. 5 C. P. 334 . . . . 1 R. P. C. 197 {Breach-Load- ing Guns). 5 R. P. C. 382 ; 6 R. P. C. 287 {Electric Bells). 58 L. T. 516 1 W. P. C. 393 ; 4 M. & G. 580 ; 12 L. J. C. P. 81 ; 2 C. P. C. 669 {Hot Blast). 9 C. B. 479; 19 L. J. C. P. 261 {Gas- Meters). 1 W. P. C. 83 ; C. P. C. 460 {Paper). 4 P.. P. C. 197 ; 56 L. J. Ch. 802; 35 Ch. D. 283 {Dy- namos). PAGE 163 335, 348 218 218 409 127, 135, 321, 372, 400, 410 352 416, 418, 593 289 327 163, 1'65 255 409 355 69, 139, 147, 29:.% 396 98, 212, 230, 319, 389, 395 287 211, 299 171, 414, 416 416 41, 57, 59, 96, 99 165 193 374, 584, 586 TABLE OF CASES. XXXV11 1884. Cropper v. Smith 1829. Crossley v. Beverley 1834. Crossley v. Derby Gas Co. 1863. Crossley v. Dixon . 1853. Crossley v. Potter • 1876. Crossley v. Tomey 1889. Crossthwaite v. Steel 1884. Croysdale v. Fisher 1884. Cumming's Patent 1839. Curtis v. Cutts. . 1892. Curtis & Andre . 1863. Curtis v. Piatt . . 1848. Cutler v. Bower 1850. Dagleish v. Jarvis 1872. Dalziel v. Railway Carriage and Steamboat Co. 1865. Dangerfield v. Jones . 1888. Daniel's Application. 24 Ch. D. 305; 26 Oh. D. 700; 28 Ch. D. 148 ; 10 App. Cas. 249; 1 K. P. C. 81, 254; 2 R. P. C. 17, 61 ; 53 L. J. Ch. 891 ; 54 L. J. Ch. 287 ; 55 L.J. Ch. 12; 33 W. R. 60, 753; 51 L. T., N.S., 729 (Twist-Lace Machines). 3 C. & P. 513 ; 1 W. P. C. 106, 112, 119; 9 B. & C. 63; 1 It. & M. 166 (Gas). 1 W. P. C. 119 ; 4 L. J. Ch. 25 ; 3 My. & Cr. 428 (Gas- Meters). 10 H. L. Cas. 293 ; 32 L. J. Ch. 617; 11 W. K.716; 8 L. T., N.S., 260 (Carpet Looms). M. P. C. 240 (Carpet Looms) L. R. 2 Ch. D. 533 (Water- Gauqes). 5 R. P. C. 220; 6 R. P. C. 190 (Fire-Grates). 1 R. P. C. 17 (Manure) . . Griff. 277 (Bracelet- Fasten- ings). 8 L. J. Ch. 184 ; 2 Coop. 0. C. 60 (u.) (Cards). 9 R. P. C. 495 3 Ch. D. 136 (n.); L. R. 1 H. L. 337; 8 L. T., N.S. 057 ; 33 L. J. C. P. 255 ; 35 L. J. Ch. 852 ; 10 L. T., N.S. 383; 11 L. T., K.S., 245 (Spinninq-Mules.) 11 Q. B. 973 ; 17 L. J. Q. B. 217; 12 Jur. 721 (Boiler- Flues). 2 Mac. & G. 231 (Copyright) L. R. 13 Eq. 358 . . . . 13 L. T., N.S., 142 (Making Walking-Stick Handles), 5 R. P. C. 413 (Kettles) . . PAGE 198, 200, 207, 217, 278, 280, 282, 290, 366, 397, 587 60, 62, 78, 94, 164, 187, 191, 211, 212, 401 399, 400, 401 285, 287, 289 40,68,162, 384 286, 289 90, 122, 141 252 352 213, 299, 316, 325, 363, 366, 377 288 415 102, 288 251 xxxvm TABLE OF CASES. 1891. Darby's Patent . . 1602. Darcy v. Allin . . . 1889. Darrah v. Purser . . Dart's Patent . 1862. Davenport v. Jepson . 1865. Davenport v. Gold- berg. 1860. Davenports. Richards 1865. Davenport v. Rylands 1886. David's v. Woodley's Application. 1884. Davis v. Feldtman 1887. Davis v. Davis . 1865. Daw v. Eley 1890. Day v. Foster . . . 1873. De Vitre v. Betts . . 1887. Deacon's Patent . 1857. De la Rue v. Dickin- son. 1891. Delta Metal Co. v. Maxim-Nordenfelt. 1851 . Denley v. Blore . . 1880. Dering's Patent . . 1835. Derosne v. Fairie . 1844. Derosne's Patent . 1890. Deutsche Hahmas- chinen Fabrik v. Pfaff. 1880. Dicks v. Brooks . . 1891. Dick v. Haslam . . 1889. Dietz's Patent . . . 1875. Dixon v. London Small Arms Co. 8 E. P. C. 380 Noy. 173 ; 1 W. P. C. 1 ; 11 Co. Rep. 84 (Playing Cards) 6 R. P. C. 365 (Hose Connec- tions'). Griff. 307 (Dynamos) . . . 1 N. R. 173, 307 (Chenille) . 5 N. R. 484; 2 Hem. & M. 282 (Chenille). 3 L. T., N.S., 503 (Chenille) . L. R. 1 Eq. 302; 35 L. J. Ch. 204; 14 L. T..N.S., 53; 14 W. R. 243 (Chenille). Griff. App. 26 (Sewing Ma- C/l illGS) 1 R. P. C. 13,193 (Umbrellas). 56 L. J. Ch. 481 ... . L. R. 1 Eq. 38 ; 3 Eq. 496 ; 13 L. T., N.S., 399; 14 W. R. 48,126; 36L.J.Ch. 482 (Cartridges). 43 Ch. D. 435 ; 7 R. P. C. 54 (Bottles). See Betts v. De Vitre. 4 R. P. C. 119 ; 3 T. R. 349 ( Water-Meters). 7 E. &B. 738; 5 W. R. 704; 29 L. T. 194 ; 3 K. & J. 388 (Envelopes). 8 R. P. C. 169, 248 (Alloys) . 38 Lond. Jour. 224 .. . L. R. 13 Ch. D. 393 (Iron and Steel). 1 W. P. C. 154, 158 ; 1 Mo. & Rob. 457 ; 5 Tyr. 393 ; M. & R. 476 (Sugar-Refining). 4 Moo. P. C. C. 416 ; 2 W. P. C 1 (Sugar-Refining). 7 R. P. C. 16, 251 (Sewing Machines). L. R. 15 Ch. D. 39 (Copyright). 8 R. P. C. 196 6 R. P. C. 297 (Harps) . . L. R. 10 Q. B. 130 ; 1 Q. B. D. 384; 1 App. Cas. 632; 44 L. J.Q.B. 63,617;31L.T., N.S., 138, 559; 24 W. R. 766, 142 (Gun-Barrels). TAGE 339 17,68 376 221, 243 353, 379 352 352, 358 316, 320, 406 231, 248 314 414 201, 315, 366, 376 401 416, 418 327, 328, 339, 342 310, 324, 384 383, 384, 407, 579, 582 323, 360 253 164, 187, 193, 214, 359, 396 328, 330, 334, 342 135, 579 400 402 255 272, 323 TABLE OF CASES. XXXIX 1849. Dobbs v. Perm . . . 1758. Dollond v. Champ- ness. 1890. Dowling v. Billington 1886. 1839. 1886. 1886. Downes v. Falcon En- gine & Car Works. Downton's Patent Drake v. Muntz Metal Co. Driffield Linseed Cake Co. v. Waterloo. 1889. Drummond's Patent . 1877. Dudgeon v. Thomson 1884. Duncan & Wilson's Patent. 1885. Dundon's Patent . . 1859. Dunnieliffe v. Mallet 1830. Duvergier v. Fellows . 1812. Dyer, Ex parte . . . 1881. Eades v. Starbruck Waggon Co. 1885. Eadie's Patent . . . 1885. Easterbrook v. Great West. Railway Co. 1853. Eastern Archipelago Co. v. Reg. 1890. Edge's Patent . . . 1891. Edge v. Harrison . 1892. Edge v. Johnson . 1691. Edgebury v. Stevens . 1887. Edison Electric Co. v. Shippey. 3 Ex. 427 {Blind-Pulleys). 2 H. Bl. 469; 1 W. P. C. 43; D. P. C. 170 ; 1 C. P. C. 28 {Achromatic Lenses). 7 R, P. C. 191 {Weaving Wire). 2 R. P. C. 197 ; 3 R. P. C. 70 {Steam Engines). 1 W. P. C. 565 ( Water- Closets) 3 R. P. C. 43 {Making Tubes) 3 R. P. C. 46 ; 31 Ch. D. 638 ; 55 L. J. Ch. 391 ; 54 L. T., N.S., 210 {Feeding Cake). L. R. 43 Ch. D. 80 ; 59 L. J. Ch. 102; 6R. P. C. 576. L. R. 3 App. Cas. 34; 30 L. T., N.S., 244 ; 22 W. R. 464 {Boiler Tubes). 1 R. P. C. 257 ; 1 T. R. 59 {Folding Paper). Griff. 278 7 C. B., N.S., 209 ; 1 L. T., N.S., 514; 29 L. J. C. P. 70; 8 W. R. 260 {Lace- Weaving). 10 B. & C. 826 ; 1 C. & F. 39 Holroyd, 59; Pari. Rep. Pat. 1829. W. N. (1881), 160 {Tramcars) Griff. 279 {Weaving Travel- 2 R. P. C. 201 ; 3 R. P. C. 94 {Bail way Signals). 2 E. & B. 892 W. N. (1890), 147 {Wrapping up Blue). 8 R. P. C. 74 {Wrapping up Blue). 9 R. P. C. 142 ( Wrapping up Blue) 1 W. P. C. 35 4 R. P. C. 471 {Electric Lamps). PA(iE 118, 157 143, 230 114, 402 314 327, 336, 340, 346 380 416, 419 425 206, 222, 225, 292, 352, 373 341 252 275, 358 263, 274 253 122 249 48, 67, 71, 186, 196, 212, 414 10 424 386, 424 405 232 377 xl TABLE OF CASES. 1888. Edison v. Holland 1886. Edison v. Woodhouse 1881. Edison Telephone Co. v. India-Rubber Co. 1887. Edison's Patent . . 1893. Edlin v. Pneumatic Tyre Agency. 1889. Edmond's Patent . . 1886. Edmund's Patent . . 1887. Ehrlich v. Ihlee . . . Electric Telegraphic Co.'s Patent. 1851. Electric Telegraph Co. v. Brett. 1847. Electric Telegraph Co. v. Nott. 1839. Elgie v. Webster . . 1890. Elias v. Gravesend Tin Plate Co. 1884. Elsas v. Williams . . 1888. Ellington v. Clarke . 1840. Elliot v. Aston . . 1845. Elliot v. Turner . 1864. Ellwood v. Christy 3 K. P. C. ,395 ; 5 R. P. C. 459; 6 R. P. C. 243; 33 Ch. D. 497 ; 55 L. J. Ch. 943 (Electric Glow-Lamps). 32 Ch. D. 520 ; 3 R. P.O. 167; 55 L. J. Ch. 943; 55 L.T. 263; 3 R. P. C. 183 ; 4R. P. C. 79, 99 (Electric Glow-Lamps) 17 Ch. D. 137 ; 29 W. R. 496 (Telephones). Lawson, 64 10 R. P. C. 311, 317 . . . 6 R. P. C. 355 Griff. 281 (Telephones) . . 4 R. P. C. 115 ; 5 R. P. C. 37, 198, 437; 7 R. P. C. 292; 56 L. T. 819 (Iland-Vryans). I Moo. P. C. C, N.S., 346 . 10C.B.838; 20 L. J. C.P.123; 15 Jur. 579 (Telegraphy). II Jur. 273, 590 ; 4 C. B. 464 ; 16 L. J. C. P. 174 ; 2 Coop. 41 (Telegraphy). 5 M. & W.'518 (Tracheometers) 7 R. P. C. 455 1 Times R. 144 (Buttons). . 5 R. P. C. 135, 319 ; 58 L. T., N.S., 818 (Hydraulic Lift). 1 W. P. C. 222 (Buttons) . . 2 C. B. 446; 15 L. J. C. P. 49 (Buttons). 34 L. J. C. P. 130; 17 C. B., N.S., 754; 18 C. B., N.S., 494 ; 13 W. R. 54, 498 ; 11 L. T., N.S., 342 ; 10 Jur. N.S., 1079 ; 5 N. R. 12, 312 (Ilats). FAGE 65, 106, 135, 137, 140, 185, 190, 204, 205, 290, 313, 360, 383, 394, 3U6, 397, 400, 407, 413 51, 105, 107, 190, 191, 1V)4, 209, 412, 366, 375 220 403, 418 387, 424 247, 248, 257 65,73,112, 135, 136, 154, 208, 363, 375, 390, 574, 580, 586 328 52,60,166, 358 352, 354, 363 283 130, 141 402 186, 211, 311, 413, 428 189, 395 204, 213 396 281 TABLE OF CASES. xli 1869. Elmslie v. Boursier 1891. Embossed Metal Co. v. Saupe. 1835. Erard's Patent. . . 1885. Evans & Otway's Patent. 1888. Everitt's Application 1885. Fairburn v. House- hold. 1891. Fairfax v. Lyons . 1891. Farben fabrik v. Bowker. 1891. Farben fabrik Dawson. 1889. Fawcett's Patent . 1865. Feather v. Reg. . 1829. Felton v. Greaves . . 1893. Fenner v. Wilson . . 1889. Fiechter's Applica- tion. 1857. Finlay v. Allan . . 1874. Finnegan v. James 1838. Fisher v. Dewick . . 1889. Fletcher's Applica- tion. 1887. Fletcher v. Arden . . 1893. Fletcher's Patent . . 1887. Fletcher v. Glasgow Gas Commis- sioners. L. R. 9 Eq. 217 ; 39 L. J. Ch. 328; 18 W. R. 665 {Tin- Foit). 8 R. P. C. 355 {Embossing Metal). 1 W. P. C. 557 ; 5 Rep. Arts., N.S., 58 {Pianofortes). Grift'. 279 {Steam- Engines) . Griff. App. 27, 28 {Automatic Liquid Delivery for Coin Apparatus). 1 R. P. C. 109 ; 2 R. P. C. 140, 195; 3 R. P, C. 128, 263 ( Tramcar-Engines). 8 R. "P. C. 401 {Mechanical Targets). 8R. P.' C. 136, 389 ; 10R.P.C 215 {Dyes) 8 R. P. C. 397 Goodeve's Patent Practice (1893), 10. 6 B. & a. 257 ; 35 L. J. Q. B. 200; 12 L. T., N.S., 114 {Ships). 3 C. & P. 611 {Slvxrpening Knives). 10 R. P. C. 287 {Shuttles). . Griff. 284 {Dust-Collecting) . 19 Dec. Ct. Sess., 2nd Ser., 1087 {Fire-Orates). L. R. 19 Eq. 72; 44 L. J. Ch. 185. 4Bing. N. C. 706; 1 W. P. C. 264, 551 (h.) ; 7 L. J. C. P. 279 ; 6 Dow. 739 ; 6 Scott, 587 {Lace). Griff. App. 30 {Drying Paper) 5 R. P. C. 46 {Oas Cooking- Stoves). 10 R. P. C. 252 .... 4 R. P. C. 386 {Oas Cooking- Stoves). l'AGE 321 132 332, 334, 336, 337 225, 249 243, 250, 432 183, 202, 212, 387, 574 132, 580 117, 216, 225, 373, 374, 387, 389, 414 353 254 12, 178, 272 71, 164 355, 420, 593 257 310 366 165, 365, 373, 374 252 126 313, 409 xlii TABLE OF CASES. 187G. Flower v. Lloyd 1855. Foarde's Patent . . 1819. Forsyth's v. Riviere . 1892. Fountain Livet's Case. 1886. Fowler v. Gaul . . 1812. Fox, Ex parte . . . 1866. Fox v. Dellestable 1864. Foxwell v. Bostock . 1863. Foxwell v. Webster 1828. Fradella v. Weller 1878. Frearson v. Loe . 1887. Fraser v. Brescia Tram Co. 1885. Furness' Patent . 1887. Fusee Vesta Co. v. Bryant & May. 1892. Gadd v. Mayor of Manchester. 1891. Gale's Patent . . . 1839. Galloway v. Bleaden . 6 Ch. D. 297 ; 10 Ch. D. 327 W. N. (1876) 71, 132; (1877) 71 ; 45 L. J. Ch. 746 ; 35 L. T., N.S., 454; 36 L. T., N.S., 444 ; 25 W. K.,' 17, 793 (Printing Tin Plates). 9 Moo. P. C. C. 376 (Smoke- Prevention). 1 W. P. C. 97 ; 1 C. P. C. 401 (Detonators). 9 R. P. C. 327 (Steam-Boilers) 3 E. P. C. 247 (Oil-Vessels) . 1 W. P. C. 431 ; 1 V. & B. 67 ( Steam-Engines). 15 W. R. 194 (Umbrella Ribs). 4 De G. J. & S. 77, 298 ; 12 W. K. 94, 723 ; 9 L. T., N.S., 362, 528; 10 L. T., N.S., 144 ; 3 N. R. 103, 546 (Sew- in g-Machines). 4 De G. J. & a. 77 (Sewing- Machines). 2 Russ. & M. 247 (Copyright Case). L. R 9 Ch. D. 48 ; 26 W. R. 138 ; 27 W. R. 183 (Screws), 56 L. T., N.S., 771 ; 3 Times R. 587. 2 R. P. C. 175 (Lubricating Valves). 4 R. P. C. 71, 191 ; 34 Ch. D. 458; 37 Ch. D. 120; 56 L. J. Ch. 187 ; 56 L. T. 110, 136 j 35 W. R. 267 (Matches). 9 R. P. C. 249 (Gas-Eolders) . 8 R. P. C. 438 (Tube- Joints) . 1 W. P. C. 521, 268 (n.) (Pro- pelling- Vessels). PAGE 309, 311, 366, 379, 381 334 319 331,, 332, 338, 342 606 371 201 60 59, 181, 189, 201, 222, 225 362 409 63, 104, 199, 318, 354, 381, 402 414 340, 343 218, 225, 227, 419 176, 579 424 150, 158, 185, 188, o(J5, 388 TABLE OF CASES. xliii 1843. Galloway's Patent 1846. Gamble v. Kurtz . 1885. Gandy v. Reddaway 1856. Gardner v. Broadbent 1884. Gare's Patent . . 1889. Garrard v. Edge . 1886. Garthwaite's Patent . 1846. Geary v. Norton . 1884. Germ Milling Co. v. Robinson. 1841. Gibson v. Brand 1839. Gillett v. Wilby . 1884. Glossop's Patent . 1888. Gosnell v. Bishop 1865. Goucher v. Clayton 1865. Goucher's Patent . 1887. Goulard & Gibbs' Patent. 1887. Goulard & Gibbs v. Lindsay. 1888. Gozney's Application 1884. Grafton v. Watson . 1892. Graham v. Panta . . 1 W. P. C. 724 ; 7 Jur. 453 ; {Steam- Engines). 3 C. B. 425 {Sulphate of Soda, etc.). 2 R. P.O. 49 {Machine Belting). 4 W. R. 764; 2 Jur. N.S., 1041 {Saddle-Covers). L. R. 26 Ch. D. 105 .. . 6 R. P. C. 372, 563 ; 44 Ch. D. 224 ; 58 L. J. Ch. 397 ; 59 L.J.Ch. 379; 60 L. T., N.S., 557; 62 L. T., N.S., 510; 37 W. R. 501 ; 38 W. R. 455 {Tile-Making). Griff. 284 {Dog-Food) . . . 1 De G. & S. 9 {Registered Design). 1 R'. P. C. 217 ; 3 R. P. C. 11, 254, 399; 55 L. J. Ch. 287; 53 L. T., N.S., 696; 34 W. R. 194 {Meal-Flour). 1 W. P. C. 627 ; 11 L. J. C. P. 177 ; 4 M. & G. 179 {Spin- ning Silk Waste). 9 C. & P. 334 ; 1 W. P. C. 270 {Carriages). Griff. 285 (Steam-ffammers) . 5 R. P. C. 41, 151 ; 4 T. R. 397 {Troivser- Stretchers). 34 L. J. Ch. 239; 13 L. T., N.S., 115; 11 Jur., N.S., 462 ( TJireshing-Machines). 2 Moo. P. C. C, H.S., 532 {Tlireshing Corn). 5 R. P. C. 188, 525 ; 6 R. P. C. 215; 7 R. P. C.367; 34 Ch. L>. 396 ; 56 L. J. Ch. 606 ; 57 L. J. Ch. 209 ; Griff. 320 {Electric Transformers). 4 R. P. C. 189 ; 5 R. P. C. 192; 38 Ch. D. 38; 56 L. T. 506; 57 L. J. Ch. 687 {Electric Transformers). 5 R. P. C. 597 {Weight and Height Machine). 51 L. T.. N.S., 141 {Trade- Mark). 9 R. P. C. 164 PAGE 328, 336, 340, 341, 298 190, 354, 194, 355 226 311, 381 249 316 145, 363, 380, 381, 576, 589 12, 41, 45, 53, 140, 178, 186, 198, 320, 323 292, 365 219, 250 35, 137, 300 288, 322 345 127, 135, 172, 217, 218, 225, 423, 425, 576, 579, 582, 583 217, 419 252 414 235 xliv TABLE OF CASES. 1812. Granger, Ex parte . 1857. Green's Patent 1886. „ „ . . 1885. Greer v. Bristol Tan- ning Co. 1890. Grenfell & McEvoy's Patent. 1888. Griffin's Application . 1889. Griffin v. Feaver . . 1862. Grover & Baker Sew- ing Machine Co v. Millard. 1870. Grover v. "Wilson . 1888. Guest & Barrow's Patent. 1886. Guilbert Martin v. Kerr. 1885. Haddan's Patent . . 1822. Hall v. Boot & Jarvis . 1857. Hall v. Conder . . 1888. Hall, In re . . . , 1888. Hall & Hall's Patent. 1885. Hall v. Trueman . 1881. Halsey v. Brother- hood. 1887. Hampton & Facer's Patent. 1852. Hancock v. Moulton . 1851. Hancock v. Somervell Godson P. 2nd Ed. 225 . . 24 Beav. 145 (Casks) . . . Griff. 286 (Fuel) .... 2 R. P. C. 268 ( Tanning) 7 R. P. C. 151 (Fire-Arms) . 6 K. P. C. 296 (India- Rubber). 6 R. P. C. 396 8 Jur., N.S., 713 (Sewing- Machines). W. N. (1870) 78 (Sewing- Machines). 5 R. P. C. 312 ( Velocipedes). . 4 R. P. C. 18 ; 3 T. R. 87 (Steam a uge- Glasses). Griff. App. 12 ; 54 L. J. Ch. 126 ; 2 R. P. C. 218 (Baby's Food). 1 W. P. C. 100; 1 C. P. C. 423 (Singeing Lace). 2 C. B., N.S., 22, 53 ; 26 L. J. C. P. 138, 288; 5 W. R. 491 ; 3 Jur., N.S., 366, 963 (Boilers). 21 Q. B. L>. ; 5 R. P. C. 307 ; 57 L. J. Q. B. 494 ; 59 L. T. 37; 36 W. R. 892 (Re- frigerators). 5 R. P. C. 283 (Leather) . . L. R. 29 Ch. D. 307 .. . 19 Ch. D. 386 ; 51 L. J. Ch. 233; 45 L. T. 640 (En- gines). Griff. App. 13 (Casting Steel Ingots). Johnson's Pat. Manual, 3rd Ed. 208; Monthly Digest, 506 ( Caoutchouc). 39 Newton's Loud. Jour. 158. PAGE 282 268 250, 254, 353 243 248 128 289 366 252 144, 412 220, 227, 424, 425, 578 75,97 278 216, 218 252 383 415 219, 255 304, 352 142, 148 TABLE OF CASES. xlv 1849. Hardy's Patent . 1803. Hare v. Taylor. . 1809. Harmar v. Playne , 1807. Harmer v. Plane . 1886. Harris v. Rothwell 1853. Harrison's Patent 1853. Harrison v. Spire . 1876. Harrison v. Anderston Foundry Co. 1777. Hartley's Case. 1860. Harwood v. Great North. Rail Co. 1887. Haslam v. Hall 1887. Haslam v. Goodfellow 1891. Haslett v. Hutchinson 1870. Hassall v. Wright 1853. Hastings v. Brown . 1885. Hatfield's Patent . . 1834. Haworth v. Hard- castle. 1886. Haydock v. Bradbury 1789. Hayne v. Maltby . 6 Moo. P. C. C. 441 ; 13 Jur. 177 (Axle- Trees). 1 W. P. C. 292 (Brewing) . 11 East 101 ; D. P. C. 311 {Raising a Shag on Woollen Cloths). 14 Vesey, 130 ( Woollen Cloths) 3 P. P. C. 243,383; 4 It. P. C. 225 ; 35 Ch. D. 426 ; 3 T. R. 553; Griff. 109; 56 L. J. Ch. 459; 56 L. T. 5, 52; 35 W. R. 581 (Knitting- Machines). M. P. C. 3L {Railway Turn- ing- Table). 22 L. T. 92 - 2 8c. L. R. 4th Ser., 857; L. R. 1 App. Cas. 574 (Loom- Weaving). 2 H. Bl. 493 ; 1 W. P. C. 55 ( Fire-Proof Buildings). 11 H. L. C. 654 ; 29 L. J. Q. B. 193; 31 L. J. Q. B. 198; 35 L. J. Q. B. 27; 6 L. T, N.S., 90;, 12 L. T., N.S., 771; 10 W. R. 422; 14 W. R. 1 (Joints for Rails). 4 R. P. C. 203 ; 5 R. P. C. 1, 144; 20 Q. B. D. 491; 57 L. J. Q. B. 352 ; 59 L. T. 102 ; 36 W. R. 407 (Re- frigerators). 5 R. P. C. 28 ; 57 L. J. Ch. 245 ; 57 L. T. 788 ; 37 Ch. D. 118 (Refrigerators). 8 R. P. C. 457 (Electric Motors). L. It. 10 Eq. 509; 40 L. J. Ch. 145 ; 18 W. R. 821 22 I,. J. Q. B. 161 ; 1 E. & P.. 450; 17 J uv. Gil (Windlass). Griff. 288 L \Y. P. C. 480 ; 3 L. J. C. P. 311; 1 Bing. N. C. 182; 4 M. & Sc. 720 (Drying Calicos). 4 R. P. C. 74 (Springs for Shuffle Pegs). 3 Ter. R. 438; D. P. C. 156 (Point Net). PAGE 342, 346 280 60, 179, 188 39, 351, 352 157, 158, 159, 371, 372, 591 220 378 181, 196, 205, 307 44, 333 119 112, 152, 217, 363, 364, 382, 406, 408, 574 218, 587, 589 267 268, 359 186, 201, 213 254 72, 187, 204 407 280 xlvi TABLE OF CASES. 1890. Haythornethwaite's Patent. 1881. Hayward v. Hamilton 1884. Hayward v. Pavement Light Co. 1872. Healey's Application 1891. Heald's Patent . . 1889. Heap v. Hartley . 188(3. Hearson's Patent . 1884. „ „ . . 1886. Heath & Frost's Patent. 1853. Heath's Patent . . 1854. Heath v. Smith 1842 Heath v. Unwin to 1852. 1883. Henderson v. Clip- pen's Oil Co. 1872. Henry, Ex parte. 1867. Herbert's Patent . . 1889. Herrburger v. Squire . 1803. Hesse v. Stevenson . 1889. Hetherington, re . 1877. Heugh v. Chamber- lain. 1877. Heugh v. Magill . . 1836. Heurteloup's Patent . 7 R. P. C. 70 {Automatic Sprinklers). Griff. 121 {Pavement Lights) . 1 K. P. C. 207 {Pavement Lights). John. 165 8 R. P. C. 429 {Gas Lamps) . 5 R. P. C. 603; 6 R. P. C. 495 ; 42 Ch. D. 461 ; 58 L. J. Ch. 790 ; 41 L. T. 538 ; 38 W. R. 136 ; 5 T. R. 710 {Gig Mills). Griff. 266 ( Water Heating) . 1 R. P. C. 213; Griff. 309 {Pen-Holders). Griff. 311 {Blasting) . . . 2W. P. C. 247 3 Ell. & Bl. 256 ; 2 C. L. R. 1584 ; 1 W. P. C. 551 ; 2 W. P. C. 268 ; L. J. Q. B. 166 ; 18 Jur. 601 {Making Steel). 10 M. & W. 684 ; 13 M. & W. 583 ; 1 W. P. C. 551 ; 2 W. P. C. 216,236; 2 D., N.S., 482; 12 L. J. Ex. 46; 14 L. J. Ex. 153 ; 16 L. J. Ch. 283 ; 22 L. J. C. P. 7 ; 12 C. B. 522. (In H. of Lords) 5 H. L. Cas. 505 ; 16 C. B. 713 ; 25 L. J. C. P. 8. 8 App. Cas. 873 ; 20 Scot. L. Re,-. 423. L. R. 8 Ch. 167; 42 L. J. Ch. 363 {Breech Loaders). L.R. 1 P. C. 399 ; 4 Moo. P. C. C, N.S., 300 {Mooring Buoys). 5 R. P. C. 581 ; 6 R. P. C. 194 {Pianofortes). 3 B. & P. 565 ; D. P. C. 244 {Straw Paper). 7 R. P. C. 419 {Grinding Carding Engine Elats). 25 W. R. 742 {Frilling Ma- chines). W. N. (1877) 62 PAGE 250 96, 104 298, 353 232 231 269, 276, 284, 321, 359 W. P. Arms). C. 553 {Fire- 219, 241 218, : i20, 588 219, 223, 250 327, 335, 337, 339, 340 145, 253, 335 141, 187, 192, 196, 198, 211, 304, 316, 366 311 253 337, 345 129, 158, 418, 419 281, 282 257 288 353 158, 350 TABLE OF CASES. xlvii 1891. Heyes v. Hallmark 1858. Higgs v. Goodwin 1892. Higgins' Patent . 1888. Hill's Application 1863. Hill's Patent . . 1893. Hill v. Adams . 1817. Hill v. Thompson 1881. Hill v. Tombs . . . 1862. Hills v. Evans . . . 1853. Hills v. Laming . . 1862. Hills v. Liverpool Gas Co. 1857. Hills v. London Gas- light Co. 1885. Hinde v. Osborn . . 1876. Hinks v. Safety Light- ing Co. 1887. Hocking v. Hocking . 1885. Hocking v. Fraser 1868. Hoffman v. Postill . 1890. Hoffman's Applica- tion. 1853. Holland v. Fox . . 9 Tt.V.G.27 (Window Weights). Ell. Bl. & Ell. 529 ; 27 L. J. Q. B. 421 ; 5 Jnr., N.S., 97 (Sewage Utilization). 9 R. P. C. 71 (Type Setting) . 5 R. P. C. 599 (Wire Mopes) . 1 Moo. P. C. C, N.S., 258 ; 9 L. T., N.S., 101 ; 12 W. R. 25 ; 9 Jur., N.S., 1209. 10 R. P. C. 102 (Skylights) . 1 W. P. C. 229, 235 ; 1 C. P. C. 377; 3 Mer. 622; 8 Taunt. 375 ; 2 B. Moo. 424 (Iron Smelting). John. 82 ; Lawson 499 (Frill- ing Machine). 4 De G. F. & J. 288 ; 31 L. J. Ch. 457 ; 8 Jur., N.S., 525 ; 6 L. T., N.S., 90 (Gas Puri- fication). 9 Ex. 256 ; 23 L. J. Ex. 60 (Gas Purification). 32 L. J. Ch. 28 ; 9 Jur., N.S., 140; 7 L. T., N.S., 537 (Gas Purification). 27 L.J. Ex. 60; 29 L. J. Ex. 409; 5 H. & N. 312 (Gas Purification). 1 R. P. C. 221 ; 2 R. P. C. 45, 64 (Hair Curlinq). L. R. 4 Ch. D. 607 ; 46 L. J. Ch. 185; 36 L. T., N.S., 391 (Lamps). 3 R. P. C. 291; 4 R. P. C. 255, 434; 6 R. P. C. 69 (Steam Condensers). 3 R. P. C. 3 (Heating Water). L. R.4Ch.673; 19L.T.,N.S., 276 ; 20 L. T., N.S., 893 ; 17 W. R. 901 (Brick KUtus). 7 R. P. C. 92 (Automatic Weighing Machines). 1 (I. L R. I 10 ; 2 C. L. R. 1576; 1W.K.I4S; 3EU.& Bl. 977 ; 23 L. J. Q. B. 357 ; 1 Jur., N.S., 13 (Umbrellas). PAGE 132, 410 313 247 250, 251, 255, 509 340, 341, 347 367, 369 10, 12, 57, 59,61,01', 147, 157, 179, 198, 293, 30<>, 352, 354, 396 381 101, 140, 151, 396 288 304 10,52,101, 146, 166, 184, 213 377, 427 95,96,103, 190, 196, 205 210, 279, 300, 367, 375, 581 405, 412, 573 384 252 366 xlviii TABLE OF CASES. PAGE 1889. Holliday v. Heppen- 41 Ch. D. 109; 6 R. P.O. 320; 370, 371, stall. 58 L. J. Ch. 829; 61 I. T., N.S., 313; 37 W. R. 662 (Dyeing). 579 1888. Hollins v. Capper . 5 R. P. C. 289 144 1852. Holmes v. London & M. P. C. 13 ; 12 C. B. 831 ; 22 180, 184, North-West. Rail L. J. C. P. 57 (Turning 321 Co. Tables). 1876. Holste v. Robertson . L. R. 4 Ch. D. 9 ; 46 L. J. Ch. 1 ; 35 L. T., N.S., 457 ; 25 W. R. 35 (Glass Furnaces). 375 1888. Homan's Application 6 R. P. C. 104 (Fire-Proof Floors). 231, 248 1854. Honiball v. Bloomer . 10 Ex. 538 ; 2 W. P. C. 199 ; 24 L. J. Ex. 11 ; 3 C. L. R. 167; 3 W. R. 71 (Lubri- cating Apparatus). 144, 148 1855. Honiball's Patent 9 Moo. P. C. C. 378 ; 2 W. P. C. 201 ; 3 Eq. 225 (Anchors) 347, 350 1886. Hookham's Applica- tion. Griff. App. 32 ( Velocipedes) . 249, 252 1892. Hopkinson v. St. 10 R. P. C. 46 (Electric Wires) 91, 194, James Electric 225 Light Co. 1799. Hornblower v. Boul- D. P. C. 221 ; 1 C. P. C. 156 ; 46, 52, 57, ton. 8 Ter. R. 95 (Fuel Consump- tion). 3 R. P. C. 221 (Twisting • 163, 188, 210 171 1886. Horrocks v. Stubbs . Threads). 1884. Horsey's Patent . 1 R. P. C. 225 (Brooms) . . 331 1869. Horsley & Knighton's L. R. 8 Eq. 475 ; 4 Ch. 784 ; 268 Patent. 39 L. J. Ch. 157 ; 17 W. R. 1000, 1054 ; 21 L. T., N.S., 345. 1862. Horton v. Mabon'. 12 C. B., N.S., 437 ; 31 L. J. C. P. 255 ; 10 \V. R. 582 ; 6 L. T., N.S., 289 ; 16 C. B., N.S., 141 ; 12 W. R. 491 ; 9 L. T., N.S., 815 (Gas Holders). 120 ] 884. Hoskins' Patent . Griff. 291 (Folding Cots) . . 248 1871. Houghton's Patent . L. 1?. 3 Pi C. 461 ; 7 Moo. P. C. C, N.S., 309 (Paper) . 338 1843. Househill Co. v. Neil- 1 W. P. C. 676 ; 9 C. & F. 788 46, 49, 52, son. (Furnaces). 150, 165, 189, 204, 210, 368, 399 1884. Household v. Pair- 1 R. P. C. 109; 2R. P.C. 140 420 burn. ( Water Elevators). 18G2. Howe v. McKernan . 30 Beav. 547 384 TABLE OF CASES. xlix l'A'.K 180.5. Huddart v. Grimshaw D. P. C. 265 : 1 W. P. C. 85 ; 59, 68, 97, 1 C. P. C. 200 {('alien). 192, 388 1879. Hughes' Patent . L. R 4 App. Cas. 174 ; 48 L. J. P. C. 20 ; 27 W. R. 493 (Armour Plates). 336 1856. Hull v. Bollard . . 1 H.&N. 134; 25 L. J. Ex. 304 ^Grinding Com). 366, 377 1831. Hullett v. Hague . 2 B. & Ad. 310\Suyar Ilefin- 52, 98, ing). 204 1887. Humpherson v. Syer . 4 R. P. C. 184, 407 (Water- 124, 138, Waste Preventer). 144, 158, 405 1861. Hutchinson's Patent . 14 Moo. P. C. C. 364 (Paste- 331, 332, Board). 339 1888. Hutchison v Pattullo 4R. P. C. 329; 5 R. P. C. 351 (Oils and Fats). 173 1884. Huth's Patent . Griff. 292 (India- Rubber) . . 252 18(53. Hyde v. Palmer 3 B. & S. H57 ; 32 L. J. Q. B. 126; 7L. T., N.S., 823 ; 11 W. R. 433 (Separate (j Cocoa Fibre). 391 Hyde v. Trent . John. 79 ; 45 Newton's Loud. Journal, 135 (Separating Cocoa Fibre). 120 1801. JablochkofFs Patent . 8 R. P. C. 281 (Electric Light- ing). 349 1884. Jackson v. Needle . 1R. P. C. 174; 2R. P.C. 191 123, 351, (Parcel-Post Boxes). 355 1884. Jackson v. Wolsten- hulmes. 1 R. P. C. 105 (Toothed Wheels) 196 1892. Jahncke v. Bell 9 R. P. C. 100 (Metallic Boxes) 300 188*. Jensen v. Smith 2 R. P. C. 249 (Lubrication) . 122, 148 1892. Johnson v. Edge . 9 R. P. C. 144 ( Wrapping up Blue). 416 Ib71. Johnson's Patent . L. R. 4 P. C. 75; 8 Moo. P. 331, 341, 0. C, N.S., 282 (bewiny 342,347 Machines). 1877. Johnson's Patent . L. R. 5 Ch. I). 503; 46 L. J. Ch. 555; 13 Ch. D. 398. 226 1873. Johnson & Atkinson's Patent. L. K. 5 P. C. 87 . . . . 340 1873. Johnson v. Rylands . Griff. 138 (Wire Testing). . 30 ! 1843. Jones v. Berger 5 M. & G. 208; 1 W. P. C. 366, 371, 544; 12 L. .7. C. P. 170; 6 .",71 Scott. X. R. 208; 7 Jur. 883 ( Starch). • Jones v. Heaton . 1 \V. P. C. 101 (u.) . . . l!ll TABLE OF CASES. 1856. Jones v. Lees 1832. Jones v. Pearce 1861. Jones v. Pratt 1840. Jones' Patent . . 1854. Jones, In re. . Jones' Patent . . Jones' Application 1885. Jones' Application 1866. Jordan v. Moore . 1866. Jourdan v. Palmer 1893. Joy's Patent 1837. Jupe v. Pratt . 1887. Kaye v. Chubb 1836. Kay v. Marshall . 1839. Kay's Patent . . 1893. Kelly v. Batchelar 1890. Kelly v. Heathman 1878. Kenny's Patent But- ton-Holeing Co. v. Somerville. 1891. Kensington Co. v. Lane Fox Co. 25 L. J. Ex. 241 ; 1 H. & N. 189; 26 L.J. Ex. 9; 2 Jur., N.S., 645 (Stubbing Fibrous Substances). 1 W. P. C. 122 ; 1 C. P. C. 524; 1 Lond. Jour. C. S. 215 {Carriage Wheels). 6 H. & N. 697 ; 30 L. J. Ex. 365 ; 9 W. R. 696 ; 4 L. T., N.S., 411 (Preparation of Cotton, etc.). 1 W. P. C. 577 (Carriage Wheels). 9 Moo. l J . C. C. 41 (Starch) . Griff. 313 Griff. 265 Griff. App. 33 ( Writing Slates) L. K. 1 C. P. 624 ; 35 L. J. C. P. 268; 14 W. R. 769; 12 Jur., N.S., 766 (Ship Buildinu). L. R. 1 Ex. 102 ... . 10 R. P. C. 89 (Steam, Engines) 1 W. P. C. 145 (Expanding Table). 4 R. P. C. 23, 289 ; 5 R. P. C. 641 (Locks). 1 My. & Cr. 373; 1 Keen, 190 ; 5 Bin S . N. C. 492 ; 7 Scott, 548; 8 L. J. C. P. 261 ; 2 W. P. C. 71 ; 8 CI. & F. 245; 5 Jur. 1028; 2 W. P. C. 79 (Spinning Flax) 1 W. P. C. 568; 3 Moo. P. C. C. 24 (spinning Flax). 10 R. P. C. 2H9 (Ladders). . 7 R. P. C. 343; 45 Ch. D. 256; W. N., 1890, 134 ( Telescope Ladder). 38 L. T., N.S., 878; 26 W. R. 786 (Button-Holes). 8 R. P. C. 277 (Electrical Dis- f ribution: see Lane, Fox v. Kensington Co.). PAGE 364, 378 150, 317 383 334, 337 347 215 240 252, 254 121, 198 385 343 48,293 110, 151, 152, 157, 184, 298, 304, 4<>5, 413, 414, 428 90, 118, 195, 196 335, 340, 341 324 223 283 353, 356, 416, 417 TABLE OF CASES. PAGE 1861. Kernot v. Potter . 30 Beav. 343 ; 3 De G. F. & J. 447; (Paraffin). 286 1891. Kilner's Patent 8 R. P. C. 35 (Bottle-making Tools). 252 1884. King v. Oliver . 1 R. P. C. 23, 42 (Col) Her y Winding Mach inery). 278, 592 1889. King, Brown & Co. v. 6R. P.O. 414; 7 It. P.O. 436; 79. 150, Anglo-American 9 R. P. C. 313 (Dynamos). 173,211 Brush Co. 1887. Knight's Application Griff. App. 35 '2r,o 1839. Knott v. Morgan . 2 Kern, 213 (Trade-Mark Case). 430 1839. Kollman's Patent . 1 W. P. C. 564 (Pianofortes). 337 1886. Kurtz v. Spence 3 R. P. C. 368; 4 R. P. C. 67, 231, 427; 5 R. P. C. 161; 33 414, 416, Ch. D. 579 ; 36 CI). D. 770 ; 117, 419, 55 L. J. Ch. 919 ; 57 L. J. 593 Ch. 238; 55 L. T.. N.S., 317; 58 L. T.. N.S., 438; 35 W. R. 26; 36 W. R. 438 (Chemicals). 1892. Laine v. Herold 9 R. P. C. 447 (Blackbcetle Poison). 298 1887. Lake's Application . 188S. 99 >> • 5 R. P. C. 415 (Locomotives) . 217 1889. J> J5 • 6 R. P. C. 548 (Naphthol). . 25 1 1887. Lake's Patent . Griff. App. 16 (Colours) . 222, 223, 997 1891 5» »»•••• 8 R. P. C. 228 (Joints for Bails). 338 1874. Lamb v. Nottingham Manufacturing Co. Seton's Decrees, 4th Ed. 349 . 363 1850. Lamenaude's Patent . 2 W. P. C. 1.64: (Glass Letters) 350 1864. Lancaster's Patent 2 Moo. P. C. C, N.S., 189 (Fire-Arms). 316 1884. >? 99 * Griff. 293 (Pistons) . . . 250, 256, 1892. Lane Fox v. Kensing- 8 B. P. C. 277 ; 9 R. P. C. 221, 50, 173 ton Co. 413( Electrical Distribution). 1892. Lane Fox's Patent 9R. P. C. 411 {Electrical Dis- tribution) 335, 339 18C2. Lang v. Gisborne . 31 Beav. 133; 31 L. J. Ch. 769; 6 L. T. f N.S., 771 (Targets). 1 58 1889. Lang v. Whitecross 6 R. P.O. 570; 6 Times R. 57 217 Co. ( Wire Ropes). 1890. Lang, He .... 7 11. P.O. 469 (Wire Hopes) . 217, 588 lii TABLE OF CASES. 1890. Law v, Ashworth 1856. Lawes v. Purser 1892. Lawrence's Patent 1885. Lawrence v. Perry 1885. Lawrie v. Baker . 1875. Lea v. Saxby . 1890. Leadbeater v. Kitchin 1842. Leadstains v. E. of Sandwich. 1845. Leaf v. Topham . . 1886. Ledgard v. Bull . 1847. Ledsam v. Russell 1872. Lee v. Walker . 1856. Lee's Patent . . 1829. Lewis v. Davis. 1829. Lewis v. Marling . 1883. Liardet v. Hammond Electric Light Co. 1776. Liardet's Patent . 1778. Liardet v. Johnson . 1891. Lifeboat Co. v. Cham- bers. 1618. Lightfoot v. Lenet 1855. Lister v. Eastwood 1864. „ 1857. Lister v. Leather . 7 E. P. C. 86, 231; 9 R. P. C. 194 ( Wire Cards : see Ash- worth v. Law). 6 E. & B. 930 ; 26 L. J. Q. B. 25 ; 28 L. T. 84 ; 5 W. R. 43 ; 3 Jur., N.S., 182 (Manure). 9 P. P. C. 85 (Refrigerators) . 2 R. P. C. 179 (Crayon- Holders). 2 R. P. C. 213 (Bird- Cages) . 32 L. T., N.S., 731 (Gates) . 7 R. P. C. 235 (Machinery Fences). 4 M. & Gr. 1028 .... 14 M. & W. 146; 14 L. J. Ex. 231 (Weaving Elastic Fabrics). L. R. 11 App. Cas. 648 (Brick-Making). See Russell v. Ledsam. L. K. 7 C. P. 121 ; 41 L. J. C. P. 91 ; 26 L. T., N.S., 70 ( Coal-Boxes). 10 Moo. P. C. C. 226 (Brakes). 3 C. & P. 502; 1 W. P. C. 488 ; 1 C. P. C. 471 (Shear- ing Cloth). 4 C. & P. 52 ; 1 W. P. C. 490 ; 1C. P.O. 475; 10B.&C.22; 5 M. & R. 66 (Shearing Cloth) W. N. (1883) 96 ; 31 W. R. 710 (Accunmlators). 1 W. P. C. 52 Bull. N.P. 78; 1 W. P. C. 53; 1 C. P. C. 35 (Trusses). 8 R. P. C. 418 (Lifeboats) . 2 Cro. 421 3 C. L. R. 1249 ; 26 L. T. 4 ( Wool- Combing). 9 L. T., N.S.," 766 (Wool- Combing). 3 Jur., N.S., 433 ; 8 E. & B. 1001 ; 27 L. J. Q. B. 295 ; 3 .Jur.,N.S.,811; 4 Jur., N>., 947; 29 L. T. 112; 4 K. & J. 425 (Treating Fibre). PAGE 372, 417, 580 289 339 123, 212, 217, 311, 412 412 384 131, 209 10 366 399 235 347 60, 97, 388 72, 79, 94, 150, 187, 211, 230 278 333 42, 96, 192 141 144, 158 9 352, 353 310, 313 59, 181, 305 TABLE OF CASES. llli 1884. Lister v. Norton 1887. Ii'Oiseau&Pierraud's Application. . Lombe's Act 1886. London & Leicester Hosiery Co. v. Gris- wold. 1883. London & Leicester Hosiery Co. v. Higham. 1888. Longbottom v. Shaw . 1612. Lord Chancellor's Case 1888. Lorrain's Patent . 1838. Losh v. Hague . . 1836. Lovell v. Hicks 1846. Lowe's Patent . 1852. ,, „ 1885. Lucas v. Miller 1854. Lucas's Patent . 1886. Luke's Patent . 1888. Lynde's Patent 1893. Lyon v. Goddard 1861. M'Cormick v. Gray . 1867. McDougal's Patent . 1 R. P.C.I 14; 2 R. P. C. 68, 135; 3 R. P. C. 199 (Imita- tion Fur). Griff. App. 36 (Medical Elec- tricity). 1 \V. P C. 38 (Silk- Spin- ning Machinery). 3 R. P. C. 251 ; 2 T. R. 676 (Knitting Machinery). Lawson's Patents, 2nd Ed., 142, 498, 505. 5 R. P. C. 497 ; 6 R. P. C. 143, 510;8R.P.C.333;43Ch.D. 4<>; 58 L. J.Ch.734;61L.T., N.S., 325; 37 W. R. 792 (Pile- Fabric Weaving). No. 273 ; Hob. 214 .. . 5 R. P.C. 142 (Electric Clocks) 1 W. P. C. 202; 2 Coop. 59 (n.); 7 D. P. C. 495; 5 M. & W. 387 ; 8 L. J. Ex. 2 51 (Wheels). 2 Y. & C. 46, 481 ; 5 L. J. Ex. 101 ; 6L.J Ex. 85. 10 Jur. 363 (Gas Manufac- ture). 8 Moo. P. C. C. 1 (Propelling I 'essels). 2 R. P. C. 155 (Bicycle Lamp) M. P. C. 235 (Chains) . . Griff. 294 (Roving Fibrous Materials). 5 R. P. C. 663 (Weighing- Marhines). 10 R. P. C. 121 (Disinfecting Clothes). 7 H. & N. 25 ; 31 L. J. Ex. 42 ; 4 L.T.,N.S., 832 (Reap- ing Alarliine). L. R. 2 P. C. 1 ; 37 L. J. I'. ('. 17; 5 Moo. P. C. C, N.S.,1 (Disinfecting Sea-age) PAGE 142, 156, 167, 177, 208, 351, 353, 355, 382, 384, 388 250, 433 232 278 371 126,410 11 251 87, 354, 3H5 277, 280 339 332 171, 196 220 249, 254, 255 252 68, 151 316, 322 333 liv TABLE OF CASES. 1890. McDougal v. Parting- ton. 1888. MacEvoy's Patent . 1816. Maefarlane v. Price . 1883. Macfarlane's Applica- tion. 1891. McHardy's Patent . 1868. Mclnnes' Patent . . Macintosh v. Evering- ton. 1836. Macintosh's Patent . 1862. Mackelcan v. Rennie . 1892. Mackie v. Solvo Laundry Co. 1842. Macnamara v. Hulse 1889. Main's Application . 1866. Mallet's Patent . . 1870. Manceaux, Ex parte . 1893. Mandelberg v. Morley 1(324. Mansell's Patent . . 1815. Manton v. Manton 1814. Manton v. Parker . 1860. Markwick's Patent . 1878. Marsden v. Saville Street Foundry Co. 1888. Marshall's Applica- tion. . Martin's Patent 1889. Mason v. Goodwin 18C5. Mathers v. Green . 7 R. P. C. 210 (Paper Fabrics) 5 R. P. C. 285 (Portland Cement). 1 Stark. 199; 1 W. P. C. 74 (n.) (Umbrellas). John. 168 8 R. P. C. 432 ( Velocipedes) . L. K. 2 P. C. 54; 37 L. J. P. C. 23 ; 5 Moo. P. C. C, K.S., 72 (Metallic Soap). 6 Rep. Arts., N.S., 317, 365 ( Waterproof Cloth). 1 W. P. C. 739 (War Materials). 13 C. B., N.S., 52 (Floating Docks). 9 R. P. C. 465 (Washing C lothes). Car. & M. 471 ; 2 W. P. C. 128 (n.) (Paving). 7 R. P. C. 13 (Dynamos) . . L. R. 1 P. C. 308; 4 Moo. P. C. C, N.S., 175 (Fire- proof Buildings). L. R. 6 Ch. 27 2; 18 W. R. 1184 (Breah-Loaders). 10 R. P. C. 256 .... 1 W. P. C. 19 D. P. C. 333 ; 1 C. P. C. 278 (Gun- Locks). D. P. C. 327 ; 1 W. P. C. 192 (n.) (Gun-Lochs). 13 Moo. P. C. C. 310 ; 8 W. R. 333 (Spongiopiline). L. R. 3 hx. D.203; M9 L. T., N.S., 97 ; 26 W. R. 784. 5 R. P. C. 601 (Button-Hole Machine). Griff. 320 6 R. P. 0. 235 (Stone-Break- ing). L. R. 1 Ch. 29; 34 L.J. Ch. 298; 35 L. J. Ch. 1; 34 Beav. 170; 5 N. R. 358; 12 L. T., N.S., 66 ; 13 L. T., N.S.. 420: 13 W. H. 421; 14 W. It. 17; 11 J ur., X.S., 845 (Mowing-Maehint ). PAGE 375 250 186 253 251 336 102 331, 337 120, 176, 210 418 70, 188, 190, 324, 366, 396 433 316 249 364 147 68, 186, 188 68 339, 345 229 247 423 311 282 TABLE OF CASES. lv l'AGE 1860. Mayer v. Spence . 1 J. & H. 87 354 I860. Meadows v. Kirkman 29 L. J. Ex. 205 (Veneering) 378 1874. Mellor v. Watkins L. R. 9 Q. B. 400 287 1890. Meyer v. Sherwood . 7 R. P. C. 283 (Cas Shade- Holders). 218 1892. Miller v. Clyde Bridge Steel Co. 9 R. P. C. 470 (Rolling Metals) 300 1856. Milligan v. Marsh. 2Jur.,N.S., 1083 (Pianofortes) 233 1854. Milner's Patent 9 Moo. P. C. U. 39 ... 347 1893. Miller v. Searle, Barber 10 R. P. C. 106 (Lamps for 117, 19 1, & Co. Velocipedes). 201, 574 1892. Mills v. Carson 9 R. P. C. 338 ; 10 R. P. C. 9 (Saftty Burners). 287 1835. Minter v. Mower . 6 A. & E. 735; 1 W. P. C. 52, 150, 138 ; 6 L. J. K. B. 183 ; 1 198, 204 N. & P. 565 (Chairs). 1834. Minter v. Wells 1 W. P. C. 127 ; 1 C. P. C. 622 ; 52, 68, 4 L.J. Ex. 2; 1 C. M. & R. 231, 293 505 ; 5 Tvr. 163 (Chairs). 1835. Minter v. Williams . 4 Ad. & Ell." 251 ; 5 Nev. & M. 647; 1 H. & W. 585; £ L. J. E. B. 60 ; 1 W. P. C. 135 (Chairs). 320 1884. Moore v. Bennett . 1 R. P. C. 129 182, 380, .•'.'.'7, 128 385 1870. Moore v. Craven . L. R. 7 Ch. 94 (n.) . . . 1855. Morewood v. Tupper . 3 C. L. R. 718 (Zinc-coat ing Metal). 313 1858. Morey's Patent 25 lieav. 581; 6 W. R. 612 (Sewing Machines). 268 1813. Morgan's Patent . 1 W. P. C. 737 (Tinned 327, 328 Plates). 333 1876. 99 99 * • 24 W. R. 245 ; W. N. (1876) 97 268 1886. 5» 5J • Griff! App. 17 (Watch-Keys) . 221 227 1888. 5> »> • 5 R. P. C. 186 ; 58 L. T., N.S., 713 ; W. N. (1888) 34 ( Carriages). •I2i' 1866. Morgan v. Fuller . L. R. 2 Eq. 296 ; 14 L. T., N.S., 353; 14 W. R. 497 (Carriages). 366 1835. Morgan v. Seaward . 1 W. P. C. 167, 187 ; 2 C. P. C. 41,62, 66, 37, 96, 101; 2 M. & W. 68, 72, 511 ; 6 L. J. Ex. 153 (Pro- 143, 1 15, pelling Vessels). 150, 181, is:,, L87, L91, 201, 293, 378, 379 1886. Morgan Brown's 3 R. P. <'. 212 (Hor& 347 Patent. Nails). lvi TABLE OF CASES. 1887. Morgan v. "Windover 1776. Morris v. Bransom 1891. Morris v. Coventry Co. 18Op. h] (:,.) (Alloy). 2 W. P. (J. H7 (Alloy). 2 W. P. C. 113 (Alloy) . . L. R. 7 Ch. 570; 15 Eq. 115; 10 Ch. 675 (n.); 42 L. J. Ch. 191; 27 L. 'I., N.S.,110, 644; 20 W. K. 649; 21 W. R. 118, 498 (Brick-Making). W.X., 1882, 53, 56. . . . 8 R. P. C. 444 (Floor-Cloth Printing l. 13 Moo. p. 0.0. 543:9 W.R. 390 {Copper Ore Smelting). L. i;. 6 App. Oas. 174; 50 L. J. P. C. 40; 29 W. K. 745 (II akes). 1 R. P. & 49 (Filters). . . PAGE 11(5, 129, 150, 172, 567, 580 57, 59 376 59, 185, 201, 202 225, 233, 360, 5b2 109, 155, 170, 171, 175, 235, 363, 384, 414 123, 37fi, 3b3, 579 144, 148 58, 90, 190, 297, 318, 320, 352, 387, 395, 396 356 58, 341, 343, 347 5H, 99, 102, 150, 315, 405 268 222 337, 345, 346, 347 208, 314, 411 TABLE OF CASES. lvii 1863. Needham v. Oxley 1615. Needier v. Bishop of Winchester . . Neilson v. Betts 1841. Neilson's Patent . 18-11. Neilson v. Fothergill 1841. Neilson v. Harford 1841. Neilson v. Thompson 1891. Nettlefolds v. Reynolds 1863. Newall v. Elliot . 1856. Newall v. Elliot, In re 1851. 1852. Newall v. "Wilkins Newall v. "Wilson . 1817. Newbury v. James 1861. Newby v. Harrison . 1887. Newman's Patent . 1890. Newsum v. Mann . 1846. Newton v. Grand Junction Rail. Co. 1 872. Newton v. Halbard . 1851. Newton v. Vaucher . 1861. Newton's Patent . . S L. T., N.S., 532, 604; 11 W. K. 745, 852; 2 N. R. 232, 267, 388 (Squeezing out Moisture). Hob. 221 See Betts v. Neils ti. 1 W. P. C. 290 (Hot Blast). . 1 W. P. C. 287 (Hot Blast). . 1 W. P. C. 295, 324 (n.); 1 W. 1'. C. 381, 373 ; 10 L. J. Ex. 493; 11 L. J. Ex. 20; 2 Coo. ('. C. 61 (n.); 8 M. & W. 806 (Hot Blast). 1 W. P. C. 278; 2 Coop. 61 (n.) (Hot Blast). 8K. P. C. 410; 9 R. P. C. 270 (Screws). 1 H. & C. 797; 32 L. J. Ex. 120; 11 W. R. i3S; 13 W. R. 11 ; 7 L. T., N.S., 753; 10 L. T., N.S., 792; 9 Jur., X.S., 359; 10 Jur., N.8., 954 (Submarine Cables). 4 C. B., N.S., 269 ; 27 L. J. C. P. ".37; 4 Jur., N.S., 562 (Submarine Cables). 17 I,. T. 20 2 De C M. & G. 282; 19 L. T. 161 ( Wire I opes). 2 Mer. 446 ; 1 C. P. C. 367 (a out PiUs). 1 .1. & II. 393 5 R. P. C. 271 ; Griff. App. 40 (Poors and Windows). 7 R. P. ('. 307 {Letterpress Printing). 5 Ex. 331; 20 L.J. Ex. 427 (n.) (A.ile Boxes). J. 4m. 152 6 Ex. 859; 21 L. J. Ex. 305 (Hydraulic Packing). 14 Moo. P. C. C. 156 ; 15 Moo. P. C. C. 176; 10 W. P. 731; 9 Jur., N.S., 10!* (Printing Machines). I' v ( ; B 563 15 288 288 47, 48, 51, 52, 165, 188, 190, 191, li»7, 204, 213, 314, 366, 377, 395 184, 187, 351, 354 300, 371, 579, 580, 583, 5*4 44, 166, 170, 181 289, 316, 322 143 407 353 184 284 248, 251 131 99, 204, 315, 324 205 52, 99, 166, 210 327, 340, lviii TABLE OF CASES. PA(iE 1884. Newton's Patent . L. R. 9 App. Cas. 592 ; 1 R. P. C. 177 (Grindinq Slime). 339 1844. Nickels v. Haslam 8 Scott N. R. 97 ; 7 M. & G. 378 ; 13 L. J. C. P. 14(3 ; 8 Jur. 474 ( / laited Fabrics). 165, 214 L849. Nickels v. Ross 8 C. B. 679 (Braid) . . . 232 1893. Nicoll v. Swears . 10 R. P. C. 240 (Biding Habits). 133 1880. Nobel's Explosive Co. L. R. 17 Ch. D. 721 ; 8 App. 316. 319, v. Jones. Cas. 5 ; 50 L. J. Ch. 582 ; 52 L. J. Ch. 339 ; 48 L. T. 490; 30 W. R. 294; 31 W. K. 388 (Nitro Glycerine). 324 1850. Noble's Patent . 7 Moot P. C. C. 191 (Carding Wool). 328, 330 1887. Nordenfelt's Patent . Grift'. App. 18 (Alloy of Aluminium and Iron). 223 1884. Nordenfelt v. Gardner 1 R. P. C. 10, 61 (Battery 307, 405, Gun). 411, 427 1870. Normand's Patent L. R. 3 P. C. 193 ; 6 Moo. P. C. C, N.S., 477 (Steam). 328 1855. Normanby's Patent . 9 Moo. P. C. C. 452 (Soap). . 345 1863. Norton's Patent . 1 Moo. P. C. C, N.S., 339 ; 11 W. R, 720; 9 Jur., N.S., 419 (Fiqured Fabrics). 328, 336 1861. Noton v. Brooks . 7 H. & N. 499 ; 8 Jur., N.S., 155; 10 W. R. Ill (Looms). 289 18G5. Nunn v. D'Albuquer- que. 34 Beav. 595 (Lamps). 208 1889. Nussey & Leackman's 7 R. P. C. 22 (Pressing 331, 343 Patent. Fabrics). 1891. Nuttall v. Hargreaves 8 R. P. C. 273, 450 (Beer Taps) 131, 173, 582 1888. Oddy v. Smith . . . 5 R. P. C. 503 (Covering Boilers). 126, 578 1789. Oldham v. Langmead 3 Term R. 439, 441. . . . 279, 288 1862. Ormson v. Clarke . 13 C. B., N.S., 337 ; 14 C. B., N.S., 475; 32 L.J. C. P. 8, 291; 7 L. T.,JS'.S., 361; 11 W. R. 118, 787; 9 Jur., N.S., 749; 10 Jur., N.S., 128; 1 N. R. 61; 2 N. 11. 192 (Casting Boilers). 120 185G. Osborne v. Jullion 26 L. J. Ch. 6: 4 W. R. 767 (Chemicals). 283 TABLE OF CASES. UX 1885. Osrnond v. Hirst 1881. Otto v. Linford 1889. Otto v. Singer . . . 1886. Otto v. Steel and Otto. v. Sterne. 1860. Oxley v. Holden . 1853. Palmer v. Cooper . 1853. Palmer v. Wagstaflfe 1888. Parker v. Maignen Filtre Rapide Co. 1869. Parkes v. Stevens . 1888. Parnell's Patent . . 1890. Pascall v. Toope . . 1858. Patent Bottle Enve- lope Co. v. Seymer. 1859. Patent Type -founding Co. v. Richards. 18G0. Patent Type-founding Co. v. Walter & Lloyd. 1886. Paterson's Patent . 2 R. P. C. 265 (Lawn Tennis Ground Markers). 46 L. T., N.S., 35 (Gas Engines). 7 R. P. C. 7 (Bicycle Tyres) . 2 R. P. C. 13!); 3 R. P. 0. 109; L. R. 31 Ch. D. 241 ; 55 L. J. Ch. 196 , 54 L. T. 157 ; 34 W. R. 289 (Gas Engines). 8 (J. B., N.S., 666 ; 30 L. J. C. P. 68; 2 L. T., N.S., 464; 8 W. Pi. 626 (Carriage Dours). 9 Ex. 231; 2 C. L. R. 480; 23 L. J. Ex. 82 (Candles). 8 Ex. K40 ; 9 Ex. 494 ; 22 L. J. Ex. 295; 23 L. J. Ex. 217; 1C. L. R. 448; 2 C. L. R. 1052 (randies). 5 1!. P. C. 207 (Filters). . . L. R. 8 Eq. 858 ; 5 Ch. 36 ; 22 L. T., i\.S., 635; 18 W. R. 233 (Lamp Doors). 5 1;. P. C. 126; 4T. R. 197 . 7 It. P. C. 125; 8 R. P. C. 1 ( Propagating Pans). 5 0. B..N.S., 164; 28 L.J. C. P. 22; 5 Jur., N.S., 174 (Botll>s ). 1 John. 381; 6 Jur., N.S., 39; 2 L T., N.S., 359 (Printers Type). 5 II. & N. 192; 29 L. J. Ex. 207 ; 1 L. T., N.S., 382 ; 6 Jur., N.S., 103; Johns. 727; 8 \V. K. 353 (Printer*' Type). Chill. 2U5 (Casks) .... i'.uje 354 46, 107. 135, 136, 137, 155, 157, 188, 202, 206, 895 286 107, 158 159, 375, 405, 406, 407, 414 148, ] 55, 166, 177, 199, 210, 213, 320 366 204, 366, 373, 383, 388 376 121, 179, 182, 80'J, 3'J6 268 877, 8,85, 5^6 119, 166, 310 188, 196, 365 378, 381 248 lx TABLE OF CASES. 1876. Patterson /•. Gaslight & Coke Co. 1849. Patterson's Patent . 1845. Patteson v. Holland . 1846. Payne v. Banner . 1 854. Payne's Patent . 1893. Peckover v. Rowland & Co. 1866. Perm v. Bibby. Jack & Fernie 1884. Pennycook's Patent Glazing Co. v. Mac- kenzie. 1845. Perkins' Patent . . 1884. Peroni v. Hudson . 1840. Perry v. Mitchell . . 1893. Pether v. Shaw . . . Pettit Smith's Patent 1890. Philips v. Ivel Cycle Co. 1885. Philpot v. Hanbury . 1890. Pickard v. Prescott . 1884. Pietschmann's Patent 1868. Piggott v. Anglo- American Tele- graph Co. 1 848. Pinkus' Patent . . 1892. Pirrie v. York Street Flax Co. 1871. Pitman's Patent . L. R. 2 Ch. D. 812, 827; 3 App. Cas. 239 ; 45 L. J. Ch. 843; 47 U J. Ch. 402; 35 L. T., N.S., 11 ; 38 L. T., N.S., 303; 26 \V. R. 482 {Gas iurification). 6 Moo. P. C. C. 469 ; 13 Jur. 593 {Colour Printing). Hindniarch, Pat. 293 . 15 L. J. Ch. 227 {Preserving I egetahles). Coryton, 220 {Preserved Meat). 10 R. P. C. 118, 234 {Soften- in (/ Water). L. R. 1 Eq. 548 ; 2 Eq. 314 ; 3 Eq. 308 ; 5 Eq. 81 ; 2 Ch. 127; 36 L. J. Ch. 277, 455 ; 37 L. J. Ch. 136 ; 14 L. T., N.S.,495; 15 L. T., N.S., 385, 399; 17 L. T., N.S., 407; 14 W. R. 760; 16 W. R. 243 (>creio-Shaft Bearings). 19 Scottish Law Reporter {Glazing Wi?tdows). 2 W. P. C. 6 {Hot Air). 1 R. P. C. 261 {Thermometer Tubes). 1 W. P. C. 269 {Pens). . . 10 R. P. C. 293 .... See Smith's Patent. 7 R. P. C. 77; 62 L. T. 392 (Bicycles). 2 R. P. C. 33, 153 {Dress Pattern Draughting). 7 R. P. C. 361 ; 9 R. P. C. 195 {Eye Glasses). Griff. 314 {Barrel Organs). . 19 L. T., N.S., 46 (Electric Telegraphy). 12 Jur. 233 {Motors) . . . 10 H. P. C. 34 {Flax Spin- ning). L. R. 4 P. C. 84 ; 8 Moo. P. C. C, X.S., 293 {Candles). PAGE 89, 138, 228 337 387 277 337 179, 305, 311, 367 91, 102, 170, 171, 366, 391, 398 298 332, 336, 3^0 407 363 160, 2' 370, 372 70, 122, 15'., 155, 185, 208 159 219, 220, 226 379 335, 336 117 328. 329, 330, 331, 345 TABLE OF CASES. lxi 1888. Pitt's Patent . . . 1883. Plating Co. v. Farqu- harson. 1875. Plimpton v. Malcolm- son. 1876. Plimpton v. Spiller . 5 R. P. C. 343 (Naphthol) Griff. 187; 17 Oh. D. {Electro- Plating). 49 1888. Podmore v. "Wright 1867. Poole's Patent . . 1885. Pooley v. Pointon 1889. Postcard Automatic Co. v. Samuel. 1860. Potter v. Parr . . . 1869. Poupard v. Fardell . 1845. Pow v. Taunton . 1879. Powell v. Head . . 1875. Printing & Numerical Registering Co. v. Sampson. 1889. Procter v. Bailey . . 1887. Procter v. Bennis 1887. Procter v. Sutton Lodge Chemical Co. 1840. Quarrill's Patent 1888. Railway & Electrical Appliance Co., In re. L.R. 20 Eq. 37; 3Ch.D.531; 44 L. J. Oh. 257; 45 L. J. Cli.505; 34 I.. '!., X.S., 340 {Roller-skates). L. R. 4 Ch. R 28fi; 6 Ch.D. 412, 425; 35 L. T., N.S., 656; 37 L. T., N.S., 56; 25 W.R. 152; 47 L.J.Ch. 211; 25 W. R. 152 ; 26 W. R. 285 ; L. R. 5 H. L. 433 (Boiler Skates). 5R. P.O. 380 (Umbrellas) . L. R. 1 P. C. 514 ; 4 Moo. P. C. C, N.S., 452 ; 36 L. J. P. C. 76 (Surface Condensers). 2 R. P. C. 167 (Bread) . . 6 R. P. C. 560 (Automatic Post- card Boxes). 2 B. & S. 216 (n.) (Spinning Machinery.) 21 L. T., N.S., 696 ; 18 W. R. 59, 127 (Wheel Skids). 9 Jur. 1056 (Nipping Lever) . L. R. 12 Ch. I). 686 (Copy- right). L. R. 19 Eq.462; 44 L.J.Ch. 705;32L.T.,N.S.,354;L.R. 42 Ch. D. 390 (Printing). 6 R. P. C. 106, 538; 59 L. J. Ch. 12; 38 W. R.100(/, L32, 286, 289 10 131, 154, 158, :;oi 218 233 316 286 145, 191 333 154, 157, 336 170, 171, 405 363, 364, 415 166, 316, 320 327 337 328 197 249 339, 340 398 / XXIV TABLE OF CASES. 1864. Young v. Fernie . 1891. Young v. Hermand Oil Co. 1884. Young v. Rosenthal . 1 De G. J. & S. 353 ; 4 Giff. 5'«7; L. K. 1 H. L. 63; 33 L J. Ch. 192 ; 35 L. J. Ch. 52b ; 9 L. T., N.S., 590 ; 10 L. T., N.S., 861 ; 14 L. T., N.S., 637 (Bituminous Sub- stances). 8 R. P. C. 293 ; 9 R. P. C. 373 (Mineral Oil and Am- monia). 1 E. P. C. 29 (Corsets) . . PAGE 101, 38«J 290 46, 69, 314, 316, 386, 411 ENGLISH PATENT PEACTICE. INTRODUCTION. PRINCIPLES, ORIGIN, AND GENERAL FEATURES OF THE LAW OF LETTERS PATENT. 1. The nature of an invention. There is no pro- perty in inventions at common law. — There can be no doubt that the development of civilisation in all ages has been chiefly due to the progress of the arts, and the increase of wealth in Great Britain during the present century has mainly depended upon the ingenuity of British inventors. But the history of industry in England proves that it is almost impossible for a patentee to reap the reward of his labour, without financial help and legal assistance. The poor inventor, pressed by lack of means, with an ill-drawn patent and a want of business capacity, too often sees his invention pirated, and even his claim to the credit of it disputed, until, like Cort, the founder of the iron industry in England, he is reduced to a pauper's grave. By an invention, in ordinary language, we mean the result of the exercise of the imaginative or constructive faculty. Thus, wc speak of the " inventions " of a poet, B Introduc- tion. SECT. 1. The nature of an invention. There is no property in inventions at Common Law ENGLISH PATENT PRACTICE. Introduo- a painter, a chemist, or an engineer. As used in patent TION sect. i. l aw > the word " invention " has a slightly different „. 7" P meaning ; it is somewhat wider in one direction, and The nature of D an invention, somewhat narrower in another. For in patent law the There is no . . . „ „ property in word inventor also includes the " importer ot an m- CoinnionLaw vention, and on the other hand, since the granting of patents is restricted to inventions of new manufac- tures, authors, poets, and painters must look elsewhere than to patent law for protection for creations of their genius. An invention is sometimes spoken of as the property of the inventor, as though he had a right to that which he has created ; this, however, is an error. It is true that the author of a book is considered in law as having a property in the copyright of it, by reason of his labour in producing it. This is sometimes treated as a sort of title by occupancy, and has been regulated, and in some respects curtailed, by statute. But though an analogous property might logically be deemed to exist in an invention, yet such property has never been recognised by our law, and the only way in which an inventor can obtain any special benefit from his invention, is by virtue of the Royal prerogative exercised in his favour for the advantage of trade. The granting of a patent is not a matter of right, but is at the pleasure of the Crown. It is in the highest degree unlikely that the Crown would refuse a patent or would restrict the number of years for which it was granted, but it is necessary to remember that no Act of Parliament compels the Sovereign to grant patents, and it would be quite possible for the King, with the advice of the Ministry of the day, supported by public opinion, to withhold any patent, or impose new conditions on the INTRODUCTION. 3 patentee, providing always that the provisions of the Introduo Patent Acts were not violated. sfct N 'i Thus, for instance, the Crown might refuse to errant a m , ° The nature of patent altogether, but if it were granted, no higher fee an invention, could be taken than that specified in the Acts of Parlia- property in ment. Therefore, a patentee's claim is not like a man's Common Lai property in a copyright, it is a matter of grace and favour, only extended to him on account of the public advantage which will be derived from his invention. This right to withhold a patent has been especially saved by sect. 116 of the Patent Act of 1883. 2. The origin of the law of patents. — Before com- mencing a detailed exposition of the patent law as it at present exists, it may be useful first to examine its origin, and then to summarise briefly its salient features, so as to give a bird's-eye view of the subject as a whole, and render more easy the consideration of the various parts, and their co-relation to one another. In the first place it is necessary to observe that, Origin of the according to the Law of England, the King has been Crowntogrant invested from time immemorial with certain peculiar mo "°l )ullLa - powers, called his prerogatives. Thus, for example, he is the fountain of honours ; he alone has the right of making peace and declaring war, and of sending em- bassies to foreign states. All judicial acts are in theory done in his name, and he is also the guardian of trade and commerce (see Amos' Notes to Fortescue ; Staunde- ford on the Prerogative; Allen's ' Rise and Growth of the Prerogative in England '). But it is not to be understood that the Kin in the way and to the extent to which they have The origin of Deen anciently exercised (Blackstone's Commentaries, the law of V ol. i. p. 238). It is the express duty of the Courts of patents. . r ' \ J - . Justice to moderate and regulate the prerogative so that it shall be used in a manner conformable to the law of the land. Again, this prerogative is not entrusted to the King merely as a source of revenue or profit. It is a trust, to be exercised only for the good of the Com- monwealth (per Lord Kenyon, 4 T. R. 410 ; see also 3 Atk. 171). There is yet another safeguard which has gradually grown up against the abuse of th£ Royal prerogative. For whereas in theory the King can do no wrong, and in theory he may, within its due limit, use his prerogative as he pleases, yet in practice he cannot do so except by means of his principal ministers, who are responsible to Parliament and to the courts of law for the advice which they give to him. The prerogative of the Crown is of course liable to be curtailed, or extended, or regulated by an Act of Parlia- ment, which is the highest expression of sovereign power that the State possesses. It is, however, a principle of the interpretation of statutes, that the prerogative cannot be curtailed by implication, but only by express enactment. For no Act of Parliament binds the Crown, unless it is either expressly provided that the Crown shall be bound, or unless it appears from the statute that the curtailment of the prerogative was clearly intended. One of the prerogatives of the King, which appears to be very ancient, is the privilege of protecting and regulating both external and internal commerce. INTRODUCTION. In these days no interference with industry takes Is ™™ uc " place except by virtue of the advice of both Houses of sect. 2. Parliament, expressed in a statute. But in earlier times The origin of it was by no means unusual for the King to exercise his JJj^JJ" 1 prerogative for what was considered the benefit of trade, even in cases where no Act of Parliament had dealt with the subject. Thus, for instance, the King always claimed the right to grant and regulate markets and fairs, and to select the most convenient places and times for the holding of them. Again, the King has always possessed the prerogative of fixing the amount and character of the coinage, and probably originally also of weights and measures. Bat it is to be remarked that in all these cases, as stated above, the acts of the King must be done according to ancient custom : they must be for the benefit of trade, and they are always liable to be controlled by parliamentary enactment. Among the methods by which the King has been accustomed to use his prerogative for the protection of trade, is the formulation of regulations as to the persons who may carry it on, and the places where they may exercise their craft. In our time the tendency has hitherto been in favour of complete freedom, so that we find it difficult to realise the condition of mind which desired and courted protection. And yet to our ancestors nothing seemed more proper than that particular in- dustries should be restricted to particular persons or guilds, whose members had served their apprenticeship* and that foreigners should be admitted only with caution. Nay, more, even the garments which the various classes of the community should wear, the prices that should be paid for their make, and the materials of ENGLISH PATENT PRACTICE. Introduc- tion, sect. 2. The origin of the law of patents. which they should be composed, were all considered reasonable objects of State interference. Thus, in the reign of Charles I., proclamations were issued that no more than 2s. a head should be paid for an ordinary dinner ; bakers were prohibited from making into more than thirteen loaves the flour which, under the assize of bread, ought to serve for twelve ; tavern keepers were forbidden to sell cooked meat, or to charge more than 2d. for the bait of a horse (a.d. 1634). Similar interven- tion on the part of the State may be found in the history of Venice and the other States of Italy ; in France ; in Spain ; in the German Empire ; and in fact all over Europe. This power to regulate trade was not admitted as boundless. It was used more or less in accordance with ancient precedent, according as the power of the reigning King was weak or strong. But in theory at least, it has been always held in our law, whenever the voice of the judges was not silenced by tyranny or by corruption, that the right of regulating manufactures must be exercised primarily for the good of trade and the advantage of the subject. The manner in which the Crown has generally used its right of controlling industry, is by the granting of monopolies for the practice of certain trades. But though the power of the King to regulate trade is un- questioned, yet the regulation of trade by means of monopolies has always been looked upon with suspicion by the Courts. Monopolies are very repugnant to the spirit of our constitution. For instance, that sort of monopoly which is produced by forestalling and re- grating has ever been held to be against the law. Combinations of workmen or of employers whose object INTRODUCTION. 7 was by means of monopoly to raise prices have been Intuoduo TIOX. always regarded with disfavour. Nay more, so decidedly 6 ect. 2. does the law lean against any restrictions on the right The origin of of every one to pursue his industry freely, that it is ultra the |awof J l . . patents. vires for a man to contract not to exercise his trade, except for a limited time and within a limited area. But within limits the power of the Crown to grant trade monopolies was recognised long before the days of Elizabeth. When by virtue of the Royal prerogative a privilege is granted to a subject, and thus, as it were, a portion of that prerogative is delegated to him, he is said to be possessed of a franchise. Hence all monopolies created by virtue of the prerogative are franchises. We shall enter more fully hereafter into the nature of the industrial monopolies which the King can grant. It is sufficient here to say that, in spite of the extravagant claims of the Tudor kings, the law has only recognised monopolies, limited as to time, and granted only for new manufactures, which are useful to the public, in that they introduce into practice arts or crafts unknown before. The mode in which a franchise can be created is also limited and restricted. For by virtue of his prerogative, the King in making grants does so in ways and with formalities peculiar to himself. He is more capable than a subject in some things, for instance he can assign a chose in action at common law where a subject could not, and debts to him are preferred to the debts due to other creditors. But he is less capable than the subject in other matters. Thus, for instance, he cannot grant a franchise except by record. The principal mode in which the King makes a grant 8 ENGLISH PATENT PRACTICE. Introduc- tion, sect. 2. The origin of the law of patents. by record is either by Royal Charter or else by the issue of what are termed " Letters Patent " or " open letters " sealed with the great seal, of which the Lord Chancellor is the nominal custodian, which operate so to record the grant that it is at once supposed to be matter of public notoriety, and every one is presumed to be aware of it. This is the origin of the word " patent." Inasmuch as the foundation of all rights conferred by Letters Patent is always to be sought in the words of the grant, it becomes necessary to give a sketch of the principal characteristics of Royal Letters Patent, and of the rules recognised for their interpretation. (1.) In the first place it is essential to the validity of a Royal grant that it should be within the law, for the King is not above the law, but subject to the law (Blackstone's Commentaries, vol. i. p. 234). Hence no Letters Patent can be valid which are repugnant either to the Common Law or to a statute. (Examples of this rule may be found in Viner's Abridgment, tit. ' Preroga- tive,' Y. 6, vol. xvii, fo. 192, p. 124, if any authority be needed for so obvious a proposition.) (2.) Closely allied to the principle that the King cannot make a grant contrary to law, is the rule that he cannot make any grant to the prejudice of vested rights. From this it follows that if he has made by patent a valid grant to one person, he cannot derogate from it by a subsequent grant of the same thing to another. In the older books many instances are to be found in which such subsequent grants have been repealed. But the case of Sir Oliver Butler (1661, 3 Lev. 220), goes even further, and shews that a second grant which even interferes unfairly with the first will not be good. INTRODUCTION. 9 From this it follows that the King when once he has Iotbotco- 'Hi IN. granted a patent to one person or persons, cannot make sect. 2. a valid grant of the same subject-matter to others. In The origin of the case of Letters Patent for inventions there will in jjjjjjjj ,jf general be other reasons also why the second grant will be bad, for the publication of the invention granted by the first patent will destroy the novelty of the second. But where the patents closely follow on one another, so that the second is granted before the first is published, it may become necessary to apply the principle stated above, which cases will be more fully discussed hereafter. (3.) In the next place no grant from the Crown is good unless it is certain, that is to say, unless it is so expressed, that the subjects of the King may know what it is he has granted. This doctrine will be found laid down as to patents in general in Liglitfoot v. Lenet, 1618, 2 Croke, 421, ami in several cases quoted in Comyn's Digest ; tit. ' Grant,' (Jr. 6 : and in Viner's Abridgment, tit. ' Prerogative,' F. c, fo. 196, vol. xvii., p. 140 ; and its application to the law of patents for inventions has been approved by Heath (J.), in Boulton v. Bull, 1795, 2 H. B., p. 484. (4.) Again, any grant which contains an expression of the King's intention in making the grant will be void, if the grant obviously contradicts the intention (1 Co. Ft. 46 a). From this principle it would follow, that, if the King expressed the patent to be made for the encouragement of all inventions which may be for the public good, and the grant was of a monopoly for some invention which was clearly not for the public good, on this ground alone it would be void. (5.) The next principle is, that if a patent purport to be made upon a mimed consideration or suggestion 10 ENGLISH PATENT PRACTICE. Introduc- tion, sect. 2. The origin of the law of patents. which is in fact false, even though not made with any intention to deceive, the grant is void for deceit. This is a very old and well-known principle (see 5 Co. 94 a., and a large collection of cases in Yiner's Abridgment, 'Prerogative,' M. C. fol. 199, vol. xvii., p. 151). Thus, in the case of the Eastern Archipelago Co. v. Reg., 1853, 2 E. & B. 892, Baron Parke said :— " If the King has been deceived by a false suggestion as to what he grants, on the consideration for his grant, if he appears to have been ignorant or misinformed as to his interest in the subject-matter of his grant, if the language of his grant be so general that you cannot in reason apply it to all that might literally fall under it, or if it be couched in terms so uncertain that you cannot tell how to apply it with that precision which grants from one so specially representing the public interest ought to have, or if the grant reasonably construed would be injurious to the vested interests of the subject, or would work a wrong, or something contrary to law ; in these, and such like cases, the grant would be wholly void, or restrained according to circumstances, and equally so whether the technical words, 'ex certa scienta et mero motu' be used or not. To hold grants valid and unrestrained in such cases would be deceptione domini regis, and not secundum intentionem" (see also Leadstains v. Earl of Sandivich, 1842, 4 M. & G. 1028 ; Wilts Peerage case, 1862, L. E. 4 H. L. 12G). This principle has been repeatedly applied to grants for inventions. In fact it is one of the principal pillars of patent law, and causes all patent grants whenever obtained by erroneous representations on the part of the patentee to be void : e.g. Hills v. London Gaslight Co., 5 H. & N. 349 ; Bills v. Thompson, 1817, 8 Taunt. R. 375. This will be further considered hereafter. INTRODUCTION. 11 (6.) Another rule is, that whereas recitals in a deed are Intbodtjo- tion. put in for the express purpose of binding both grantor SECT . 2. and grantee, so as to avoid future disputes, yet recitals in Thc ~~ n of a Crown grant only bind the grantee, and the King is *®Jj[ of always at liberty to shew that any one of them is untrue. For in a Crown grant, the recitals, instead of being treated as binding the King not to dispute them, are treated either as the representations made to him, or motives of his grant, and if any one of them is false the whole grant fails. For example, it has been held that if a patent recites that a benefice is in value under £20 a year, and the value is really greater, the whole patent fails, but the grant would have been good had there been no recital at all. {Lord Chancellor's case, 1612, No. 273, Hob. 214.) A distinction was once made as to cases in which the recital was on suggestion of the party and others in which the recital was on suggestion of the King : 1 W. P. C. 41. The distinction was never very sharply drawn between them, but those recitals which were clearly on the suggestion of the grantee were treated most severely. In all letters patent for inventions, there is a recital that the patentee " has represented that he is in possession of an invention, that he is the true and first inventor, and that the same is not in use by * any other person." And therefore since in the recital the grant is expressly declared to be made on the suggestion of the grantee, the strictest truth is required in all these representations. (7.) Another rule is that a royal grant made upon a series of suggestions or considerations, is void if one of them fails. It is doubtful whether in a patent for an invention the part performed by the patentee can really be called the consideration. It is rather a series of 12 ENGLISH PATENT PRACTICE. suggestions or conditions, upon the making and per- In the case of Intkoduc TION. sect. 2. forming of which the patent is granted The origin of Feather v. The Queen, 1865, 6 B. & S. 285, the question the law of patents. post, p. Gl. arose whether the Crown, having granted a patent for an invention, was prevented from using it, and it was sought in argument to treat the grant as a contract. But the Court negatived this view. The language therefore of Brunton v. Hatches, 1821, 4 B. & Aid. 551 ; Walton v. Potter, 1841, 1 W. P. C. 595 ; Cartwright v. Earner, 1800, cited 14 Yes. 136 ; Gibson v. Brand, 1841, 1 W. P. C. 629, in which the filing of a final specification is spoken of as the " consideration " or " price paid " for the grant, can hardly be considered verbally accurate. In any case, however, whether we treat the acts of the patentee as suggestions or considerations, it is certain that, if any one of them fails the whole patent is void. This is different from the case of grants between subjects, in which, if only a part fail, the grant will be supported, provided that the failure does not go to the whole root of the contract (see Bacon's Abridgment, '.Prerogative,' F., and Chitty on Contracts, chap. i. sec. 1). The principle was first applied to patent law in the cases of Hill v. Thompson, 1818, 8 Taunt. 401 ; and Brunton v. Hatches, 1821, 4 B. & Aid. 541, as to which, see further, Chap. I. sec. 8. (8.) Another principle applies to the mode of con- struing Crown grants. For whereas between subjects the rule is, that the grant shall be construed most favourably for the grantee, and against the grantor (Bacon's Abr. ' Grant,' L. 1 ; Swan v. Fonnereau, 3 Yes. 41) ; yet where the King is the grantor, a contrary rule of construction applies, and the grant is construed most favourably for the Crown ; see Feather v. The Queen, 1865, 6 B. & S. 283, INTRODUCTION. 13 and the iudgment of Lord Stowell in The Rebehah, 1799, Introduo TION 1 Eob. 227, 230; see also Plowden's Conim. 333. sect. 2. Comyn's Digest, 'Grant' G. 12; Viner's Abridg. 'Pre- The ~~ n f rogative,' 0. c., folio 200, vol. xvii, p. 153. thUaw of Thus, if a private person were to make a grant of the " mines " under certain lands, this would carry mines of all sorts, but if the King made a grant of all the mines under certain of his lands, royal mines {e.g. gold and silver) would be presumed to be excepted. In the one case the word "mines" would be most favourably construed for the grantee, in the other it would be construed most unfavourably for the grantee. It is, however, to be observed that where a good and valuable consideration accrues to the King for his grant, or where there is some public advantage from the grant, the strict rule of construction is greatly relaxed, " for the honour," as it is termed, " of the King." It is also possible by the insertion of suitable words, somewhat to mitigate the severity of this rule of construction. Accord- ingly, grants of patents for inventions, contain a clause that the grant " shall be construed in the most beneficial sense for the advantage of the patentee." These words give the Courts power to employ the beneficial con- struction, as will be explained further on, so that in so far as the interpretation of words and phrases is con- cerned, patents for inventions are now fairly construed, and with no strained meaning in favour of the Crown. (9.) The last rule applicable to patents is that if for any reason a royal grant is void, it can be declared void, not only in proceedings instituted by way of scire facias for revocation of it (or in the case of letters patent for inventions, by a petition for revocation^, but also in any suit against a third person brought by 14 ENGLISH PATENT PRACTICE. Introduc- tion, sect. 2. The origin of the law of patents. a grantee to enforce his patent rights. This will appear from Travell v. Carteret, 1683, 3 Levinz. 134 ; and AlcocJc v. Cooke, 1829, 5 Bing. 340. In the latter of these cases the plaintiff, under colour of a grant from the King, brought an action of trespass for taking wreck. It appeared that the grant was void, owing to a prior lease to a third person which was not recited in the grant. The defendant was allowed to take advantage of this defect, and the plaintiffs action was defeated. It thus appears that when the grantee of letters patent for an invention brings an action on his patent, the defendant is at liberty to shew in any way that he can that the patent is invalid. Attempts have been made to mitigate the rigour of the above rules applicable to royal grants by reciting that the King made his grant ex mero motu, speciali gratia et certa scientia. These words are still contained in letters patent for inventions, but a critical examination of them will shew that they are not of much advantage to the patentee. The words ex speciali gratia have the effect of reciting that the grantee has no common law right to his patent, but only receives it as a matter of grace. The words ex mero motu, if they had any effect, would mean that no consideration was given for the grant, and that it was made on the motion of the King. If this could be upheld, then any want of consideration or misrecital, or error of suggestion, might of course become less fatal. But such an interpretation of the grant is not ad- missible, because it would contradict the recitals. For the recital expressly says that " the inventor hath humbly prayed " for the grant. Whence it follows that the INTR OD UCTIO N. 1 5 grant is not made ex mero motu, but on the suggestion Intbodvo- and prayer of the grantee. Therefore, in accordance sect. 2. with the decision in Needier v. TJie Bishop of Winchester, The origin of 1615, Hob. 221, the words ex mero motu will be treated the law of ' ' patents. as clausula clericorum, a mere clerical flourish, and have but little weight. The words ex certa scientia are intended to relieve the grantee from the consequences of a false recital. For it was thought at one time, the recital that the King knew of certain knowledge that a man was possessed of an invention, might save the patent even if that knowledge was false in fact. But there is no force in this contention ; no estoppels bind the King ; and whether a recital is put in stating that " a thing is so," or "that the King knows it to be so," any person is equally at liberty either to shew that the recital is false in fact, or else that the recital " that he knows it " is untrue. For the King cannot be presumed to know an untruth. In cases of mere mistake in some unimportant part, the words still have an effect, and hence are useful as may be seen by consulting the old cases in Viner's Abridg- ment, 'Prerogative,' E. c. 3, fo. 196, vol. xvii, p. 198. We thus see, (1) that an inventor has at common law no property in his invention, and can only obtain a monopoly for the use of it by virtue of a grant of letters patent by the Crown ; (2) that this grant is a voluntary exercise of the royal prerogative; (3) that it can only be made for the encouragement of trade, and the good of commerce ; (4) that the power of granting letters patent at common law was always restricted to new and useful manufactures, and limited in point of time (see Coke's Institutes, 84), and (5) that the letters patent when granted are subjected to special principles and rules of construction 10 ENGLISH PATENT PBACTICE. Inteoduc- very favourable to the Crown, and unfavourable to the TION. sect' 2. grantee ; rules quite different from those which are T , r. usually applied to the interpretation of contracts between the law of subject and subject. patents. Although our ancient law undoubtedly contains indications that the power of the King to grant mono- polies by letters patent was limited, yet such limitation was for many centuries very ill-defined, and, as may be supposed, gave rise to constant struggles between the people and the Crown. And many Acts of Parliament were passed in consequence : e.g. Mag. c. c. 9 Ed. III. st. 1, c. 1 ; Stat, of Cloths, 25 Ed. III. c. 2 ; Statatum de Stapulis, 27 Ed. III. stat. 2; 28 Ed. III. c. 13, s. 3; 31 Ed. III. c. 10 ; 2 Eich. II. st. 1, c. 1 ; 7 Hen. VII- c. 9 ; 12 Hen. VII. c. 6 ; 2 W. & M. st. 2, c. 9. Grants of For the Tudor sovereigns, and notably Queen Elizabeth, reign of had made claims to regulate trade and grant monopolies Q. Elizabeth. f ar j n excess f w hat the Commons were disposed to allow. Accordingly, in our law books we find very divergent opinions upon the subject, ranging from the extravagant claims of some of the Crown lawyers to the moderate views of Sir Edward Coke, whose career after- wards suffered from the freedom with which his views were expressed and supported. It would be beyond the range of our present object to investigate this matter further, but those who desire to trace the history of the claims and power of the Crown to grant monopolies may consult Chitty's Prerogative of the Crown, chap. x. ; 3 Coke's Institutes, chap, lxxxv., and Bacon and Peters- dorf's and Viner's Abridgments, tits. ' Prerogative ' and Monopoly.' From these and other authorities, the truth seems to be that the Crown had in the clavs of Queen Elizabeth a patents. INTRODUCTION. 17 limited and modified right to grant monopolies, but not TNTuonro in restraint of already existing trades, nor unless it could SECT " '2. be shewn or inferred that such monopoly was for the public The ~7j n f advantage. the law of In Noy's Report of Darcy v. Allin, p. 182, it is stated that in the year 1567 there was a patent granted to Mr. Hastings of the Court, that in consideration that he brought in the skill of making of frisadoes, as they were made in Harlem and Amsterdam beyond the seas, being not used in England ; that, therefore, he should have the sole trade of the making and selling thereof for divers years ; charging all other subjects not to make any frisadoes in England during that time, under a penalty of £100. The patentee having filed a bill in the Exchequer against certain clothiers of Coxall, for making frisadoes contrary to the intent of the patent, it appeared, upon the examination of the cause, that the same clothiers did make baies very like to Mr. Hastings' frisadoes, and that they used them before Mr. Hastings' patent, for which cause they were neither punished nor restrained from making their baies like to his frisadoes. And from Bircoi's Case (a.d. 1568), it would seem that the manufacture in respect of which the patent was granted must have been a new one : 1 W. P. C. 31, and Year Book, 15 El. 4, Easter Term ; see also 3 Shepherd's Abridgment, ' Prerogative,' p. 57. In the year 1602 the Case of Darcy v. All in, reported in Coke's Reports, Part xi., fo. 84, gave rise to an investigation of the Crown power of granting monopolies. Queen Elizabeth had granted to Edward Darcy, a groom of the Privy Chamber, the sole license to make playing- cards for twelve years after 1600, at a yearly rent of 100 marks. Darcy brought an action against T. Allin, a c 18 ENGLISH PATENT PBACTICE. Introduc- haberdasher, for infringing his patent. In the argument it XI ON sect. 2. was admitted by the plaintiff that the Crown could not The origin of res * ra; i n the practice of a trade or manufacture of useful the law of things, but contended that in matters of recreation it patents. had this power. The Court in their judgment were against the Patent, and in the course of it the follow- ing dictum was delivered, which has usually been re- garded as an accurate exposition of the law upon the subject. The passage is not to be found in Coke's Report, but is given in Noy's Report of the same trial : " Now therefore, I will shew you how the judges have heretofore allowed of monopoly patents, which is, that where a man by his own charge or industry, or of his own wit or invention, doth bring any new trade into the realm, that in such cases the King might grant him a monopoly patent for some reasonable time until the subjects may learn the same in consideration of the good that he doth by his invention to the commonwealth, otherwise not": Noy, 1 ; 781 W. P. C. 6. Similar words were used by Sir F. Bacou in his speech on Monopolies : 1 Pari. Hist. 926. In Webster's Patent Cases a number of examples of early patents are given, and of the arbitrary way in which they were frequently revoked. Although Sir E. Coke argued the case of Darcy v. AUin for the plaintiff, yet in his report (published long after- wards) he calls it an "odious monopoly." And in 1604 he became chairman of a committee of grievances of the House of Commons for suppressing illegal monopolies. In 1610, King James I. published a book, entitled "A Declaration of His Majesty's Pleasure," wherein he expressly declared that grants of monopolies of existing industries were illegal, and that he would grant no more. For a time this promise was kept, and those which INTRODUCTION. 19. were granted, e.g. one for the importation of whalebone Inthoduc- TI< >N. (see Proclamations of James I., Sept. 11, 1614) were sect. 2. expressed to be for new industries. The origin of In the Clothivorkers of Ipswich Case, 1615, it is said: the law of patents. " If a man hath brought in a new invention, and a new trade within the kingdom in peril of his life, and con- sumption of his estate, or stock, &c., or if a man hath made a new discovery of any thing : 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. For when the trade is become common, and others have been bound apprentices in the same trade, there is no reason that such should be forbidden to use it " : Godbolt, 252. But gradually the old abuses revived, and patents were granted for all kinds of old manufactures, until the case of Sir Giles Mompesson, which resulted in the Statute of Monopolies, 21 James I. c. 3 (a.d. 1624). Bv the Statute of Monopolies it was provided, in the Tlip Statute J L of Mono- year 1624, that in future the grant of monopolies should polies, 1G24. be restricted to " the term of fourteen years ... of the sole working or making of any manner of new manu- factures within the realm, to the true and first inventor and inventors of such manufactures which others at the time of making such letters patent and grant shall not use, so as also they be not contrary to the law, nor mis- chievous to the State by raising prices of commodities at home or hurt of trade or generally inconvenient": p0 *t, p. 438. 21 Jac. I. c. 3, s. 6, (46 & 47 Vict. c. 57, s. 46.) c 2 20 ENGLISH PATENT PRACTICE. Intkoduc- jf. f nows, from the above remarks, that the power of TTAV TIOK skct. 2. granting patents is not derived from statute, but is by The origin of the common law. " This Act," says Lord Coke (3 Inst., patents. 184), " maketh patents no better than they should have been if the Act had not been passed." interpreted^ Hence, then, all the principles as to the interpretation according to f r0 yal grants, will still govern the interpretation of the principles J ° ° regulating patents. It is necessary to bear this in mind, because it ex- plains how it is that the recitals in a patent do not bind the King, and how, in case any one of them is false, instead of the grantor being bound, as would be the case in an ordinary grant, the whole patent becomes void. Between private persons, even if the recital of a past consideration in a deed were false, the deed would stand (in the absence of fraud). But, as has been already explained, in the case of the King this is not so ; there- fore, if an invention be old or not useful, the patent for it will fail as against the King and the public, and yet a deed of sale or license of that very patent to another person for a sum of money would be good. A curious question might perhaps be raised where the monopoly is granted not by a patent, but by an Act of Parliament, for it might be argued that in that case, the King having the advice of Parliament in the making of the grant, the grant must be construed in the ordinary way. The point was raised but not determined in Boulton v. Bull, 1795, 2 H. Bl., p. 500, and is not likely to arise again. (3.) General view of the present law. — The law which governs the nature of the invention for which a post, p 435. patent may be granted is still the Gth section of the Statute of James I. c. 3, which limits the power of the INTRODUCTION. 21 Crown to the granting of monopolies for the sole working Introduo or making of any manner of new manufacture to the sect. 3. first and true inventors, provided that they be not n T". ' x •> deneral view contrary to law or mischievous to the State by raising of the present prices of commodities at home, or to the hurt of trade, or generally inconvenient. The period was to be for fourteen years only from the date of the grant, and the patents were to have only such force as they would have had if the Act had not been made. It is to be observed that the publication of the inven- tion by the patentee, was not originally insisted on, nor was it any part of the terms or conditions upon which the grant of letters patent was founded. The object of the framers of the Statute of Monopolies seems rather to have been the introduction of new mysteries or manufactures into England, than the publication of the methods of working them, for no provision for publication is con- tained in that statute. It is true that a few years before the Act was passed, namely, in 1611, a very curious patent for working metals granted to Sturtenant, ex- presses the grant to be made upon condition that the patentee should publish his invention. He complied with this by printing a work called ' Metallica,' which is the first specimen extant of anything in the nature of a specification, and is a curious jumble of poetry, philosophy and Scripture quotations, but contains very little to disclose tbe nature of the art which it professes to describe. This example was not imitated, and although in a few cases conditions were made for the inspection of the machines, or for the deposit of models of them in the Tower, yet it was not till the reign of Queen Anne that the law officers of that day made a regular practice of inserting into the grant a condition 22 ENGLISH PATENT PRACTICE. Introduo that the patentee should describe how to perform his sect. 3. invention. It is, therefore, quite an error to suppose that General view originally the making public the means of performing an of the present invention was any part of the consideration for the "rant law. J r of it. The true consideration upon which it was founded was the creation, or planting on English soil, of some trade which was previously not in use within the realm, and the greatest publicity expected, was that which would arise from the training of a number of apprentices and artificers in the practice of it. For many years the Statute of Monopolies continued to regulate the granting of patents, but it was amended in 1835 (5 & 9 Will. IV. c. 83) ; 1859 : (2 & 3 Vict. c. 67.); and again remodelled in 1852: (15 & 16 Vict. c. 83). Finally, in 1883, the whole question was taken up anew and a fresh Act passed which, with some successive amending Acts, is still in force. The policy of this last statute was chiefly directed to the lowering of the fees, an advantage which was counter-balanced by the prohibition to put more than one invention into a patent. All these Acts, however, like the Statute of Monopolies did, no more than regulate and limit the exercise of the royal pre- rogative, which is still the source from which the power of the Crown to grant letters patent is derived. It is probable that in using the word manufacture in the Statute of Monopolies, the framers of that Act intended some complete trade or branch of trade. But as inven- tions multiplied, it became so impossible to distinguish an improvement in an old trade, from a substantially new trade, that ultimately all improvements and new pro- cesses were treated as new manufactures. It is clear that in order to make an invention capable of being the subject of a valid patent, the invention must be for a INTRODUCTION. 23 manufacture, not merely for a principle, nor an abstract Introddc- method. It must in some way result or aid in the 6EC .,! ; > production of an article capable of being dealt with in ~ T . r r o General view the way of trade. Inventions are generally classified of the present under the heads of new machines, processes of manu- facture, and articles, and there is a further and co-ordinate division of them into new products, improvements and combinations. These all shade into one another so that it is often difficult to say to what class an invention belongs. It is sometimes important to determine this, especially in the case of " combinations," and the subject will be more fully dealt with hereafter. Patents can only be granted for " inventions," that is to say, for some advance on what was previously known, and not merely a change so obvious that any one could have made it. It will not therefore be sufficient for an inventor to sug- gest a mere substitute for some part of a well known machine and call it an invention. But the amount of the invention may be slight. Thus suppose some one suggested the mere substitution of a pivot (which is well-known) for a hinge in a door. This would be no invention, it would be the substitution of an obvious mechanical equivalent. But great stress must be laid on the word obvious, for suppose the substitution of the pivot had some advantage which it required invention and ingenuity to find out, then, if it were new, it is quite possible that a patent for it might be sustained. Each case must stand on its own merits, and often each case depends on the frame of mind of the Judge or arbitrator who decides it. What one man will think most in- genious another will consider obvious. And there is as great danger of under-valuing the ingenuity as of over- appreciating it. 24 ENGLISH PATENT PRACTICE. Introduo Again the invention must be useful, that is to say, sect. 3. disclose a new and good way of doing a thing. It need c T . not perhaps be absolutely better than anything that has of the present gone before, but its utility must be such that there is a reasonable prospect of its being useful to somebody or in some circumstances. Thus if a man invented a new way for making sulphuric acid, he is not bound to shew that it is actually cheaper, quicker or more effectual than every method now in use ; what he has to shew is, that it is a successful new method. It may not be very likely to be used, still it is an addition to the common stock of public knowledge, and in this sense is useful. But if a man were to expend great ingenuity in inventing some alteration which was no improvement at all, his invention would fail to afford good subject-matter for a patent, because of want of utility. For instance, it would be possible like the tailor in Gulliver's voyage to Laputa, to invent a method of taking the height of a man with a sextant, and to design a special machine for the purpose, but it would be of no use when made, it would be far worse than an ordinary tape measure, and unless it possessed some peculiar advantage of its own, or capa- bility of being turned to a useful purpose, would fail to support a patent. It must however be remarked that it is not a very easy thing to upset a patent on the ground of want of utility, especially now that each patent is granted only for one invention, for the fact that the defendant has infringed it, is some evidence that it was of use to somebody. The power of the Crown to grant monopolies is for the encouragement of trade, not of the polite.arts and sciences. From which it follows, that though no doubt the theo- retical beaut v of some scientific instrument may excite INTRODUCTION. 25 our admiration and it may be the herald of a new path in Introthjc- diseovery, no argument is so forcible in support of a sect. 3. patent as to shew that commercially the article made Gf>neral view under it has been, or is sure to be largely bought by the ' jf thc present public, or that the trade had been desiring to discover it, but failed until the inventor shewed them how it could be done. No one can have been present at many patent trials, without observing the vital importance of enlisting the sympathy of the Tribunal. It the Court can be made to believe that the patent was taken out by an honest and meritorious inventor, who had expended great labour, overcome great obstacles, and at length really benefited the public by a good discovery, every effort will generally be made to support the patent. Nor is such sympathy wrongly enlisted ; it is the object of all good law that a truly meritorious and candid inventor should not be deprived of his invention by a mere slip or by some immaterial or technical error. In addition to being useful and ingenious, the patent must also be new, that is to say, it must not have been anticipated. By this it is not meant that a patent will always hold unless the invention has been identically produced before. It is enough to invalidate a patent if the substance of the invention has been previously known. Any sort of prior knowledge or prior publica- tion in Great Britain, and accessible to the public, will be sufficient. Thus if it has been published in England in any magazine, or newspaper, or book, or used in any public place, or used in an open manner in any private place so that everyone could see it, or again if it has been printed in a foreign book placed in a library accessible to the public, and in a language which is reasonably likely 26 ENGLISH PATENT PRACTICE. Inthoduc- to be understood by cultivated persons ; such as German, sect. 3. Italian, French, or Spanish, this will be an anticipation. GeneraTview But a ^ V rioT publications do not stand quite upon the of the present same level. It is far stronger evidence of anticipation to law. , . produce a description intended for those engaged, in industry, and so written that they can understand it, than it is to produce a learned book, in which the invention is described from a theoretical point of view. And the reason is plain. In one case the trade were, or ought to have been, in the possession of the secret, in the other, it was only known to scientists, and required some adaptation or interpretation, though perhaps only a slight one, to render it available for the trade. Prior public user by others than the patentee may also be an anticipation, even though it hardly amounted to a regular publication. For the words of the statute are " which others at the time of making such letters patent shall not use." There is, therefore, some dis- tinction between anticipation by a prior publication and anticipation by prior user which should be borne in mind. Prior user which has been abandoned may also be an anticipation if clear and certain, but the fact of abandon- ment is itself strong evidence that the invention was not complete, or else was only in that theoretical stage which can hardly be considered useful to trade. And therefore an inventor who takes up an abandoned in- vention, and for the first time makes it a success, generally occupies a very favourable position in a court of law, even though an expert may think that what he has done is not very much more than to succeed where the other happened to fail. Assuming that an intending patentee is possessed of (1) a new manufacture, (2) of which he is the first in- INTR OD UCTION. 2 7 ventor, that is to say, which he has either invented or Introduc- imported, (3) which has ingenuity, (4) utility, (5) has sect. 3. not been anticipated either by prior publication or public Gen ^J" view user, (6) and a patent for which, if granted, would not be of the present in derogation of a former grant, or as it is commonly expressed, if his subject-matter is good, it is next to be considered how he must proceed to obtain his patent. In former times he petitioned the Crown. To save the formalities of a petition it is now sufficient to make an application in proper form, accompanied at his option either by a provisional specification describing the invention or else by a complete specification, not only describing the invention, but pointing out how it is to be performed. The considerations which should guide his choice are discussed hereafter. If he only send in a provisional specification he is bound to follow it up within nine months with a complete specification, after which he receives a patent dated as of the day of the reception of his application. Till then he cannot proceed against anyone for infringement, nor in any case recover damages for infringements prior to the date of his complete specification. The procedure is described in detail hereafter, and is very simple. But great care and art are required in the choice of his title, and in the preparation of his provisional and complete specifica- tions. These matters are discussed farther on, but it is essentially necessary for the comprehension of the subject, that some general indication should be given of the rales of law which apply to these instruments, and the reasons upon which these general rules depend. We have seen that it is by his prerogative that the King grants letters patent, and that this prerogative, limited as it is by the Common Law is still further 28 ENGLISH PATENT PRACTICE. Introdcc- limited and regulated by statute. But although the TION. sect. 3. Ki n g ma y grant a patent he is not compelled to do so, General view nence then, conditions may be imposed by the Crown of the present quite apart from those required by the Common or Statute Law. The form of the grant is set out in the Patents Act of 1883, but the Board of Trade has power to alter or amend it. The present form of grant recites that the inventor has represented that he is in possession of an invention for some specified object, that he is the first and true inventor, that it is not in use by any other person to the best of his knowledge, that he has prayed for the grant, and that he has particularly described the invention in his complete specification. It then recites the intent of the Queen to encourage inventions which are for the public good. Then follows the grant, to the patentee, his agents, and licenses to make, use, exercise, and vend the invention. Then follows a prohibition to others to make use of or put in practice the invention, and conditions that if it is made to appear to " us," or the Privy Council, that the provisions of the Statute of Monopolies had not been complied with, or he does not pay the fees, or does not supply the public service with articles made according to the invention in manner pro- vided, that the grant shall be void. The whole of the law upon which the subject-matter depends, and all the principles necessary to the drawing of specifications may be derived from the rules of ( 'ommon and Statute Law, and the rules of construction which have been already described. Thus, for instance, the fact that the grant purports to be made on the prayer of the petitioner, causes the recital to be treated as his suggestions, hence then, if one of them is false, INTR OD UCTION. 29 the patent fails. The recitals that the patentee is the Intuoduo- first and true inventor, and that others do not use the SEC t. w. invention do little more than repeat the conditions of GeneraTview the Statute of Monopolies. The recital that the inventor of the present law. has filed a complete specification particularly describing the nature of his invention puts upon him the necessity of having complied with this provision by a correct specification, according to the provisions of the Patent Acts. From which it follows : — (a) That the invention must be correctly described in the title and specifications, for otherwise not only would the patent when granted be void for uncertainty in what had been granted, but the Queen would not have been correctly informed what the invention was. Thus, if in any material part the specifications do not agree with one another and with the title in describing the inven- tion, if they are ambiguous, or if they do not clearly distinguish what it is that has been invented from what has gone before the whole patent will be invalid, even though the subject-matter be perfectly good. (b) The complete specification must not only describe the invention correctly, but must also explain the best method with which the inventor is acquainted for putting it into practice, in a manner sufficient to be clearly intelligible, to a fairly skilful workman, acquainted with the manufactures to which the invention relates, and without the necessity of further experiments, except such as are necessarily incident to a fair trial of it. The necessity for the observance of this condition does not directly arise by reason of the Common Law or the Statute of Monopolies, but upon the suggestion made in the grant that the patentee has, "by, and in his com- plete specification particularly described his invention." 30 ENGLISH PATENT PRACTICE. Introdvo It may be observed that the eld form of patent added sect N 3. the words " and in what manner the same is to be per- ,. — ~ . formed." But though these words are not in the modern (General view ° of the present form of grant they are clearly implied. For the Patents Act of 1883, s. 5, sub.-s. 4, distinctly requires that this shall be done in a complete specification, and it is clear that it is an absolute necessity in order to make the grant of the patent beneficial to the public. The kindred provisions that the specification shall commence with the title, and end with the claims (sub-sect. 5) has been held to be only directory, consequently its non-observ- ance would not render a patent void, though it might be prejudiced. It has also been pointed out that in Crown grants the failure of a part of the suggestions or considerations causes the whole grant to be void, and therefore a want of proper subject matter in a part of an invention, or a failure of essentials of description as to a part of it, in the title or specifications will be fatal to its validity. Formerly a patent which was imperfect as to part of the invention, might be amended by disclaimer. Now it may be amended generally, but not so as to widen its scope or enlarge the grant. As soon as the specifications are sent in they are submitted to an examiner, who sees that the form is technically correct and reports upon any obvious errors which the comptroller may require the patentee to amend. But such examination gives no validity to the patent. When the complete specification has been accepted, it is published, and then during a period of two months any interested person who thinks that the patent contains an invention which is subject of a previous INTRODUCTION. 31 patent, or who alleges that the invention has been stolen In'tropcc- from him, or that the complete invention contains matter sbct 3 not in the provisional, and for which a patent has in the ^ 7 . L _ L General view interim been applied for by him, may oppose the grant. of the present A certain definite procedure is laid down for this opposition. But the right of opposing is limited to certain persons and for certain definite causes. If no opposition is offered, or if any opposition offered is unsuccessful, the patent is then sealed, but so as to date back to the date of the application. It follows that if a man after sending in his provisional specification dis- covers some legitimate development of it, he will be the first and true inventor of that development, even though someone else may have independently made it after the application and before the sending in of the complete specification. The grant of a patent entitles the patentee and his executors and assigns to prevent the unauthorised or unlicensed use of his inventions and is valid until shewn to be bad ; but such grant does not in any way cure an inherent defect in the subject-matter of the invention, or in the title or specifications, all of which may be afterwards impeached. The patent is for fourteen years, but in cases in which the patentee can shew that his invention lias been in- adequately rewarded, the Privy Council can grant him a new patent for a term not exceeding fourteen years more. This is called extending the patent. Having thus sketched very briefly the salient charac- teristics of an invention, it only remains to shew how it can be infringed. It is obvious that it is not needful that the infringing article should be an exact repro- duction of the thing described in the patent. Any 32 ENGLISH PATENT PRACTICE. Introduo manufacture which substantially uses the invention be<;t. 3. patented, infringes it. It is not possible to lay down any n T~. „ rule which will decide when the exercise of the inven- VTeneral view of the present ^ on nas Deen infringed ; each case will stand upon its law. own merits. An example may serve to illustrate this. The invention of the Carbon Microphone depends on the fact that when an electric constant current is passed through two pieces of semi-conducting substance in contact, any vibrations of these substances induced by the air waves produced by the human voice, will cause variations in the current strength, very suitable for actuating a telephone, which consists of a coil of wire wrapped round the end of a magnet in close proximity to an iron diaphragm. Edison patented this in 1877, and contrived one of his instruments as shown in Fig. 1., where a is a metal resonating diaphragm put in con- nection with the circuit from which the current passes to a block of carbon b, and thence to a second block of carbon c, pressed against the first by a metal spring d, by means of which the current is carried away to the line. Two infringements of this took place, one by St. George and another by Bassano : United Telephone Co. v. Bassano, 1886, 2 E. P. C. 70, 3 R. P. C. 295. St. George's was like Fig. 2 : United Telephone Co. v. St. George, 1886, 3 E. P. C. 33, 321. In this the whole diaphragm was made of carbon, and the carbon block held by the spring was replaced by a ball c, suspended by a fine metal con- ducting spring so as to press lightly against the carbon INTRODUCTION. 33 diaphragm. This was considered as infringing the sub- iNTRomc- 10 . TION. stance of Edison's inventions. sect. 3. Bassano's infringement consisted of a wooden chamber G ener^Wiew which played the part of the resonating diaphragm and ofjke present contained two pencils of carbon loosely fitted into holes in other pieces against which the pencils rested by virtue of their own weight. From a scientific point of view the action of this was similar to the others. Fig. 3 represents one of these pencils, and it was held an infringement. It follows from what has been said that if the differ- ences between the article complained of, and that described in the invention, only consist of immaterial changes, or of mere additions, an infringement will have been committed. To determine what is an immaterial change, one must be acquainted, not only with the description of the invention given in the specification, but with the state of the arts and manufactures at the time. For instance, a machine that in the infancy of the arts was a totally new departure, might, in a more advanced age, be considered as merely an obvious adap- tation. Moreover, the very same difference which would be considered a colourable variation in one case might be held to constitute a different invention in another. Let us consider an example, in order to make this proposition clear. Suppose, for instance, a man had invented a machine for stretching trousers (Fig. 1), as shewn in the drawing, consisting of two clamps, a and B, fitted to the top and bottom of the trousers and pushed apart by the screw c working in a loose collar n, and actuated by a handle^ And suppose another made a trousers-stretcher as shown in Fig. 2, so arranged that the trousers doubled over at the knee, and the top and bottom were secured to the 34 ENGLISH PATENT PRACTICE. Introdtto same clamp, and the trousers were stretched by using a sect. 3. similar handle and screw to press against a piece of General view wo °d placed in the fold at the knee. Would this last of the present De an infringement of the first ? At first sight one would certainly be inclined to say that it was. The mere alterations of position of the clamps still left the general features of the invention untouched. But a more intimate knowledge of what had been done in the matter of trousers-stretchers might greatly alter that view. Suppose it were shewn that Figs. 3 and 4 had previously been invented. It would then be clear that A dfe* aJ^> Rg.i. ^ is ft? 3 - 6* F, $+ the only way in which the invention shewn in Fig. 1 could be good, would be by considering it simply as a mere patent for a series of details. To read it as claiming generally the method of stretching trousers by clamps would make it clearly bad as being antici- pated by the stretchers shewn in Figs. 3 and 4. Sup- pose that, after looking at its terms, the Court thought that the stretcher in Fig. 1 could be read as only claiming the peculiar details. Then it is clear that the stretcher shewn in Fig. 2 would not be an infringement. For if the gist of the invention were only a special and particular mode of stretching trousers, then that mode INTRODUCTION. 35 had not been infringed. The defence of the defendant Intboddo TTOH would clearly be, first, that the plaintiff's patent was bbot.3 anticipated by Guy's and by Dredge's (Figs. 3 and 4) ; Gene ~f view but, second, that if it were read in so narrow a manner of the present ' ' , law. as to be considered merely a special mode of stretching the trousers, then the defendants did not infringe it : Gos- nell v. Bishop, 1888, 5 R. P. C. 151. Here, then, the " Ambit " of the plaintiff's invention was controlled by the previous inventions of Dredge and Guy. A plaintiff whose patent has been infringed may, after commencing an action, obtain an injunction, and also damages, or an account of profits made by the infringer. The various steps in this action are pointed out further on. Any one who has been threatened with proceedings under the patent law may bring an action for damages and to restrain the threats, unless the person making the threats will follow them up by bringing an action of infringement. In an action for threats, the plaintiff, that is to say the person who has been threatened, may deny the validity of the patent of the defendant who has made the threats, and the issues will then be much the same as in an action for infringement. According to old law a proceeding lay for the revoca- tion of an invalid Crown grant, called a scire facias. This has now been replaced by a petition for revocation. The various proceedings in an action or proceedings for revocation can only be taken by the parties them- selves, or by duly qualified solicitors. The functions of patent agents are to advise the parties as to their rights, and assist them in drawing their specifications, and arguing for them before the Comptroller or on appeals before the Law Officer. The d 2 36 ENGLISH PATENT PRACTICE. Introduc- duties of patent agents demand a good acquaintance sect N 3. with patent law, and considerable mechanical skill and ~ ~T~. knowledge. They have to pass examinations, and are (General view t> J i of the present pu t on a roll by the Board of Trade. The provisions of luw. the Patent Acts are entirely insufficient to protect the public from unqualified practitioners who have given no security for their conduct or knowledge. For though it is penal to assume the title of a patent agent, yet it is permissible for anyone without knowledge, training, or character to use every other sort of title, however calcu- lated to deceive an inventor into the belief that he is consulting a patent agent. And although patent agents are subject to regulations quite as stringent as those applicable to solicitors, and like solicitors are liable for negligence, they have no solicitors' lien, no professional privilege as to the secrets of their clients, nor any similar exclusive rights. It is high time in the interest of the public that these glaring injustices should be removed, and that within their sphere of action patent agents should have proper protection, so as to encourage all who wish to act as advisers to patentees to become regular qualified practitioners, and put a stop to the many frauds that are now being perpetrated upon ignorant inventors. ( 37 ) CHAPTER I. THE SUBJECT-MATTER OF LETTERS PATENT. What has preceded has prepared us to see that a grant 6 " C A T F ; L * of Letters Patent (1) must not derogate from a prior grant ; must be (2) for some manner of new manufacture ; (3) that it must be useful ; (4) that it must be ingenious, and (5) that it must not have been anticipated by prior publication or by prior public user by persons other than the patentee. We shall proceed to consider these questions in order. 1. No patent can be good which derogates from a former grant of Letters Patent. — It is a general rule of law that the King cannot make a grant to tho prejudice of the vested rights of others. Hence, when he has granted a patent for an invention to one person, ho cannot on a subsequent occasion make the same grant to another. No case appears to have arisen in which this has been expressly laid down with regard to patents for invention, but the same point has been decided with reference to a market, in Sir Oliver Butlers Case, 1661, 3 Levinz, 220, and further examples are to be found in Viner's Abridgment, tit. ' Prerogative,' M., b. 5, fo. 188, vol. xvii. p. 92 ; see also B. v. Mussary, 1738, 1 W. V. C. 41. The point is not likely to arise, except in cases where the second patent is granted before the complete 38 ENGLISH PATENT PRACTICE. Chap. I. specification of the first is sent in, and in which such 1 ' specification contains some development of the invention be°"ood which n0 ^ m ^ e provisional. For otherwise the second patent derogates would be bad on the ground of prior publication. When from a former ° - 1 x grant of letters two patents are granted on the same day a curious ques- tion may arise as to which has priority. For judicial acts are assumed to take place at the earliest period of the day on which they occur, and fractions of a day are not noticed. It is otherwise with an act of the party, such as the issue of a writ : Clarke v. Bradlaugh, 1881, 8 Q. B. D. 63. It might be argued that a patent (being granted like a writ, on the motion of the party) is really an act of the party, but there is this difference, that a writ is a matter of right, a patent is a matter of grace. Moreover, it would be rather hard that the relative precedence of patentees should be determined by the order in which a patent-office official might happen to ojoen his letters in the morning, for there is no possibility of shewing which is first of two letters that have come in by the same post. A patent for the use of an improvement on a prior patent, is of course no derogation from the prior grant f>ost, p. 59. (see sect. 6). The manner in which a plea of derogation may be raised is perhaps difficult to determine, for if a defendant may plead that the plaintiffs patent derogates from a grant to a third person, then surely the defendant may plead that that patent is bad and give particulars of objections, and try the whole question out in the absence, of the third person, which might be inconvenient and possibly unfair. 2. A patent must be for some kind of manufacture. — The power of the Crown to grant patents for inven- SUBJECT MATTER. 39 tions is limited by the Statute of Monopolies, s. 6, to the Chap. I. fiKPT 2 " true and first inventor of any manner of new manu- 1 ' factures." For the power of the Crown is not exercised £^ e ;, t I ^ U8t merely as a reward of ingenuity or scientific genius, kind of manu- iftcmrc but only for the furtherance of industry, and in its capacity as protector of trade : Harmer v. Plane, 1807, 14 Ves. 130, 136. It therefore becomes material to en- quire what the word " manufactures " means. In the first place it is clear that the patent is not granted for the thing manufactured, nor the process of manufacturing, nor the machinery used therein. What the patent is granted for is the invention. It is, therefore, the art that is the subject of the patent. For instance, if a patent were taken out for a new inkstand, it is not the inkstand which is the subject matter of letters patent, but the art by which the pieces of material comprising it are put together so as to form it. Or if a patent be taken out for a new medicine composed of old materials, the patent is in reality for the art of mixing them together so as to form the new compound. Again, a patent for a process of manufacture is in reality only a patent for the art or craft by the aid of which that process is carried on. Except for an art, no patent can be granted. Thus, if a man discovers a totally new metal, he may have a patent for the art of making it, but not for the metal itself. When Crookes discovered Thallium, he could no doubt have taken out a patent for the art of producing it, but he could not have obtained an exclusive right to sell Thallium how- ever made, even though it was a new product which he was the first to introduce to the world. On the other hand, when Sprengel invented his air-pump which 40 ENGLISH PATENT PRACTICE. Chap. I. operated by means of the fall of mercury from a height ' of more than thirty inches, he could probably have had A patent must patent protecting the general idea of his machine, be tor some r f o o > kind of manu- however carried out. Bat that is because the disposition facture. of the glass, mercury, india-rubber, and wood that he employed was dictated by the new craft which he had invented. In the case of Crookes the only industrial art given to the work by his new discovery of Thallium was the mode of making it. Decisions have been given which would seem to imply, sometimes that the term " manufacture " means a process of making, sometimes a result obtained or an article made by that process. This proceeds from the ambiguity of the word "manufacture." Just as by the words "painting," or "drawing," or "sculpture," we may mean either the practice of the art, or the objects made by means of it, so also to the word manufacture we may give either an abstract or concrete meaning. There are some similarly formed words which admit of no such ambiguity. Thus we speak of the art of gardening, but the result of that art is a garden. This ambiguity in the word manufacture has occasion- ally caused language to be used by the judges expressive of a doubt whether any patent could be granted for a process, and whether the only subject of a patent was not a manufacture in its concrete sense ; that is to say a manufactured article. Thus, in Rex v. Wheeler, Abbott, C.J., thought that the word manufacture might " perhaps " extend to a new process : 1819, 2 B. & Aid. 349, and even in 1853, in Crossley v. Potter, M.- P. C. 240, Pollock, B., says : — " It is in reality for the article that the patent is taken out, when it is said to be a process, SUBJECT MATTER. 41 that only means a process resulting in an article." This Chap 1. mode of expression is clearly erroneous, but in Boulton v. — 1 Bull, 1795, 2 H. Bl. 49:3, Eyre, C.J., said :-" When the tJ^HT* effect produced is no substance or composition of things, Jand of mauu- the patent can only be for the mechanism, if new mechanism is used; for the process, if it be a new method of operating, with or without old mechanism by which the effect is produced." In Morgan v. Seaward, 1837, 2 M. & N. 558, 1 W. P. C. 193, Parke, B., said : — " The word manufacture may mean the machine when completed, or the process of constructing the machine." And in Crane v. Price, 1842, 1 W. P. C. 393, the validity of a patent for a process was clearly assumed. See also Stevens v. Keating, 1847, 2 W. P. C. 182 ; Bush v. Fox, 1854, M. P. C. 17G ; Gibson v. Brand, 1841, 1 W. P. C. 630. It therefore admits of no doubt that both a new article or tool, or machine, and also a new process of manu- facture may become the subject of letters patent ; only it is to be remembered that in strictness the monopoly is granted, not for the article or process, but for the art of constructing or carrying it on. So that when wo speak of " a patent for a new pen," we really mean a grant by letters patent of the monopoly of exercising the craft of making that pen. Or, again, when we speak of a patent for making anilin, we really mean a grant of the monopoly of exercising the craft of some particular mode or modes of making anilin. In fact, unless there is some art to be protected, a monopoly cannot be granted at all. Thus, if a new drug were discovered in a foreign land, no patent could be granted to the discoverer of a right to import and sell it; all 42 ENGLISH PATENT PRACTICE. Chai\ I. that could be granted would be a patent for preparing 1 * or using it in some particular way ; or if a chemist A patent must c ] lsC0V ered a new substance, he could only have a patent be tor some ' _ . . kind of manu- for some mode or modes of making or using it, but not for the thing itself. But not every art is capable of being patented. It must be an art connected with trade, that is to say, an industrial art. The word "craft" is often used to signify an industrial art. It will therefore follow that no monopoly can be granted of a right to do things which are not done by the exercise of some craft. For instance, in Boulton v. Bull, 1795, Dav. P. C. 199, Mr. Justice Buller, said: — "Suppose the world were better informed than it is, how to prepare James' Fever Powder, and an ingenious physician should find out that it was a, cure for consumption, if given in particular quantities, I think it must be conceded that such a patent would be void ; and yet the use of the patent invention would be new, and the effect of it as materially different from what it is now, as life is from death. So, in the case of a late discovery, which, as far as experience has hitherto gone, is said to be efficacious — that of the medical pro- perties of arsenic in curing agues — could a patent be supported for the sole use of arsenic in aguish com- plaints ? " (The judge in speaking of the preparation of James' Powder, evidently refers to the fact that Lord Mansfield in the case of Liardet v. Johnson, 1778, cited James' invention as defective, because in the specifi- cation (dated 1747, No. 626) he mentioned the in- gredients, but omitted the quantities : see 1 W. P. C. 55). This example shews that a new use of an old material cannot be patented, unless such new use itself constitutes a manufacture. The art of curing: an illness cannot be SUBJECT MATTER. 43 said to be an art of manufacture, and it follows therefore Chai\ I. SECT. 2. that all old things may be used in new ways by private persons, provided always that in so using them they are be^or^.me 118 not manufacturing anvthing. If a doctor discovered a kiml of manu- b J & _ facture. medicine consisting of various ingredients, he might have a patent for it (of which a large number have been granted), and then no private person could make it up and use it (except simply as an experiment) ; but if the post, p. 318. new medicine only consisted of one ingredient, or were only a new application of an old medicine, no patent for it could be obtained. In the first case, the patient would have to manufacture the dose before he took it, whereas, in the second case, no manufacturing process was needful, except the mere use of an already known article. Again, if any one discovered that some well-known drug was useful for any new domestic purpose, he could not prevent others from purchasing that drug, and using it, provided always that they did not do so in such a way as to amount to a manufacture. And in like manner an invention for some mathe- matical process which, however useful, was not a manu- facture, could not be patented. Thus a new method of computing logarithms, or a new cypher, or a new method of book-keeping, would not be good subjects of patents. It follows again, that the author of a book cannot be said to "manufacture" it, nor likewise can the writer of a song, or the painter of a picture, or the in- ventor of a design, take out a patent lor them. The art of a painter really consists of two parts, the craft by know- ledge of which the colours are mixed and applied to the canvas, and the art of composition by which the design is worked out. For an improvement in the craft, as for a new colour, or a new mode of applying it, no doubt a 44 ENGLISH PATENT PBACTICE. Chap, I. patent could be obtained ; but the art of composing a ' '_ ' picture could not be called an art of manufacture. A man A patent must W ^ Q en d ea v 0Ur ed to patent a picture would be either be tor some r L kind of manu- attempting to patent some particular principles of com- position which he had discovered, or else some special arrangements of figures or light and shade, or some special subject or design. But neither of these can be said to be a "manufacture." In one sense the author of a book produces a physical article consisting of paper, ink, and cardboard, arranged in a way such as to be novel, useful, and to require invention to produce it. But the reason why this is not patentable is, because if he tried to patent it, the author would not be patenting a new craft, but only the product of a single exercise of an art, and could in no sense term himself a manufacturer. In Newall v. Elliot, 1864, 10 Jur. (N.S.) 954, 10 L. T. (N.S.) 792, the question was raised whether a new process of doing a thing could be patentable when the result was, not the production of an article, but a new dis- position of a quantity of machinery. The patent was for a new method of coiling submarine cables in ships for the purpose of laying the cables. " The point pressed by Mr. Cleasby, I confess I have some difficulty in under- standing, that this is not the subject of a patent, because the thing is not vendible, because . . . instead of being ready-made and afterwards fitted up in the ship, it is fitted into the ship by the owner or user of the ship when he uses it. I confess I am unable to understand that " (per Bramwell, B.). A method of disposing plates of iron on buildings, to make them fire-proof, was held good subject matter : Hartleys Case, 1795 (quoted, 2 H. B. 493). The same prin- ciple that a method, or process, is patentable, as well as SUBJECT MATTER. 45 an article or result, was also affirmed in Stevens v. Keating, Chap. L 1847, 2 W. P. C. 182 ; Bush v. Fox, 1854, M. P. C. 17G ; SK ^L"' Gibson v. Brand, 1841, 1 W. P. C. 630. But it is clear ^JJjJ" 1 that the process so patented must be part, at least, of Jf^Jjf manu " some process of manufacture. 3. A patent cannot be granted for a bare principle unconnected with a method of practically carrying it into effect — We have seen, then, that it is only for an art that a patent can be granted, and that the art must be of an industrial character, or, in other words, a "craft." It remains to consider what the nature of that craft or art must be, in order to be patentable. In one sense a craft may be said to include all the principles upon which it is based. Thus, the art of soldering metals together is based upon the principle that metallic alloys have a lower melting point than the metals of which they are composed. But this principle is not an art. It is the scientific basis of an art. Philosophers from the time of Aristotle have defined an art as "a body of facts arranged with a view to practice," and a science as "a body of facts arranged with a view to knowledge." A somewhat similar dis- tinction is made in patent law. It is only an art, or, perhaps, more strictly speaking, a craft that can bo a manufacture, so as to be the subject of letters patent. In accordance with this view, the Courts have decided that a mere principle cannot be patented unless it be coupled with some practical way of carrying it into effect. For it is only in this last case that it could be considered as a manufacture. "Suppose," said Grove, J., " that a person had discovered that three angles of a triangle are together equal to two right into effect. 46 ENGLISH PATENT PRACTICE. Chap. I. angles, that would be an abstract principle and not the SECT - 3 " subject of a patent, it must be for a manufacture": A patent Young v. Bosenthal, 1884, 1 R. P. C. 31. cannot be ■/».-» -i-i granted for a " It would be difficult to lorni a specification ol a philo- uncranlSted 6 sophical principle ; it would be something like an idea with a method w ithout a substratum" (per Ld. Kenyon) : Hornhloiver v. of practically \* J ' carrying it Boulton, 1799, 8 T. E. 99. "No merely philosophical or abstract principle can answer to the word ' manufac- ture.' Something of a corporeal and substantial nature, something that can be made by man from the matters submitted to his art and skill, or at least some new mode of employing that art and skill, is requisite to satisfy this word" (per Abbot, C.J.) : Bex v. Wheeler, 1819, 2B.& Aid. 349. " Here the refrigerating effect of the air on the sides of the vessel was not a thing for which a patent could be obtained, but an apparatus so constructed as to bring into operation that particular property of the external atmospheric air constitutes an invention "... (per Westbury, C): Cannington v. Nidtall, 1871, L. R., 5 H. L. 225. " A patent will be good though the subject of the patent consist in the discovery of a great general and most comprehensive principle in science or law of nature if that principle is by the specification applied to any special purpose, so as thereby to effectuate a practical result. ... It is then no longer an abstract principle ; it is clothed with the language of practical application " (per Hope, L.J.C.) : Househill Co. v. Neilson, 1843, 1 W. P. C. 673. " If you have a principle or a new idea as regards any art or manufacture, and then shew a mode of carrying that into practice, you may patent that though you could not patent the idea alone" (per Jessel, M.R.) : Otto v. Linford, 1881, 46 L. T. 39 ; Badische Anilin Fabrik v. Levinstein, 1885, 2 R. P. C. 91. SUBJECT MATTER. 47 It is sometimes very difficult to distinguish between Chap. t. the enunciation of a principle and a general description S ECT " ' of a new procedure. In the case of Neilson v. Harford, A P at <"t 1 J ' cannot be 1841, 1 W. P. C. 331, the patentee thus described his granted for a invention : " A blast or current of air must be produced unconnected by bellows or other blowing apparatus in the ordinary oAiracticallv way to which mode of producing the blast or current of tarrying it J . 1 fo into eftuct. air, this patent is not intended to extend. The blast or current of air so produced, is to be passed from the bellows or blowing apparatus into an air vessel or receptacle made sufficiently strong to endure the blast, and through, or from that vessel or receptacle by means of a tube-pipe or aperture into the fire, forge or furnace. The air vessel or receptacle must be air-tight, or nearly so, except the apertures for the admission or emission of the air, and at the commencement, and during the continuance of the blast, it must be kept artificially heated to a considerable temperature " (1 \V. P. C. 273). Commenting upon this description, Park, B., said : — " It is very difficult to distinguish it from the specification of a patent for a principle, and this at first created in the minds of the Court much difficulty ; but, after full consideration, we think that the plaintiff does not merely claim a principle, but a machine embodying a principle, and a very valuable one. "We think the case must be considered as if the principle, being well known, the plaintiff had first invented a mode of applying it by a mechanical ap- paratus to furnaces : and his invention then consists in this — by interposing a receptacle for heated air between the blowing apparatus and the furnace. In this re- ceptacle he directs the air to be heated by the ap- plication of heat externally to the receptacle, and thus 48 ENGLISH PATENT PRACTICE. Chap. I. SECT. 3. A patent cannot lie granted for a bare principle unconnected with a method of practically carrying it into effect. A claim of every method by which a thing could be done would be a claim for a principle. post, pp. 197, 292. he accomplishes the object of applying the blast which was before of cold air in a heated state to the furnace." (p. 370). In the same case, Baron Alderson said : — " If you claim a specific shape, and go to the jury and say, that which the other people have adopted is a colourable imitation, then I can understand it. Jf you claim every shape you claim a principle. There is no difference between a principle to be carried into effect any way you will, and claiming the principle itself; you must detail some specific mode of doing it" (per Alderson, B.) : Neihon v. Harford, 1841, 1 W. P. C. 355. It is obviously not meant here that if you invent a principle, and specify and claim a vast number, or indeed every possible way of doing it, that the patent would be bad. What is condemned is a vague claim of all ways of doing the thing. The proper method is to clothe the principle with one or more ways of carrying it out, and then rely on other methods being treated as merely colourable imitations. " If you start with some mode of carrving the principle into effect, you are entitled to protect yourself from all other modes of carrying the same principle into effect, that being treated by the jury as a piracy of your original invention" (per Alderson, B.) : Jupe v. Pratt, 1837, 1 W. P. C. 146 ; EasterbrooJc v. G. W. Bail Co., 1885, 2 K. P. C. 207 ; see Chap. IX., sec. 5. The same opinions were further amplified by Lord Justice Clerk Hope, in another action on Neilsons' patent. " The defenders say : — ' You announce a prin- ciple, that hot air will produce heat in the furnace ; you direct us to take the blast without interrupting, or rather without stopping it, to take the current in blast SUBJECT MATTER. 49 to heat it after it leaves the blast, and to throw it hot Chap. I. ' SECT. 3. into the furnace. But you tell us no more, you do not tell us how we are to heat it; you say, you may heat.it cannot be in any way, in any sort of form of vessel ; you say, g£ jrindple I leave vou to do it how best you can. But my ap- unconnected J ... with a method plication of the discovered principle, is, that if you heat of practically tne air, and heat it after it leaves the blowing engine intoeffeot, (for it is plain you cannot do it before), you attain the result. I state, that is the purpose to which I apply the principle. The benefit will be greater or less. I only say, benefit you will get, I have disclosed the principle. I so apply it to a specific purpose by a mechanical contrivance, viz., by getting the heat when in blast, after it leaves the furnace ; but the mode and manner and extent of heating, I leave to you, and the degree of benefit, I do not state. The defenders say the patent on this account is bad in law. I must tell you that taking the patent to be of this general character, it is good in law ; I state to you the law to be that you may obtain a patent for a mode of carrying a principle into effect ; and if you suggest and discover, not only the principle, but suggest and invent how it may be applied to a practical result by mechanical contrivance and apparatus, and shew you are aware that no particular sort of modification or form of the apparatus is essential in order to obtain a benefit from the principle, then you may take your patent for the mode of carrying it into effect, and arc not under the necessity of describing and confining yourself to one form of apparatus.' " Househill Co. v. [Neihon, 1843, 1 W. P. C. 685. Lane Fox discovered the necessity of keeping up a post, p. 173. constant pressure in electric mains, and he patented his E 50 ENGLISH PATENT PRACTICE. Chap. I. discovery, but he did not explain how it was to be done — L ' in a manner sufficiently explicit to shew how the principle cannot be was to ^ e applied. I n the Court of Appeal, his patent granted for a was held bad. Cotton, L. J., said :— " An invention is bare principle unconnected not the same as a discovery. When Volta discovered of practically the effect of an electric current from a battery on a iuWffuct 6 frog's leg, he made a great discovery, but no patentable invention. Again, a man who discovers that a known machine can produce effects which no one knew could be produced by it before, may make a great and useful discovery, but if he does no more, his discovery is not a patentable invention. He has added nothing but knowledge to what previously existed. A patentee must do something more, he must make some addition, not only to knowledge, but to previously known in- ventions. . . . The plaintiff was a pioneer, he shewed others the road to be followed, but he did not give the traveller the information necessary to enable him to travel on it : Lane Fox v. Kensington Co., 1892, 9 R. P. C. 419 ; Automatic Weighing Machine Co. v. Knight, 1889, 6 R. P. C. 297 : In this case, the plaintiffs in their specification described a weighing machine consisting of a platform which sunk with the weight of the person to be weighed, and as it sunk, raised up a pivoted lever with a counter-weight attached to it. The amount by which the lever was rotated thus was a measure of the weight. This lever was concealed from view. In order to reveal the result on payment of a penny, the weight of that coin when dropped through a slot into a little box, caused another indicating hand to rotate till it came in contact with the concealed lever. The first claim was, " The manufacture and use of a new kind of weighing machine such as is herein described, in SUBJECT MATTER. 51 which, on a coin or the like being placed in the apparatus Chat\ I. the weight of a person or body being weighed will be ' __L' indicated on a dial or the like substantially as herein- ^^the before described." The Court held that this was clearly grant, d for a bare principle not a patent for a principle. unconnected _, , liii • i with a method But it must not be concluded, because a principle f practically is not patentable, that therefore only specific modes of ^[^effect performing the inventions can be claimed. In one sense, every patent which has an inventive merit about it, is for a principle, and could be carried out in various ways, and with various differences. Thus, for instance, the patent above quoted in Neihoii v. Harford was for the use of the hot blast for smelting iron. It was quite independent of the shape or size or modes of construction of the parts ; its essence was in passing the air into a hot chamber before it impinged on the fire in the furnace. In one sense this was a principle of construction, but in reality it was a principle clothed with an actual means of carrying it into effect, for any one could under- stand and apply it. Take again Edison's patent for the use of a carbon filament of high resistance in a vacuum composed wholly of glass, into which the conducting wires were sealed. This, in one sense, was a principle of lamp construction, and a very valuable one; but in the true sense it was only a description of the leading features of a lamp which might be carried out in an infinite number of ways. What is condemned as not being a " manufacture," is an abstract principle not applied specifically to any given class of objects : Edison v. Woodhouse, 1886, 32 Ch. D. 520 ; 4 R P. C. 79 ; on the other hand, Lane Fox failed because he merely pointed out that accumulators were useful in keeping up a constant pressure in electric mains, but omitted i: 2 52 ENGLISH PATENT PRACTICE. Chap. I. SECT. 4. A patent cannot be granted for a bare principle unconnected with a method of practically carrying it into effect. Cases in which patents were upheld, as beinjr for a principle with a means of practically carrying it out. to give objective validity to his discovery of this prin- ciple by reducing it to practice. See also Minter x. Wells, 1834, 1 W. P. C. 134. (Chair Seat), but same patent held to have been anticipated : Minter v. Mower, 1837, 6 A. & E. 735, 1 W. P. C. 142 ; Neilson v. Harford (Hot Blast), 1841, 8 M. & W. 806, 11 L. J. Ex. 20, 1 W. P. C. 331 ; Househill Co. v. Neilson, 1843, 9 CI. & F. 788, 1 W. P. C. 673 ; Electric Telegraph Co. v. Brett, 1851, 10 C. B. 838, 20 L. J. C. P. 123 (Electric Telegraphs); Cannington v. Nuttall, 1871, L. R. 5 H. L. 205, 40 L. J. Ch. 739 (Glass Furnaces) ; Hills v. London Gas Co., 1860, 5 H. & N. 312, 29 L. J. Ex. 409 (Gas Purification) ; Boulton v. Bull, 1795, 2 H. B. 500, n. ; Hornhlou-er v. Boulton, 1799, 8 T. R. 95, D. P. C. 221 (Lessening Coal Consumption in Engines) ; Badische Anilin Fabrik v. Levinstein, 1887, 24 Ch. D. 156, 12 App. Cas. 710 (Dye) ; Thomson v. Moore, 1889, 6 R. P. C. 450, 7 R. P. C. 325 (Compass Cards) ; Newton v. Vaucher, 1851, 6 Ex. 865, 21 L. J. Ex. 305 (Lining Metal) ; Hullet v. Hague, 1831 2B.& Ad. 378 (Evaporation of Liquids). 4. A patent may be granted for a process which simply omits a step in an already known process. — There is no doubt of the truth of this proposition, but it is somewhat hard to find a case that exactly establishes it, and in which the only change from what has gone before is the omission of a part of the machine, or of a step in the process. In Minter v. Mower, 1835, 1 W. P. C. 142, the plaintiff had claimed generally every application of self-adjusting leverage, whereby the seat of a chair was so connected with the back that the weight of the body on the chair balanced the back of it. It was proved that Brown had SUBJECT MATTER. 53 constructed a chair with this feature, but much encum- Chap. I. ill r BECT. 4. bered with a pad, spring, and rack. This was held to be an anticipation, but the Court intimated an opinion that begnSecTfor if Minter had confined his claim simply to the par- * J^J 1 '^ , ticular chair, then he might very probably have estab- omits a step in , -r, > l • an already lished his title by shewing that a part ot 4>rown s chair b n0W n pro- could have effected that for which the whole chair was ce8B - designed. The following cases may be consulted, but none of them expressly decide the proposition. Where it had been usual to make seeds into oil, and oil into gas, a good patent could be had for making seeds directly into gas : Booth v. Kennard, 1856, 1 H. & N. 527, 26 L. J. Ex. 23 (the patent was invalidated for want of novelty), 2 H. & N. 84, 1857, 26 L. J. Ex. 305. Gelatine was made from hides cut into large pieces and treated with caustic alkali or else reduced to pulp. Held, a good patent to omit the caustic alkali and cut the hide into shavings instead: Wallington v. Bale, 1852, 7 Ex. 888, 23 L. J. Ex. 49. Tubes used to be made according to an old patent by bending iron plates into cylinders and drawing them on a mandril between welding rollers ; a patent for omitting the mandril held good : Russell v. Cowley, 1832, 1 W. P. C. 457 ; see also Arnold v. Bradbury, 1871, 6 Ch. App. 714. The doctrine seems once to have been doubted : Gibson v. Brand, 1842,1 W. P. C. 639. 6. Patents for combinations and improvements. — Where an invention does not consist of a new article or a new sort of machine, or a new process, it will generally come under the head of an improvement or a new combination. It is often very difficult to say 54 ENGLISH PATENT PRACTICE. Chap I. SECT. 5. Patents for combinations and improve- ments. whether an invention is for a new machine, an improve- ment on an old machine, or a new combination of old parts of machinery. But as will be seen hereafter when it becomes necessary to deal with " infringement," it is often necessary to distinguish between a new machine, an improvement, and a combination. A new machine is one which presents some features of novelty so funda- mental or essential, that it may be regarded as different in its nature from those which had preceded it. Thus for instance, the ring armature to the dynamo, invented by Pacinotti, and first made practicable by Gramme, may distinctly claim, not to be a mere improvement on what had gone before, but substantially a new machine for producing electricity. Again the induction machine for producing electricity of high tension was essentially and distinctly a different machine from the old plate friction machines, although in shape and appearance it somewhat resembled them. Again the horse clipper (Clark v. Adie) might fairly be considered a new machine, when compared with the old scissors, and the rotary hair-brush might claim to be a new machine as compared with the old hand-brush. An improvement is produced when some new part is added to an old machine, or some novelty introduced into an old process whereby they are more useful. Thus for instance, the ring armature of the Gramme dynamo was improved by the introduction of air spaces between the coils, to cause the circulation of air amidst the wires and iron, and thus to cool them, but the form of the armature remained much the same as before. The principles on which it acted were identical. Hence then, this new and valuable suggestion was only an improvement. It follows that in an improvement, that which is added should be new, or substantially new in its SUBJECT MATTER. 55 nature, and yet not so important as to transmute the old Chap. I. machine or process into a substantially new one. 1 ' But a new combination consists essentially of a new Stents for J combinations arrangement of old parts, or else of an associating ami improve- together of old parts which previously were never united. If the invention consist of a readjustment of old things, or an association together of old things not previously united, it is a combination, whereas if it consist of the addition of a new thing to an old one, or to an old combination, it would be more properly described as an improvement. It is, therefore, often very difficult to say whether an invention is an improvement or a combination. Thus, for instance, aneroid barometers are old, so also are recording drums, but the first person who combined together an aneroid barometer with a recording drum, would, if he had made a valid invention (and this would much depend on the condition of knowledge at the time) have made a combination. But it would also bo hardly wrong to describe it as an improvement. Although there is in strictness a difference between the words " combination " and " improvement," which an endeavour has been made to explain, yet in practice the word improvement is used to cover combination, and the title of a patent " an improved machine " for doing a thing, would cover more than would be strictly under- stood by a mere improvement. Very commonly an in- vention is described as " a new and improved machine," so that the title may cover either clear novelty in the machine, novelty in an improvement in it, or a new combination. In an improvement, however, or in a combination, it is necessary that there should be utility, invention, and 56 ENGLISH PATENT PRACTICE. Chap. T. SECT. 5. Patents for combinations and improve- ments. novelty. These will be treated in more detail in sub- sequent chapters ; meanwhile, it is sufficient to say, that it is not enough simply to make a union of two things which have never been united before and call it an invention. Thus, one could not patent the fixing of clocks in railway carriages. It is probably new, it might be useful, but no invention would be required to carry it out. The essence of a combination is, not that the parts of it should be new, but the essence is in the novelty, ingenuity and utility of their union. It will follow as we shall see hereafter that the only mode of infringing a combination is therefore to infringe the union of the parts, not to use any one of them disunited. If any one of the associated parts is new, then it becomes doubtful whether the invention is in reality a combination or an improvement. For though the distinction between a new machine, an improvement, and a new combination is easy to formulate in theory, nothing is harder than to apply the distinction to the various inventions which are made every day. But while it is frequently essential in deciding a patent case to determine whether the invention is an improvement or a combination, yet in the drafting of patents, this delicate distinction is of less importance. For if a patentee has made a real invention, correctly described it, and correctly stated his claims ; then, whether it be a new machine or process, an improvement or a com- bination, it will be supported, even though the Court might not agree with the exact classification adopted by the inventor. It appears that in Bircofs Case, 1568, Year Book 15, Elizabeth, Easter Term 4, the Court of Exchequer had decided that no patent could be granted for an improve- SUBJECT MATTER. 57 merit, saying that it was " much easier to add than to Citap. 1/ invent." This dictum may have been due to the fact — 1 ' that the Court thought that merely to improve a method JJ^J-JaXiM was not such an introduction of a new manufacture as and improve- ments, was contemplated in the statute, taking the older view that it was not so much a particular invention, as the right to practise a "mystery " that was the subject of the monopoly. This case was, however, definitely overruled in 1776, in the case of Morris v. Bransom, Bull. N. P. 76, c, which affirmed a patent for a new mode of weaving lace which laid the foundation of a great im- provement in the lace trade at Nottingham. See also, Boulton v. Bull, 1795, D. P. C. 201, 205 ; B. v. ArkwrigM, 1785, D. P. C. 61 ; Hornblower v. Bull, 1799 ; 8 T. R. 98; Hill v. Thompson, 1817, 8 Taunt. 375. A patent may clearly be granted for an improvement, and owing to the progress of invention it has become so hard to hit upon a new leading idea, that by far the greater number of modern inventions are only improve- ments on what has gone before. A patent may be granted for a new combination of old materials or of things partly new and partly old. But it is not sufficient merely to put two things together post, pp. 180, 3U2 and call them a combination, "as to put a lock on a window which had previously been put on a door, and call it a combination" (per Grove, J.): Bamlett v, Pichsley, 1875, Griff. 44; Saunders v. Aston, 1832, 3 B. & Ad. 881. Prior to 1836, anthracite coal had been used for smelting iron, so also had the hot blast, but the two had never been combined. A patent for their combination was held good: Crane v. Price, 1812, 4 M. & G. 580. This decision has been questioned, and indeed appears 58 ENGLISH PATENT PEACTICE. Chap. I. SfcCT. 5. Patents for combinations and improve- ments. post, p. 13. The subject of a combina- tion patent is not the parts or things combined, but the combina- tion of them. post, p. 103. very doubtful. " I," says James, L. J., " have never been satisfied with the decision. That, however, is simply because I could not see how the word ' combination ' could be properly applied to the introduction of a particular kind of fuel into a machine which had been patented for the use of every kind of fuel in the making of iron ; but neither I, nor, so far as I am aware, any other judge, has ever questioned the principles upon which the case was decided, and which are thus laid down in the judgment of the Court delivered by Tindal, C. J. : 'We are of opinion that if the result produced by such a combination (i.e. a combination of two old things) is either a new article, a better article, or a cheaper article to the public than that produced by the old method, such a com- bination is an invention or manufacture intended by the statute, and may well become the subject of a patent (per James, L.J.) : Murray v. Clayton, 1872, L. K. 7 Ch. 570. " It is no objection to a patent for a mechanical or chemical discovery that the articles of which it is com- posed were known and were in use before, provided that the compound article which is the object of the invention is new " (per Buller, J.) : Boulton v. Bull, 1795, 2 H. B. 487. A blast had been used to remove dusty air from flour mills, and an exhaust had also been used : a com- bination of them was supported : Bovill v. Keyworth, 1857, 7 E. & B. 725. An alloy possessing special advan- tages, consisting of a particular combination of copper and zinc, is patentable, though the mixing of copper and zinc, to make brass was well known, and had been used in all sorts of proportions : Muntz v. Foster, 1843, 2 W. P. C. 93. The inventor made £55,000 by this patent : Muntz s Patent, 1846, 2 W. P. C. 113. The principle that combination patents are good if the combination is new SUBJECT MATTER. 59 and useful is laid down in the following cases : — Chap. I. Morris v. Bransom, 1776, Bull. N. P. 76, 1 W. P. C. 51 ; ™— R. v. Arkivright, 1785, 1 W. P. (3. 71 ; Huddart v. J^ationa Grimshatv, 1803, 1 W. P. C. 92, 1 C. P. C. 267; and improve- nients Mill v. Thompson, 1817, 1 W. P. C. 237; Brunton v. Hawkes, 1821, 2 B. & Aid. 550 ; Carpenter v. Smith, 1841, 1 W. P. C. 538 ; Bow v. Taunton, 1845, 9 Jur. 1056 ; Sellers v. Dickinson, 1850, 5 Ex. 312; Lister v. Leather, 1858, 8 E. & B. 1004, 1031, 27 L. J. Q. B. 295 ; Morton v. Middleton, 1863, 1 Ct. Sess. 3rd ser. 721 ; Foxwell v. Bostock, 1864, 12 W. R. 725; Boyd v. Horrocks, 1889, 6 R. P. C. 162. 6. It is no derogation from a patent to grant another for an improvement upon it, although the patent for the improvement cannot be used without the consent of the prior patentee. — At one time it post, p. 313. was ingeniously argued that when the Crown had granted one patent, it could not grant a patent which in any- way involved the use of the first, as, for instance, an improvement on the first. For it was contended that by so doing the Crown would derogate from its former grant. But this view was obviously incorrect, for the second patent was granted, not for the old process plus the improvement, but for the improvement only. "It was. argued that in point of law no patent can be taken out which includes the subject matter of a patent still running and in force. No authority was cited to support this proposition " (per Tindal, C.J.) : Crane v. Price, 1842, 4 M. & G. 580. "The assertion that all patents for improvements on existing patents must be void is obviously untenable" (per Campbell, C.J.) : Lister v. Leather, 1858, 8 E. &. B. 1004. " No doubt a man may 60 ENGLISH PATENT PRACTICE. Chap. T. BEUT. 6. It is no dero- gation from a patent to grant another for an im- provement upon it, although the patent for ihe improve- ment cannot be used with- out the content of the prior patentee. make an invention which is partly covered by an existing patent, but he cannot use it without the license of the patentee" (per Malms, V.C.) : Fox v. Dellestable, 1866, 15 W. R. 194; see also Harmar v. Playne, 1809, 11 East, 107, D. P. C. 318 ; Lewis v. Davis, 1829, 3 C. & P. 504, 1 W. P. C. 489. 7. A patent for an improvement may cover not only machines as they exist at its date, but also the same machines as subsequently improved. — Electric Telegraph Company v. Brett, 1851, 10 C. B. 881. This was a patent for telegraphic instruments for use with metallic circuits. At the date of the patent, earth re- turns for telegraphic wires were unknown, and the in- fringement complained of was an adaptation of the invention the subject of the patent, to instruments with earth returns. It was argued that no patent could be granted so as to cover future improvements, or so as to in- clude a machine in a state unknown to the inventor, and that improvement-patents must be limited to machines substantially as known and used at the date of the patent. The Court, however, negatived that view. "A patent for improvements in the mode of doing something by a known process is sufficient to entitle the claimant to a patent for his improvements when applied either to the process as known at the time of the claim, or to the same process altered and improved by discoveries not known at the time of the claim " (per Cresswell, J.). See also Crossley v. Beverley, 1829, 1 W. P. C, p. 108, note. 8. If any substantial or essential part of an in- vention fails, the whole patent is void, for the grant is indivisible, and goes to the whole consideration. — SUBJECT MATTER. 61 It might at first sight appear that if the King grant Chap. I. several things, and as to one of them it turns out that it ' Tf • h is not the proper subject of a grant, the grantee may 8tn ™Jj ;l pur~ retain the others, though as to one of them the patent is c f (,,lt ; :l1 l^rt *■ oi an mven- void. But this is not so. For, in the first place, there is tion fails, tlio it- it whole psitout a recital in every patent that the inventor has made a j s V oid, for certain specified invention, and that he has sent in a i„!^bie? true description of it in his specifications. If these & ? d s? e3 , t0 1 x _ the whole recitals are false in any part the whole grant fails. And, consideration. moreover, these suggestions or considerations go to the whole of the grant, and are the inducement of each part of it, and it is a principle of interpretation of Crown ante, p. 11. grants, that if part of the considerations or suggestions on which it is made fails, the whole grant is void (see Bacon's Abridgement, Prerogative, F.). It is different in the case of a private grant, where a partial failure of consideration will not annul a contract, provided there is sufficient left to support it (see Chitty on Contracts, chap, i., sect. 1). The first cases in which this theory was laid down with regard to the law of patents for invention were : Hill v. Thompson, 181S, 8 Taunt. 401, and Brunton v. Hawkes, 1821, 4 B. & Aid. 541. Hill had patented " Improvements in the smelting and working of iron." One of these improvements was for the use of lime to prevent the iron from being " cold short," but this had been anticipated by the publication of a book, ' Kinman's Dictionary,' and it was held that, inasmuch as a material part of the invention had, failed, the whole patent was altogether void. The case of Brunton and Hawkes was of a patent for " Improvements in the construction of, making, or manufacturing of ships' anchors and windlasses and chain cables or moorings." This was a description of three distinct 62 ENGLISH PATENT PRACTICE. Chap. I. SECT. 8. If any sub- stantial or essential part of an inven- tion fnils, the whole pitent is void, for the giant is indivisible, and goes to the whole consideration. inventions. One of them, viz., that relating to anchors (which was held to be old), described the putting of the shank into the arm joining the flukes without welding, in a manner similar to the way in which a pickaxe is fastened to its handle by a conical hole in the arms fitted upon a cylindrical end of the shaft, which is then hammered up to make it tight. Abbott, C. J., said : — " Inasmuch as one of the things is not new, the question arises whether any part can be sustained. It is quite clear that a patent granted by the Crown cannot extend beyond the consideration of the patent. The King could not, in consideration of new invention in one article, grant a patent fur that article and another. ... It appears to me that the case of Hill v. Tlwmpson is decisive upon that question." In the next year the same point was argued by Mr. Brougham in Crosslcy v. Beverley, 1 W. P. C. 109, but so hard did the rule which he had supported appear to him, that in ] 835 he pro- cured the passing of an Act which permitted the patentee to disclaim any part of his title or specification, or to enter a memorandum of alteration therein, which dis- claimer or alteration were thenceforth to be taken to be part of the letters patent. The principle, however, still holds that if any part of the subject-matter of any invention fails the whole is void : Morgan v. Seaward, 1836, 1 W. P. C. 173. In the case of Roberts v. Heyivood, 1879, 27 W. E. 454, a tray for catching paint drippings was among other things specifically claimed. It was held to be bad and to avoid the whole patent. It follows from the power of disclaimer given above, and the rjower of amendment which has now been sub- stituted for it, that a patent which is void may, by SUBJECT MATTER. 63 relating back, be rendered good again. It is hence not Chap i. .■...-, t i BBOT. 8. absolutely worthless, but only void until amended. It may also be observed that this rule that the in- jjjjjj^" validitv of part of the subiect-matter invalidates the essential part J i ° oi an mven- whole is less strictly applied when the invalidity is due tion fails, iho to want of utility. The reasons for this will be stated ^ 'voidffw 1 further on {post, p. 71). indSle" It will at once strike everyone, that if the doctrine and gore to the whole that part failure of a patent avoids the whole were consideration, pushed too far, few patents could stand ; accordingly, the Courts are chary of applying the principle so as to destroy a meritorious invention except where some dis- tinct claim on the part of the inventor leaves them no choice. Where in good faith a claim of an old thing is made, the Court will often endeavour to read it, P* 8 *. P- 198 - not as an isolated claim, but as a claim for a thing to be used in conjunction with the main part of the invention. Thus, in a patent for screws, Jessell, M.K., says : " It does not follow that because an inventor thinks he has invented more than he has in fact, and describes the advantages of his invention, and some of these advan- tages arise from an old portion of his invention, it may not still be a good patent, provided the invention as claimed is so limited as to fail to cover the actual thing in use while it covers some of the advantages mentioned : Frearson v. Loe, 1878, 9 Ch. D. 58 ; Plimpton v. Spitter, 1877, 6 Ch. D. 412, L. E. 5 II. L. 433 ; see further as to failure of utility in a part of a patent, Utility, Chap. II., sect. 4. p08t ' v - 10 ' 9. The subject-matter must not be against public policy.— Thus, patents for housebreaking tools would not 64 ENGLISH PATENT PRACTICE. Chap. I. be granted : (Hindmarch, p. 142) ; P. Act, 1883, sect. 86 ; sect^. Grifi . p a 2(h The subject j n ${ v j]. Coke's time it seems to have been considered matter must not be against that patents for inventions which substituted machine public policy. , , i • i i i i ,, t ,1 >»< 241 labour ior hand labour might be bad on the ground that they discouraged industry. But this view was never formally adopted by the Courts of Justice. ( 65 ) CHAPTER II. UTILITY. 1. An invention must possess utility in order to Chap - ix SECT. 1. be the subject of Letters Patent. — As has been previously explained the power of the King to use his prerogative to create a monopoly depends upon that monopoly being for the public advantage (Bacon's ante, p. 18. Abridgment, tit. ' Prerogative '). And grants can only ante> p _ 9 ensue according to the King's intent. Therefore, as they profess to be made " for the public good," it follows that no patent can be valid unless the invention is useful. It is, however, not needful that the invention should be commercially useful in the sense of being a better method for a manufacturer to employ, it is enough if it be a new, sound, practical method, even though it may not be so economical. In Edison v. Holland, 1889, Cotton, L. J., observed : — " I am afraid I cannot consider commercial utility. It is a new term in patent law " : 6 K. P. C. 257. In Ehrlich v. Uilee, 1888, 5 R. P. C. 437, Cotton, L.J., said : " In my opinion it is not necessary, in order to support a patent, to shew that all that is claimed is a commercial success, if it can be practically used, a very little utility is sufficient." Again, in Wilson v. Union Oil Mills Co., 1892, 9 R. P. C. 70, Charles, J., remarked : " Commercially, this process G6 ENGLISH PATENT PRACTICE. Chap. II. appears to be enormously expensive. That appears to 1 ' be the result of the evidence which the defendants have An invention ryj ven me U pon this occasion, but that is not the test, and must possess o . x > utility in it is not pretended it is the test. A patent may be a order to be . . the subject of patent for a useful article — it may satisfy the conditions ers pa en . ^ utility, although it may be so commercially expensive as to be commercially useless. That is not the Act at all. The question is, does it really do, when put in practice by a competent man, what it assumes to do ? " : see also Morgan v. Seaward, 1836, 1 W. P. C. 185. It is, however, necessary in considering the utility of a patent, to determine, not only what utility an invention or part of an invention really has, but also the utility which the inventor ascribes to it in his specification . For if an inventor describes a process, or a part of a process, or a machine, or other thing, as capable of pro- ducing a certain result, and it fails to accomplish that result, then, quite apart from the question whether the invention may or may not be useful in other ways, or on the whole, yet by that misrepresentation as to the effect of the operation the Crown will have been deceived and the patent will be invalid. Thus, for example, it is clearly not necessary to the validity of a patent, that the invention should necessarily describe a cheaper way of doing a thing than before ; but if the inventor represents it as a cheaper way, and it be not cheaper, his patent will fail. Lord Halsbury post, p. 136. remarked in the case of The Badische Anilin and Soda Fabrik v. Levimtein, 1887: "The element of commercial pecuniary success has, it appears to me, no relation to the question of utility in patent law generally, though of course where the question is of improvement by reason of cheaper production such a consideration is of the very UTILITY. 67 essence of the patent itself, and the thing claimed has Chap. II. really not been invented unless the condition is ful- filled" : 4 E. P. C. 462; see also p. 466; Kurtz v. An invention 1 must pnssi-aa Spence, 1888, 5 E. P. C. 182. utility in mi i • n -it order to be lhus the question ol utility has to be considered, not the subject of merely with regard to the Common Law, but with regard c fcl3 pa en ' to the representations made by the patentee in his speci- fication. An illustration of the necessity that every part of the invention represented by the patentee to be useful should in fact be useful, is afforded by the case of Easter- brooh v. Great Western Railway Co., 1885, 2 E. P. C. 210 ; 3 E. P. C. 94. In his complete specification for a system of signalling, the inventor had represented that, by his arrangements, " it will be impossible to give a wrong signal or point antagonistic to each other." But at the trial, a model of his machine was exhibited, by which it was demonstrated that by moving the handles in a peculiar way in four different cases wrong signals could be given, and in one of these that four trains could be signalled to run into one another. This was held fatal to the. patent, though evidence was given that in some cases the invention worked well. It is not needful that practical utility should have existed at the date of the patent. It is enough that the invention should be mechanically effective and sound, and that there should be at least a reasonable prospect of utility. Thus it is explained in Chap. IV., sect. 2, post, p. 13G. that though an invention may not be a commercial or practical success at the time it was made, yet if it after- wards becomes useful, or can be shewn to have a reasonable prospect of becoming so", the patent will be supported. The necessity for utility in the subject matter of a w 2 68 ENGLISH PATENT PRACTICE. Chap. II. SECT. 1. An invention must possess utility in order to be the subject of letters patent. An invention must possess utility at the time it is patented. patent was repeatedly affirmed in early cases : Darcy v. Allin, 1602, 1 W. P. C. 6 ; B. v. Arhvriglit, 1785, D. P. C. 138, 1 W. P. C. 72; Euddart v. Grimshaw, 1803, 1 W. P. C. 86, D. P. C. 278; Manton v. Parker, 1814, D. P. C. 327 ; Manton v. Manton, 1815, D. P. C. 348. Manton's patent was for a touch-hole for guns, designed to let the air out while the charge was being rammed home, and yet prevent the powder also passing out through the hole. Evidence was given that the powder did come out ; the invention was held not useful : see also Bovill v. Moore, 1816, D. P. C. 399 ; Minter v. Wells, 1834, 1 W. P. C. 129. " The effect of the evidence is, that without additional facts which are not described, the machines would certainly not be capable of making velvet goods" {per Pollock, C.B.) : Crossley v. Potter, 1853, M. P. C. 245. See also Boulton v. Bull, 1795, 2 H. B. 463, D. P. C. 162; Turner v. Winter, 1787, 1 T. B. 602, 1 W. P. C. 80; Morgan v. Seaward, 1837, 2 M. & W. 562, 1 W. P. C. 197. In patent actions, the plaintiff should always make a strong point of the utility of his patent. For if a patent is once shewn to be useful, the Courts will always be inclined in its favour, and its utility will also afford a presumption in its favour that it is new and ingenious. In Lyon v. Goddard, 1893, 10 B. P. C. 121, the plaintiff had invented a machine for disinfecting clothes, by putting them in a chamber filled with steam under pressure surrounded by a second chamber also filled with steam. At first sight the invention did not look very novel. But when it was shewn in evidence that all other ways of using steam had failed by reason of condensed water spoiling the fabrics, and when it was also shewn that hot steam possessed a peculiar property of pene- UTILITY. 69 trating into the very centre of woollen stuffs such as hot Crap. ii. air did not possess, the opinions expressed by the Judge bbh-J- at the commencement of the trial changed, and the An ilu '(' n, ion , ° must possess patent was upheld as for a valuable invention. utility in order to be the subject of 2. It is the invention that must be useful, not lettere P aten t _ ' The utility merely the result of the invention. — For a merely must be in useless change in the shape or mode of making a use- no t rrfercVin' ful article would confer no benefit upon the public. s "™ e result Thus, in an action on a patent for stays, Grove, J., told the jury : " The question is not whether stays were in existence before and were useful, but . . . whether there is anything in the plaintiff's invention which is more useful than the stays people had before ; is there any new point of utility ? If there is any new point of utility in the plaintiffs invention which was not in any previous known thing, then you may say it is useful. But if you think it is not as good as those existing before, or no better than those existing before in any particular point, then you would say it was not useful " : Young v. Rosen- thal, 1884, 1 E. P. C. 41. The utility must exist, not merely in some one application of the invention, but in the very invention itself. Thus, in a patent for elastic fabrics, it was shewn that this material was useful for surgical bandages (which were not specially mentioned in the patent). Tindal, C. J., said : " It would not be sufficient to maintain the patent, on the ground of its being an improvement, to shew that it was an improve- ment of surgical bandages only, because the patent is not confined to that, but they must prove also that it is generally an improvement with respect to the general uses of that fabric or manufacture which was intended " : Cornish v. Keene, 1835, 1 W. P. C. 506. 70 ENGLISH PATENT PRACTICE. . Sct'J 1 * 3 ' The De £ ree of Utility may be slight if once utility is established. — " It has been decided over and The (l^^rGC of utility may be over again that the slightest amount of utility (I will utili'tVis 0006 not sa > r an infinitesimal scintilla, but a very slight established. amount of utility) is enough to sustain a patent " ( per Grove, J.) : Philpot v. Eanbury, 1885, 2 E. P. C. 37. " It is not necessary that a patent should be so useful as to exclude everything else ; it is quite sufficient if on any occasion it is useful" (per Pollock, C.B.) : Tttleij v. Eastern, 1852, M. P. C. 63. This rule depends on the general principle, that when once a substantial consider- ation exists, the amount or value of it is not material. This principle holds in contracts between subjects : see Chitty on Contracts, 5th Ed. p. 20. And there seems no doubt that the same rule applies to the Crown : Chitty's Prerogative, p. 400 ; A. G. v. Vernon, 1684, Vernon, fo. 279; Viner's Abridgment, Prerogative, vol. xvii., p. 151. It is not necessary, in order to prove utility, to shew that the invention has been actually used : Macnamara v. Hulse, 1842, Car. & M. 471; but such user would, of course, be very good evidence of utility ; see further, Commercial Success, Chap. IV., sect. 1 (j)0st, p. 134). 4. Effect of failure of utility in a material part of ante, p. GO. the patent.— It was said in Chap. I., sect. 8, that if a substantial part of an invention proves to be useless, the whole invention fails. But, as was pointed out above, those cases in which the patentee has distinctly affirmed the utility of any part of his invention should be dis- tinguished from cases iu which he has made no such representation. Where he has made a distinct repre- sentation of the usefulness of anything, he will be held to it, and, if li is representation is false, his patent will be UTILITY. 71 void. But whore he has made no such representation, Chap. It SECT 4 . then, if his invention be valuable upon the whole, the " " ' . ' conditions of the Statute of Monopolies will have been ^f^ ^ fulfilled, and a want of utility in some merely subordinate utility in a J material part part will not avoid the patent. Thus a patent was taken of the patent out for several things, among which was an improved method of making horseshoe nails from a rolled ribbed plate. Two actions were brought in respect of the patent. In the second of these it was held that this was put forward as a substantive invention, that it was useless, and that the whole patent was consequently void. "I am unable to arrive at any other conclusion than this, that the patentee does set forth this very minor invention as part of the consideration for which he is to get his patent right, and so long as that stands, I am unable to resist the effect of the decisions" (per Lord Kinnear): United Horse- shoe Co. v. Swedish Horse Nail Co., 1889, 6 R. P. C. 1. It was held, that where an invention for railway signalling was useful for part of the work, but very dangerous in some places, and where the inventor had not limited his invention to the safe part of it, that the whole patent was bad : EasterhrooJc v. G. W. Railway Co., 1885, 2 R. P. C. 210, 3 R. P. C. 94. Felton v. Greaves, 1829, 3 C. & P. 611. A patent had been obtained for a machine for sharpening knives and scissors consisting of a row of small discs with roughened edges arranged on parallel axes, Fig. 1, so that the knife could be drawn between them. In order to lit this for sharpening scissors, which are only sharpened on one side, it would be needful to leave one set of discs smooth, but the patentee had not described this. His invention 72 ENGLISH PATENT PRACTICE. Chap. II. SECT. 4. Effect of failure of utility in a material part of the patent. The necessity of utility in every part of a patent is not to be too stringently required, pro- vided that there is substantial utility in the invention as a whole. was therefore useless for scissors, and his patent was invalidated. This case was decided before the days of disclaimers and hence the patentee had no means of curing the defect in his title and specification. But where no separate and distinct claim is made to a certain part of the invention, or where a claim can be read as merely subsidiary, failure of utility in that part will not always avoid the patent, provided it is not one of the main features of the invention. A patent had been taken out for drying calico and other stuffs. The jury found that the invention was useful upon the whole, but " not useful in some cases for taking up goods." On motion the Court considered that the jury had held that the invention was useful in the general, and that as they had not specified in how many cases it failed, that failure must be taken to be in an imma- terial portion: Haworth v. Hardcastle, 1834,1 W. P. C. 483, 4 M. & S. 732. Lewis v. Marling, 1829, decided, that where part of a process was useless, but the useless- ness was subsequently discovered, and the inventor did not know it when he took out his patent, the patent was not void, it being on the whole a useful patent : 1 W. P. C. 496. In Morgan v. Seaward, 1837, the Court, whilst holding that non-utility of part of the invention made it void, said : " We do not mean to intimate any doubt as to the validity of a patent for an entire machine or subject, which, taken altogether, is useful, though a part or parts may be useless, always supposing there be no false suggestion " : 1836, 1 W. P. C. 187, and Lord Kinnear, while holding a patent for making nails bad, because the sixth claim was not useful, says : " It is a perfectly sound proposition that ... an invention shall not be invalidated because the specification includes some UTILITY. 73 minor claim, which turns out not to be useful, provided Chap. II. there is no concealment " : United Horseshoe Co. v. — 1 ' Swedish Horse Nail Co., 1888, 6 R. P. C. 1 ; see also |^° o f f Ehrlich v. Rlee, 1888, 5 K. P. C. 450. utility in a material part The effect of commercial success as evidence of the of the patent. utility of a patent is dealt with in Chap. IV. The fact post, p. 134. that defendant infringed is some evidence of utility: United Horseshoe and Nail Co. v. Stewart, 1888, 13 App. Cas. 407. CHAPTER III. NOVELTY, AND THE AMOUNT OF INGENUITY NECESSARY TO CONSTITUTE IT. Chap. III. 1. General remarks. — The only monopolies allowed by the Statute were for new manufactures. The question must early have arisen, whether a thing can be called new, which only differs from what has been done before by some merely immaterial alteration. And it must have been early seen that in order truly to determine the newness of a manufacture, the essence of the inven- tion must be regarded, and not in its mere form. Traces of this view are to be found in the case of Roebuck v. Sterling, 1774, 1 W, V. C. 45, in which it was submitted that the mere substitution of lead vessels for glass in the manufacture of sulphuric acid was no new discovery, but the decision did not turn upon this point. The reported cases which follow from that time to the year 1822, are chiefly noticeable for the destruction of a number of patents for valuable inventions through errors in the drawing of the specifications. But in the cases Brunton v. HaivJces, 1821, and Hall v. Jervis, 1822, the question of the quantum of ingenuity necessary to support an invention was definitely raised. It will be interesting to give a short account of these patents, in order that tiie principles upon which the decisions proceeded may be made clear. Brunton's NOVELTY. 75 patent was for a new method of making anchors, by ohap. III. forging the flukes in one piece, with a coned hole SECT " through the centre. Into this the shaft was inserted and General f _ remarks. bulged up to fit, just as the wooden handle of a pick-axe is fastened to the pick. A similar method had been used for mushroom anchors, and the patent was invali- dated : 1821, 4 B.& Aid. 541. Roll v. Jervis and Boot, 1822, 1 W. P. C. 100. The patent was for removing the small fibres that remain on cotton-lace goods after they are made, by singeing them with a gas flame. It was stated that the result of this invention was a very great improvement in lace, and that all manufactured lace was sub- jected to the process. The defendant excited no sympathy, for he was proved to have used the invention clandestinely. Prior to this invention many modes of singeing woven goods had been employed. The fibres had been removed from silk, cotton or lace sleeves by putting them on a leg or sleeve board, and submitting them to the flame of charcoal, waste paper, wood shavings, or pit coal. Bellows too had been employed to force the flame into the interstices, and hot rollers had also been used. The plaintiff's invention was to submit the horizontally stretched portion to the flame of gas. But this alone would not do. For as Sir H. Davy has pointed out, flame will not go through a narrow set of interstices such as exist in wire gauze unless the gauze is forced against it, or unless the flame is sucked through it. Therefore, to effect this Hall placed chimneys over the lace, by the draft of which the flame was drawn right through the lace, so as to art on 1G ENGLISH PATENT PRACTICE. Chap. III. both sides of it, the lace being drawn through the flame SECT 1 1 ' sufficiently rapidly to prevent its being burned and yet remarks slowly enough to singe off the wool on both sides, a result which would not be attained by merely blowing the flame by means of bellows into the interstices of lace stretched on a board. The jury were strongly impressed by the proof offered of the great improvement which the invention had effected in the lace trade and the evidence given that various experiments made by men of science for doing the same thing had failed. They found for the plaintiff. The Court afterwards refused to disturb the verdict. This case is an instructive one. A man of science might have ridiculed the mere invention of a gas flame drawn upward by a draught of air, for singeing lace. But commercially, as it was shewn, the invention was a valuable one, and others had failed where the plaintiff had succeeded. This led to the conclusion that the method was really novel and not merely an old process in disguise. The obvious justice of requiring that an invention shall not be a mere adaptation of some previously well- known method, naturally leads to the conclusion that in supporting a patent on the score of novelty it is needful to shew that it is to some extent a new departure, or, in other words, that some ingenuity must have been dis- played in making it. Therefore when the novelty of a patent is impugned, the parties may find themselves engaged either upon a dispute whether as a fact some prior alleged invention was known to the public, or else that fact being conceded, whether it was really sub- stantially the same as the patentee's invention. For convenience, these two very different questions may be NOVELTY. 77 separated, and the investigation of that part of the law Chap. HI. of patents which deals with " novelty " may be divided S ECT ' ' into an enquiry as to what constitutes prior publication, G^™ 1 or knowledge, what is a sufficient publication, and where and how that publication must have been made, and a separate enquiry, what amount of difference between one invention and another will be considered by the Courts as necessary to make the last of them novel. This has been recognized in the Courts. Thus Willes, J. said : — " I apprehend that if a patentee would succeed, he must shew not merely newness in the sense of doing a thing which has not been done before, but newness in the shape of novelty by producing a thing which requires some exertion of mind that could properly be called invention." Tatham v. Dania, 1869, Griff. 213. The distinction may be formulated by asking : (1.) Is the invention ingenious ? (2) Has it been anticipated ? It is proposed in this chapter to consider the question of " ingenuity," and in the next to deal with " antici- pation" always remembering that in law both these branches are embraced in the use of the word " novelty," and that the separation here proposed is merely adopted for the sake of clearness and convenience. 2. The ingenuity of every invention is to be judged, in the light of the state of public knowledge at the time it was made. — The first reflection that must strike anyone in considering what is meant by saying that an invention is ingenious, is, that ingenuity is really a relative term depending on the state of the arts and sciences. That which in barbaric times would be a great effort of genius, might, in a more advanced 78 ENGLISH PATENT PRACTICE. Chap. in. age, be justly regarded as a very obvious application of B E ' well-known principles. The ingenuity g lio-htino- a pipe with a florence flask full of water of every in- J & ° . vention is to h e ld i n the rays of the sun, a man might astonish theUgMof 1 a group of savages; in England, it would be regarded as publi? know- the effort of an i n S enious child - Every invention must ledge at the ^ e i u do- e d according to the standard of knowledge at time it was jo o ....... made. the time it was made. This principle is most important in its applications. We are too apt on a trial relating to a telephone or an electric lamp which takes place some ten years after these instruments have been made for the first time, to consider the invention, not in the light in which it appeared to the world at the date when it was made, bat in the light of the advanced state of knowledge at the date of the trial. It is surprising what a difference is made in the value of an invention, by a change in the point of view from which it is regarded. Thus, for example, the ' Principia ' of Sir Isaac Newton were read for years 'by men of science, who, however, never obtained from that work any idea of the principle of the conservation of energy which has been one of the great discoveries of our own age. And yet it is now the general opinion that the Principia of Newton, read in the light of modern knowledge, clearly shew that he not only understood, but had anticipated that discovery. In the same way Huygens and Hook anticipated the undulatory theory of light, and anyone who will read Faraday's researches in the light of modern knowledge, will be surprised to find what a number of subsequent discoveries are shadowed forth in those volumes. This principle was clearly assumed in Crossley v. Beverley, 1829, 1 W. P. C. 107, and again in Lewis v. NOVELTY. 79 Marling, 1829, 1 W. P. C. 496; and will bo further Chap. III. SFCT '^ considered in the chapter devoted to the " Construction 1 ' {• o -a *•„ ,-. >> The ingenuity of Specifications. of every in- In its application to the question of the novelty of vention is to be judged m an invention, we may take as an example King Brown v. the state of The Anglo- American Brush Corporation, 1889, 6 It. P. C. j edire at t )| e 414, 7 R. P. C. 436, 9 R. P. C. 313; this was a petition time it was mix ci c. for revocation of the Brush Patent of 1878, for what is known as the Compound winding of Dynamos. In order to make the case understood, it is necessary briefly to describe a dynamo, and the "shunt," "series," rfj) and " compound " methods of winding it. The invention of dynamos is derived cor, ^L ND originally from two discoveries made by Oerstead and Faraday about the year 1820, and developed by Paccinotti and Gramme. The first of these is, that if a current of electricity be made to flow in a wire round a piece of soft iron, it becomes a magnet, more or less strong in proportion to the strength of the current and the number of turns of the wire. The next, that every magnet attracts along " lines of force," or " lines of magnetic influence," which radiate out from it in all directions ; and if a closed metallic circuit, such as a coil of wire, is moved across any of these lines, resistance to the motion is experienced, and force is necessary to overcome that resistance, which force manifests itself in the generation of a current of 80 ENGLISH PATENT PRACTICE. Chap. III. SECT. 2. The ingenuity of every in- vention is to be judged in the light of the state of public know- ledge at the time it was made. electricity in the coil, more or less strong, according to the strength of the magnet, the distance of the coil, and the speed with which it is moved. The direction in which this current flows is always invariable, depending upon the polarity of the magnet, and the direction of motion of the coil. The causes of these phenomena are not at present known, but their practical utility is evident. Thus if a coil of wire is moved across the path of the magnetism radiating from the magnet N., a current will be generated in the direction of the small arrow. From whence it follows that if a cylinder of iron called an armature, with wire wound round it, is rotated close to a magnet N., electricity will flow in the wires, and may be drawn off by brushes to an electric lamp. But further, since electro-magnets are stronger than permanent steel ones, the current may be carried round the magnet by virtue of whose force it has been produced, and thus reinforce the magnet, so that the map-net and coil shall interact on each other. This is called the " series winding." It has a cumulative effect. The more electricity is produced, the more tends to be produced, and the electricity goes on increasing till the resistance of the armature to the engine that is turning it, and the electrical resistance of the wires becomes so great, that things come to equilibrium. Everything depends on the external circuit being complete, so that if the consumer turns out his lamp the circuit is broken, the magnet almost demagnetised, and the current stops. The action of this series machine, therefore depends on plenty of lamps being alight, so as to have a good external circuit. But if, instead of leading the main current through the circuit, we were to lead only a branch or " shunt " of NOVELTY. 81 the current through the circuit, then the strength of the Cha.p. III. magnetism would be independent of the external circuit, 1 ' and the machine would work though no lamps or very J^eve^ 6 ™ 1 * 7 few lamps were alight, and in fact the fewer lamps there mention is to 1 D be judged in are alight, the better it will light them. Here then we the light of <• , , . i • i ii i the state of nave two machines, one which works best when many pu bii c know- lamps are alight, one which works best when few lamps }?' ige :, at tlie r o > r time it was are alight. The idea at once arises, why not unite them ? made, and take one wire round in " series," and then lead the other round in " shunt," so that whether there are many lamps or few alight, one at least of the windings will benefit by what renders the other less efficacious. This was done by Brush in 1878 with excellent results, and is known as " the compound winding." But unfortunately for his patent, a patent had been taken out by Varley in 1876, in the specification of which he used the following words : " Part of the electricity developed by the machine is diverted to maintain the magnetism of the soft iron magnets, and the remaining portion is used to produce the electric light. There are several well-known ways of doing this, but the method I prefer is to wrap the soft iron magnets with two wires, one having a larger resist- ance than the other. The circuit of larger resistance is always closed, and the circuit of less resistance is used for the electric light. . . . When the electric light circuit is opened from any cause, the electricity de- veloped passes through the circuit of greater resistance only, and maintains the magnetism of the magnets." It was pressed upon the Court that the full com- pensating effect of the compound winding was not present to Varley's mind, and that to read it as an anticipation was really " a gloss put upon the passage by subsequent knowledge." The House of Lords held 82 ENGLISH PATENT PRACTICE. Chap. III. SECT. 2. The ingenuity of every in- vention is to be judged in the light of state of public know- ledge at the time it was made. See next page. Yarley's description as a true anticipation, but all the judgments delivered are expressly founded, not on the state of knowledge at the time of the trial, but on the state of knowledge at the time of Brush's patent. Another interesting example of the application of this principle is found in the two cases by which the validity of the Bell and Edison telephone patents was established ; the first of these was the case of the United Telephone Co. v. McLean, tried in Scotland ; the other was an action brought by the same Company against Harrison, Cox, Walker & Co., tried in London. Before dealing with these cases it will be convenient briefly to explain the nature of Edison's transmitter and Bell's receiver which formed the subject of their respective patents. When a piece of carbon is placed loosely in contact with a piece of metal, and both are caused to shake or vibrate by sounds such as the human voice, the contact between them becomes more or less imperfect, and if a current of electricity is passing through them, that current will be caused to vary in strength in proportion as the undulations of the voice vary; the result is that a battery connected through such a machine is caused to emit an electric current of a tremulous character, the undulations of the strength of which resemble the vibrations caused by the voice. Thus if a person speak through the trumpet-shaped orifice A to the diaphragm behind it, to which is fixed a cork, fastened to a piece of platinum, which rests in contact with a piece of carbon, then the current from a battery P passed through the instrument will acquire the tremulous character above described. Metal in contact with metal would effect the result, but nothing NOVELTY. 83 seems to be nearly so effective as carbon. This is the Chap. III. Edison transmitter. The current is now sent along the — 1 line to the receiver, which consists of a magnet F (prefer- ^l^^^ 7 ablv lone: and thin, as beino- more sensitive to delicate vention is to J ° ° .be judged in influences) on one end of which is placed a bobbin G, the light of wound with thin wire in continuation of the line wire, pu biic know- and the current is then carried back to the battery either leus purpose once you have got a material you may apply it analogous as y ou think fit: R. v. Cutler, 1847, M. P. C. 124, 14 ^suVect t Q* "^* ^"' n ' -From tne case ' however, it is quite clear a patent. that the judge was speaking of applications to analogous old materi Lf° P ur P oses only, and a similar remark applies to the judg- for a merely men t of Maule, J., in Bush v. Fox, 1854, M. P. C. 166; analogous purpose is not Tetley v. Easton, 1852, 2 C. B. (N.S.) 706. 26 L. J. C. P. 269. patentable. ^ ^^ rf Bahtm y £, m ^ lg65j H JJ. L. Cas. 223, 20 C. B. (N.S.) 28, is usually cited in support of the proposi- tion, that when a material is common property it may be used for any purpose. This was an invention for im- provements in embossing and finishing woven fabrics, and in the machinery employed therein. The specifica- tion as amended claimed the employment of rollers driven at a greater speed than the " bowl." " Al- though the patentee may have discovered how to use the machine more beneficially than the owner knew, he has no right to take a grant which virtually prohibits the Ralston v. owner from an existing right over his own property " Smlth ' (per Erie, C.J.) 9 C. B. (N.S.) 117. This view was con- firmed in the House of Lords by Lord Cran worth : " It is not every useful discovery that can be made the subject of a patent, but you must shew that the discovery can be brought within a fair extension of the words, a ' new manufacture.' Now, how is it possible that this can be a ' new manufacture ' ? I, as a manufacturer, have my roller, which I am in the habit of rolling upon my bowl (if that is the proper expression), the fabric passing between the two at equal velocities. Then I can impress any NOVELTY. 89 pattern upon it. I have my roller without any pattern Chap. IIL engraved upon it; I can impress that at an unequal velocity and it will calender. But I do not do these ^ e n ^ h < £ e an both at the same time, because I suppose that in doing or thing for a . merely analo- so I shall tear my fabric, and I rightly suppose so till g0U s purpose the plaintiff makes the discovery that there is one par- analogous ticular sort of pattern which may be produced without JJ^JJJ?^ tearing the fabric. Now, that is a very useful discovery, a patent. but it would be a strange thing to say that this is a new manufacture, and that therefore I am to be deprived of the most useful way of using my roller." If this decision Care to be J ° J used in mter- meant no more than that there can be no patent for the preting this i i 1 ■ i xi j. • judgment, use of an old machine in a manner analogous to that m which it had been used in the past, the decision would accord with all the other cases, but it seems very doubtful whether the new use here proposed was a mere analogue ; and it is to be noticed that Lord Westbury, who gave Lord West- . . -inn- • bury's view. judgment in the case at the same time, based his reasoning upon very different grounds : " I should have thought that the patentee might have maintained a patent for a new combination, if he had put his invention upon this ground, that he was the first person who discovered that the circular grooved roller would answer by one process the double operation of calendering and im- printing the fabric," and he based his decision on the insufficiency of the specification. In Patterson v. Gas Light & Coke Co., 1875, L. R. 2 Compare with Ch. D. 812, 834, the patent was in substance for a BilUngton, method of using successive lime purifiers for gas. The post ' p * old method was to pass the gas through lime to remove the carbonic acid and sulphur, and then through oxide of iron. The patentee did not alter the apparatus, but only advocated the use of it so as not to allow any 90 ENGLISH PATENT PRACTICE. Chap. III. carbonic acid to enter the last lime purifier, as by doing SFCT 3 !_ ' so it liberated sulphur from the lime and sent it into the olcTmachine 111 & as a g a i n as ^ as * as tne ^ me took ^ out °f tne 8" as - ^ ne or thing for a method of doing this simply amounted to keeping the merely analo- . . gous purpose purifiers more clean, and emptying their contents more analogous often. James, L.J., said : " No one has a right to way is not prevent a workman from using: care to keep his tools in the subject to r or a patent. the most efficient state ; no one has a right to prevent a £ e . m ° re manufacturer from cleansing his vessels and throwing efficient use & ° of old away their useless contents whenever he likes, or to ask methods will . . . . not support him his motives and intentions for doing so. . . . It really a pa en . only amounts to a direction to be sufficiently liberal in Compare with ... H Badishe the use of the caustic lime in the first stage.' The v. Dawson decision was affirmed in the House of Lords, on the 1889, post, p. g rounc [ that a man is not entitled to a patent for dis- covering the reason of -a process which was empirically post, p. 118. used before. In Kay v. Marshall, 1841, 2 W. P. C. 82, Lord Cottenham says : " If the patentee has discovered any means of using the machine which the world had not known before the benefit of, that he has a right to secure to himself by means of a patent, but if this mode . . . was known before, the plaintiff cannot deprive them of having the benefit of that which they enjoyed before.' These cases must, however, not be interpreted as meaning that a really new step in an old process, or a really new mode of using an old machine or article, is not patentable. The fair test is whether the patent is for " the use of a well-known machine to a merely cognate purpose " : Croysdale v. Fisher, 1884, 1 R. P. C. 19. In Muntz v. Foster, 1843, 2 W. P. C. 92, the patent was for a special alloy of 80 parts of copper and 100 of zinc, which afterwards became known as Muntz's metal. It had the peculiar property of bearing rolling at a low red NOVELTY. 91 heat. Zinc and copper, when alloyed, make brass, and it was argued that this was only a sort of brass, but Lynd- hurst, C, said : " I do not think that the circumstances of shewing that .... infinitely varying combinations must have been made .... or the proportions combined for another and different purpose .... destroys the patent." The case of Penn v. Bilhy, 1866, L. E. 2 Ch. App. 136, will illustrate this. Wooden bearings for grindstones and mill wheels were of course old. The plaintiff proposed a beariDg for a screw propeller. The bearing was larger than the shaft, and contained ribs of wood fastened round the inside, so that the shaft turned in them, and was lubricated by the water that entered by the interstices between them. The patent was held valid. F/g.l. Ftg.2. va.3. F'g.4. -o- -o— o >— O— I st>'\ Hex. Kr- JOcO*. ■rChlrO-J This important principle is also well illustrated by llopkinson v. St. James' and Pall Mall Electric Light Co.> 1893, 10 K. P. C. 46. The plaintiff's patent was for a pressure regulator, and also for what is known as the " Three wire system " of laying electric mains. The interest of the case was entirely confined to this latter which we shall now proceed to describe. No electric machine generates electricity, properly speaking : it only causes electricity to " move on " as water is pumped by a pump. The work-doing or lighting power of an electric CUAP. III. SECT. 3. The use of an old machine or thing for a merely analo- gous purpose or in an analogous way is not the subject to a patent. 92 ENGLISH PATENT PRACTICE. Chap. III. SECT. 3. The use of an old machine or thing for a merely analo- gous purpose or in an analogous way is not the subject to a patent. current, like the work-doing power of a current of water depends on its quantity, but also on its pressure, and by using high pressures, whether with water or electricity, we can drive machinery by means of much smaller and more economical wires or pipes, than we should have to use if the pressure were smaller. Hence high pressures admit of the use of small wires to convey the same amount of working power as large wires with low pressures. Prior to the plaintiff's patent, incandescent lamps, which, unlike arc lamps, require to be fed at a constant pressure, had been fed with electricity by three different systems of " parallel lighting." First, there was the simple parallel system (Fig. 1.), where the lamps were simply shunted across the conducting cables. And as these lamps usually work at about 70-100 "volts," this was the pressure usually employed, and was sometimes simply duplicated' (Fig. 3). The object of this was to enable the two sides or wings to be worked independently, so that one could be out and its dynamos stopped, while the other was alight. The mains were all equally thick. Of course a considerable fall in pressure took place at a distance from the dynamo, just as happens in gas or water mains. In order to be able to use more economical mains and a more uniformly distributed pressure, the first improve- ment suggested was to arrange the lamps in pairs, in series, so as to be able to double the pressure (Fig. 2). This effected some saving, for the size of the mains could be reduced to one half; it was called the compound parallel system. But it was subject to the defect that the current had to flow through the lamps on the left side to reach the lamps on the right side, and consequently, if many were turned out on the left side, the electricity in NOVELTY. 93 its struggle to get through, overworked the remainder, Chap. III. while, as a less total got through, all the lamps on the _' right hand were under- worked. To cure this difficulty, ^ j^achin an the plaintiff ingeniously suggested the arrangement in or tllin & for a r & J be? & merely aualo- Fig. 4 ; and, to use the words of Romer, J., " the thing gous purpose was done." It was really only Fig. 3, but with one of the anologous dynamos reversed the other way. The effect was, that if ?T ay "I? '. . J J ' the subject to some of the lamps on the left-hand side were turned out, a patent, and the current needful to supply the right-hand side was diminished, it was made up by the flow of the necessary extra quantity along the middle wire, and as this merely differential quantity was small, it needed but a thin wire. Of course, if the central wire were thick, the system could also be worked in wings, like Fig. 3, but then the great saving produced by a thin central wire, would be lost. It was objected that the plaintiff had not confined his patent to parallel lighting, but this was decided in his favour. So far the plaintiff's patent was clearly valid. But several anticipations of the exact arrangement wero produced. First, one at Sauchie Hall, which would have been a clear anticipation, but that the proof broke down that the middle wire was conducted back to join the middle point between the dynamos. In default of which the arrangement was no more than Fig. 2. Two others were produced, relating to arc lamps in series as in Fig. 5, with the middle wire properly brought back and with the dynamos properly placed. Here was apparently a clear anticipation, but it was held not to be one, because the persons who had thus used it, had done so, not with the intention of regulating the light and using small mains, but with the intention only of working the lamps in " wings," either one or the other as they pleased, and they manifested this by usiny a thick centre return cable. This 94 ENGLISH PATENT PRACTICE. Chap. III. SECT. 3. The use of an old machine or thing fur a merely analo- gous purpose or in an analogous way is not the subject to a patent. post, p. 103. post, p. 111. post, p. 210. ante, p. 70 shewed they had not understood the plaintiff's plan, nor anticipated it, and because they had only unwittingly obtained a result of the value and very nature of which they were ignorant, their operations were held to be no anticipation. A point also arose on the construction of the specification as to whether the plaintiff had really confined it to " parallel " lighting, which was decided in his favour. See also Bamlet v. PicJcsley, 1875, Griff. 40 ; Poupard v. Fardell, 1869, 18 W. E. 59, 127 ; Siddell v. Vichers, 1888, 5 E. P. C. 81, 416 ; 7 E. P. C. 292. 4. The substitution in a machine or process of something which is afterwards discovered to be a mere analogue or mechanical equivalent may form the subject of a good patent, if in the state of know- ledge at the time of the patent, the thing substituted was not known to be an analogue. — In some future time discoveries will be so co-related that every scientific fact will perhaps seem to be a mere outcome of some other. Meantime we must judge of inventions by the light approved by the science of the day ; and, if this be admitted, the proposition stated above will follow. For every patent must be judged by the state of knowledge at the time it was taken out : United Telephone Co. v. Harrison, 1882, 21 Ch. D. 720 ; Crossley v. Beverley, 1819, 1 W. P. C. 107 ; Lewis v. Marling, 1829, 4 C. & P. 57, 10 B. & C. 27: see also "Construction of the Speci- fication," Chap. XL, sect. 3. 5. If there be invention the degree of it may be slight. — It has been explained that, provided the Crown be not deceived, the amount of the consideration on which the patent is expressed to be granted, may be slight. Hence, if an invention possesses even a slight NOVELTY. 95 amount of ingenuity the patent for it will be supported, Chap. III. SECT ^ for the Court will not weigh the value of the invention. — 1_ ' Its only duty is to see not whether a patent is valuable, invention 6 the but whether it is valid. The most clear expression of this degree of it ± t may be slight. principle is found in Hinks v. Safety Lighting Co., 1876, L. R. 4 Ch. D. 615, though an examination of the post, p. 103. invention itself leads to the conclusion that it was more valuable than seemed to be supposed by the Master of the Rolls. It was for two sorts of paraffin lamps, viz., that now known as the duplex lamp, and a sort of paraffin argand Fig. I. Fig.2* Fiff.3 F,g4 burner, with a horizontal disc of metal in the centre of the flame. The reasons of the utility of the duplex burner are as follows. In order to secure good com- bustion, it is necessary to bring the air well into contact with every part of the flame. This necessitates the use of thin flat wicks. In order to get light enough, without making the wick too wide, and thus rendering the chimneys too flat, two wicks are placed side by side, and in order to secure good combustion, they are separated by a ridge of metal, which directs the rising current of heated air well into the flame (Fig. 4). Or, again, in order to get the necessary width of wick it may be curled round into a circle as in the argand lamp, in which case in order to direct the air on the flame, a ENGLISH PATENT PRACTICE. Chap. III. SECT. 5. If there be invention the degree of it may be slight. post, p. Ill post, p. 112 horizontal disc of metal is placed above the wick in the centre of the flame (Fig. 3). In 1871, Messrs. Hinks having threatened to stop the sale by Rollins of paraffin lamps having two wicks with the flames projecting through one hole, Rollins obtained an injunction restraining these threats : L. R. 13 Eq. 355. In 1876, Hinks brought an action against the Safety Lighting Company for infringement of his patent. The anticipations set up by the defendants were Halvorsen's American patent for a double wick, and Little's English patent for five round wicks with the flame coming up through one hole (Figs. 3 & 4). In this action it became necessary for Hinks to change his ground and no longer assert that his patent was for a two-wicked paraffin lamp, but for a paraffin lamp with two wicks and two flame holes. Jessel, M.R., after commenting on the position pre- viously taken up by the plaintiff, decided that this was the true interpretation, and found that part of the patent valid. As to the argand burner with the disc (Fig. 2) he treated it as " a trumpery matter," and inasmuch as no utility was proved, and the specification and drawing did not shew the holes through which the air entered to feed the lamp, he declared the whole patent invalid. In the course of his judgment he laid down the law that a slight amount of ingenuity will support a patent : L. R. 4 Ch. D. 615. The American Braided Wire Company v. Thomson, 1889, 7 R. P. C. 47, is another instance of a very slight amount of invention being held sufficient. " It may be the result of a lucky discovery " : Crane v. Price, 1842, 1 W. P. C. 411 ; Liardetv. Johnson, 1778, lj W. P. C. 54; Haslam v. Hall, 1886, 5 R. P. C. 1 ; Hayward v. Hamilton, 1879, Griff. 115. NOVELTY. 97 6. Examples of Cases in which the Invention was Chap. HI. held sufficient.— Huddart v. Grimshaiv, 1803, 1 W. P. C. 92.— A patent for rope-twisting held valid as a new way 8 Xcie°nt of doing an old thing. "ufporf tC" Hall v. Jarvis, 1822, 1 W. P. C. 100.— Silk, cotton, patent. and woollen articles and stockings had previously been freed from projecting fibres by passing them through hot rollers, or else by singeing them (when placed on a board or a wooden leg) with flames of wood, charcoal, or coal. Bellows had been used to force the flame into the interstices. Plaintiff's patent was for the use of a flame ante, P . 75. of gas with a chimney to draw it through the interstices of cotton-lace goods. Strong evidence of utility was given and the patent supported. Lewis v. Davis, 1829, 1 W. P. C. 488.— This was a patent for shearing cloth from list to list. Fig. 1 shews the plaintiff's method. The cutter consisted of a roller with a number of triangular steel wires wound spirally on it. The cloth was passed between two springs, which brought it close up to the cutters. Fig. 2 represents the infringement of the defendant. It was proved that the shearing of cloth from list to list was old, also that cloth had been previously sheared from end to end by means of circular cutters. The defendant had previously been in partnership with the plaintiff, the utility of whose invention was endorsed by the fact that he had made a large fortune by means of it. The jury found for the plaintiff, and the verdict was supported. H 98 ENGLISH PATENT PRACTICE. Chap. III. SECT. 6. Cases of sufficient ingenuity to support "the patent. Russell v. Cowley, 1832, 1 W. P. C. 457.— The plaintiff's patent was for a method of making gas piping or other iron tubes by taking a strip of metal heated in a furnace, and bending one end into a tube. It was then drawn v Jjj ^ -& through a pair of dies and thus welded into a tube. In antici- pation, it was proved that a method had been proposed for welding gun-barrels by putting them on a mandril, and then passing them between grooved rollers. This, as might be expected, was held to be no anticipation. Bullet v. Hague, 1831, 2 B. & Ad. 370.— A prior patent, to which no drawing was attached, had described a method of evaporating sugar, by causing hot air to bubble through it by means of pipes pierced with orifices, put at the bottom of the pans. The plaintiff's patent was for a special arrangement for carrying this out, as shewn in the figure where A is the air pipe, and bb are jets, or tubes leading from it. The patent was supported. Cornish v. Keene, 1837, 3 Bing. (N.C.) 570, 6 L. J. C. P. 225. — This was an action on a patent granted to Sevier in 1833. By a prior patent in 1831 Sevier had dis- closed the curious property of india-rubber, that if stretched while heated, and allowed to cool, it remained stretched, but that if it were again heated it shrank back and recovered its elasticity. The patent sued on was for weaving threads of such stretched india-rubber in its quiescent state among the warp or woof of woven fabrics, and then heating it so as to shrink the india-rubber and contract the fabric, which thus became elastic to an NOVELTY. 99 extent limited by the original size of the threads in the Chap. III. warp or woof, and which prevented the india-rubber — 1 ' being broken by undue stretching. It was shewn that S1 ^ e c s ie ° nt india-rubber threads, both covered and uncovered, had ingenuity to support the been woven before, but never combined with threads patent. so as to limit the elasticity. The patent was held valid. Crane v. Price, 1842, 4 M. & G. 5 SO, 1 W. P. C. 393. ante, P . 57. — The use of hot blast for smelting iron was old, also the use of anthracite coal. A combination patent for using them together was held good ; see, however, remarks on this case in Murray v. Clayton, 1872, L. E. 7 Ch. 584, and Clark v. Adie, 1877, 2 App. Cas. 335. Allen v. Raivson, 1845, 1 C. B. 551. — Patent for felt- making claiming (inter alia) the use with rollers, of soap and water ; soap and water had been used before, and rollers with acidulated water had been used before. Held, a good patent. Newton v. Vaucher, 1852, 21 L. J. Ex. 305. — Defendant had patented the use of soft metal, preferably made of zinc, tin, and antimony, in order to make bearings, pistons, and other moving parts of pumps, hydraulic machines, and steam engines, water-tight, or steam-tight. Plaintiff afterwards found that linings of britannia metal, pewter, or any alloy of which block-tin was the basis, would diminish the friction of bearing surfaces, the linings being held in place by rims, or fillets, or other suitable means. His patent was held good in Newton v. Grand J. Canal Co., 1846, 20 L. J. Ex. 427. In 1852 he brought an action against the defendant. Held, that his invention was sufficiently distinct from that of the defendant, though the same sorts of metal were used for different purposes. Walton v. Potter and Walton v. Bateman, 1841, 1 H 2 100 ENGLISH PATENT PRACTICE. Chap. III. SECT. 6. Cases of sufficient ingenuity to support the patent. "VV. P. C. 585. — Cards are a sort of brush with metal bristles fixed into what is termed the fillet, and which corresponds to the back of a hair-brush, for scratching up wool, cotton, and other substances. It is needful, however, to fix the bristles not rigidly, but to some slightly flexible fillet, and leather had been generally used up to the time of the Walton's patent, by which, in 1834, he proposed to use a simple slice of native india- rubber backed with brown holland for the fillet, for the purpose of giving it greater elasticity. An action was brought on this patent in 1841 against Potter, and in 1842 against Bateman. In 1825, Hancock had patented the use of india-rubber dissolved in naphtha and turpentine, mixed with cotton and other substances, to make a flexible substitute for leather. There was some evidence that he had used it for cards, but probably in a merely experimental way. The juries found for the plaintiff in both actions, and the Courts supported their finding on the ground that the essence of the plaintiff's invention was the application of the elastic property of india-rubber, whereas Hancock's mixture, even if it could have been shewn to have been used for cards, had merely secured flexibility, and even destroyed the elasticity, and that the plaintiff's invention was, therefore, for an ingenious application of an old substance to a new purpose. The patent was tried again in 1842 on a scire facias, in which, in addition to the previous evidence, it was also shewn that Hancock had disclosed the use of his invention for making cards, at a public scientific meeting in 1826. The jury found this time against the patent. A rule for a new trial was applied for, but the proceedings were ultimately compromised (see Bewley v. Hancock, 1856, 6 De G. M. & G. 420). NOVELTY. 101 Bovill v. Keyworth, 1857, 7 E. & B. 725, 3 Jur. (N.S.) 817, Chap. hi. — A blast had been used to convey the matter from be- — 1 tween mill-stones, and an exhaust had also been used, ^j^t A combination of a blast with an exhaust was held good ; ingenuity to ; Bupport the see the criticisms on this case in Wynne's Bovil patent. Patents, Lond. 1873, p. 47. Hills v. London Gas-light Co., 1860, 5 H. & N. 312, 29 L. J. Ex. 409 ; Hills v. Evans, 1862, 31 L. J. Ch. 457, 8 Jur. (N.S.) 525.— The property of hydrated oxide of iron in absorbing sulphuretted hydrogen was known, and also that the sulphuret of iron so formed would be re-oxidised if exposed to the air. Held, that a patent might be taken out for the application of these principles to gas manufacture. Betts' Patent, 1 Moore's P. C, 1862, at p. 60.—" This is a good illustration of the distinction . . . between the merit of ingenuity and the merit of utility. Dobbs' specification may have given the petitioner the idea of the possibility of uniting the two metals tin and lead, and may thus have deprived him of the merit of originality, but in Dobbs' hands the discovery was barren, the petitioner, who . . . gave it a practical application, is the real benefactor to the public" (per Lord Chelmsford): see Betts v. Menzies cited, Chap. V., sect. 9. P ost > P- 154 - Spencer v. Jack, 1864, 11 L. T. (N.S.) 242.— Patent for surface condensers for engines. " A new and useful com- bination of things previously well known, may be the subject of a patent" (per Westbury, L.C.). Young v. Fernie, 1864, 4 Giff. 577, 12 W. E. 901.— Patent for distilling paraffin oil from cannel coal and getting solid paraffin from it. Held good, for previous experiments upon shale coal, and even on cannel coal, had been used to make small quantities of 102 ENGLISH PATENT PRACTICE. Chap. III. SECT. 6. Cases of sufficient ingenuity to support the patent. paraffin wax, and were little more than "ornaments of a museum." Macintosh v. Everington, 6 Rep. Arts. (N.S.) 317, 365. — Patent for putting india-rubber solution as a cement between two fabrics held good, notwithstanding that the use of india-rubber in other states, and other substances, for the same purpose, was well known. Bangerfield v. Jones, 1865, 13 L. T. (N.S.) 142.— Patent for a method of bending walking-stick handles. After being softened in moist sand they were bent over a hollow mandril heated from the inside with a gas-jet and clamped down. It was proved that a band of steel had been used to bend sticks made out of sawn timber, the band being placed externally over the bend, and the stick and band being then heated externally. A solid mandril had also been employed for bending natural twigs after they had been taken out of moist sand. Defendants had taken out a license to use plaintiff's machines. Held, that this was evidence that defendants thought it a new invention. Patent supported. Penn v. Bibhj, 1866, L. K. 2 Ch. App. 127.— Grind- stones and water-wheels had been made with shafts working on wooden bearings. Plaintiff patented an invention (see the Fig.) for diminishing the friction of screw-propeller shafts by intro- ducing strips of wood into the bearings of the shafts of screw and submerged pro- pellers, so that the water constantly wetted the wood, and lubricated the bearing. It was shewn to be useful, and supported as displaying invention. Murray v. Clayton, 1872, 7 Ch. 570, 10 Ch. 675, n., 15 Eq. 115. — The patent was for a method of making bricks. A tape of moist clay being squeezed forward from a NOVELTY. 103 kneading machine, a piece was cut off it, sufficient to Chap. III. make a number of bricks, by a wire moved transversely, " and the part so cut off rested on a table. It was then 2jgJkJ t pushed transversely off this table on to a movable board ingenuity to . . support the by a row of pistons. On its passage it encountered a patent. series of equidistant vertical wires, which cut it into bricks, which were then removed, board and all (Fig. 2). An anticipation was proved which was very similar (Fig. 1), only instead of the cut-off mass being pushed off the table on which it rested, the whole table w r as slid transversely encountering a row of vertical wires which cut the bricks up, which had to be removed from the table by hand. The table was then slid back to its ^/£"./ place. The patent was con- sidered to have a very narrow ambit, but to be valid for the exact com- bination described, and useful as avoiding the removal of the bricks by hand, which was necessary in the case of the anticipation. Bamlett v. Piclcsley, 1875, Griff. P. C. 40.— Where it was known that macaroni could be pressed through dies into pipes, semhle, a good invention to do the same with red-hot iron. Einks v. Safety Lighting Co., 1876, L. K. 4 Ch. D. 615. ante, p. 95. — An inventor had patented the combination of two wick cases with a double-slotted cone, which was new, though contrivances very closely resembling it had been used before. Jessel, M.K., said : " When a slight alteration in a combination turns that which was practically useless before into that which is very useful and very important, judges have considered, that though the invention was 104 ENGLISH PATENT PRACTICE. Chap. III. SECT. 6. Cases of sufficient ingenuity to support the patent. small, yet the result was so great as fairly to be the subject of a patent, and so far as a rough test goes, I know no better." The patent was, however, adjudged bad because it was not properly described in the specification. Frearson v. Loe, 1878, L. K. 9 Ch. D. 48.— This was a patent for a new form of head for carpenters' screws, consisting of one or more grooves milled out with a circular cutter, so as to be of the shape that would be produced by pressing the edge of a coin into soft wax, but not so as to extend beyond the head of the screw. Sometimes two such nicks were cut at right angles to Newton** Patent one another (Fig. 1). The screw-driver of course had a rounded point. It was claimed that by this arrange- ment the head of the screw was stronger. Anticipations, as shewn in Figs. 2 and 3, were proved, and also a patent by Newton, for a circular hole in the screw-head, ac- tuated by a square tapered screw-driver. The Master of the Rolls declared the patent valid. Syhes v. Howarth, 1879, L. E. 12 Ch. D. 826, 48 L. J. Ch. 769. — The introduction of wide spaces between the cards on a roller so as to produce an exhaust current of air, supported. ' Hayward v. Hamilton, 1879, Griff. P. C. 115. — Prisms for deflecting light were old ; so also were glass pavement-lights of rectangular shape, and bull's-eyes (Fig. 1); and in ships prismatic deck-lights of glass had been used (Fig. 2), but not for giving definite direction NOVELTY. 105 to the reflected light. Plaintiff took out a patent for Chap. III. a sect. 6. pavement-lights with prisms of peculiar shape lor deflect- ing the light nearly horizontally 32 I sufficient (Fig. 3). Held in the C. A. to . , y W •g^ft* display sufficient invention. " It patent, is very strange if it is no invention, that it has never been done before " (per Brain well, L.J.). Edison v. Woodhouse, 1886, 3 E. P. C. 165, 4 E. P. C. 79.— By this action the validity of the Edison patent of 1870, for the electric incandescent or glow-lamp was established. When electricity is passed through any conductor it always does work in that conductor propor- tioned to the resistance experienced in its flow. The work usually is developed in the form of heat. The greater the resistance in proportion to the electric energy passing through it the more violent the action and the hotter the con- Eo/son*^^^/ swan. ductor becomes. With a certain quantity of electricity the conductor becomes red hot, then white hot, radiating out both light and heat, and the greater the temperature, the greater is the amount of light given as compared with the heat. So that if one desired an economical form of lighting apparatus, the resistance should be great, and the temperature as high as possible. At this high tempera- ture all metals fuze, and most metallic earths, such as clay. A few oxides, such as that of zirconium, will resist, but one of the very best substances, which is also a conductor of electricity, is carbon, on account of its extraordinary infusibility. Unfortunately it oxydises very easily, so that in order that it may be used it has 106 ENGLISH PATENT PRACTICE. Chap. III. SECT. 6. Cases of sufficient ingenuity to support the patent. to be enclosed in a very perfect vacuum, or else it would burn away in an instant. Up to the year 1879 no good incandescent lamp was practically known, but incandescent wires of platinum and rods and spirals of carbon had been used in glass vessels from which the air was exhausted. It was known that high resistances were necessary. Moreover, Swan, in 1878, had exhibited a slender rod of carbon, one- twenty-fifth of an inch in diameter, in incandescence, hermetically sealed into an exhausted globe. Edison's patent was for a " filament " of carbon of high resistance sealed into a glass globe from which the air was ex- hausted. It was urged that this was no invention when once it was known that high resistance was required, that carbon was suitable, and a vacuum necessary ; but Butt, J., decided for the plaintiffs. This was confirmed on appeal, on the ground that what Edison had dis- covered was the necessity for the use of threads of carbon, one way of making which he described, and the value of the invention was shewn by the success which attended it, and the failure of all previous experiments. Next year, however, the question was tried over again : Edison and Swan Electric Light Co. v. Holland, 1888, 5 R. P. C. 459. At this trial fresh evidence was pro- duced, which had been mainly obtained by forcing the plaintiffs to disclose information which had been pre- pared by Swan, to enable hirn to contest an action against him by Edison before they united. Kay, J., thought that inasmuch as the necessity of high resistance was known, and carbon was known, no one could have a patent for uniting them. He also found that there was insufficient description, and that the claim was too wide. On appeal, however, this judgment was reversed, on the NOVELTY. 107 ground that though Swan's lamp might, and probably CnAP. III. SECT 6 would, have been an anticipation if it had been a com- — 1 " mercial success, yet that it had been a mere abandoned J^^t experiment : 6 E. P. C. 243. ingenuity to x • i j su PP or t t' ie Closely connected with this patent is one also owned patent. by the Edison and Swan Company. It was found that when filaments were made by carbonizing threads or strips of fibre in closed retorts, that the carbonized fibres were uneven, and were burned up at the weak places. To secure uniformity, a very ingenious process was patented called " flashing." The filaments were placed in a gas or liquid rich in carbon, such as coal gas or petroleum, and then heated by a current of electricity. This caused the carbon to be deposited from the gas or liquid on to the filament. But as the electricity heated the fibres most, just at their weakest points, a greater deposition of carbon from the gas or liquid was caused to take place on their weaker parts than elsewhere, and so the filament was rendered uniform. It was en- deavoured to shew that Sidot and Depretz and others had previously known that hydro-carbons could thus be deposited, but inasmuch as it could not be shewn that this fact had ever been utilized for any process akin to " flashing," the patent was supported : Edison v. Wood- house, 18SG, 3 E. P. C. 183, 4 E. P. C. 99. Otto v. Linford, 1881, 46 L. T. (N.S.) 35; Otto v. Steel, 1886, 3 E. P. C. 109.— The part of the patent which really came in question was for an old form of gas-engine. The gas-engines of Lenoir and others worked very like a steam-engine, simply sucking in the mixture of gas and air during the commencement of the piston's motion, then, when this had been done, igniting it, whereby the piston was driven forward during the 108 ENGLISH PATENT PRACTICE. Chap. III. SECT. 6. Cases of sufficient ingenuity to support the patent. remainder of its stroke. On its return the piston expelled the foul exploded air from the cylinder, which was then ready for a fresh charge. The improvement of Otto in this patent consisted of letting some pure air in first, then behind it some mixed air and gas, and as these were all sent in from behind he concluded that the state of the cylinder just before ignition was a residuum of burned gas and air next to the piston, then air, and behind all the explosive mixture. The light being applied from behind he argued that the explosion would be gradual through these three layers. Experiments seemed to justify this view, and the practical result of improved working was certain. The scientific accuracy of this explanation of the matter is perhaps open to question, for the kinetic theory of gases shews that layers will mix with a rapidity so great that it is doubtful whether these layers would have remained, even if they ever existed, for more than a very short time. On the evidence, however, coupled with the fact that whatever the theory was, there was a great increase of efficiency ; the patent was supported. Most gas-engines now work by igniting gases in a compressed state, which was the subject of Otto's second claim, but was not dis- puted, after De Eocha's alleged anticipation had been held not to have been published in England. Wailing v. Stevens, 1886, 3 E. P. C. 37, 147.— The plaintiff patented a tip-waggon, in which the body of the waggon ran on small wheels on a frame attached to the axles. When pushed backwards, a pin on the body caught in a notch at the back of the frame, and the body of the waggon tipped over, and was prevented falling by a retaining rod (not shewn in the figure). Previously to this another inventor had patented Fig. 2, NOVELTY. 109 the action of which sufficiently appears from the drawing. The Court held this no anticipation, for the body was Chap. III. SECT. 6. Cases of sufficient ingenuity to support the patent. F,g.i. Ftg.Z not properly supported by its wheels, and would break, and was considered different in construction from the plaintiffs, though the leading idea on which it was con- structed was the same. Reynolds v. Amos, 1886, 3 K. P. C. 215.— Plaintiff See remark* . ., . , on this case patented an invention for compressing ensilage, consist- in sharp v. ing of chains fastened to the bottom 2j£'i2a?* 1 of the pit or passing under the ensilage, and fastened with pegs after being strained tight by a jack or lever. Before this dead weights had been used to compress the ensilage, and the ensilage had been compressed by screw-jacks. Held (by Bacon,V.C), to display invention. Moseley v. Victoria Rubber Co., 1887, 4 R. P. C. 241 ; 55 L. T. (N.S.) 482. The cold process for vulcanising india-rubber, or india-rubber coated fabrics, had been invented by Parkes in 1846. Instead of heating the india-rubber with sulphur, the sheets of india-rubber are immersed in a solution of chloride of sulphur in disulphide of carbon, or other solvent, or else merely exposed to the vapour of that solution. It had been previously known no ENGLISH PATENT PRACTICE. Chap. III. SECT. 6. Cases of sufficient ingenuity to support the patent. also, that if before being heated with the vapour, the fabrics were covered with farina, a silky bloom was imparted to them. The plaintiff further discovered that in the state when covered with farina, the cloth was peculiarly susceptible to being printed with colours in patterns. This was due to the very absorbtive nature of the coating of farina. He patented the invention. It was objected that the invention was only the application of ordinary colour printing rollers to farina-coated india- rubber goods. But Chitty, J., held that, inasmuch as such printing only succeeded on farnia covered goods, it was not a mere adaptation of an old process, but one which was a new invention. Kaye v. Chubb, 1887, 4 K. P. C. 23, 289 ; 5 R. P. C. 641.— This was an invention for a door-latch, in which the bolt was drawn back to open the door, simply by pulling the handle from the inside, or pushing it from the outside. The spindle had a collar a, acting on a lever b, which actuated the bolt c, and a spring kept the bolt in place (Fig. 1). — In anticipation, a patent was produced of Imray (Fig. 2). The only difference was that a notch a was substituted for the collar, and the position of the spring was different. It was argued for the plaintiff that there was no anticipation, because the notch in Imray 's lock was not equivalent to the collar in Kaye's lock, and for this reason, that if you tried to shut the door NOVELTY. Ill with Kaye's bolt, the collar receded and left the bolt Chap. III. free to slarn into the catch plate. But if you tried to — L ' shut the door with Imray's latch, the act of pressing the J^^nt handle from the inside, or pulling from the outside, only ™ ge °jj^ jammed the bolt fast, and prevented it from shutting patent. properly. This could be cured either by making the groove a very much wider, or else substituting a collar. In his specification, Imray had used the words, " With a groove in it, or with a projection or collar on it, which engages with a lever connected with the spring bolt." At the trial, Matthew, J., considered that what was here meant was only a collar equivalent to the groove, i.e. a collar on both sides of which the lever should engage. The Court of Appeal thought he meant to point out the mechanical alternative, and that he had contemplated the plan of the plaintiff. But, on appeal to the House of Lords, they thought that, in using the alternative words "projection or collar," the same sort of engagement must have been meant, as was meant when a lever or groove were used, viz., a double engagement, and hence that the plaintiff's invention was an advance on Imray's, and the subject of a patent. Inasmuch as the defendant's lock was just like that of the plaintiff, except only that he pressed the bolt a with a V-spring, instead of a spiral spring, the Court held the infringement proved, and gave judgment for the plaintiff. Siddel v. Vickers, 1888, 5 E. P. C. 81, 416, 7 R. P. C. 292. — Endless chains worked by cog-wheels, or winches, or by hooks, to turn forgings about, were known, but were not portable, and had never been much used. Plaintiff patented an endless chain, worked by a portable cog- wheel and hand-ratchet, for the same object. Held, that this machine was a new combination. Patent supported. 112 ENGLISH PATENT PRACTICE. Chap III. SECT. 6. Cases of sufficient ingenuity to support the patent. Ehrlich v. Ihlee, 1888, 5 R. P. C. 437, 7 E. P. C. 292. — Plaintiff's patent was for a circular disc of card with holes in it, by means of which levers were actuated, which played a small organette. Prior to this, bands of cards had been used for the same object, very like the arrangements in a Jacquard loom. Circular cards had been suggested for the Jacquard loom. Circular cards with holes in them had been used in organettes, not to actuate levers, but to be blown through, i.e., to open and stop pipes. Circular cards had also been proposed by Peabody with " dents " in them to actuate levers for an organ, but the specification was not in England at time of plaintiff's patent, and besides, was so badly drawn as to be unintelligible. The plaintiff's machine was admitted to be a great commercial success. Held a good patent. Haslam v. Hall, 1888, 5 R. P. C. 1.— The principle of the machine of the plaintiffs depended on the fact that if air is compressed, it becomes heated. Suppose that while still compressed, it is allowed to cool, and thus to dissipate the heat. Then let the pressure be removed. If the air were inelastic, it would remain compressed, but being elastic it again expands. In expanding it must become cooler by the amount of the heat it lost during the time it was allowed to cool. In this cool state, it is ready to absorb from surrounding bodies heat sufficient to restore it to the same temperature as at first, before the pressure was applied. Thus then we can construct a "heat dissipating and absorbing machine," and by putting substances near it, we can heat some of them, and cool others. This is the principle of mechanical refrigerators largely used for preserving meat during its voyage from the colonies. But if meat is shut up in refrigerators, it NOVELTY. 113 gives up moisture, and if air which is being cooled cou- Chap. TIL . . , • -1 • - 1 • 1 r 8ECT - (; - tains moisture, that moisture is deposited as ice, hoar-frost, or snow, which is apt to clog the pipes and machinery, g.^ient This difficulty the plaintiff by his patent sought to JJS®^'?* remove. He passed the air over the meat, and then over patent. pipes which cooled it, and then arranged his pipes in which the cooling took place at such inclinations and with such cocks, that the moisture which had come from the meat could be drawn off as soon as it had got into the liquid form of water, and before it reached the solid stage of ice or snow. It was like wiping the meat with a cold towel, and then drying the towel again. Evidence was given of prior machines by Windhaussen and Nerlich, which also had cocks, but it was not satisfactorily shewn that these cocks were more than experiments, or that they were deliberately made and used for the same purpose as the cocks of the plaintiff. It was objected that if once it were known that condensed moisture was likely to freeze and block the machine, it was no invention simply to incline the pipes to let the condensed moisture drain away, and to put a cock to draw it off. But it being proved that the plaintiffs use of cocks had resulted in a great com- mercial success by the obviation of a previously felt diffi- culty, it was held that, though a simple invention, it had merit, and could sustain a patent. " The effect of a great deal of the examination appears to us to be this : that the inventor of the (plaintiff's) machine did make a step for- ward in the process of invention, of the highest practical importance, although previous inventions had led up to it in such a manner, that now that the thing is done, it seems as if any one might have done it, by the use of a little power of invention. This, however, is, I belicvo, practically speaking, the history of a very largo number, r 114 ENGLISH PATENT PRACTICE. Chap. III. SECT. 6. Cases of sufficient ingenuity to support the patent. perhaps of the great majority, of useful discoveries " (per Stephen, C.J.). Judgment was given against the plaintiff, however, as one of his claims was old. This was afterwards cured by disclaimer. Bowling v. Billington, 1889 (Ireland), 7 E. P. C. 191. — A patent for a new method of weaving wire mattresses. It was shewn that they could be woven on well-known machines, but the patent described a new and improved arrangement of the warp and weft. It was argued that, as the machines were old, those who possessed them could weave what they liked upon them ; but patent supported, as a new way of using an old machine. Badische Anilin Fabrih v. Daivson, 1889, 6 R. P. C. 387. — Plaintiffs' patent was for a new chemical substance produced by the use of an additional quantity of sul- phuric acid m one of the stages of manufacture of an old substance, viz., dinitro-naphthol. Such additional use produced a totally new substance. Held good. American Braided Wire Co. v. Thomson, 1889, 4 R. P. C. 316 ; 5 R. P. C. 113, 375, 696 ; 6 R. P. C. 518 ; 7 R. P. C. 47, 152. — This patent (1885) was for making ladies' bustles out of braided wire. The wire was first woven into long cylinders. Several lengths being taken, their ends were squeezed together, and then clamped without solder by inserting them into a V-shaped piece of metal, squeezing it tight, and doubling it over (Fig. 1). The V-shaped pieces of metal were then fastened to a waistband. In 1880 Jenkins had taken out a patent for braided wire, in which he proposed its application to all sorts of uses, Ftg.l. Ft&2. NOVELTY. 115 such as bell ropes, Lird-cage perches, arms and legs of Chap. III. chairs, walking sticks, and also for stiffeners, for use in — L corsets, skirts or other articles of dress. He clamped the JJStetaat ends by means of V-shaped pieces of metal put on with ingen^to rivets or solder (Fig. 2). The use of braided wire for patent. cushions had also been patented in 1884. Kekewich, J., thought that the plaintiff's patent had been anticipated, but was reversed on appeal, and finally also in the House of Lords, Lords' Watson, Herschell and McNaughten thought that the patent was valid for the particular combination described : Lords Halsbury and Fitzgerald dissented. Lord Herschell said : "If I thought that the patentee had claimed the mere use of tubular sections of braided wire as a bustle, however fastened or secured, I should arrive at the conclusion that the defendants' contention was well founded. . . . In my opinion it is the combination alone for which protection is sought, and the method of fastening the ends by clamping plates is an essential part of that which is claimed." This case was, however, considered on the margin, as appears from the remarks of Lord Watson in Morgan v. Windover, 1890, 7 R. P. C. 136 (post, p. 417). Thomson v. Batty, L889, 6 R. P. C. 84; Thomson v. Moore, 1889, 6 R. P. C. 426.— Sir W.Thomson, having applied himself to the study of the mariner's com pass. arrived at the conclusion that what was required was an exceedingly light card to diminish friction, the weight disposed chiefly round the rim, to give a large moment of inertia, and very small magnets, so as to be less sensitive to local disturbances. He carried out these ideas by attach- ing the card rim by threads to the magnets, which were made very small. The result was a great practical i 2 116 ENGLISH PATENT PEACTICE. Chap. III. SECT. 6. Cases of sufficient ingenuity to support the patent. success. Held, that though all the parts were old, yet the combination was clearly subject-matter for a patent. Shaw v. Jones, 1889, 6 E. P. C. 328.— The plaintiff's specification contained no drawings, but stated the inven- tion to be for " blocks of various sizes and geometrical squares, angles, curves, etc. So that by this means a compositor may construct a block poster, etc., in the same way as he would proceed to set up a combination border." The alleged anticipation was in a patent for somewhat the same thing, but with drawings shewing how blocks of a few different shapes could be used to build up various designs. The defendants complained of the vagueness of the plaintiff's specification, but proof being given that the plaintiff's patent was useful and that blocks could be made from the descriptions in it, the patent was supported. Wenham Gas Co. v. Champion Gas Co., 1891, 8 R. P. C. 313, 9 It. P. C. 49. — Siemens had invented a lamp in which arrangements were made to warm the air before it was applied to the flame. The arrangement is shewn in the Figure. The hot air ascending warmed the gas- pipe. Wenham invented a form of lamp shewn in the NOVELTY. 117 second figure. It was held that this was an advance on Chap. III. Siemens', and was consequently good subject-matter for a B ECT ' ' patent. In the Wenham lamp the entering current of air JJjJJ'J. is divided into two portions, one of which circulates ingenuity to round the outer globe, the other is heated, and feeds the patent, flame. Farben Fabrik v. Bowler, 1891, 8 E. P. C. 389.— A new dye, obtained by putting in practice known chemical facts, held good. Pirrie v. YorJc Street Flax Co., 1892, 10 R. P. C. 34.— Dry paper tubes had been used for winding cotton yam upon, for spinning. A patent for similar tubes for use with wet flax yam held good, on special advantages being shewn by their use for that purpose. Miller v. Scarle, 1893, 10 R. P. C. 106.— This was an action brought upon two patents, one for a clip for securing lamps to velocipedes, the other for a more elaborate mode of attachment with the same object. The alleged anticipation of the first patent is so vague as to be hardly comprehen- - P Ftgii sible. The second patent (Fig. 2), and its alleged anticipation (Fig. 1), are as follows : In Fig. 1 the lamp is suspended on four arms, giving a parallel motion, which is controlled by a spiral spring diagonally arranged. In Fig. 2 the arrangement is similar, except that the arms are braced together by cross pieces, and that linings of india-rubber are inserted into all the joints and axes to minimise vibration. The patent (Fig. 2), was found to display invention enough to support a patent. 118 ENGLISH PATENT PRACTICE. Chap. III. SECT. 7. Cases of insufficient ingenuity to support the patent. Jjosh v. Hague, 1838, ante. p. 26. 7. Examples of patents held bad for want of ingenuity. — Brunton v. EaivJces, 1821, 4 B. & Aid. 541, 1 C. P. C. 405. — Patent for making anchor flukes in one piece with shank rivetted on, instead of in two pieces welded on to shank, held bad, because mushroom anchors and kege anchors had been similarly made. Kay v. Marshall, 1841, 2 W. P. C. 34.— Plaintiff had patented (inter alia) the placing of rollers for spinning flax, hemp, and other fibrous substances, " nearer together than they had previously been placed, say within 2^ inches of each other." This was to prevent the fibres from breaking after they had been macerated in water (which process was not new). Previously, flax rollers had been put 15-20 inches apart, cotton rollers 1| inch apart, and, in fact, the distance had been regu- lated to suit its fibre. Patent held bad. R. v. Cutler, 1847, M. P. C. 124.— The mere applica- tion of a known article to an analogous use is not patentable. Iron tubes for boilers were old ; brass-coated iron tubes were old ; a patent for using brass-coated iron tubes for boilers held bad. Dobhs v. Perm, 1849, 3 Ex. 427.— Patent for a pulley for window blinds (Fig. 2), which differed only from a previous invention (Fig. 1) by the omission of an ornamental escutcheon, and the use of a screw instead of a rack. Bush v. Fox, 1852, M. P. C. 166, 178, 23 L. J. Ex. 257, 25 L. J. Ex. 251, 5 H. L. C. 707. — Caissons for excavating earth under water. The caisson was shaped like a diving-bell, so as to keep out the water, and sank into the earth as the excavation F/f.f NOVELTY. 119 proceeded. Exactly similar means had been used for excavating in mines on land, the caissons also serving in this case to keep the water from coming in. " If a man were to take out a patent for a telescope to be used for making observations on land, I do not think anyone could say, 'I will take out another patent for that telescope, to be used for making observations on the sea ' " (per Pollock, C.B.). Patent held bad. Brook v. Aston, 1857, 8E.&B. 478, 27 L. J. Q. B. 145, 28 L. J. Q. B. 175. — A patent had been granted for strengthening and polishing linen and cotton yarns by means of friction brushes. Another patent could not be obtained for applying the same process to yarns of wool or hair, or to fabrics made of cotton, linen, silk, wool, or hair. Patent Bottle Envelope Co. v. Seymer, 1858, 5 C. B. (N.S.) 164, 28 L. J. C. P. 22.— Plaintiffs patented and claimed a peculiar method of making bottle envelopes upon a bottle-shaped mould. Defendants used a different method of making envelopes upon a bottle-shaped mould. Held (1), that there was no infringement, and (2) that the mere use of a bottle-shaped mould could be no invention, for moulds were well known for giving shape to pliable materials. Balston v. Smith, 1860. (See this case at Chap. Ill, sect. 3.) Compare with Bowling v. Billington. Hanoood v. G. N. Bail. Co., 1860, 2 B. & S. 194, 222, 11 H. L. C. 654, 29 L. J. Q. B. 193, 31 L. J. Q. B. 198, 35 L. J Q. B. 27. — Fishplates of iron, grooved so that a square-headed bolt, put through a hole in them, would not turn round, so that the nut on the bolt could be Chap. III. SECT. 7. Cases of insufficient ingenuity to support the patent. ante, p. 88. ante, p. 114. 120 ENGLISH PATENT PRACTICE. Chap. III. SECT. 7. Cases of insufficient ingenuity to support the patent. Compare Ormson v. ( 'larke, infra. See Newsum v. Ma a n, post, p. 17, and Hortotl V. Nubvn, supra. screwed up tight, bad been used in timber construction. Held, no invention to apply them for uniting railway rails. " You cannot have a patent for a well-known mechanical contrivance, merely because it is applied in a manner, or to a purpose, which is analogous to the manner, or to the purpose, in or to which it has been hitherto notoriously used." Hyde v. Trent, 45 Newton's Lond. Journal, 135. — Where crushing-rollers had been used for hemp fibre, no patent could be had for using them for cocoanut fibre. Calvert v. Ashbum, 7 Prac. Mech. Journal, 2nd Series, p. 97. — Caustic alkali had been used to dissolve gluten to make starch. Held, no patent to use the same means to make size. Eorton v. Mabon, 18G2, 16 C. B. (N.S.) 141, 31 L. J. C. P. 255. — Troughs round the joints of telescopic gas-holders had previously been made of two pieces of iron, |_-shaped in section, riveted together. A patent for making the troughs of one piece of U-shaped iron (U-shaped iron being known before) held bad for want of invention. Mackelcan v. Rennie, 1862, 13 C. B. (N.S.) 52.— It was queried whether the use of a new material, such as iron, in floating docks, where wood had been used before, was patentable, but not decided. TJwmpson v. James, 1863, 32 Beav. 570. — The substi- tution of steel for whalebone in petticoat hoops held insufficient. Willis v. Davison, 1863, 1 N. E. 234.— The applica- tion of an old compensating valve to an old pneumatic lever for organs held bad for want of invention. Ormson v. Clarke, 1862, 32 L. J. C. P. 8, 291, 13 C. B. (N.S.) 337, 14 C.B. (N.S.) 475.— It had been usual to cast hut-water tubes for conservatories in separate NOVELTY. 121 lengths, and then to place them parallel in groups with Chap. III. their ends cemented into rings made with sockets to 1 ' receive them, so as to unite them all together. A patent {JSident for casting them, rings and all, in one piece, described ingenuity to support the how to do it, and then claimed, not any special mode of patent. casting, but the doing it in one piece. Held bad for want of invention. Jordan v. Moore, 1866, L. E. 1 C. P. 624, 35 L. J. C. P. 268. — Iron plates on iron frames for ships were old ; so also was wood planking on wooden frames. Held, Compare with no invention to use wooden planking on an iron frame ^V'^ 6 * (Hartvood v. G. N. R. C. followed). Wliite v. Toms, 1867, 37 L. J. Ch. 204, 17 L. T. (N.S.) 348.— There is no invention in covering the falls of mourning: hats or bonnets on the inside with similar pleats to those which before were used on the outside, so that when turned back the appearance of the fall is improved. Parties v. Stevens', 1869, L. E. 5 Ch. 3, 6.— Sliding doors had been used for cylindrical lamps. Held, no novelty to apply them to spherical lamps. Eushton v. Crawley, 1870, L. E. 10 Eq. 532. — Wool had been used for making chignons. Plaintiff claimed wool, particularly Russian wool, for that purpose. Held, an absurd claim. Crane v. Price doubted (per Malins, V.-C). Saxby v. Gloucester Waggon Co., 1881, L. R. 7 Q. B. D. 305, 50 L. J. Q. B. 577.— A patentee had, by two patents of 1870 and 1871, made improvements in inter- locking railway signals. In 1874 he patented a com- bination of the parts contained in the other two patents, 122 ENGLISH PATENT PRACTICE. Chap. III. SECT. 7. Cases of insufficient ingenuity to support the patent. which, however, effected no results which were new. After an examination of the invention, the Court held that the combination patent of 1874 was such as " any person of ordinary knowledge would be able to effect, without further experiment, by placing the inventions of 1870 and 1871 side by side." Patent held bad. Eaclcs v. Starbruch Waggon Co., 1881, W. K 160.— A tramcar pivotted on its frame was old. Plaintiffs patent was for the same thing, with the difference, that the car was longer, and that the frame had two segmental arcs for better support. Held bad. Croysdale v. Fisher, 1884, 1 E. P. C. 17. — A machine had been invented by Forest for treating nitrogenous refuse with sulphuric acid heated by gas, air, or by a furnace, to produce a manure. Plaintiffs patent was for a similar machine to do this by means of steam, so as to produce the manure in a dry powder, according to a method described by him. Manure made into powder from the manure made according to the first patent was known. Held, that the mere substitution of steam heating for other modes of heating would not support a patent, though had the result, viz., manure in poivder, been new ; the patent might have been good. Jensen v. Smith, 1885, 2 E. P. C. 249.— The substitu- tion of a screwed cap working in a thread cut in the inner or outer surface of an oil box (Fig. 1), and substituted for a previously-known piston in the box driven forwards by a screw working in a collar (Fig. 2), held not sufficient for a patent. Philpot v. Hanbury, 1885, 2 E. P. C. 33.— A patent for a dressmaker's measuring machine held anticipated. NO VEL TY. 123 (The construction of the various instruments is somewhat Chap. III. SECT. 9. complicated.) Jackson v. Needle, 1885, 2 K. P. C. 192. — Two boxes, insufficient one inside the other, with packing between them, for in s eiiu ;ty to L ° support the sending by parcels post, held no invention. patent. Lawrence v. Perry, 1885, 2 E. P. C. 183.— This patent was for a pencil, in which the lead was secured as shewn in Fig. 1. by unscrewing the cap, so that it squeezed together the claws. As anticipations, Fig. 2 was put ■» " 'S' %>-* 'S*~- forward, being an invention of J. D. Harding, the well- known artist. And also Fig. 3, which attained the same result, by simply pushing back a cap. Fig. 4, for an adapting key for watches was also adduced as an anticipation. Indeed the general features of the plan are very old, having been used for jewellers' vices, and by optical instrument makers for years. The patent was held to have been anticipated. Moss v. Malings, 1886, 3 R. P. C. 378.— The alteration in the shape of a tennis-bat handle with a groove on each side and a lump at the end, so as to resemble a shin- bone, was considered good, " though somewhat slight matter for a patent." But in a second action brought by the patentee, the Court of Appeal pronounced the patent bad : Slazenger v. Feltham, 1889, 6 E. P. C. 232. Sharp v. Bremer, 1886, 3 E P. C. 196.— Plaintiff took out a patent for strips of paper or metal joined at the edges so as to make folding screens for windows. Such screens had been previously used for fireplaces. " A luminous idea occurred to him that this old-fashioned 124 ENGLISH PATENT PRACTICE. Chap. III. SECT. 7. Cases of insufficient ingenuity to support the patent. ante, p. 109. thing, which everybody might have used whenever he liked, and wherever he liked, would be d&n, very handy for a window. ... It is the very essence of a patent that it must contain an invention. That has been carried very far in the ensilage case (Reynolds v. Amos, 1886, 3 E. P. C. 215). The ground upon which I decided that case was that there was a clear inven- tion .... Here nothing is invented " per Bacon, V.-C). AJbo-Carhon Light Co. v. Kidd, 1887, 4 E. P. C. 535.— Liquid naphthaline had been used for enriching gas by supplying it with carbon in a state of vapour. Held, that a patent for using solid naphthaline (a well-known form of naphthaline) for the same purpose was bad for want of invention. Rowcliffe v. Morris, 1886, 3 E. P. C. 17; Rowcliffe v. Longford Wire Co., 1887, 4 E. P. C. 281.— In old four-post bedsteads it was usual to attach one end of the sacking on which the mattress rested to one end of the bed-frame ; the other end of the sacking was fastened to a cross-piece of wood, the ends of which slid in grooves on the inner faces of the bed-frame. This piece of wood was then drawn towards the other end of the bed-frame by screws and nuts, so as to stretch the sacking: tio;ht. After the invention of wire-wove mat- tresses or webs the plaintiff patented a similar method of attaching them to frames without legs, with this dif- erence, that his cross-pieces slid on the surface of the frame instead of in grooves in it ; this enabled the web to be wider than before. Held to display no invention. Humpherson v. Sger, 1887, 4 E. P. C. 184, 407.— In NOVELTY. 125 1881, Winn invented a form of waste preventer for Chap. III. W.C.'s shewn in Fig. 1. When the cap, A, is raised by 1 ' the lever, b, the water enters the syphon and flushes ^sufficient down the pipe, P. But when the cistern re-fills, the ingenuity to *■ L . support tlie pressure of air in the cap, A, prevents the water entering patent. the mouth of the syphon till the cover, A, is raised again. In January, 1885, Syer invented a modification of this by substituting for Winn's cap and syphon, a double cap (Fig. 2). The action is scientifically exactly the same, only the syphon is formed by the cap itself. Fearing that this similarity would invalidate his patent, he con- i. I r^~" F,g.z i Ftg& trived another mode of working his machine, by placing in it an air valve, Q, actuated by a lever, or else by a simple button, to let out the compressed air which the rise of the water in filling the cistern had forced into the cap. This had just the same effect as raising the cap. He also caused a workman to make a preventer on his system adapted to work by raising the cap. In February, 1885, Humpherson patented Fig. 3, which really was the same as Syers', only that the cap was raised by a lever instead of an air valve being actuated by the lever. He thus did exactly what Syer had been afraid to do. Syer then made a waste preventer resembling Ilumpher- son's, who brought an action. Held, that Winn's was not an anticipation of Humpherson's ; that on the true in- 126 ENGLISH PATENT PBACTICE. Chap. III. SECT. 7. Cases of insufficient ingenuity to support the patent. \S}S\5^ terpretatiun of Syer's patent he only claimed a stationary cap and air valve, and hence these two were not an anticipation of Humpherson, who obtained a judgment, which was reversed on appeal, on the ground that the model made by Syer had been published, and that, taking Winn's and Syer's patents together, the plaintiffs pre- sented no sufficient feature of novelty : for it was only to apply Winn's method of lifting to Syer's cap. Oddy v. Smith, 1888, 5 K. P. C. 503.— Patent for holding down leather (on to places to which it was to be cemented) by spiked bars while the cement was drying. Held, no subject-matter. Longbottom v. Shaw, 1888, 5 E. P. C. 497, 6 E. P. C. 143, 8 E. P. C. 333.— Separate hooks fastened to frames or reels had been used for holding fabrics. A patent for making rows of hooks by stamping or casting them in one piece, and then fastening it on, held bad for want of invention. Tichelpenny v. Army and Navy Society, 1888, 5 E. P. C. 405. — Hollow columns were old, and when filled with water had, at least partially, supported a floor on which tanks rested. Held, no invention simply to apply them in the support of fire-proof floors, for the former user would be an infringement of the patent. Fletcher v. Arden, 1888, 5 E. P. C. 46. — A patent was taken out for a contrivance for grilling and boiling over gas flames. The grill was hinged or pivotted so that it could be pushed out of the way when not wanted. The specification had originally claimed a sliding grill, but this was disclaimed. A previous invention had caused the grill to slide out of the way. Held, that the idea of hinging or pivotting the grill instead of making it slide NOVELTY. IT but was not the subject-matter of a patent, as it was the mere substitution of a known mechanical equivalent. Cole v. Saqui, 1888, 5 K. P. C. 489 ; 6 E. P. C. 41.— An upright with a flexible arm was fitted to a stand, and from it was hung a figure whose toes touched a top spinning on a china plate fixed to the stand. When the top was spun the figure was made to dance. It was proved that one Dean had registered a similar machine, in which the top was not freely spun in a plate, rotated in a fixed bearing. Patent held bad. Britain v. Eirsch, 1888, 5 E. P. C. 74, 226. — A top dressed like a dancing doll contained a gyroscope (Fig. 1), which was caused to spin by means of a coiled spring in a separate stand released by a detent (Fig. 2). A coiled spring with a detent in a box had been previously used for spinning tops. Held, no invention to apply it to that particular sort of top. In re Goulard and Gibbs, 1888, 5 E. P. C. 536. — Petition for revocation. Goulard and Gibbs took out a patent, which, as amended, did not claim any special form of instrument, but claimed generally the sending a high-tension alternating current of electricity through the primary circuits of a number of induction coils, each of which had a secondary coil from which a current of different tension was drawn Chap. III. SECT. 7. Cases of insuftiot'int ingenuity to support the patent. 128 ENGLISH PATENT PRACTICE. Chap. III. SECT. 7. Cases of insufficient ingenuity to support the patent. See Fletchi r v. Arden, ante, p. 120. Longbottom v. Slum-, mde, p. 126. for lighting or power. Induction coils were old, and had been used before for electric lip-hting. The patent did not say that the instrument was to be so arranged that the current drawn oft' the secondary coils for use was to be lower than the current supplied to the primary coils ; on the contrary, the arrangement was such that the tension could be raised according to the desire of the consumer. It was known that such coils could be used either to raise or lower the tension of alternating currents, though in general such coils had previously been used to raise it. Held, that the patent could not be supported. (Before this case is quoted, it requires careful attention, because it seems that if the patent had been more carefully restricted, it could have been made to hold.) United Horseshoe Co. v. Swedish Horse Nail Co., 1888, 6 E. P. C. 1. — Substitution of a pivot for a hinge in nail-making machine held bad. Blakey v. Latham, 1889, 6 E. P. C. 29, 184.— Clinkers, i.e., double-pronged nails, had been used in the toes of boots, and plates of iron had also been nailed on. Held, that a patent for pieces of iron cast in one piece with a number of spikes upon them, to be driven on to the soles and heels of boots, displayed no inventive power in spite of evidence of large user. Griffin v. Feaver, 1889, 6 E. P. C. 396.— The plaintiff's patent was for a pre- served meat tin box, which could be opened by putting a lever under the edge of the lid, and raising it (Fig. 1). It had been anticipated by NOVELTY. 129 Fig. 2 in which, however, a subsidiary thin cover was Chap. III. added, to be cut away as soon as the cover was removed. 1 ' The patent was declared bad. kTsuffident Eerrburger v. Squire, 1889, 6 E. P. C. 194. — The mere ingenuity to ... . . . support the alteration in the position of the lever in a piano-string patent. damper is not the subject of a patent. (It is, however, to be noted here, that evidence was given that the very same alteration had been shewn on a previously-published post, p. 158. drawing, so that the patent was bad for anticipation as well as want of invention.) Williams v. Nye, 1890, 7 E. P. C. 62.— Plaintiff patented a sausage-making machine consisting of cutters revolved by a shaft, and on the same prolonged shaft, a series of propeller blades for forcing the minced meat into the skins after the mincing had been finished. Prior to this, a propeller had been combined with the cutters by Gilbert and Nye, and a new form of cutter, of shape like the plaintiff's, had been invented by Donald. Plaintiff had, therefore, only put Donald's cutter on to Gilbert and Nye's machine. Held bad. Morgan and Windover, 1888, 5 E. P. C. 296, 7 E. P. C. 131. — It was proved that prior to the plaintiff's patent the old form of coach had a body suspended from C^springs at front and back, but in order to make the carriage capable of turning, it was necessary to fix at least one of the pairs of wheels, preferably the front one, to a vertical pivot so that the axles could become inclined to one another instead of always remaining parallel. This necessitated the use of a perch or rigid framework whose front end was pivoted to the front axle. The back axle was rigidly fixed to the perch (Fig. 1). This plan was gradually superseded by " elliptic springs " consisting of two elliptic segments fastened together, as K 130 ENGLISH PATENT PRACTICE. Chap. III. SECT. 7. Cases of insufficient ingenuity to support the patent. now in use. But to make the motion more easy, a com- bination of the elliptic spring and the C-spring was used as shewn in Fig. 2. This combination was only fitted to the back axle perhaps because it was not readily seen how to adapt it to the front axle, which could not be rigidly attached to the carriage, but required to turn on a pivot. The plaintiff surmounted this difficulty (which, if it ever existed, was a very imaginary one) by simply Fig. 2. iv use prior TO PLAINTI FFS PATENT. substituting for the front elliptic spring, a combined C and elliptic spring, such as had been used (Fig. 2) for the back of the carriage, and arranged it so that the upper end of it should be attached, not to the body of the coach, as in the case of the back spring, which would have pre- vented the pivoting action, but to the movable part to which the shafts were fastened. The question was whether this exhibited ingenuity : The Court below, and the Court of Appeal, thought it did, but the House of Lords decided that it did not. Elias v. Gravesend Tinplate Co., 1890, 7 E. P. C. 455. — Prior to the plaintiff's patent, one Morewood, had NOVELTY. 131 invented a machine for dipping iron plates in grease to Chap. III. clean them before being tinned. They were removed — L ' from the grease by being lifted up a short way by a ^Scfent cradle till the ends were caught between vertical rollers, ingenuity to ° support tue which raised them up out of the grease. All that the patent. plaintiff did, was to double the length of the tank and of the rollers, so as to work two plates simultaneously. Patent held bad. Leadbeater v. Kitchin, 1890, 7 R. P. C. 235.— A safety guard had been used to protect persons from injury by geared cogwheels in motion. No patent could be granted for the same contrivance for protecting them from belted pully wheels, for this would be merely the analogous use of an old contrivance. Newsum v. Mann, 1890, 7 R. P. C. 307.— A patent which claimed making the parts of a printing machine in one casting, which had previously been made separate, held bad : {Ormson v. Clarice followed.) ante, p. 120. Tucker v. Kaye, 1891, 8 R. P. C. 61.— Door locks had been made with a detent so as when the handle was turned, to catch and hold back the bolt, which remained back till the door was again shut, upon which a pin on the face of the door struck the jamb and released the detent, and the bolt shot home. A patent for a lock containing a bolt held back by a detent which was released by the pressure of the door-jamb against a pin on the edge of the door held bad. Wiriby v. Manchester Steam Tram Co., 1891, 8 R. P. C. 68. — In a patent for switches for tramway crossings, held, that the substitution of a spring for its mechanical equivalent, a weighted lever, was bad. Nuttall v. Hargreaves, 1891, 8 R. P. C. 273.— A tap, which differed from previous ones only by having a K 2 132 ENGLISH PATENT PRACTICE. Chap. III. SECT. 7. Cases of insufficient ingenuity to support the patent. gauze strainer instead of a perforated metal strainer, held bad. Embossed Metal Co. v. Saupe, 1891, 8 K. P. C. 355.— Embossing thick metal sheets between non-elastic dies was known ; also the embossing of thick metal by tools upon pitch ; also by engraved rollers pressing thin plates on indiarubber. Patent for embossing thick plates by stamping them from the reverse side on to a soft india- rubber pad held bad. Fairfax v. Lyons, 1891, 8 R. P. C. 401.— A patent for improvements in moving targets held bad, because the mechanical means, which were complicated and varied were not materially different from similar means em- ployed previously for a similar object. Heyes v. Hallmark, 1891, 9 K. P. C. 27. — A patent for a window-sash weight which only differed in shape from others in previous use held bad. Wilson v. Union Oil Mills Co., 1892, 9 K. P. C. 57.— It is of course well-known that soap is made by mixing fat or oils with alkalis, such as soda to make hard soap, or potash to make soft soap. Cotton-seed oil is used for soap-making. Soap could also be made by adding soda to the fatty substance (called railway grease) which is left after the distillation of cotton-seed oils, but it is dark and has a bad smell. The plaintiff patented the use of chlorine or hypochlorite of soda boiled with it to bleach and deodorize it. Hypochlorite of soda was better than using chlorine gas, as the pure chlorine, not in the form of hypochlorite of soda, was apt to injure the fatty matter. But it was proved that hypochlorite of soda had been used before for bleaching other sorts of soap, and chlorine water had been used to bleach cotton-seed soap. The patent was therefore held to have been anticipated. NOVELTY. 133 592, 9 R. P. C. 441.— A joint had previously been used for hot-water coils. Held, no inven- Baher v. Kinnell, 1892, 9 R. P. C. 441.— A joint had Chap. hi. SECT. 7. tion to apply it to boiler tubes in which the heat was in ^ffi c ient applied outside the tube ; that this was an application JJJJJ™^ of an old thing to a merely analogous purpose. patent. Nicoll v. Swears, 1893, 10 R. P. C. 240.— The plaintiff's patent was for a riding skirt for ladies with a burstable seam on the left side, a, b, continued right up to, and including the waist. If the lady fell, and her skirt caught in the pommel, the seam burst, and she fell clear of the skirt which was left on the saddle. Prior to this, Busvine had patented a burstable riding habit, with a large hole in it on the right hand side into which the pommel of the saddle projected. This would of course be certain to catch, in case of a fall. To pre- vent it, a slit was made downwards from the hole to the bottom of the skirt, and laced up with elastic which tore away in case of a fall, so that the skirt remained on the wearer. It was held that, having regard to the fact that burstable seams were old, the plaintiff's invention dis- played no novelty. 8. Want of ingenuity in part of the subject matter of a patent will render the patent void.— This depends on the principle that part failure in the consideration recited in a Crown grant, renders the whole grant bad See Chap. I., sect. 8. ante, p. 60. ( 134 ) CHAPTEE IV. THE EFFECT OF COMMEKCIAL SUCCESS UPON A PATENT. Chap. IV. j General Remarks. — In supporting a patent, it is of the utmost importance to try and shew that the subject of it was a commercial success, and that all similar in- ventions which have preceded it were failures. For Compare ante, commercial success goes far to prove utility by the best of all possible methods, namely, by actual use ; it also is evidence of ingenuity, for if the thing was obvious, it would probably have been invented before ; and it is also evidence of novelty, for its success when tried is evidence that if it had been known before it would have been put in practice. Hence, no form of argument in support of a patent is more effective than to shew that the invention was one which all the world had been looking for, and trying to get, that attempts had been made before but had failed ; then came the patentee, who shewed how to do it, and made an immediate commercial success. 2. The effect of Commercial Success of an inven- tion as evidence of its utility. — The effect of com- mercial success as evidence of utility is very con- siderable, specially when contrasted with the failure of previous efforts to attain a result : see the judgment of Bowen, L.J., in The American Braided Wire Co. v. TJiomson, 1888, 5 R P. C. 125— patent for bustles. With regard to COMMERCIAL SUCCESS. 135 this case, Kekewich, J., said: " I conceive the following Chap. iv. proposition to be established by that case, and by other 1 * cases in which similar questions have been discussed. If, commr!. lili ' within a short time of the manufacture and sale, an success of an invention as article of commerce commands a ready and extensive evidence of sale, that fact, which is proof of utility, must also be accepted as evidence, not conclusive, but cogent, of novelty " : Ehrlich v. Ihlee, 1888, 5 li. P. C. 205. " When a man proves that in the course of I think rather less than two, or about two, years, he has sold 5,448 dozens of this new toy (dancing dolls). . . I think that is strong evidence of utility, and conclusive until it is contradicted " (Kekewich, J.) : Cole v. Saqui, 1888, 5 R. P. C. 495 ; see also Deutsche Ndhmachinen Fabrik v. Pfctff, 1890, 7 R. P. C. 16, 251. On the other hand, mere want of com- mercial success is not conclusive against the utility of an invention, "for possibly it might at once have been superseded by simpler constructions, involving the same principle " (jper Lord Maclaren) : United Telephone Co* v. Maclean, 1882, Engineering newspaper quoted with approval in United Telephone Co. v. Bassano, 1886, 3 R. P. C. 313, and followed in Edison v. Holland, 1889, 6 R. P. C. 283 ; and see Otto v. Linford, 1881, 46 L. T. (N.S.) 41; or again, the state of the arts and sciences might explain the non-user of the invention in spite of its utility : Goulard v. Gills' Patent, 1888, 5 R. P. C. 530. In truth, utility has really two meanings, and it is often difficult to see which of them is being used. There is ante, p. G5. utility in the sense that a machine will work well and efficiently, and there is utility in the sense that it is useful to and desired by the public. The latter must always be proof of the former, but it may well be that a most excellent machine which works well, may not, for 136 ENGLISH PATENT PRACTICE. Chap. IV. 7 SECT. 2. The effect of commercial success of an invention as evidence of its utility. ante, p. G7. post, p. 337. some reason, be appreciated. The cases shew that it is the good working of the machine that is necessary to constitute utility, and that commercial success is only relevant as evidence of this. It is, therefore, not needful that a patent should be commercially useful at the exact time it was patented, for " a process whicn a one time could not be worked at a profit on account of the expense of the materials employed, may shortly afterwards be so worked by reason of a diminution in the cost of those materials. Is the person who patents such a process to be deprived of all benefit of his invention when it becomes a com- mercial success, because at the time of the patent it could not be worked at a profit ? " {per Lord Herschell) : Badische Anilin und Soda Fdbrik v. Levinstein, 1887, 4 R. P. C. 466, 12 App. Cas. 719, followed in Siddell v. Vichers, 1888, 5 R. P. C. 96 ; Otto v. Linford, 1882, 46 L. T. (N.S.) 41. (Simpson v. Holliday, 20 Newton's Loud. Journal (N.S.) 107, 120, must therefore, on this point, be considered as disapproved.) Under the heading Extension of Patents, Chap. XXV., sect. 13, many instances will be found in which the Privy Council allowed the apparent want of utility of an inven- tion arising from its non-user, to be explained by such circumstances as public prejudice, strikes, want of money, and other similar difficulties. 3. Commercial success is also evidence of Novelty, that is to say, of absence of Anticipation, but is not so strong evidence of novelty as it is of utility : Ehrlich v. Ihlee, 1888, 5 R. P. C. 205. 4. Commercial success is also evidence of ingen- uity.—" It is true that where there has been for some COMMERCIAL SUCCESS. 137 time a long unsatisfied demand, and then suddenly an Chap. IV. article springs into existence and satisfies it, the length — 1 ' of time during which the demand has remained uncom- ^"sf ^i s0 plied with, is matter from which it may be inferred that evidence of i * . lDgenuity. it is ingenuity alone which has enabled the inventor to surmount the obstacle that otherwise would seem, from the mere existence of the long unsatisfied demand, to have existed somewhere in some shape. But it may be that the demand is quite new, and that the novelty of the demand has produced immediately, and without any operation of ingenuity, an obvious article to satisfy it " doer Bowen, L.J.) : Gosnell v. Bishop, 1888, 5 R. P. C. 158. In Edison v. Holland, 1889, 6 E. P. C. 283, Lindley, L.J., remarks : " If Swan's lamp had been a commercial success instead of a failure, it would, in my opinion, have been an anticipation of the plaintiff's patent " : see also Otto v. Linford, 1882, 46 L. T. (N.S.), p. 41. ( 138 ) CHAPTER V. ANTICIPATION. Chap. V. i. A patent will be bad, if prior public knowledge of L ' the invention can be shewn. — For the consideration of a patent is, the introduction of some new art or manu- facture. " If the public once becomes possessed of an invention, by any means whatever, no subsequent patent for it can be granted either to the first and true inventor himself, or to any other person ; for the public cannot be deprived of the right to use the invention, and the patentee could not give any consideration to the public for the grant, the public already possessing everything that he could give " : Hindmarch ; cited with approval by Lord Blackburn in Patterson v. Gas Light & Coke Co., 1877, L. E. 3 App. Cas. 239, 47 L. J. Ch. 402, and again by Bowen, L.J., in Humpherson v. Syer, 1857, 4 R. P. C. 414. There are three different ways by which an inven- tion may become so public as not to be the subject of a patent, viz., (1) by prior public knowledge ; (2) by prior user ; or, (3) by prior publication. All the inventions which are commonly found in books, encyclopaedias and dictionaries, are part of the common heritage of knowledge, and in a patent case it is not necessary in shewing that those inventions are old to specify peculiar instances. For example, if a plaintiff sued on a patent for a lever, or screw, it would not be AN TIC IP A TION. 139 needful to rely on particular anticipations, general Chap. V. SFPT 1 evidence of prior knowledge would be sufficient. Nor, of — 1 * course, need such knowledge be general. It is enough b e ^j f m11 that knowledge should be shewn on the part of those prior public ° .... knowledge who usually practice the trade to which the invention oftheinven- relates. Thus, in Plimpton v. Malcolmson, L. K. 3 Ch. D. ghewn. 556, Jessel, M.E., said: "When you say a thing is known to the public, and part of common knowledge, of course you do not mean that every member of the public knows it. That would be absurd. What is meant is, that if it is a manufacture connected with a particular trade, the people in the trade shall know something about it; if it is a thing connected with a chemical invention, people conversant with chemistry shall know something about it. And it need not go so far as that. If a sufficient number know it, or if the communication is such that a sufficient number may be presumed or assumed to know it, that will do. Now how are they to know it ? They are to know it by being told of it, or informed of it in some way. You may shew that they know it by shewing that the trade had commonly used it. That is the best evidence you can have. You may shew the thing was known because it was used and brought into practice. . . . But you may shew that they knew it in another way, that it was published, or made known to the public." The general law was laid down at length by Tindal, C.J., in Cornish v. Keene, 1835, 1 W. P. C. 508, and it is to be noted that in questions of prior public knowledge there is great difference between the practical public knowledge of manufacturers and the knowledge of learned persons in their studies. The latter will always have a far weaker effect on the validity of a patent than 140 ENGLISH PATENT PRACTICE. Chap. V. SECT. 1. A patent will be bad, if prior public knowledge of tbe inven- tion can be shewn. the former: Gibson v. Brand, 1841, 1 W. P. C. 628; Betts v. Menzies, 10 H. L. C. 117 ; Shaiv v. Jones, 1889, 6 K. P. C. 336 ; Hills v. Evans, 4 De G. F. & J. 288 ; Edison v. Holland, 1889, 6 K. P. C. 277 ; see further on this point, Prior Publication by Documents in General Chap. V., sect. 9 (post, p. 151). 2. Prior public user. — There is a second sort of prior publicity of an invention which will render a patent invalid, arising from prior user. Where such prior user is so general that the invention is commonly known, then it may be said to be part of the common stock of public knowledge, and comes within the cases discussed in the preceding chapter. But where the prior user is not such as indicates a common public knowledge, but has been confined to certain persons and places, several questions arise of some intricacy. For the prior user may be by the patentee, or by others ; and again it may be secret or in public ; and again it may be experimental or for manufacturing purposes. It is believed that all possible cases may be brought under one or other of the three following groups which will be treated in order. (1.) Where prior public user is shewn of such a character as fully to reveal to the public the nature oi the invention, the patent is void, whether such user be by the patentee cr any one else. (2.) Merely private and experimental user by the pa- tentee or by others, will not avoid a subsequent patent. (3.) Where the prior user is of such a character thai though the results of the invention are made public, the art by which those results are obtained is not revealed, then it will depend whether the prior user has been by ANTICIPATION. 141 the patentee or by " others." If by the patentee, he can Chap. v. still have a valid patent. If the user has been by " others," ' — _ ' the conditions of the Statute of Monopolies will have ^ P ublic been broken, for the invention will not be one which " others " at the time of granting the letters patent did not use. By public user is not meant user bxj the public, but user in public : Croysdale v. Fisher, 1884, 1 R. P. C. 17 ; Elias v. Gravesend Tin-plate Co., 1890, 7 E. P. C. 4G6. Thus, in Carpenter v. Smith, 1842, 1 W. P. C. 539, 9 M. & W. 300, a lock having been for some years on a gate in a public place, a subsequent patent for it was invalidated. And where pavement had been laid in a covered portico of a private house, the user was still con- sidered sufficiently public to avoid a patent for similar pavement : Stead v. Williams, 1844, 2 W. P. C. 136 ; Stead v. Anderson, 1846, 2 W. P. C. 149. In Adamsons Patent, 1856, 6 De G-. M. & G. 420, 25 L. J. Ch. 456, an inven- tion for machinery which had been used for building a pier in a place to which the public had access, was held not patentable. One, Jackson, having publicly ridden a bicycle, called by the neighbours, " Jackson's threshing machine," was held to have anticipated by public user a patent for a similar machine : Brereton v. Richardson, 1884, 1 R. P. C. 163 ; see also Lifeboat Co. v. Chambers, 1891, 8 R. P. C. 418. Where five firms used an invention for making steel by means of carburet of manganese, held, a public user: Heath v. Smith, Heath v. Umvin, 1854, 2 W. P. C. 268. See also Westley Richards v. Perhes, 1893, 10 R. P. C. 193. In Podmore v. Wright, 1888, 5 R. P. C. 380 (Umbrella- top Notches) ; Badham v. Bird, 1888, 5 R. P. C. 238 142 ENGLISH PATENT PRACTICE. Chap. V. SECT. 2. Prior public user. (Sewer Manholes) ; Cheetliam v. Oldham, 1890, 7 R. P. C. 116 ; Lister v. Norton, 1886, 3 E. P. C. 210, prior public user was established. These cases do not contain any- express enunciation of the principles, but are examples of the kind of evidence necessary to establish prior user. But though prior public user will invalidate a patent for an invention, the mere public use of articles made according to the invention, but whose nature is not such that by looking at them an expert could tell how they were made, will not of itself invalidate a subsequent patent. Thus, in Hancock v. Somervell, 1851, 39 Newton's London Journal, 158, the patent was for vulcanising india-rubber goods by means of sulphur. The prior user which the defendant endeavoured to establish was the public sale in England of some goloshes made with sulphur in America. It was urged, and evidence was given that by the appearance of the articles and their smell an expert could tell that the india-rubber composing the goloshes had been made with sulphur. Williams, J., .directed the jury that if they thought so, they should find for the defendant, but that if they thought not, then they should find for the plaintiff. This direction seems plainly in accordance with the principles of the Statute of Monopolies which was passed {inter alia) for the encouragement of those who should discover the secrets of the modes of manu- facturing articles abroad, and reveal them to their own countrymen. 3. Prior private user of an experimental char- acter will not invalidate a patent. — It is quite clear that prior user of an experimental character, and which has never been made public, will not invalidate a patent, ANTICIPATION. 143 whether such user be by the patentee, or by others. Chap. v. Thus, where Dr. Hall discovered the achromatic tele- 1 " scope, but kept his experiments secret, a patent after- „j^Jf "n wards granted to Dollond was upheld (1776) cited 1 experimental . character will W. P. C. 43 ; and prior secret user by the patentee not invalidate himself was held not to invalidate : Bentley v. Fleming, a pa 1844, 1 C. & R. 587, 1 C. B. 479 ; Betts v. Menzies, 1857, See also sect. 8E.&B. 937, 1 E. & E. 990. On the other hand, prior IZXttmb- public user by the patentee himself would invalidate his s ^l uent ah ™ 1 - x J x donment of patent, whether such user were experimental or not. the invention. Morgan v. Seaward, 1837, 2 M. & W. 559, 1 W. P. C. 194. In Neivall v. Elliot, 1858, 4 C. B. (N.S.) 269, 27 L. J. C. P. 337, the experimental user of a submarine cable-laying machinery did not vitiate the patent, and the fact that the patentee had received benefit made no difference. But the Court laid stress on the fact that it had only been done once, and not repeatedly. In The Useful Patents Co. v. Bylands, 1885, 2 R. P. C. 254, where even 600 dozens of bottles, together with the tools with which they were made, were sent to an aerated water company for trial, it was still held that this was experimental. In Morgan v. Seaward, 1837, 2 M. & W. 544, 1 W. P. C. 187, a number of wheels were made in confidence and exported ; this was held no prior public user. All these cases seem to turn on the meaning of the word " use " in the Statute of Monopolies, which means not " experimentally use," but " use for a regular trade purpose " : see the preceding section. Jessel, M.R., seems to have thought that the intention to take out a patent was essential to prevent experi- mental user, even in secret, from establishing prior user. In the House of Lords, Lord Blackburn thought that the 144 ENGLISH PATENT PRACTICE. Chap. V. SECT. 3. Prior private user of an experimental character will not invalidate a patent. intention might be presumed from the fact of the user being experimental : Saxby v. Gloucester Waggon Co., 1883, Griff. App. 57 ; see also re Adamsons Patent, 1856, 25 L. J. Ch. 457, and as to secrecy, see Humpherson v. Syer, 1887, 4 B. P. C. 414. It is not merely the article made which must be shewn to have been anticipated by user, but the invention. Thus, in Poupard v. Fardell, 1869, 18 W. K. 59, 127, 21 L. T. (N.S.) 696, where the tail-piece of a skid for wheels had been previously lengthened for the purpose of hanging it up, it was held that a patent might be had for lengthening the skid for making it more effective in skidding. 4. Prior user of the invention by the patentee or others within the realm of such a character, that the results of it are made public, but not the means whereby they are brought about. — It is quite clear that where the mere inspection of the articles reveals the invention, prior public user of them will avoid a pub- sequent patent. Thus, where the defendants proved that tea-pots, similar to those patented, had been previously sold by others, the plaintiff was defeated. Hollins v. Capper, 1888, 5 E. P. C. 289. See also, Guilbert-Martin v. Kerr, 1886, 4 E. P. C. 18, where the sale of steam gauge glasses similar to those patented, invalidated a patent. See also Honiball v. Bloomer, 1854, 2 W. P. C. 199. Nor is it needful that the article should be sold. If it is placed in some public position where it can be seen, and the nature of the invention understood by inspection, here also the patent will be defeated. Life Boat Co. v. Chambers, 1891, 8 E. P. C. 418 ; Mullins v. Hart, 1852, 3 C. & K. 297. ANTICIPATION. 145 Again, where a patentee uses his invention in his Chap. V. own works without concealment, and publicly sells the _' proceeds, there is little doubt that this would be ^J^^eveala considered a prior user, even although it would not be t ho results ^ ' -ii- but not the possible from the look of the article to tell how it was invention. made. Thus, in Wood v. Zimmer, 1815, 1 W. P. C. 82, the patentee made paint in his own factory, but appar- ently took no particular means to keep it secret, and sold the proceeds. It was held (inter alia) to invalidate his patent, though no one on looking at the paint could tell how it was made. And again, in The Germ Milling Co. v. Robinson, 1886, 3 E. P. C. 259, where the patentee had, prior to his patent, made the article in his own mills and sold it, this was held to invalidate his patent. On the other hand, where the only publicity that a patentee gives to his invention is to sell the results of it, and at the same time instead of using the invention regularly and openly in his factory, conceals his opera- tions in order that his method may not become known, it seems more consonant with reason that he should afterwards be able to take out a valid patent. It is true there are some dicta contrary to this view. Thus, in Morgan v. Seaward, 1836, 1 W. P. C. 195, Heath, J., says : " If an inventor could sell his invention, keeping the secret to himself, and when it was likely to be discovered by another, take out a patent for it, he might have practically a monopoly for a much longer period than fourteen years." But in truth a monopoly consists of a right to prevent the competition of others, and this he would not have except for fourteen years. Again, in Heath v. Smith, 1854, 2 W. P. C. 278, Erie, J., expresses a doubt upon the point, but it seems very L 146 ENGLISH PATENT PRACTICE. Chap. V. difficult to reconcile the cases of Hills v. London Gas 6ECTV4. U g ht Cq ^ 186Qj 5 H & N> 336) with thig yiew< whk'lweveals An(1 if tlie P ri ° r SE ^ e in En g lan(i ° f goloshes the results made by others in America by a process which is but not the , 17 ,., ij.i invention. not published, would not invalidate a patent, by tne same reasoning the sale of goloshes made in England by the patentee, by a secret process ought not to invali- date it : Hancock v. Somervell, 1851, 39 Newton's Lond. Journal 158. Lastly, let us suppose a case of a prior secret user of the invention in Great Britain by others than the patentee, and of a public sale by them of the proceeds, but that the character of the articles sold is such that the nature of the invention by which they were made could not be ascertained by inspection. Here clearly is no publication of the invention. The only questions are (1.) whether the invention can be said to be one which "others at the time of making such letters patent and grant shall not use," or (2.) whether in such cir- cumstances the patentee can be said to be the true and first inventor ? As to the second point there does not appear to be much difficulty. If the prior secret use by others without sale of the products would not prevent the patentee from being the true and first inventor, it is hard to see why a sale in circumstances which did not reveal the invention could make him the less the true first inventor. The first point is, however, more difficult. For by the use of the word others the statute expressly seems to differentiate prior user by " others," from prior user by the patentee. It is submitted that it is clear that such prior user by others in the circumstances above named would vitiate the patent. To see this we have only to consider the state of the arts and manufactures in ANTICIPATION. 147 England at the time of the Statute of Monopolies. For Chap. V. SECT 4« in those days, in consequence of the want of books, and L' difficulty of locomotion, almost every trade was a ^"^"reveals mystery, and it was quite in accordance with popular the results J J ** r r but not the notions that it ought to be so, and very many trades inveutiuu. were only carried on by a single manufacturer. Hence if it had been held that any third person might have a patent for any mystery that was at that time only practised by one or two people, a large number of the trades then in existence might have been stopped. Moreover, in the early days of t patents and until the reign of Queen Anne, publication of the invention was not needed at all as a condition of its grant. See, e.g., The Smalt Patents, 1606, 1 W. P. 0. 9, and Bailey v. Roberton, 3 App. Cas. 1074. But before this, the mere introduction even of a secret trade or mystery was considered to deserve a patent for a limited time {ManselVs patent, 1624, 1 W. P. C. 19), and hence to grant a patent to a man which would give him a monopoly of a mystery already practised by others, and that, too, with no condition that he should publish it, would have been plainly against the spirit of the Act. It was, of course, quite a different matter to give him a monopoly, for a limited time, of an art which he had him- self invented or brought from abroad, and which others did not use, even though he might have invented it some time previously. For that would clearly be for the encourage- ment of trade, and would not injure any one else. Accordingly, in Tennant's Case, 1798, 1 W. P. C. 125, it was held that prior secret user of a process of bleaching by others than the patentee, vitiated the patent. See also Hill v. Thompson, 1818, 1 W. P. C. 240 ; Cornish v. Keene, 1835, 1 W. P. C. 511. Again, in Cheetham v. l 2 148 ENGLISH PATENT PRACTICE. Crap. V. SECT. 4. Prior user which reveals the results but not the invention. Oldham, 1890, 7 K. P. C, at p. 124, the patentee had invented a peculiar method of veneering felt hats, with a layer of finer wool. But it was proved that hats had been previously made and sold by persons other than the patentee, and the appearance of which was not necessarily an indication how they were made. This was held to invalidate the patent. 5. Prior user by sale, or offering for sale. — It is not necessary in proving prior user to prove that the article had been made for sale, but of course proof of sale in Great Britain even of an article made abroad, where the nature of the invention could be seen by inspecting the article, will avoid a subsequent patent : Jensen v. Smith, 1885, 2 E. P. C. 249 ; Eoniball v. Bloomer, 1854, 2 W. P. C. 199 (new form of lubricating apparatus). And so will proof of an article having been made publicly in England for exportation : Carpenter v. Smith, 1841, 1 W. P. C. 536. The mere offering of the article for sale, if done publicly, is sufficient to invalidate a subsequent patent : Hancock v. Somervill, 1851, 39 Newton's Lond. Journal, 158 ; Oxley v. Holden, 1860, 8 C. B. (N.S.) 666 ; Mullins v. Hart, 1852, 3 C. & K. 297. 6. The user necessary to invalidate a patent, must be in the United Kingdom. — Brown v. Annandale, 1842, 1 W. P. C. 433, 8 CI. & F. 437; Boebuck v. Sterling, 1774, 1 W. P. C. 45,451 n., where a distinction was endeavoured to be drawn between England and Scotland. But user in a Crown Colony would not avoid an English patent: Bolls v. Isaacs, 1878, 19 Ch. D. 268. ANTICIPATION. 149 7. Public user at public exhibitions held either in Chap. v. or out of the kingdom, certified as such by the Board of 1 " Trade, does not invalidate a patent, nor does its publica- tion during the holding of the exhibition, nor its use elsewhere without the privity of the inventor. But an exhibitor, before exhibiting the article, must give seven days' notice that he intends to apply for a patent, and must do so within six months of the opening of the exhibition : Patents Act, 1883, s. 39 ; Patents Act, 1886, s. 3 ; Patent post, pp. 457, 477 Rules, 1890, 15, Form 0, and Schedule of Fees ; see also the International Convention of Paris, March 20, 1883, post, pp. 485, 527 between Belgium, Brazil, Spain, France, Guatemala, Italy, the Netherlands, Portugal, Salvador, Servia, and Switzerland : Article XL In addition to this, special post, p. 558. enactments are often passed to encourage exhibitors. Thus, the U.S. Congress passed a law that at the Chicago Exhibition no exhibitor of any other country should be held to have infringed a U.S. patent by reason of anything done at the exhibition : see Patent Journal, May 4, 1892, p. 1. As a rule there is a growing feeling among manufacturers against exhibiting at exhibitions other things than merely their finished goods. It is most dangerous for inventors to exhibit incomplete inventions, and of late years medals of bronze, silver, and gold (which in some cases the winners have been requested to pay for), have been showered with such profusion as to render these honours (even if they are worth attaining at all), certainly not worth the risk of causing an invention to be improved upon by a rival patentee. 8. The effect of a prior invention which has been abandoned, upon subsequent patents for the same invention. — Evidence of prior public user, or prior 150 ENGLISH PATENT PRACTICE. Chap. V SECT. 8. The effect of a prior inven- tion which has been aban- doned, upon subsequent patents for the same invention. publication, is often met, by shewing that the invention was after a short time abandoned. This fact, however, standing alone would not be sufficient to rebut clear evidence of prior publication or user ; it would only be evidence that the prior invention was imperfect, or else different from that which was made the subject of a posterior useful and successful patent. " Suppose an invention executed, not merely in the progress of inven- tion, but an invention completed ; then it is one of the greatest errors that can be committed in point of law to say, with respect to such an invention as that, it signifies one rush whether it was completely abandoned or whether it continued to be used down to the very date of the patent " ( per Lord Brougham) : Househill Co. v. Neilson, 1843, 1 W. P. C. 713, approved ; Morgan v. Windover, 1888, 5 K. P. C. 306 ; and in King, Brown & Co. v. Anglo- American Brush Co., 1889, 6 E. P. C. 424. At the same time, however, the fact of the abandonment of an inven- tion, even after it has been publicly used, is strong evidence that it was not completed or perfected, and thus has not really anticipated the subsequent patent : Househill Co. v. Neilson, supra, at p. 692, and see Lewis v. Marling, 1829, 1 W. P. C.492 n. ; Minter Y.Mower, 1835, 1 W. P. C. 139 ; Morgan v. Seaward, 1836, 1 W. P. C. 186; Jones v. Pearce, 1832, 1 C. P. C. 529, 1 W. P. 0. 122 ; Galloway v. Bleaden, 1839, 1 W. P. C. 525 ; Bovillv. Goodier, 1866, Griff. App. 48. "I am not aware of any principle or authority upon which the exhibition of a useless machine which turns out a failure can be held to affect the right of a patentee who has made a success- ful machine, though there may be a degree of similarity between some of the details of the two machines " (per James, L.J.) : Murray v. Clayton, 1872, L. R. 7 Ch. 581, ANTICIPATION. 151 20 W. R. 650. See also Lyon v. Goddard, 1893, 10 E. Chap. v. SECT. 8. P. C. 121. The principles upon which the abandonment of an aprioMnven- unsuccessful invention is considered as evidence of its tionwhichhaa been aban- difiference from a subsequent successful one, resemble doned, upon closely those in accordance with which commercial patents for success is considered evidence of novelty and utility : }]^j|f t ™° See Chap. IV. ante, p. 134. A worthless or abandoned patent may likewise be an anticipation of a subsequent invention if it describes such invention in terms which fully and sufficiently disclose it, and the manner in which it is to be practised (semble) : Kaye v. Chubb, 1888, 5 K. P. C. 648. 9. Prior publication by documents in general, and sufficiency of description in the anticipating document. — Prior publication of an invention in a book, newspaper, or other document will invalidate a patent by reason of the public knowledge thereby afforded, subject, however, to two principles : first, that the prior informa- tion must be clear, practical, such as an ordinary intelli- gent workman accustomed to the trade could understand, and not merely contained in a theoretic form in some scientific treatise, nor requiring further experiment or ingenuity to discover it. And secondly, though the information may be contained in more than one docu- ment, it must not, in order to be an anticipation, require experiment or invention, or even extended labour, to piece the information together. The general principles applicable to the question of prior publication are laid down in Ilill v. Evans, 1862, 31 L. J. Ch. 463, 8 Jur. (N.S.) 529 : " The information given by the prior publication must, for the purposes of 152 ENGLISH PATENT PRACTICE. Chap. V. SECT. 9. Prior publi- cation by- documents in general, and sufficiency of description in the antici- pating docu- ment. Compare the Plimpton Skate patents, pod, p. 395. practical utility, be equal to that given in the subsequent patent ; whatever is essential to the invention must be read out of the prior publication. ... To carry me to the place at which I wish to arrive is very different from merely putting me on the road that leads to it " (per Westbury, L.O.). In Neilson v. Betts, 1871, 40 L. J. Ch. 326, Lord Westbury repeated and confirmed what he had said here, which was read with approval in Bray v. Gardner, 1887, 4 E. P. C. 405. In this case the patent was for a hook for securing boot-laces, made by milling and boring from a solid wire. It consisted of a head, b 2 , a neck, e, a shoulder, e, and a tube, a, which was inserted into a hole in the leather and swedged out like an eye- let. The same patentee had patented the invention in America, and the Official Gazette contained the drawing of it, with this description : " A stud or hook for lacing boots and shoes, and other purposes, having a tubular sank or body, a, closed at one end and provided with a shoulder, discs h 1 and b 2 , and an eccentric neck, e, all made from a single solid piece of wire substantially as and for the purpose described." Keke- wich, J., held that this drawing and description were insufficient to enable a workman to make the hook, and hence were no anticipation of the plaintiff's patent. This case goes far : see also Easlam v. Hall, 1888, 5 E. P. C. 19. The same principles are also laid down by Grove, J., in Phiipot v. Banbury, 1885, 2 E. P. C. 43, who expressed an opinion that the degree of accuracy requisite to make an anticipation need not be so great as that required to make a specification good : see also as to this last point Kaye v. Chubb, 1887, 4 E. P. C. 23, 289, 5 E. P.O. 641. ANTIOIPA TION. 1 53 Anticipation by a prior publication deprives a patentee Chap. V. of being the "first and true inventor," even if he got the !_" information from his own wits, and quite independently Pri . or P ubu " of the publication : Stead v. Williams, 1844, 2 W. P. C. documents in i • i • general, and 142 ; though in the same case, and in accordance with sufficiency of the principles laid down above, sect. 1, Tindal, C. J., th^a^ci" ™ remarked that a copy of a work brought from a deposi- P atm s docu- tory where it had " long lain in a state of obscurity " would, as an anticipation, stand on a different footing from an Encyclopaedia. " Publications . . . must be regarded as of two classes, those addressed to the scientific world, and those addressed to working or practical men. . . . There is the scientific literature, and there is the technical litera- ture . . . publications having reference to chemical science and intelligibly expressed will always be en- quired after, and studied in the laboratories by scientific chemists . . . but generally it is not the fact that such publications are sought after by practical working chemists, whose labours for the most part commence after the useful purpose has been ascertained" (per Bagallay, L.J.) : Badisclie Anilin und Soda Fabrik v. Levinstein, 1885, 29 Ch. D. 385. One Dobbs had patented in 1804 the coating of lead with tin by rolling them together when clean. He did not specify the thickness of the plates. Betts in 1859 patented casting lead plates about f -inch thick and tin plates from ^th to -j^th thick. The lead plates were then separately rolled to about ^-inch thick and the tin to about ^th of the thickness of the lead. Then both lead and tin were rolled together till they adhered and were quite thin, and fit to be made into capsules for wine bottles. Held, by the House of Lords, that Betts' patent 154 ENGLISH PATENT PRACTICE. Chap. V. SECT. 9. Prior publi- cation by documents in general, and sufficiency of description in the antici- pating docu- ment. post, p. 294. was good in the absence of expert evidence to shew that Dobb's patent was really an anticipation of it : Bttts v. Menzies, 1861, 31 L. J. Q. B. 233. The patent was then tried again in the Chancery Divi- sion : Betts v. Neilson, 1865, 34 L. J. Ch. 537. At this trial expert evidence was given that Dobbs' patent would work, and was really the same as Betts'. The Vice-Chan- cellor rejected the evidence on account of the House of Lords' decision in Betts v. Menzies. On appeal (37 L. J. Ch. 321), the Chancellor thought the evidence relevant, but insufficient. The case was then carried to the House of Lords, when the patent was confirmed, on the ground that the evidence was insufficient. It was, however, explained that the decision in Betts v. Menzies did not mean that Dobbs' patent clearly could not be an antici- pation of Betts', but only that it required evidence to shew it to be so : see also Betts v. Be Vitre, 1864, 11 L. T. (N.S.) 445, 533. The principles laid down in Betts v. Neilson were followed by Jessel, M.R., in Plimpton v. Malcolmson, 1876, L. E. 3 Ch. D. 568. In Ehrlich v. Bdee, 1888, Cotton, L. J., said : " We know what is necessary if there is said to be anticipation, not by the existence of an actual thing, but by description either in a specification or otherwise, that the description must be sufficient to enable anyone competent to make the machine for which protection is claimed by the patentee, and to make it from the description given " : 5 K. P. C. 450 referred to with approval in Winby v. Manchester Steam Tram Co., 1889, 6 B. P. C. 363. " The mention in a book does not signify unless it is in such a way that anybody could easily make it and use it " (per Lord Brougham) : Wood- croft's Patent, 1846, 2 W. P. C. 23. " If it requires this mosaic of extracts from annuals and treatises spread over ANTICIPATION. 155 a series of years to prove the defendant's contention, that Chap. v. contention stands self-condemned . . . his diligent study — 1 ' of such works would as much entitle (the patentee) to ^t\on P by U " the character of an inventor, as the diligent study of the documents in general, and works of nature would do " {per James, L.J.) : Von sufficiency of Heyden v. Newstadt, 1880, 50 L. J. (N.S.) Ch. 128 ; Kfi* * quoted with approval in Moseley v. Victoria Rubber Co., P atl "S docu * 1887, 4 K. P. C. 252. A patent for a dressmaker's measuring-machine was held to have been anticipated by two prior specifications taken together, or probably even taken separately. " If the previous specification," says Grove, J., " reasonably discloses what the invention is, so that a person skilled in the trade can practise the invention from it, then I am of opinion that there is anticipation " : Philpot v. Hanbury, 1885, 2 E. P. C. 43 ; see also Otto v. Linford, 1882, 46 L. T. (N.S.) at p. 44 ; Betts v. Be Vitre, 1864, 11 L. T. (N.S.) 445, which decided that the fact that all the world had been desiring the invention, but that it had not been made, was strong evidence that the prior description had not been suffi- cient to amount to an anticipation. It is not needful that the prior publication should have been put in prac- tice, provided that it properly discloses the invention : Thomson v. Macdonald, 1891, 8 E. P. C. 8. 10. Prior publication by a provisional specifica- tion. — The mere filing in the Patent Office of a provi- sional specification is no publication of the invention, for under the Patents Act, 1885, s. 4, provisional specifications post, p. 476. are not published or printed unless the patent is proceeded with. Nor is the filing of the provisional specification a dedication of the invention to the public: Oxley v. flbfcfen,1860,8 C". B. (N.S.) 666, 30 L. J.C. P.68; followed 156 ENGLISH PATENT PRACTICE. Chap. V. SECT. 10. Prior publi- cation by a provisional specification. in Lister v. Norton, 1884, 3 R P. C. 199. In Stoner v. Todd, 1876, L. R 4 Ch. D. 58, Jessel, M.R, said : " A provi- sional specification was never intended to be more than a mode of protecting an invention until the time for filing the final specification. It was not intended to contain a complete description of the thing so as to enable any workman to make it." He was therefore of opinion that in general, even in the days when abandoned provisional specifications were published, mere publication in a pro- visional specification would not be an anticipation, unless it was so complete and perfect as to enable the article to be actually made. In Lister v. Norton, 1884, 3 E. P. C. 199, it was further held that user by a patentee under a provisional specification was not such user as would amount to an anticipation of a subsequent patent to him for the invention. It appears, therefore, that a patentee might take out a series of provisional protections and successively abandon them, without any prejudice to his invention, while he was completing it, provided he worked it secretly. Of course this would not protect him against the danger of the publication of his invention by another person; but if that occurred, he could then at once complete the last of his provisional specifications and thus save his patent. He would, of course, also be exposed to the danger that some rival inventor, working on the same lines (and who had sent in a jnovisional specification prior to his own last provisional), might incorporate the invention in a final specification. 11. Prior publication by a complete specifica- tion. — This was discussed at some length in Betts v. Menzies, 1862, 10 H. L. C. 117. AN TIC IP A TION. 157 A final specification stands on the same footing as any chap. v. other document. In Betts v. Neilson, 1868, L. E. 3 Ch. D. SECT - n - 429, 37 L. J. Ch. 321, it is pointed out that a prior Prior publi- cation by a specification may well avoid a subsequent patent, although complete such prior specification is itself bad for want of sufficient 81>eci description. The point is further explained by Jessel, M.E., in Plimpton v. Malcolmson, 1876, L. B. 3 Ch. D. 567. In Otto v. Linford, 1881, 46 L. T. (N.S.) 35, Brett, L.J., said that the question to be considered was whether the prior specification fairly read by a person conversant with such matters would give a reasonably clear descrip- tion of the latter invention : see Dobbs v. Penn, 1849, 3 Ex. 427 ; Kaye v. Chubb, 1888, 5 E. P. C. 648. 12. Prior publication in a book. — The question, what is sufficient publication in a book, must rest upon the same ground. Thus, in ArhivrigM s Case, 1785, 1 W. P. C. 72, the patent was held anticipated by a description in a book by Emmerson : see also Plimpton v. Spiller, 1877, 6 Ch. D. 412. In Harris v. Rothwell, 1885, 35 Ch. D. 416, a German patent, a copy of which had been in the Patent Office Library, and notice of it given in the Patents Journal, was held an anticipation : Hill v. Tlwmpson, 1817, 8 Taunt. 375, 1 W. P. C. 232 (Aikin's Dictionary). But in accordance with the principles above set forth, a book merely generally describing an invention, and not specifying how to carry it out, would, of course, be insufficient : Woodcroffs Patent, 1846, 2 W. P. C. 23 (Tredgold's book). A valuable note upon the whole subject is to be found in 1 W. P. C. 718. 13. A book in a foreign language may also be an anticipation : Harris v. Bothwell, 1887, 35 Ch. D. 425 158 ENGLISH PATENT PRACTICE. Chap. V. SECT. 13. A book in a foreign lanjruage. (German); United Telephone Co. v. Harrison, 1882, 21 Ch. D. 720, 51 L. J. Ch. 705 (German); Heurteloups Patent, 1836, 1 W. P. C. 553 (French) ; Otto v. Steel, 1885,31 Ch. D. 241 (French); Lang v. Gisborne, 1862, 31 Beav. 135, 31 L. J. Ch. 770 (French). It may, how- ever, be doubted whether languages rarely understood, such as Eussian or the Oriental languages, would be sufficient. The point was mentioned, but not decided, in Harris v. Bothivell, 1887, 35 Ch. D. 426. 14. Drawings. — Publication by drawings without any description may avoid a patent: Herrburger v. Squire, 1889, 5 E. P. C. 581, 6 E T7ZZ* P. C. 194. In this case a pianoforte string - damper (Fig. 1.) made of wood, was held to have been antici- pated by the drawing (Fig. 2.) of a similar metal without a description. Tetley v. , 2 C. B. (N.S.) 706, 26 L. J. C. P. 269. damper in East on, 1852 See also the Plimpton Skate cases, post, p. 294 15. Models. — Prior publication may be by the ex- hibition of models : Humpherson v. Sijer, 1887, 4 E. V. C. 415; Winby v. Manchester Steam Tram Co., 1889, 6 E. P. C. 359, 7 E. P. C. 30 ; Galloway v. Bleaden, 1839, 1 W. P. C 526. The exhibition of a specimen lifeboat in dockyards, with no precautions as to secrecy, was held fatal : Lifeboat Co. v. Chambers, 1891, 8 E. P. C. 418. 16. The prior publication must have been ac- cessible to the public— This will be a question of fact ANTIC IP A TION. 1 59 in each case. It is not necessary that the book should Cn.\r. v. have been actually sold, but it must have been exhibited SE CT ' 1 6 ' or deposited in a public place. " The existence of a The P rior publication single copy of a work brought from a place of obscurity must have it (v. i vfl 1 j. • j? f ,i beenacccssiblo would anord a very different inference from the pro- to the public. duction of an encyclopaedia " : Stead v. Williams, 1844, 2 W. P. C. 143. Mere mention of a book in a catalogue circulated in England would be insufficient : Otto v. Steel, 1885, 31 Ch. D. 241. But if once the book is deposited on the shelves of a library open to the public, it will be enough, even though it is the only copy so accessible : United Telephone Co. v. Harrison, 1882, 21 Ch. D. 731. Or even though only one person has seen it : Harris v. Bothwell, 1887, 35 Ch. D. 427, 3 E. P. C. 383, 4 E. P. C. 225. This latter case is important, because from the judgment of Cotton, L.J., and Lindley, L.J., it seems as though, even after proof had been given of the deposit of the book in a public place, if the patentee could shew that no one had as a fact seen it who could understand it, his patent might be upheld. But Lopes, L.J., took a different view, holding that, once the book had been accessible to the public, it did not the least matter whether it had been seen as a fact or not (p. 432). On the other hand, if the book were in a private room in a public library, and not accessible to the public, nor cata- logued, and (semhle) that if only one copy of it had been merely put in a shop window one day, and destroyed the next, this would be insufficient : Plimpton v. Malcolmson, 187G, 3 Ch. D. 557, where the whole subject is treated at length by Jessel, M.R. ; approved, Plimpton v. Spiller, 1876, 6 Ch. D. 412. In PicJcard v. Prescott, 1892, 9 E. P. C. 195, a book kept by the Edinburgh branch of a firm of publishers contained an entry shewing the 160 ENGLISH PATENT PRACTICE. Chap. V. sending to a customer of a French periodical, fourteen ' ' days before the application for the patent. The customer The prior was ca il ec l anc [ sa id ne had rea d jfc Du t did not remember publication must have when. Held, that this was evidence of prior publication- 1)0011 ficcossiulc to the public. The conclusion to be drawn from these cases seems to be that proof of the deposition of an anticipating document in some place accessible to the public, and in a language which is fairly well known, is strong and prima facie evidence of publication, but that it is not necessarily conclusive, and that each case must be considered on its own merits. 17. Anticipation in a part of an invention will invalidate the whole patent : Templeton v. Macfarlane, 1848, 1 H. L. C. 595 ; Pether v. Shaw, 1893, 10 E. P. C. 297. ( 161 ) CHAPTER VI. THE SPECIFICATIONS AND THE TITLE OF A PATENT. The enormous number of patents now taken out in Chap. "VT. England and America, renders it a matter of great S ECT ' ' difficulty for an inventor to know whether what he has discovered is really new. In consequence, few patents can be drawn so as to ensure novelty in all parts of them, and almost every specification contains claims of a more or less speculative character. The impossibility of knowing what has been previously done, is producing a growing tendency to rely on special details which are less likely to have been anticipated. The principles which ought to govern the choice of a title, and the drafting of the specifications, will be treated in detail, but they may be summarized in the following leading rules. 1. The specifications must be clear and intelligible to an ordinary workman who understands the trade to which the invention relates. 2. They must define the invention, distinguishing the new from the old, and the useless from the useful. 3. They must give the best information at the disposal of the applicant, at the date on which they are sent in. 4. They must contain no misleading statements. 5. The title, provisional and complete specifications, must conform to one another. M 162 ENGLISH PATENT PRACTICE. Chap. VI. 1. General principles regulating the choice of a title. S ECT " " — The general principles which regulate the form of the General t [ t \ e f a pa tent are :— principles x ...... regulating (1) That it must correctly describe the invention. a fa\ e ' (2) It must be framed in the utmost good faith. (3) It must not be ambiguous. (4) It must neither be too wide nor too narrow. (5) In construing a title the specification may be looked to to explain it. A change has come over the spirit in which titles used to be interpreted. For (prior to 1852) when no pro- visional specifications were filed, the title of the invention was the only check on the patentee who had filed a title from putting anything he liked into a specification. An example of this is Crossley v. Potter, 1853, M. P. C. 240. An inventor had invented a machine for weaving coach lace. He filed a title " for improvements in weaving figured fabrics." The specification as prepared by him and handed over to the assignees was only for weaving coach lace. He sold the patent ; the assignees did not use his specification, but filed a new final specification, describing the machinery as suitable for making {inter alia) carpets. The inventor, on cross-examination, ad- mitted that carpets were not in his mind when he filed his title, and the patent was upset. " In my mind the safest course for patentees to adopt, in framing their specifications, is, instead of claiming everything, to confine themselves specifically to one good thing, and a jury will always take care, that if it be a real invention, no man, under colour of improvement, shall be allowed to interfere with that which is the offspring of his genius " (per Pollock, C.B.). As soon as the use of provisional specifications was intro- SPECIFICATIONS AND TITLE. 163 dueed, the use of the title became more what it is at Chap. VI. present — to indicate to a searcher the general scope of the — 1 invention. By the Patents Act, 1883, the duty of seeing JJ-JSJ^ that the title is suitable is now cast on the Comptroller, and regulating x the choice of is no longer a ground of opposition (s. 7, 11, Patents Act, a title. 1883, s. 2). But a faulty title may still invalidate a patent. The following list of cases decided upon titles to inventions is useful, always, however, remembering that the title is now less strictly looked at than formerly, so that many of the older cases would now probably not be followed. Hornblower v. Boulton, 1799, D. P. C. 220, 8 T. E. 95. See Newton v. — " The specification may be looked at to explain the a ^ 6 6r ' pos ' title." Bainbridge v. Wigley, 1810, Pari. Eep. 1829, 197, Compare with 1 C. P. C. 270. — Title for improvements in a flute, Yairie^' " whereby notes were produced which never before were ^ ] ^ : a " d produced." Only one new note was produced. Patent Brown, p. 186. held bad. Cochrane v. Smethurst, 1816, D. P. C. 354. — Title was for an improved method of lighting cities : the specifica- tion only shewed a new sort of lamp. Held bad (doubted in Cook v. Pearce, 1843, 8 Q. B. 1043). pos t, p. 105. R. v. Metcalf, 1817, 1 VV. P. C. 141 n., 2 Stark. 249.— Title for a tapering brush. The specification only shewed that the bristles were of unequal length. Held bad. R. v. Wheeler, 1819, 2 B. & Aid. 345.— Title, " A new or improved method of drying and preparing malt." The specification shewed only a process for colouring the malt, by further heating after it had been dried. Held bad. Campion v. Benyon, 1821, 6 B. Moo. 71. — The title as well as the specification was for a " new mode of making double canvas and sailcloth, without any starch what- m 2 164 ENGLISH PATENT PRACTICE. Chap. VI. SECT. 1, General principles regulating the choice of a title. post, p. 90 See Wright v. Hitchcock, post, p. 166. ever." Held to mean that the invention was for dis- pensing with starch, that canvas had previously been made without starch, and that the title was bad for suggesting as new that which was really old. Bloxam v. Elsee, 1827, 6 B. & C. 169.— Title, "A machine for making paper of various widths, from 1 to 12 feet wide." Held to represent that one machine would make all different widths, whereas each machine only made paper of one width. Held bad. Sturtz v. Be la Rue, 1828, 1 W. P. C. 83.— Title, " Improvements in copper and other plate printing." Semble, that that was enough to cover an invention for preparing paper for copper-plate printing, by means of size and whitelead. (Patent held bad on other grounds.) Crossley v. Beverley, 1829, 9 B. & C. 63, 1 W. P. C. 112. — Title, " For extracting inflammable gas by heat from pit coal, tar, or other substance from which gas or gases capable of being employed for illumination, can be extracted by heat." At the trial it was shewn (1) that inflammable gas could be got from oil, but at great expense, (2) that patentee's process would not do for oil. Held, that the words " or other substances," must be read " ejusdem generis." That no workman would have con- sidered oil as ejusdem generis with coal or tar. Patent supported. Felton v. Greaves, 1829, 3 C. & P. 611.— Title, " A machine for sharpening knives, razors, scissors, and other cutting instruments." The machine would do for knives but not for scissors. Patent held bad. Berosne v. Fairie, 1835, 1 W. P. C. 154.— The word " improvements " was held sufficient in the title, though only one improvement was shewn, as the patent was for a process consisting of various steps. SPECIFICATIONS AND TITLE. 165 Fisher v. Dewich, 1838, see Cook v. Pearce, 8 Q. 13. Chap. VI. 1056. — " Improvements in machinery for making bobbin- '_ ' net lace." The effect of the machinery was to make C4en,ral •' pi'in- Broivn & Co. v. Anglo-American Brush Corporation, 1889, The complete 6 R. P. C.421, the provisional had described a cylindrical JJSrtttS? commutator for a dynamo, the complete introduced metal fore not go J l outside the insulated segments to fill up the gaps and make the limits of the wear uDiform. This was considered too great a departure, provisional The patent was also found to have been anticipated, so s P eeificatltm - that the decision did not go alone upon disconformity. Finally the question came directly before the Court of Appeal in Nuttal v. Hargreaves, 1891, 8 R. P. C. 450, when it was formally decided that disconformity was still an objection, and accordingly in 1892, in the case of Lane Fox v. The Kensington Co., the patent was held bad on this ground : 9 R. P. C. 221. This case was con- firmed on appeal : 9 R. P. C. 413. It may be in- teresting to give a short account of it. With small and fluctuating sources of electricity, there is always some difficulty in arranging incandescent lamps so as to burn well in parallel. For electricity always takes the easiest path. Hence, if one lamp has a greater resistance than another, the greater part of the electricity goes through the lamp of least resistance, and the other is improperly lit. When gas lamps are close together something of a similar effect may be observed. The obvious manner of rectifying these defects, is to improve the lamp construc- tion, and to afford a large reservoir of electricity at a very steady pressure. Before, however, the remedy was seen, the problem was stated as "the dividing the electric light," and in early days the newspapers were full of sensational announcements that some one had " divided the electric light." One of the first people who ever saw 174 ENGLISH PATENT PRACTICE. Chap. VII. SECT. 3. " Discon- forinity." The complete specification must there- fore not go outside the limits of the title and the provisional specification. the true nature of the problem and its solution, was St. George Lane Fox. In his patent of 1878, he pointed out the necessity of forming " reservoirs " of electricity which he accomplished by placing groups of "storage cells" or accumulators at various points of his system. He also invented a form of electrometer, by which when the pressure varied, the steam of the engines was increased or diminished, and the proper pressure was restored. As a matter of fact, his reservoirs also had the effect of regulating the pressure, by the very fact of storing it, just as a large mill pool will steady the action of a mill. But in his provisional specification he did not indicate that he knew of this result, or proposed the accumulation as a means of attaining it. His final specification pointed out that the regulation was to be obtained both by the storage system of accumulators and by his regulating machine, which latter he subsequently disclaimed, leaving his complete specification claiming only the use of accumu- lators for " regulating " the pressure. At the trial, the Judge distinguished between the use of secondary batteries " to keep the electromotive force constant in the mains for the benefit of the dynamo," and their use " to regulate the electromotive force in the mains for the benefit of the lamps," i.e., their "storing " effect, as distinguished from their " regulating " effect, and held that, as in his provisional specification he had only described their "storing" effect, he could not, in his complete, turn the invention into one for using them for " regulating." Of the accuracy of the principles of law laid down, there cannot be the slightest doubt : but it may admit of question, whether the words in the pro- visional, " the electro-motive force of the electric maifls i THE PROVISIONAL SPECIFICATION. 175 should be kept nearly as constant as possible, say at 100 Chap. VII. volts, or B A units of electro-motive force. A number " '_ ' of Plante's lead and sulphuric cells joined together in ^^35? series between the main and the earth will serve as a The complete reservoir of electricity," were not such as would fairly [JjJJw indicate to a reader skilled in the subject, that the cells fo ™ " ot .s° outside the were to be used in regulating the pressure as well as for limits of the title and the storing the electricity. provisional In addition, however, to the disconformity, the patent specification, was held bad for want of utility, because it was shewn that in order to charge accumulators, a higher pressure is required than the pressure of discharge, and hence, while the accumulators were being charged, the lamps would be over-driven, unless switches were contrived to shunt off some of the cells, which were not mentioned or described. On the evidence given this certainly ap- peared so, but, as a fact, accumulators can be used as regulators in this manner, without any switches at all. It was further held that the complete specification did not sufficiently shew how the invention was to be performed. On this point, opinions also might differ, but certainly the description was so vague, as to amount to little more than the emancipation of a " principle," rather than an application of a principle to practice. This was the chief ground upon which the Court of Appeal supported the decision of the Court below, ante, p. 49. 9 K. P. C. 416. In contrast with the above case, Moseley v. Tiie Victoria Rubber Co., 1887, 4 E. P. C. 242, may be cited. The patent here" was for a process of colour-printing on india- rubber goods coated with farina by means of colours mixed with media, which dissolved the india-rubber. The provisional specification mentioned that the printing 176 ENGLISH PATENT PRACTICE. Chap. VII. SECT. 3. " Discon- formity." The complete specification must there- fore not go outside the limits of the title and the provisional specification. post, p. 237. could be done, but the proper media for mixing the colours were only mentioned in the complete specifica- tion. Another objection was, that in the provisional specification the plaintiff had only mentioned the cold roller process of vulcanization, i.e., wetting the fabric with the vulcanizing solution ; whereas, in his complete, he described the cold vapour process, and again that whereas the provisional only contemplated printing after the farina had been applied, the complete specification also spoke of applying the farina after the printing. All these criticisms were regarded as not shewintr disconformity, but only as legitimate developments of the invention. Disconformity was also held fatal in Gadd v. Mayor of Manchester, 1892, 9 K. P. C. 259. These decisions shew the danger of disconformity, and where a patentee is sure that his invention has not leaked out, it may often be wise simply to abandon his provi- sional, and take out a new patent, filing the complete specification at once, and thus avoiding nonconformity, and obtaining a longer life for his patent (see Chap. XV., sect. 1). 4. A provisional specification may perhaps be looked at to assist in explaining the final, but not to cure a defect in it : Machelcan v. Bennie, 1862, 13 C. B. (N.S.) 52. — The provisional specification was for a vessel with iron framing. The complete left out the word iron. Timber framing for docks was old. Held, that the provisional specification could not be used to limit the final, and the patent was bad. (This case may be advan- tageously compared with Lister v. Norton, and others collected in the chapter dealing with "Title of a Patent." TEE PROVISIONAL SPECIFICATION. 177 5. If needful for its comprehension, the provi- Chap. VII. SECT. 5. sional specification must also have drawings attached to it : Patents Act, 1883, s. 5, s-s. 3. v>a, p. 442. 6. Abandonment of provisional specification. — This does not involve publication (Patents Act, 1885 ante, p. 168. s. 4), so that it may be done and a new patent taken pos ' v ' out. As is pointed out, Chap. V., sect. 2, user by the ante, p. 140. patentee under provisional protection does not constitute post, p. 237. anticipation, so that if a patentee is doubtful whether his provisional will cover his final he may abandon it, and proceed to take out another patent, filing the com- plete specification at once if he pleases, and thus running no risk of disconformity : Patents Act, 1885, s. 4 ; see Oxley v. Holden, 1860, 30 L. J. C. P. 68, 8 C. B. (N.S.) 666 ; Lister v. Norton, 1886, 3 E. P. C. 199. But the danger of filing a complete specification in the first instance is pointed out hereafter. post, p. 238. 7. The effect of provisional protection is to prevent public user between the date of the application and the sealing of the patent from invalidating it : Patents Act, pos t, p. 447. 1883, s. 14. N 178 ENGLISH PATENT PRACTICE. CHAPTER VIII. THE COMPLETE SPECIFICATION. Chap. vill. 1. General Remarks. — The object of a complete speci- 1 ' fication is to put the public in possession of the in- vention. It is sometimes spoken of as the " consider- ation " or " price paid " for the grant : e.g., Brunton v. Eawhes, 1821, 4 B. & Aid. 551 ; Walton v. Potter, 1841, 1 W. P. C. 595 ; Carturight v. Earner, 1800, cited 14 Ves. 136 ; Gibson v. Brand, 1841, 1 W. P. C. 629. This mode of expression is not strictly accurate ; the accuracy of the complete specification is rather the " condition " of the grant, for, strictly speaking, there is no absolute bargain between the Crown and the patentee : Feather v. The Queen, 1865, 6 B. & S. 285. Formerly, the grant was made subject to the filing of a complete specification. Now, the patent is not sealed till after the complete has post, p. 330. been accepted : Patents Act, 1883, s. 12. 2. The specification should point out whether the invention be a thing, or process, or a combination. — A patent may be for an article, or for a process of making it, and either the thing invented may be new, or else it may consist of a new addition to old parts, in which case it is called " an improvement," or else it may be a com- TEE COMPLETE SPECIFICATION. 179 bination of old parts, in which case the essence of the Chap. VIII. invention is, not the parts, but the mode of combining — _ , The specifica- tnem. tion should point out 3. Claim for a new machine. — If a man "simply whether the , . „ . , . ,1,1 i • invention be claims a machine without stating that he claims any a thing, a particular part, or that he claims the combination of the |£^inatTon. whole as new, then it was formerly held that his patent was to be taken to be a patent for the whole, and for each particular part, and his patent was void if any particular part turned out not to be new, or the com- bination itself was not new : Carpenter v. Smith, 1841, 1 W. P. C. 532. This rule is however now relaxed, so that a claim for a machine " as described " would not be held to mean a claim for each individual part of it if the reasonable intendment was that the patent was for the combination of parts forming the machine. Thus in Peckover v. Boidand, 1893, 10 R. P. C. 234, the patentee claimed " the apparatus as fully set forth and described." The defendant's counsel tried to treat this as a claim for each of the parts, and cited Carpenter v. Smith and several of the older cases ; but Lord Esher decided, p. 237, that it was clearly a claim not for each of the parts, but for the combination of them: see also Watling v. Stevens 1886, 3 E. P. C. 41, 153. 4. Claim for an improvement on an existing machine. — In this case it is necessary to pick out and specify the improvement ; it will not be sufficient merely to describe the improved machine as a whole and claim it : Parkesv. Stevens, 1869, L. R. 8 Eq. 365 ; Hill v. Thomp- son, 1818, 1 W. P. C. 247. The improvement may be specified by reference to a former specification : Harmar v. Playne, 1809, 11 East. 101, D. P. C. 311. In Holmes n 2 180 ENGLISH PATENT PRACTICE. Chap. VIII. SECT. 4. Claim for an improvement. v. London & N. W. Railway Co., 1852, M. P. C. 27, the patentee had claimed " the improved turning-table hereinbefore described," and as he had not claimed this as a combination, it was held that he must be taken to have claimed the parts as well as the whole. Only- one of these parts was new. Hence his patent really was for an improved machine, and he ought so to have claimed it, and specified the improvement. His patent was held bad, as not having sufficiently distinguished the new from the old, nor shewn in what his alleged improvement consisted : see also Potter v. Parr, 1860, 2 B. & S. 216 n., Cartsburn Sugar Refining Co. v. Sharp, 1884, 1 E. P. C. 181. ante, p. 53. 'post, p. 305. 5. Claim for a combination. — It is obvious how difficult it frequently is to distinguish a claim for an improvement on a machine from a claim for a combina- tion. It is, however, important to do this, because the mode of treating them at law is different. For the gist of a patent for an improved machine is the addition of something new to that which was old, or the substitution of a new part for an old one. But the gist of a com- bination is the uniting together of old things in a new way. In a patent for an improvement the new part must be clearly distinguished, as explained above, but in a patent for a combination, where once it is made clear that it is not any specific part, but the combination which is claimed, it is not necessary to explain what integral parts of the combination may have been previously used separately, or what other combination of them may have been previously made. Many inventions may be looked upon either as " improvements " or as " combina- tions," according to the point of view from which they TEE COMPLETE SPECIFICATION. 181 3d. And it is obviously often to the patentee's interest to construe his patent as a combination if he are regarded. And it is obviously often to the patentee's Chap. VIII. can ; even though in reality it is rather of the nature of C0 S n ° t r i( ^ n . an improvement. The law with regard to the manner in which a claim for a combination is to be construed has been developed by a series of decisions. In Foxwell v. Bostoch, 1864, 10 L. T. (N.S.) 144, 4 De G. J. & S. 298, Lord Westbury treated a claim for a combination as though it were in fact a claim for an improvement, and therefore laid it down that " in a patent for an improved arrangement, or new combination of machinery, the specification must describe the improvement and define the novelty other- wise, and in a more specific form, than by the general description of the entire machine : " see also Neivcdl v. Elliot, 1863, 1 H. & C. 797, 10 Jur. (N.S.) 954 ; Lister v. Leather, 1858, 8 E. & B. 1004. Although this is perhaps strictly an outcome of the doctrine that the invention, and not merely the machine, must be described, yet in the case of a combination, if more were required than to specify the combination and claim it, it is obvious that it would be needful to go into all the various other sorts of combinations of the same things that had been made, and distinguish them. This would be most embarrassing, and the theory that it is necessary became so impossible in practice, that the doctrine soon afterwards was modi- fied (per Cairns, L.C.) : Harrison v. Anderston Foundry Co., 1876, L. K. 1 App. Cas. 577. In that case Lord Hatherley said that Lord Westbury's decision in Foxwell v. Bostock only meant that, if you specifically claim an improvement on some specific machine which you name, you must specify your improvement. " To use an illus- tration which was adopted by Lord Justice James (in 182 ENGLISH PATENT PRACTICE. Chap. VIII. SECT.' 5. Claim for a combination. Varies v. Stevens, 18G9, L. E. 8 Eq. 365), it will not do if you have 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." Again, in Clark v. Adie, 1877, Lord Hatherley said, " I appre- hend, my lords (and I do not read the decision in Fox- well v. Bostock as deciding more than I am stating), you must inform the public . . . whether you have sub- divided, if I may use the term, your machine into those separate parts, and claim for each part the merit of novelty, or whether you are simply making a combina- tion of things per se old, but which have never been used before in combination." Lord Justice James, in the same case, corrected the supposed doctrine (in Lister v. Leather), that a combina- tion patent could be read as claiming the parts as well as the combination. In Moore v. Bennett, 1884, 1 R. P. C. 138, a revival of Foxwell v. Bostock was attempted by Cotton, L.J., who thought that, where an improved com- bination was made, it would be necessary to specify the improvement. This theory certainly seemed to have strict logic on its side, but it was not approved in the House of Lords, where (p. 149) Lord Blackburn explained Lord Westbury's decision in Foxwell v. Bostock, and said : " If that principle were applied to specifications, it would, I think, make it impossible to draw a good specification for a combination of old materials without such a degree of prolixity, as would render it practically impossible. That, if it had been logically and clearly followed, would certainly make it impossible to have a good patent for a combination." The Court, while affirming the decision on other grounds, expressly disapproved it on the point above mentioned (p. 152). THE COMPLETE SPECIFICATION. 183 In Bowdiffe v. Morris, 1885, 3 R. P. C. 17, the patentee Chap. VIII had described his invention as consisting of four things, but had not clearly claimed the combination of them, combination, thus leaving it doubtful whether it was a combination he was claiming, or the whole machine, or some parts of it. Bristowe, V.-C, after an exhaustive review of Foxivell v. Bostoclc and the succeeding cases, decided on this ground against the patent. A similar defect was held fatal in Fairbum v. Household, 1886, 3 E. P. C. 128. On the other hand (Wailing v. Stevens, 1886, 3 R. P.C. 41, 153), in a patent for an improved tipping-waggon, the claim was the construction of the tipping-waggon substantially as described ; it was suggested that this was a claim of the individual parts. The Court, however, considered that in substance it was a claim for a combination, and the patent was supported. In Procter v. Bennis, 1887, 36 Ch. D. 740, 4 R. P. C. 333, a patent for a mechanical stoker claimed " the employment of certain lappets and springs, in combination with certain doors, for the pur- poses described. It was agreed that the portions which were new were not pointed out, but Cotton, L.J., said (p. 351) : " When a combination is claimed to be an in- vention, if that combination is new, it is immaterial on the question of the insufficiency of the specification and the validity of the patent, that the patentee should point out how far he does or does not claim particular por- tions " ; and Bowen, L. J., says : " When a combination, and nothing more, is claimed, the combination being the novelty, it is immaterial that the patentee should point out how far he claims the particular portions which go to make up the combination. Those portions are not his claim, but it is the putting them together and combining them that constitutes his claim": see also (per Lord 184 ENGLISH PATENT PRACTICE. Chap. viii. Watson) ia Kaije v. Chubb, 1888, 5 K. P. C. 649. The specification must make it clear, in words or otherwise, combination. tnat ** * s a combination that is being claimed, and not an improvement. It is not, however, needful that the exact word " combination " should be used, if it is clear that it is a combination which is really the gist of the invention : United Telephone Co. v. Harrison, 1882, L. K. 21 Ch. D. 720, 51 L. T. Ch. 705. 6. A complete specification must particularly describe and ascertain (1) the nature of the inven- tion ; (2) in what manner it is to be performed ; and (3) must be accompanied with drawings if required : post, p. 441. Patents Act, 1883, s. 5, s-s. (4). " The public, on the one hand, have a right to expect and require that the specification shall be fair, honest, open, and sufficient ; and, on the other hand, the patentee should not be tripped up by captious objections " (per Alderson, B.) : Morgan v. Seaward, 1836, 1 W. P. C. 174 ; see also Neilson v. Tlwmpson, 1841, 1 W. P. C. 283 ; Holmes v. London & N. W. Railway Co., 1852, M. P. C. 16 ; Hills v. London Gas Co., 1860, 5 H. & N. 340 ; Thomas v. Welch, 1866, L. R. 1 C. P. 201 ; Bray v. Gardner, 1887, 4 R. P. C. 402 ; Newbury v. James, 1817, 2 Mer. 451, 1 C. P. C. 368. A specification for preserving animal substances described how to make certain solu- tions numbered 1, 2, 3, 4. It then proceeded to describe how to use 2, 3, 4, but left it uncertain what was to be post, p. 302. done with 1. Held, a fatal defect : Bailey v. Boberton, 1878, L. R. 3 App. Cas. 1055; B. v. Metcalf, 1817, 2 Stark. N. P. 249, 1 W. P. C. 141 n. « These two requirements, the description of its nature, and also of the mode of performing it, must both be fulfilled " {per TEE COMPLETE SPECIFICATION. 185 Best, J.) : Brunton v. Haivlces, 4 B. & Aid. 556. In Philpot Chap. Vlll. ^ -r • 1 SECT - 6 - v. Banbury, 1885, 2 B. P. C. 38, Grove, J., pointed out the distinction between describing what an invention is, gpS^on and shewing how it is to be performed, and laid it down mj»* gjjg; that both must be done : see also Edison v. Holland, and ascertain ,.-. -,-,-, -.r^nry -, ,~i , (1) the nature 1889, 6 B. P. C. 243 ; Morton v. Middleton, 1863, 1 Ct. of y the Sess. Cas. 3rd ser. 721. ( 2 ) in what manner it is to be per- 7. The subject matter must be proper, and there formed; and , , (3) must be must be utility, ingenuity, and novelty in the sense accomp . ul ie P- 1T0 - 9. If the specification fail in a material part from any defect, the whole patent falls (per Bayley, J.) : Brunton v. Hawkes, 1821, 4 B. & Aid. 551 ; Morgan v. Seaward, 1836, 2 M. & W. 544, 1 W. P. C. 170, and see further, Chap. I., sect. 8. ante, p. GO. 10. The specification must be clear and unambigu- ous : Galloway v. Bleaden, 1839, 1 W. P. C. 524 ; Cam- pion v. Benyon, 1821, 6 B. & Moo. 71, 3 B. & B. 5. " It is incumbent on the patentee to give the specification of the invention in the clearest and most unequivocal terms of which the subject is capable " (per Ashurst) : Turner v. Winter, 1787, 1 W. P. C. 77. If in the invention it is needful to use some special kind or sort of an article, it is not enough simply to direct the article to be used 186 ENGLISH PATENT PRACTICE. Chap. VIII. without directing attention to the variety of the article SFT'T" 10 n — ' which it is needful to employ. Thus, where a patent for «onmust fi be" grinding meal directed rollers to be covered with clear and « china," and it was shewn that all china would not unambiguous. . . do, but only a special kind of oriental china, the patent was held bad for ambiguity : Wegman v. Corcoran, 1878, L. E. 13 Ch. D. 65, 83, 39, L. T. (N.S.) 563, 41 L. T. (N.S.) 358 ; see also Ellington v. Clark, 1888, 5 E. P. C. 327. In Hastings v. Brown, 1853, 1 E. & B. 450, 22 L. J. Q. B. 161, a patent for " a windlass intended to hold a cable of any size " was held bad, as it did not explain whether or not the same windlass would hold different sized cables, or whether different windlasses would be ante, p. 164. required ; and in Bloxam v. Elsee, 1825, 1 C. & P. 558, 6 B. & C. 169, a similar objection was upheld. 11. The specification must clearly distinguish what is claimed as new from what is represented as old.— In Manton v. Manton, 1 C. P. C. 278, D. P. C. 349, Gibbs, C. J., said : " It is necessary that the patentee should shew that he has accurately explained the nature of his invention, separating that which is new from that which is old." " It is essential to point out that which is new from that which is old " : Macfarlane v. Price, 1816, 1 W. P. C. 74, 1 Stark. 199 ; Gibson v. Brand, 1842, 1 "W. P. C. 640. " In a combination patent, as has been ante, p. 180. shewn, sect. 5, when the combination is claimed, that is understood to be the new thing, and nothing else is considered as alleged to be new by the patentee. 12. The specification must distinguish the useful from the useless : Easterlrook v. G. W. Baihvay Co., 1885, 2 E. P. C. 210. In this case the patentee repre- THE COMPLETE SPECIFICATION. 187 sented that a new apparatus for railway-signalling was Chap. VIII. -, SECT. 12. useful in all cases. It turned out to be useless it used in a particular way. The patent was held bad, on the ti ™ |JJJ t l ^ authority of The Badische Anilin Fdbrih v. Levenstein, tinj^ishtbe 1883, L. E. 29 Ch. D. 366. the useless. 13. The specification, in claiming a thing as an improvement, need not necessarily explain why it is an improvement : Neilson v. Thompson, 1841, 1 W. P. C. 283. 14. It is not needful to describe any obvious or well-known step in the process : Boulton v. Bull, 1795, 2 H. Bl. 497 ; Morgan v. Seaward, 1836, 1 W. P. C. 176 ; Heath v. Umvin, 1852, 2 W. P. C. 245 ; Crossleij v. Beverley, 1829, 3 C. & P. 513, Moo. & Mai. 283, 1 W. P. C. 106 ; Berosne v. Fairie, 1835, 5 Tyrr. 393, 1 W. P. C. 158. 15. Nor is it necessary formally to disclaim what is obviously old. — " There are some things so old and well-known that it is not necessary for a patentee to say, ' I do not claim them.' If he mentions a wheel, or an inclined plane, or a screw, he is not bound to disclaim each of those well-known mechanical instruments" (per Fry, L.J.): Watling v. Stevens, 1886, 3 E. P. C. 147. " If a patentee had occasion to introduce a hinge into his machinery, it would be absurd for him to point out that the hinge is not new " : Haworth v. Ilardcastle, 1834, 1 W. P. C. 484 ; Tetley v. Easton, 1853, M. P. C. 88. 16. A patent is not vitiated by reason of the claim of some non-material part which turns out not to be useful, in the absence of deceit or misrepresenta- Onnpare post, tion ; Leivis v. Marling, 1829, 1 W. T. C. 495 ; but it is p. 198. 188 ENGLISH PATENT PRACTICE. Chap. vill. otherwise if that part is material : B. v. Cutler, 1849, sect^is. M p c 137 ^ 14 Q B 372 n 17. It is not necessary to describe every known method, nor every known substance, for performing the invention; general words may be introduced where no ambiguity is caused. — Thus, " gunpowder or other proper combustible matter," would be sufficient if those conversant with the trade would not be misled : BicJcford v. SJceives, 1841, 1 Q. B. 948, 1 W. P. C. 218. 18. It is not necessary to describe what is in reality the best method, or the best proportions, if post, sect. 21, what is described is useful, and the patentee de- p. 191. ' _, Tr _ scribes the best he knows of: Macnamara v. Mulse, 1842, C. & M. 471 ; Patent Type Co. v. Bichards, 1859, 1 John. 381, 6 Jur. (N.S.) 39 ; TJwmson v. Batty, 1888, 6 E. P. C. 84 ; Neilson v. Harford, 1841, 1 W. P. C. 318 ; Otto v. Linford, 46 L. T. (N.S.) 35. 19. The specification must be intelligible to an ordinary workman who understands the subject- matter without further experiment, or seeing it tried : B. v. Arhvright, 1785, 1 W. P. C. 66, D. P. C. 106 ; Arhvright v. Nightingale, 1785, 1 W. P. C. 60, D. P. C. 37 ; Hornbloiver v. Boulton, 1799, 8 T. R. 100, D. P. C. 277 ; Harmar v. Playne, 1809, D. P. C. 318. The specification must always be sufficiently clear to enable the machine to be made from it : Otto v. Linford, 1881, 46 L. T. (N.S.) 44. The specification is not addressed to a person unskilled in the kindred arts : Martian v. Manton, 1815, D. P. C. 349 ; Sturtz v. Be la Bue, 1828, 5 Puss. 327 ; Galloway v. Bleaden, 1839, TEE COMPLETE SPECIFICATION. 189 1 W. P. C. 524 ; Elliot v. Aston, 1840, 1 W. P. C. 224 ; Chap. VIII. SFCX 19 Foxwell v. Bostock, 1864, 10 L. T. (N.S.) 147. It is __ ' addressed to artists of competent skill in the branch of cat f J2Lt manufacture to which it relates: Bichforcl v. Shelves, be intelligible d to an ordinary 1841, 1 Q. B. 938, 1 W. P. C. 214, 10 L. J. Q. B. 302 ; workman who Househill Co. v. Neilson, 1842, 1 W. P. C. 676. " Certainly Jj™ BU bject- the patentee does not satisfy the law if he says men of JJJ t fJrtEnr fr " the highest science, first-rate engineers, could understand experiment, ° or seeing it him." " The specification is not addressed to a person tried, who is determined to misunderstand, but to one who is willing to understand " : Beard v. Egerton, 19 L. J. C. P. 36, 8 C. B. 165. " It is plain that the specification of a patent is not addressed to persons who are ignorant of the subject-matter. But there are various kinds of persons who know something about it. If it is a mechanical invention, you have first of all scientific mechanicians of the highest class — eminent engineers. Then you have scientific mechanicians of the second- class, managers of great manufactories, great employers of labour, persons who have studied mechanics — not to the same extent as the first-class, the scientific engineers, but still to a great extent — for the purpose of conducting manufactories of complicated and unusual machines, and who, therefore, must have made the subject a matter of considerable study, and in this class I should include foremen, being men of superior intelligence, who, like their masters, would be capable of invention, and like the scientific engineers, would be able to find out what was meant, even from slight hints, still more from imperfect descriptions, and would be able to supplement so as to succeed, even from a defective description, and even more than that : would be able to correct an erroneous descrip- tion. That is what I would say of the first two classes, 190 ENGLISH PATENT PRACTICE. Chap. VIII. SECT. 19. The specifi- cation must be intelligible to an ordinary workman who understands the subject- matter with- out further experiment, or seeing it tried. which I will call the scientific classes. The other class consists of the ordinary workman, using that amount of skill and intelligence which is fairly to be expected from him — not a careless man, but a careful man, though not possessing that great scientific knowledge or power of invention which would enable him by himself, unaided, to supplement a defective description or correct an erro- neous description. Now, as I understand, to be a good specification it must be intelligible to the third class I have mentioned, and that is the result of the law" (per Jessel, M.R.) : Plimpton v. Malcolmson, 1876, L. R. 3 Ch. D. 568, followed in Bray v. Gardner, 1887, 4 K. P. C. 40 ; see also Badische Anilin Fabrik v. Levinstein, 1887, 12 App. Cas. 710, 4 R. P. C. 463, and Cassella v. Levinstein, 1891, 8 R. P. C. 475. The evidence of a workman as to what he can understand is relevant to enable the Court to say whether the specification is sufficient : Edison v. Woodhouse, 1887, 3 R. P. C. 183, 4 R. P. C. 99. 20. No further experiments must be needful in order to enable the invention to be worked : B. v. Wheeler, 1819, 2 B. & Aid. 353 ; Neilson v. Harford, 1841, 1 W. P. C. 341 ; Macnamara v. Hulse, 1842, 1 C. & M. 471, 2 W. P. C. 129 ; Muntz v. Foster, 1844, 2 W. P. C. 109 ; Stevens v. Keating, 1847, 2 W. P. C. 175, 19 L. J. Ex. 57; HinJcs v. Safety Lighting Co., 1876, L. R. 4 Ch. D. 616 ; British Dijnamite Co.. v. Krebs, 1879, 1 Good. Pat. Cas. 91 ; Gaudy v. Reddaivay, 1885, 2 R. P. C. 49. In Edison v. Holland, 1889, 5 R. P. C. 459, 6 R. P. C. 243, at p. 278, Cotton, L.J., expressed an opinion that when an invention is new, or delicate, some small degree of experiment may frequently be necessary, however clear the specification may be. THE COMPLETE SPECIFICATION. 191 21. The inventor in his specification must disclose Chap. VIII. SECT. 21. the best method with which he is acquainted, and must keep nothing back which it would be of advantage to the public to know. This important rule is often neglected by ignorant inventors, who sometimes keep back a portion of their invention, or at least pretend to have done so, so as to endeavour to get employment in teaching it to those who have purchased a right to use it. By this foolish conduct, they put it into the power of anyone who hears them to destroy their patent. In Wood v. Zimmer, 1815, Holt. N. P. 58, 1 W. P. C. 82, the patentee used secretly to put aquafortis into the boiler in making verdigris by a process which he patented. The effect of this was simply to save labour, but he did not disclose it. Held fatal : see also R. v. Arhvright, 1785, 1 W. P. C. 66, D. P. C. 61 ; Bovill v. Moore, 1816, D. P. C. 400 ; Morgan v. Seaward, 1836, 1 W. P. C. 174 ; Neilson v. Harford, 1841, 1 W. P. C. 320. The inventor's best knowledge should be given up to the time of sending in the complete specification : Crossley v. Beverley, 1829, 1 W. P. C. 117; Jones v. Beaton, 1 W. P. C. 404 n. It was objected, in Edison v. Woodhouse, 1886, 3 E. P. C. 167, 4 E. P. C. 79, that the patentee had not revealed all he knew in the final specification, because it was shewn that, prior to sending it in, and after the provisional, he had taken out another provi- sional specification shewing improvements. It was held, that as he had given all he knew to the world, his complete specification could not be impugned on the ground of bad faith. If a man knows that he can make the article for which the patent is granted with cheaper materials than those which he has enumerated in the patent, although the 192 ENGLISH PATENT PRACTICE. Chap. VIII. SECT. 21. The inventor in his specifi- cation must disclose the best method with which lie is acquainted. latter will answer the purpose equally well, the patent is void (per Buller, J.) : Turner v. Winter, 1787, 1 VV. P. C. 81. A patentee who had taken out a patent for making brown bread, was proved to have given directions of a special nature as to how to bake it, which were very essential to the clearness of the specification, but which directions he had not revealed. Patent held bad : Pooley v. Pointon, 1885, 2 R. P. C. 172; see also Walton v. Bateman, 1842, 1 W. P. C. 622 ; Tetley v. Easton, 1852, M. P. C. 76 ; Heath v. TJnwin, 1852, 2 W. P. C. 243. In the case of a communicated invention, the importer who takes out the patent is, for the purposes of this rule, the patentee. Hence, he is the person who must com- municate all he knows: Plimpton v. Maleolmson, 1875, 3 Ch. D. 576; Wegman v. Corcoran, 1879, L. E. 13 Ch. D. 66. But where a foreign inventor has a patent taken out in the name of his agent in England, for his own advantage, it is submitted that he would not be allowed fraudulently to withhold information, and still reap the benefit of the patent, by insufficiently instructing his agent in the method of performing the invention. 22. The specification must not contain any mis- leading or false statements or suggestions. — Thus, if something is described as essential which is not really so, the patent will be bad : Liardet v. Johnson, 1778, 1 W. P. C. 53, Bull. N. P. 76; R v. Arkwright, 1785, 1 W. P. 0. 69, D. P. C. 118; Huddert v. Grimshaw, 1803, 1 W. P. C. 93 ; Beard v. Egerton, 1846, 19 L. J. 39. One of the most remarkable cases of the applications of this principle was Savory v. Price, 1823, 1 Ry. & Moo. 1, 1 W. P. C. 83. The inventor of seidlitz powders, after THE COMPLETE SPECIFICATION. 193 crivino- the names of the ingredients, all of which were Chap. VIII. 60 ° nil SECT - 22 - well known, viz., Rochelle salt, carbonate ot soda, and tartaric acid, went on ex abundante cauield, to explain ca ^ n P i e n ° us t how to make all those ingredients. Held, that by so ™*; c ™ tail1 doing he had misled the public into thinking they could leading or . false state- not make the powders out of the common commercial mentsor substances named. Patent held bad. A patent which ™gg«* tioM - described how to make a certain glaze of size and the " finest and purest chemical white lead," was held bad on the ground that the substance whicn would ordinarily be bought in London under that name would not answer : Sturtz v. Be la Rue, 1828, 5 Russ. 327, 1 W. P. C. 83. Where a patentee said that he used cloths " of any suitable material, but I prefer it to be made of linen warp, and woollen weft," and in evidence it was proved that he had tried other materials and failed with all except those; held, his expression above quoted was misleading, for he ought to have warned the public against the use of other materials which his specification was an invitation to try: Crompton v. Ibbotson, 1828, Dan. & L. 34, 1 W. P. C. 83, C. P. C. 462. If a mis- leading statement is put in, it is no answer to say that this was done innocently : Simpson v. Holliday, 1864, 20 Newton's Lond. Journal, 105. 23. An error, or insufficiency of description, obvious on the face of the specification, and which any work- man would at once correct without further experi- ment, would not vitiate a patent : Simpson v. Holliday, 1865, 13 W. R. 578, 12 L. T. (N.S.) 99. Nor would the use of a word of doubtful meaning, provided it were not likely to be misunderstood : Berosne v. Fairie, 1835, 1 W. P. C. at p. 157, and see 1 W. P. C. 42 n., also p. 41 ; o 194 ENGLISH PATENT PRACTICE. Chap. vlii. Gandy v. Bedclaway, 1883, 2 R. P. C. 52 ( per Brett, M.R.). ' Where a specification directed the use of a " carbon gas obvious on or li°L U i c ^" an( i ^ was shewn that some carbon gases and the face of liq uids would not do, it was held no defect, because the the specifica- tion, and specification sufficiently shewed what were the particular -workman sorts of carbon gases or liquids referred to : Edison v. would at once Woodhouse, 1887, 4 R. P. C. at p. 107 ; compare this with correct with- r r out further Stevens v. Keating, 1848, 2 W. P. C. 194 {post, p. 209). experiment, . ' would not The doctrine is further exemplified in Beard v. Egerton, patent. a 1849 > 8 C - B ' 165 > 13 Jur - 1004 > 19 L - J - °- P - 36 - The Court must have been desirous to sustain this patent, for it was for the daguerreotype process of photography, and exhibited great ingenuity and novelty. By inadvertence, however, in the specification it was said that you were to clean the silver plate with acid and pounce just before the moment of using the plates in the camera. This was obviously absurd, for it would have destroyed the iodised coating of silver upon which the light acted to take the picture. All that was really meant was that the plates were to be well cleaned before iodising, which was done just before putting the plate in the camera, and the Court held that anyone would so understand it. Patent supported ; see " Construction of Specifications," post, p. 203. Chap. XL, sect. 1. See also Hophinson v. St. James Electric Light Co., 1892, 10 R. P. C. 46 ; Miller v. Scarle, 1893, 10 R. P. C. 10G. ( 195 ) CHAPTER IX. THE CLAIMS. 1. The nature, functions, and objects of claims. — By Chap. IX. the Patents Act, 1883, s. 5, s-s. 5, every specification — - ' should end with a distinct statement of claim or claims, post, p. 442. This rule is, however, merely directory, and if the patent is passed by the officials, the absence of a distinct claim will not invalidate a patent : Siddell v. Vickers, 1887, 5 R. P. C. 432, L. R. 39 Ch. D. 92. It has been decided, that provided there is a claim or claims at the end of a patent, the question of disconformity with the provisional specification ought not to be raised by the officials at the Patent Office, provided that such claims are correct in form, and not a mere colourable evasion (as, for example, to say, " I claim what I have described ") : Smith's Patent, post, p. 243. Griff. 268. The object of a claim is pointed out by Lord Cottenham in Kay v. Marshall, 1836, 2 W. P. C. 39, 1 My. & Cr. 383, to be for the patentee's protection, to define and limit his invention. It is in reality a dis- claimer ( per James, L. J.) : Plimpton v. Spiller, L. R. 6 Ch. D. 412. In practice the Patent Office officials do not interfere with claims, but leave the applicant tc make them as he pleases and at his own risk. See a paper on " Claims," by J. Imray. Proceedings of the Institute of Patent Agents, vol. 6, 203. o 2 196 ENGLISH PATENT PRACTICE. Chap. ix. 2. Everything not claimed must be considered as ^_2_ • expressly disclaimed, and hence open to the public : Harrison v. Anderston Foundry Co., 1876, L. R. 1 App. Cas. 581 ; United Telephone Co. v. Harrison, 1882, L. R. 21 Ch. D. 741 ; Jackson v. Wolstenlwlmes, 1884, 1 R.P. C. 108 ; Lucas v. Miller, 1885, 2 R. P. C. 159 ; Easter- brooh v. G. W. Railway Co., 1885, 2 R. P. C. 208. ante, p. 179. 3- Claims must be unambiguous and clear : Tetley v. Easton, 1853, M. P. C. 87 ; Hinks v. Safety Lighting Co., 1876, 4 Ch. D. 612; and must state the limits and scope of the invention distinctly. Thus, it will not do to say : " What I claim is the general con- struction of the several parts ... as herein set forth." This is not a " distinct " statement, and though it may not make the patent bad, it may greatly be prejudiced : Siddell v. Tickers, 1888, 5 R. P. C. 433, affirmed 7 R. P. C. 292. A claim is not intended to be a description, but only a marking out of the invention ; hence, "expressions are permissible in claims which would be too general if they professed to be part of the description" (per Cottenham, L.C.) : Kay v. Marshall, 1836, 2 W. P. C. 39. And a certain latitude is permissible, when the nature of the subject demands it. Thus, a patent for type-metal composed of seventy-five parts of tin and twenty-five of antimony was not held bad on account of its being stated in the claim " that these proportions might be to a certain extent varied " : Patent Type-founding Co. v. Richards, 1859, 1 John. 381. 4. In interpreting the claims, the description in the specification must be looked at : Heath v. TJnwin, 1855, 5 H. L. Cas. 540, 25 L. J. C. P. 20. THE CLAIMS. 197 5. A claim of " every method by which a thing Chap. IX. . r. m SECT. 5. can be done " would not be sufficiently specific.—" lo claim every method would be equivalent to claiming a principle" (per Alderson, B.) : Neilson v. Harford, 1841, 1 W. P. C. 355. A patent related to a method of making gas from seeds. " We are also of opinion that the claim is too large, and cannot be supported. It is a claim to make gas direct from seeds, not in any mode pointed out in the specification, but generally ... we think that the plaintiffs second patent was not for any particular mode of doing it, but for the doing it by any method ; and we think that even if it had been new (which it turns out not to be), such a mode of specifying and claiming the invention cannot be sustained as a good see p . 4g. specification" (per Pollock, C.B.) : Booth v. Kennard, 1856, 1 H. & N. 527, 2 H. & N. 84. In Wyeth v. Stone an American patentee had said : " I claim every mode of cutting ice except by human power." Lord Hatherley called this " a preposterous claim " : Arnold v. Bradbury, 1871, L. E. 6 Ch. 711, in which case the claim, though wide, was supported ; see also Tetley v. Easton, 1852, M. P. C. 71 (per Pollock, C.B.). 6. When a claim is clear and distinct for a sub- stantial object, or part of an invention, the patentee will be held to it, and not allowed to depart from it, either for the purpose of restricting it, so as to save his patent, nor, on the other hand, to expand it, so as to cover an infringement. This rule depends upon the principle that a patentee's claims define what he represents he has invented. We shall hereafter see that, in the case of a genuine invention, every effort will be made by the Courts to support it, where the lauguage admits of it ; but where 198 ENGLISH PATENT PRACTICE. Chap. IX. SECT. 6. When a claim is clear and distinct for a substantial object, or part of an invention, the patentee will be held to it. post, p. 203. a claim is distinct, it cannot be departed from. Of course the claim will be read so as to cover not only precisely what is specifically claimed, but also all that can fairly be described as coming within the scope of the invention. No patentee will be held so exactly to what he has claimed, as to protect him from nothing but exact imita- tions of his machine. For otherwise a patent would be useless. But he will not be allowed to play fast and loose with his claims, or to adopt that construction of them which happens at the moment to be convenient. And his patent must stand or fall, not by what he meant, but by what he has said : HiU v. Thompson, 1817, 1 W. P. C. 237; Minter v. Moiver, 1835, 1 W. P. C. 142; R. v. Else, 1785, 1 W. P. C. 76 ; Gibson v. Brand, 1842, 1 W. P. C. 634 ; Heath v. Unwin, 1855, 25 L. J. C. P. 12, 5 H. L. 0. 505, 16 C. B. 713; Bloxam v. Elsee, 1827, 6 B. & C. 169 ; Jordan v. Moore, 1866, L. K. 1 C. P. 624 ; see also Cropper v. Smith, 1884, 1 K. P. C. 87 ; Clark v. Adie, 1873, 2 App. Cas. 315 ; Britain v. Hirsch, 1888, 5 B. P. C. 229, cited in the next section. post, p. 201. ante, p. 187, 7. Where, however, a claim may be read as merely auxiliary or subordinate, this will be done in order to save the patent. — This rule depends on the principle of beneficial construction (see Chap. XI., sect. 1). " If the claim to the material can be substantiated by the patent, the specification of a particular user of it comprehended in the general area claimed, cannot for a moment be accepted as a ground for vitiating the patent" (per Westbury, L.C.) : Betts v. Neilson, 1871, 5 H. L. C. 21. In Plimpton v. Spiller, 1876, 6 Ch. D. 426, one of the claims was for "a mode of holding runners " by bolting them between pieces of wood. The THE CLAIMS. 199 idea of holding a thing by bolting it between pieces of Chap. ix. wood is of course as old as the hills, but the patent was b ELT ' ' saved by treating the claim as merely subsidiary to the ^ here > ll0 . w " claims for the runners themselves. ma y be read (is mer6lv In FrearsoriY. Loe, 1878, L. E. 9 Ch. D. 48, Jessel, M.E., auxiliary or held "that it is not because an inventor thinks that he this°wun!r' has invented more than he reallv has, that his claims ^ one in ° rdcr , to save the must be upset, if they can be limited so as to save his in- patent. vention." This view was in the next year carried further. An inventor had patented dynamite, which consists of dry clay soaked in nitro-glycerine. It was well known at the date of the patent that all explosives of the " fulminating " kind, in order to explode violently, must either be strongly confined, or else fired with a detonator. The patentee claimed, first, the manufacture of dynamite, secondly, the method of firing the same by special ignition (i.e., by confinement or by a detonator). It was argued that as those modes of firing fulminating ex- plosives were old, the patent was bad. Fry, J., however, supported it. His judgment was reversed by the Court of Appeal, but restored by the House of Lords, who considered that the means of using the new substance was really essential to it, and part of it, and that the claim might be regarded as " appendant " to the claim for the dynamite : British Dynamite Co. v. Krebs, 1879, 1 Good. P. C. 88 ; see also Oxley v. Holden, 1860, 8 C. B. (N.S.) 606, Judgment of Erie, C.J. On the other hand, none of these cases can prevent a clear claim for a subordinate part of an invention being held, either for good or ill, to be binding on the patentee. He may claim the combination of A, B, C, and 1 .), and in addition a sub-combination of A and B, and in addition he might claim C and D separately. If, however, he 200 ENGLISH PATENT PRACTICE. Chap. IX. SECT. 7. Where, how- ever, a claim may be read as merely auxiliary or subordinate, this will be done in order to save the patent. does so clearly, and makes them into distinct claims, he will be bound by them, and they cannot be read as auxiliary : Clark v. Adie, 1877, 2 App. Cas. 320, and Cropper v. Smith, 1884, 1 R. P. C. 87. The cases of Plimpton v. Spiller, Frearson v. Loe, and the British Dynamite Co. v. Krebs, must, therefore, be considered as proceeding upon the principle of beneficial construction adopted where possible in order to save the patent. The distinction between such cases and Clark v. Adie was pointed out by Cotton, L.J., in Britain v. Hirsch, 1888, 5 R. P. C. 229. " If," said he, " in the British Dynamite Co. v. Krebs, the House of Lords had found the words * What I claim is a new cap for the purposes of igniting,' I think they could not reasonably have come to the con- clusion, to which, indeed, they did come, on the words of that specification." See also Pether v. Shaw, 1893, 10 R. P. C. 293, ( 201 ) CHAPTER X. THE DRAWINGS. 1, Drawings are to be attached to specifications if Chai\ x. required : Patents Act, 1883, s. 5, s-s. 4, s. 6 ; and if '_ ' they have been attached to the provisional specification, post, p. 442. they may be referred to in the complete : Patents Act, 1886, s. 2; P. Rules, 1890, r. 30-33. The rules regarding post, pp. 477, 4S9 drawings are framed with a view of making them uniform in size and pattern, and of facilitating their reproduction by photolithography. They are sometimes very rough. It is, however, better to make them carefully, for in a patent action the Court may be apt to think slightly of a patent which the inventor has not troubled himself to draw with accuracy and neatness. 2. Drawings are to be taken as part of the speci- fication : Morgan v. Seaward, 1836, 1 W. P. C. 173 ; and examined in connection therewith : Morton v. Middleton, 1863, 1 Ct. Sess. 3rd ser. 722. They may be used to explain the specification, and a description consisting of a drawing alone might even be sufficient : Poupard v. Fardell, 1869, 18 W. R. 129, overruling Ex parte Fox, 1812, 1 V. & B. 67, 1 W. P. C. 431 ; see also Foxivell v. BostocJc, 1864, 4 De Gex. J. & S. 303, 10 L. T. (N.S.) 146. In Bruntoii v. IlaivJces, 1820, 1 C. P. C. 410, Abbot, C.J., 202 ENGLISH PATENT PRACTICE. Chap. X. says : " If a drawing or figure enables a workman of b ECT ' ' ordinary skill to construct the improvement, it is as good Drawings are description": see also Bloxam v. Elsee, 1825, to be taken as J r part of the 1 C. & P. 564. Drawings may also explain an ambiguity in the description : Hastings v. Brown, 1853, 1 E. & B. 454 ; Daw v. Eley, 1867, L. K. 3 Eq. 500 n., 14 W. E. 126 ; Miller v. Scarle Barker & Co., 1893, 10 E. P. C. 106. 3. It is not sufficient for a patentee to shew an important part of his patent in a drawing if he does not call attention to it in the description ; Fair- bum v. Household, 1886, 3 E, P. C. 267 ; Clark v. Adie, 1877, 2 App. Cas. 315; and mere inference from the drawings cannot control the clear language of the specification: Stewart v. Briggs, 1883, 11 Ct. of Sess. Cas. 4th ser. 236. 4. The drawings need not be well executed if they satisfy the requirements of the Patents Acts and Rules. — It is enough if they enable a competent workman to understand them : Bovill v. Moore, 1816, D. P. C. 369. They ought to have a scale where needful to explain the invention: Morton v. Middleton, 1863, 1 Ct. Sess. Cas. 3rd ser. 724. A drawing which is obviously erroneous may be corrected by reference to the specification: Otto v. Linford, 1881, 46 L. T. (N.S.) 40. 5. Anticipation by drawings. — A drawing without a ante, p. 158. description may be an anticipation. post, p. 242. 6. If the provisional specification has a drawing, reference to it may be made in the complete speci- fication, and no new drawing is needful : Patents Act, post, p. 477. 1886, s. 2. ( 203 ) CHAPTER XL CONSTRUCTION OF SPECIFICATIONS. 1. The beneficial construction. — The construction Chap. XL • ■ SECT. 1. of specifications has been the subject of many decisions, which, when examined, shew no contradiction of prin- ciple, though the mode in which the principle is ex- pressed differs. The rules of construction are three : (1) That the ordinary meaning of words is to prevail ; (2) Subject to expert evidence to explain technical terms, (3) That where it is possible to give two different con- structions to a specification, then, if it can be done without a violation of the words, such a construction «ee ante, p. 198, should be given as will support the patent. Patents in old law were, like all grants, construed most strongly against the grantee, and upset upon the smallest suggestion that the full consideration for them had not been given, or that the Crown had been deceived. In order to try and avoid this harsh construction, it was usual to insert in the recitals the words, " Ex mero motu et certa scientia," which were held in B. v. Mussary, ante, p. 15. 1738, Bull. N. P. 76 a., 1 W. P. C. 41, " to occasion the grant to be taken in its most liberal and beneficial sense." In addition to this, a clause used to be (and still is) inserted, that " the patent should be considered to be ante, ;?. 13. most available " for the patentee : 1 W. P. C. 26 (see poet, p. 265, 204 ENGLISH PATENT PRACTICE. Chap. XI. SECT. 1. The beneficial construction. Chap. XVII., sect. 7). In accordance with these prin- ciples, a beneficial interpretation has always been given to patents, although at one time, viz., before 1830, the Courts were stricter in construing them : Neilson v. Harford, 1841, 1 W. P. C. 310 (per Parke, B.). But though they were once very strictly applied, the general principles in favour of a beneficial construction have always been admitted, as appears from the following cases, which, however, are now of less importance, because more recent cases, to be presently cited, have amplified and explained them : Boulton v. Bull, 1795, D. P. C. 212 ; Hullett v. Hague, 1831, 2 B. & Ad. 377 ; Haivorth v. Hardcastle, 1834, 1 W. P. C. 485; Bussell v. Cowley, 1835, 1 W. P. C. 470 ; Minter v. Mower, 1835, 1 W. P. C. 141 ; Bichforcl v. Skewes, 1841, 1 Q. B. 950, 1 W. P. C. 219 ; Neilson v. Harford, 1841, 1 W. P. C. 372 (followed in Edison v. Holland, 1888, 5 B. P. C. 474) ; Househill Co. v. Neilson, 1843, 1 W. P. C. 679 ; Elliot v. Turner, 1845, 2 C. B. 416, 15 L. J. C. P. 49 ; Neivton v. Grand J. Bail Co., 1845, 5 Ex. 335, 20 L. J. Ex. 427 n.; Stevens v. Keating, 1848, 2 W. P. C. 187 ; Sellers v. Dickinson, 1850, 5 Ex. 324 ; Tetley v. Eastern, 1852, M. P. C. 74 ; Palmer v. Wagstaffe, 1854, 9 Ex. 501. The words " of our especial grace, certain knowledge, and mere motion " always remained, and still remain, in the form of the patent. In the form prior to 1852 a clause was inserted validating the patent, "notwith- standing the not full and certain describing the nature and quality of the said invention " : Hindmarch, p. 628. After the Patents Act of 1852, however, that form was altered, and then stood, " shall be taken, construed, and adjudged in the most favourable and beneficial sense for the best advantage of the patentee " : see forms at the CONSTRUCTION OF SPECIFICATIONS. 205 end of Patents Act, 1852. In form D, attached to the Chap. XI. Patents Act of 1883, and which, with slight modification, — !_ ' is now in use, the words " of our especial grace, certain beneficial knowledge, and mere motion " are retained, as also " that construction, these our letters patent shall be construed in the most beneficial sense for the advantage of the said patentee." The Courts have always endeavoured to give force to the words of favourable construction contained in the grant. This was at one time known as the benevolent construction, a term which is now in disfavour, and which has been replaced by the term " beneficial " con- struction. The following cases, from the year 1864 to the present time, exemplify this : — Simpson v. Holliday, 1864, 20 Newton's Lond. Journal (N.S.) 107, 13 W. E. 578, 12 L. T. (N.S.) 99.—" The rules which govern the construction of specifications . . . are the ordinary rules for the interpretation of written documents. If the words, ' the most liberal construction, are intended to denote some principle of interpretation different from the ordinary rules for the interpretation of written documents, I am not aware of any such autho- rity " (per Westbury, L.C.) : followed in Edison v. Holland, 1888, 5 K. C. P. 475. Neivton v. Hcdbard, 1872, John. 152. — " A specification should not be construed in any technical or captious spirit, but with a fair intention to give it effect, if it be reasonably intelligible." Harrison v. Anderston Foundry Co., 1876, L. R. 1 App. Cas. 581. — " A specification ought not to bo sub- jected to what has been called the benign interpretation, or to the strict one. The language should be construed according to the ordinary meaning." Hinlcs v. Safety Lighting Co., 1876, 4 Ch. D. 612.—" I 206 ENGLISH PATENT PRACTICE. Chap. XL SECT. 1. The beneficial construction. am anxious ... to support honest bona fide inventors . . . and to prevent their patents being overturned on mere technical objections. . . . This is sometimes called a ' benevolent ' mode of construction. Perhaps that is not the best term to use, but it may be described as construing a specification fairly with a judicial anxiety to support a really useful invention, if it can be supported on a reasonable construction of the patent. Beyond that the benevolent mode of construction does not go " (per Jessel, M.R.). Plimpton v. Spiller, 1877, 6 Ch. D. 422.—" It is the duty of a judge to construe a specification fairly with a judicial anxiety to support a really useful invention . . . it is the duty of the judge to adopt the construc- tion which makes the patent reasonable and sensible, rather than that which makes it utterly absurd " (per Jessel, M.K.). Clark v. Adie, 1877, 2 App. Cas. 436.— "In construing the specification, we must construe it like all written documents. But when it is attempted ... to say that inasmuch as these specifications shew matters . . . which were old when the patent was taken out . . . therefore the patent must be so construed as not to include them, that seems to me both contrary, so far as I know, to the course of decision, and contrary to principle (per Lord Blackburn). Dudgeon v. Thompson, 1877, L. K. 3 App. Cas. 53. — " The duty of the Court is fairly and truly to construe the specification, neither favouring one side nor the other " (per Lord Blackburn). Otto v. Linford, 1882, 46 L. T. (N.S.) 38.— "There should be a bias in favour of that construction which supports a patent" (per Jessel, M.R.). CONSTRUCTION OF SPECIFICATIONS. 207 Cropper v. Smith, 1884, 1 K. P. C. 89.— "We were Chap. xi. pressed very earnestly to give this document that which L ' has been called a benevolent construction. It seems to ?\ lic fi • , me that prayer for grace is very often addressed to Courts construction, under circumstances which preclude the idea of their entertaining it for a moment. It is quite true that in old times a great many judges were supposed to be astute to defeat patents, and as a corrective, so to speak, to that inclination of the Courts it became necessary for the tribunal to warn itself that patentees must be fairly dealt with, as between themselves and the public ; and as a canon of construction, accordingly, reference has been from time to time in various cases made to the idea that a benignant or benevolent construction was one that ought to be involved, that is to say, reference has been made to an old principle of construction, which is not at all special to the subject-matter of patents, but applies to all documents and all deeds, which is as old as Coke and Shepherd's Touchstone, to the effect that the interpreta- tion of a written document ought to be benevolent or benign — ' Verba debent intelligi cum effetu ut res magis valeat quam pereat.' Now that is only a caution against excessive formalism. It only means, that when you can see what the true construction of the document is, or, in other words, what the true intention of the parties is as expressed in their language, you must not allow yourself to be drawn away from the true view of the document by over-nicety in criticism of expression. That is what seems to me to be meant. You must remember that the parties meant to do something by their deed, and you must not defeat it if effect can be given to their inten- tion by a fair construction of the whole of the document " {per Bo wen, L.J.). 208 ENGLISH PATENT PRACTICE. Chap. XL SECT. 1. The beneficial construction. Needham v. Johnson, 1884, 1 E. P. C. 58.—" 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. There is no particular benevolence in that. It is a general principle of interpretation applicable to all documents, but of course those who talk about benevolent interpreta- tion do not mean more than that " (per Lindley, L.J.). Philpot v. Hanbury, 1884, 2 E. P. C. 38.—" I should read the specification liberally ... is this such, that a fair man, willing and wishing to understand the specifi- cation, can reasonably gather from it what the patentee considers his invention?" (per Grove, J.). Sugg v. Bray, 1885, 2 E. P. C. 231.— "The patent must be construed ... by giving the ordinary and natural meaning to the words " ( per North, J.). Lister v. Norton, 1886, 3 E. P. C. 203.—" The specifi- cation ought to be construed like any other legal docu- ment, as a whole. It certainly ought not to be construed malevolently — I will not say it ought to be construed benevolently — I do say it ought to be construed fairly. It must be read by a mind willing to understand, not by a mind desirous of misunderstanding. Inventors and those who assist them are seldom skilled adepts in the use of language ; faults of expression may be got over where there is no substantial doubt as to the meaning " (per Chitty, J.). Automatic Weighing Machine Co. v. Knight, 1889, 6 R. P. C. 307.—" We are told by the statute that we are CONSTRUCTION OF SPECIFICATIONS. 209 to consider all patents in the most beneficial sense for Chap. XI. the advantage of the patentee. Why this clause should 1 ' have been put in I do not know . . . we must ascer- ^ ueficial tain the real meaning, and must, in obedience not only construction. to the command, but to common sense, construe it so as to uphold it, if it can be reasonably done " (per Lindley, L.J.). Leadbitter v. Kitchin, 1890, 7 R. P. C. 244.—" A speci- fication is to be construed neither in favour of the grantee nor against him, but precisely according to the rules applied to any other document " (per Brett, L.J.). (The patentee had described a guard for toothed wheels and belted pulleys. To avoid anticipation, he wanted the Court beneficially to read it as though he had only claimed the guard for the belted pulleys. Held, it could not be done.) A consequence of the principle that a patent is to be supported if the language reasonably admits of it is, that a patentee is not to be presumed to claim things that he must have known were in general use (see Chap. VIII., sect. 15) ; and where a claim in a patent is too widely ante > P- 187 - stated, and would if isolated be bad, the beneficial con- struction is often applied to restrict it, and thus save the patent (see Chap. IX., sect. 7). ante, p. 198. 2. The title, specifications, and claims, may all be looked at, to explain one another. — " You must always construe a claim with reference to the whole context of a specification" (per James, L. J.) : Plimpton v. Spiller, 1877, 6 Ch. D. 427. In Edison v. Woodhouse, 1887, 4 R. P. C. 106, where a claim was for the use of a " carbon gas or liquid," the words " carbon gas " were allowed to be explained as not meaning every sort of carbon gas p 210 ENGLISH PATENT PRACTICE: Chap. XI. SECT. 2. The title, specifications, and claims may all be looked at, to explain one another. (some of which, as a fact, would not succeed), but as meaning only certain sorts of carbon gas, the nature of which could be gathered from the specification. This case may be compared with Stevens, v. Keating, 1847, 2 W. P. C. 194, where a claim to the use of "acids as- hereinbefore described" was held to mean all sorts of acids, some of which would do, and some would not do, and the patent was held bad. The specifications are to be read in connection with their titles (per Parke, B.) : Newton v. Vaucher, 1851, 6 Ex. 859 ; Hornhlower v. Boulton, 1799, D. P. C. 220, 8 T. E. 95; Oxleij v. Holden, 1860, 8 C. B. (N.S.) 747, 30 L. J. C. P. 74, 8 W. B. 627 f Househill Co: v. Neilson, 1843, 1 W: P. C. 679. Although the provisional specification may be used to explain the final, it is not permissible to. supplement it ; Mackelcan v. Bennie, 1862, 13 C. B. (N.S.) 52 ; see also Chap. VII., sect. 4. Compare ante, 3. Construction with reference to public know- iii 77 ^ 1 ^ ledge at the time. — The specifications are to be con- strued with reference to public knowledge -at the time Compare post, they are sent in. For this purpose former specifications 'inventiotr n may be consulted, and evidence of experts taken: Hocking v. Hocking, 1886, 3 K.r P. C. -293. " If the words of the specification are clear, of course these specifications cannot help in any way, nor could the public knowledge at the time help in any way, but if they are doubtful, then I think it may be legitimate and useful, in ascer- taining the true construction of the terms of the specifi- cation, to look to all matters which could help the judge to determine what was the state of public knowledge at the time when this patent was granted " ( per Cotton, L.J.); ante, p. 176. p. 299. CONSTRUCTION OF SPECIFICATIONS. 211 see also Coachman' v. Greener, 1884, 1 E. P. C. 199 (per Chap. XI. LordEsker, M.E.).. S — 3 ' Thus, in The Badische Anilin FabriJc v. Levenstein, 1887, °° t °f r r e u _ ction the word " naphthylamine " was used. It Mas argued ference to . , ill public know- that there were two sorts, viz., alpha- and beta-naphthyla- ledge at the mine, that only the former would do, and that the patent did not distinguish them. It was the fact that, at the date of the patent, both were known, but under the names " naphtlaylamine " and "new naphthylamine." Hence the patentee, in describing as " naphthylamine " what was afterwards termed "alpha-naphthylamine," had correctly used the language in vogue when it was sent in, and the patent was supported" 4 E. P. C. at p. 463 ; see also Lewis v. Marling, 1829, 1 W. P. C. at p. 496, 10 B. & C. 22. This principle was also affirmed by the House of Lords : King Broivn v. Anglo-American Brush Co., 1892, 9 E. P. C. 322 ; and see Heath v. TJnwin, 1852, 2 W: P. C. 228, 12 C. B. 522, 5 H. L. C. 505 (per Alderson, B.) ; Clark v. Adie, 1877, 2 App. Cas. 436;. Westinghouse v. Lancashire and Yorkshire Bail. Co., 1884, 1 E. P. C. 98 ; Ellington v. Clark, 1888, 5 E. P. C. 325 ; Crossley v. Beverley, 1829, 1. W. P. C. 107 ; Ashworth v. Boberts, 1892, 9 E. P. C: 92. 4. Lapse of time has- some effect upon the con- struction of a patent, so that if a patent has stood inquiry and the test of time, this is evidence that the specification is intelligible: Neilson v. Betts, 1871, L. E. 5 H. L. C. 1, 40 L. J. Ch. 317, 19 W. E. 1121. 5. The use of particular words in patents. — Examples of Foreign words in a patent, sueh as " vis de pression " ^cuto/words and " centimetres," will not vitiate it, if the meaning is p 2 212 ENGLISH PATENT PEACTICE. Chap. XI. SECT. 5. Examples of use of par- ticular words. comprehensible : Bloxam v. Elsee, 1825, 1 C. & P. 558, 6 B. & C. 169 ; see also Cassella v. Levinstein, 1891, 8 R. P. C. 473. " Manufacture." — This word is used in the widest sense : Cornish v. Kerne, 1835, 1 W. P. C. 508, 2 C. P. C. 314 ; Bush v. Fox, 1852, M. P. C. 176, 23 L. J. Ex. 257 ; Ralston v. Smith, 1865, 11 H. L. C. 223, 20 C. B. (N.S.) 28, 35 L. J. C. P. 49. " As above described." — These words have a limiting effect : Plating Co. v. Farquharson, 1879, Griff. 191 ; Barber v. Grace, 1847, 1 Ex. 339, 17 L. J. Ex. 122. " Substantially as described." — These words, accord- ing to Grove, J., " come to nothing," and the word " substantially " is mere verbiage : Westinghouse v. Lan- cashire and Yorkshire Rail. Co., 1884, 1 K. P. C. 241. " Substantially as hereinbefore described," inter- preted by North, J. : Lawrence v. Perry, 1885, 2 R. P. C. 183 ; EasterbrooJc v. G. W. Rail. Co., 1885, 2 E. P. C. 208. " As above set forth." — In the sentence " provided with a shoulder . . . made from a piece of wire as above set forth " the word " as " was read as relating to " provided," not to " made " : Bray v. Gardner, 1887, 4 R. P. C. 403. " Substantially as set forth," must refer to the description in the specification : United Telephone Co. v. Bassano, 1886, 3 R. P. C. 315 (per Cotton, L.J.). " As described and illustrated," refers to the drawings: Fairhirn v. Household, 1886, 3 R. P. C. 267. " Other substances," is not too general, and means other substances ejusdem generis : Crossley v. Beverley, 1829, 9 B. & C. 63 ; Bickford v. Shewes, 1841, 1 Q. B. 948, 1 W. P. C. 218. " Any mechanical equivalent," are useless words. CONSTRUCTION OF SPECIFICATIONS. 213 They are implied, and need not be stated : Curtis v. Chap. XI. Piatt, 1863, 3 Ch. D. 137, n. s !!!l 5 - « Analogous " : see Brawn's Patent, Griff. App. 1. " The Exar 7 les of Q ' rt use ot par- inventor does not limit himself. ...";" It will be evi- ticulai words. dent that the process may be varied," are useless words : Binney v. Feldtman, H. L. (per Cairns), 1875, Griff. 52. " More or less," means a substantial quantity : Plating Co. v. Farquharson, 1883, Griff. 192. " Effect," read as " beneficial effect " : Neilson v. Harford, 1841, 1 W. P. C. 372. " A," must be read in the singular. Thus, " a " machine to do various things, means that one machine must do them all, not that various machines of different sizes are required : Hastings v. Brown, 1853, 1 E. & B. 450, 22 L. J. Q. B. 161 ; Bloxam v. Elsee, 1827, 6 B. & C. ante, p. 186. 169, 9 D. & E. 215. " And." — " Metal fittings and the mode of applying them." Held, a patent only for the fittings, in accord- ance with the rule of interpretation laid down in Oxley v. Holden, 1860, 8 C. B. (N.S.) 666 ; Chap. VI., sect. 1. ante, p. 166. " Etc., etc.," held to mean another name for the thing after which they were put, and not necessarily too vague : Shaw v. Jones, 1889, 6 R. P. C. 333. " Or," must be read disjunctively. Thus, where a patentee said, " I do A," or " I accelerate it by B," and it was shewn that B was indispensable to success, the patent was held bad : Simpson v. HoUiday, 1864, 20 Newton's Lond. Journal (N.S.) 108 ; see also Elliot v. Turner, 1815, 2 C. B. 446, 15 L. J. C. V. 49. In the case of Hills v. London Gas Light Co., 1860, 5 H. & N. 312, 27 L. J. Ex. 60, 29 L. J. Ex. 409, " hydrated or precipitated oxide of iron " was allowed to be read as if the word or was omitted. 214 ENGLISH PATENT PRACTICE. Chap. XI. SECT. 5. Examples of use of par- ticular words. ante, p. 163. " S." — In a patent for improvements, one improve- ment was allowed to be enough, for every part of the new plan might be considered as an improvement : Derosne v. Fairie, 1835, 1 W. P. C. 162 ; see also Nickels v. Easlam, 1844, 8 Scott N. E. 97, 7 M. & G. 378, 8 Jur. 474, 13 L. J. C. P. 146. But where the patent said that " notes " were produced that never were before produced, held, that one new note would not satisfy the descrip- tion : Bainlridge v. Wigley, 1810, Pari. Kep., 1820, 197, 1 C. P. C. 270. ( 215 ) CflAPTEK XII. AMENDMENT OF THE SPECIFICATION. 1. Practice prior to the Patents Act, 1883. — chap. xii. Formerly the patent was in the custody of the Chan- S ECT ' ' cellor, but the enrollment thereof and the specifications were under the custody of the Master of the Rolls, who allowed the amendment of clerical errors, but no others : 1 W. P. C. 641. By 5 & 6 Win. IV., c. 83, disclaimers were first allowed, which, however, could only repudiate some matter claimed, and which could not amend errors in the specification. When made, the disclaimers were held to date back to the specification. By the Patents Act, 1852, 15 & 16 Vict., c. 83, s. 29, it was provided that no action should be brought for infringements prior to the disclaimer, except by leave of the law officer. 2. Amendment of the Specification under Patents Act, 1883. — As soon as a specification has been sent in the Comptroller may require it to be amended : Patents Act, 1883, ss. 7, 9. But if the applicant for the post, p. 1 12. patent, or the patentee, after it has been granted, desire to amend a specification, he must do so under sect. 18 of the Act of 1883: In re Jones, Griff. 313. The word J»*P 448. patentee means the " person " for the time being en- titled to the patent, and thus includes assignees and 216 ENGLISH PATENT PRACTICE. Chap. XII. SECT. 2. Amendment of the specifi- cation under Patent Act, 1883. post, p. 357. post, p. 481, post, p. 486, personal representatives : 13 & 14 Vict., c. 21, s. 4 ; Patents Act, 1883, s, 46. Infants or lunatics would be represented, as provided in sect. 99. It may be doubtful whether a mortgagee would be entitled to amend a specification without the mortgagor : (see " Parties to an Action," Chap. XXVIIL, sect. 2). Amendments may, under sect. 18, be made at any time, and from time to time, except when an action for infringe- ment, or proceeding for revocation, is pending : Patents Act, 1888, s. 5. See also Patent Eules, 1890, r. 16, 16a. post, p. 448. post, p. 494. see also post, p. 550. 3. Amendment of specification when no action is pending, is governed by sect. 18, and the Patent Rules, 1890, 52-59, and Form F. When the amendment has been made and allowed it cannot be afterwards objected to, on the ground that the advertisements were not duly inserted, or that an action was pending, and hence, that the making of it was ultra vires. The order of the Comptroller would be conclusive upon these points : Farben Fabrik v. Bowler, 1891, 8 R. P. C. 396. post, pp. 450, 474. 4. Amendment of specification when an action of infringement or petition for revocation is pending. — The method is first, under sect. 19, to obtain leave of the Court (Patents Act, 1883, s. 117), to apply to the Comp- troller, and then to proceed as under sect. 18 (as amended by Patents Act, 1888, s. 5), and Patent Rules, 1890, 55-59, Form F^and see Rule 58 (per Cave, J.): re Hall and Others, 1888, 5 R. P. C. 312. It is, however, to be noticed, that in this case the amendment will have to be limited to a mere disclaimer. By this it is not meant that words may only be struck out, and none inserted, but that substantially, the essence of the amendment AMENDMENT OF SPECIFICATIONS. 2Y1 must be a disclaimer, and not a correction : Ralston v. Chap. XII. Smith, 1865, 11 H. L. C. 245 ; Thomas v. Welch, 1866, __ ' L. R. 1 C. P. 195. It is to be observed that the necessity *££$££ for leave of the Court is not necessary when an action tion wh en an " action oi for threats is pending. Leave is not necessary after infringement judgment, by which is meant not necessarily the judg- revocation is ment of a Court of Appeal, but the judgment of the P endm s- Court below, so that after judgment, the fact that an appeal is pending is no objection to the patentee's right to apply to amend without leave : Cropper v. Smith, 1884, 1 R. P. C. 254 ; Lawrence v. Perry, 1885, 2 R. P. C. 188 ; Haslam v. Hall, 1887, 5 R. P. C. 24. The application for leave to apply to the Comptroller can be made at Chambers : Singer v. Stassen, 1884, 1 R. P. C. 122. In granting the application, the Court has an absolute discretion as to the conditions which it will impose : Allen v. Doulton, 1887, 4 R. P. C. 383 ; Lang v. White- cross Co., 1889, 6 R. P. C. 574 ; re Lang, 1890, 7 R. P. C. 469. In framing these conditions the Court will see that no one against whom the leave is granted is prejudiced: Goulard v. Gibls* Patent, 1888, 5 R. P. C. 191 ; Goulard v. Lindsay, 1888, 5 R. P. C. 193 ; Bray v. Gardner, 1887, 4 R. P. C. 42. As a general rule the terms are that the amended specification shall not be given in evidence at the trial ; that no damages shall be recovered for in- fringements prior to the date of the amendment, and some provision as to the costs in the action ; but the terms vary in each case, and evidence of the amended specification has sometimes been allowed to be given, on the terms that no damages should be asked, nor in- junction obtained, in respect of anything done before the disclaimer: Lang v. Whitecross Co., 1889, 6 R. P. C. 570. 218 ENGLISH PATENT PRACTICE. Chap. XII. Examples of the conditions imposed are to be found in SFOT 4 _ ' Singer v. Stassen, 1884, 1 R. P. C. 122 ; Winter v. ^specS* Baybut, 1884, 1 R. P. C. 76; Codd v. Bratby, 1884, 1 Son of" an R * R C - 209 ; and Fusee Vesta Co - v - Brywnt & May, infringement 1887, 4 R. P. C. 171, in which no conditions as to or petition for , „ . . „ . revocation is damages tor prior infringement were imposed, and the pen mg. amended specification was directed to be given in evi- dence, although those conditions were asked for by the defendant : see Allen v. Boulton, 1887, 4 R. P. C. 375 ; Easlam Foundry v. Goodfelloiv, 1888, 5 R. P. C. 30, where an order was made substantially on the same principle as in the Fusee Vesta Co. v. Bryatit & May. The appli- cation to amend may be made at the hearing, after defendant has closed his case : Meyer v. Sherwood, 1890, 7 R. P. C. 283. Where the Court imposes no conditions the law officer and the Comptroller ought not to do so : Hear- son's Patent, 1884, 1 R. P. C. 213. When more than one action for infringement or pro- ceeding for revocation is pending, it is not necessary to get leave to apply to amend in all of them : Be Hall, 1888, 5 R. P. C. 310 ; Goulard & Gibbs' Patent, 1888, 5 R. P. C. 194. The practice was formerly different : Codd's Patent, Griff. 305. post, pp. 449, 5. Opposition to the amendment is governed by Patents Act, 1883, s. 18, and Patent Rules, 1890, 53-59, ante, sect. 3, and Form G. Notice of opposition may be given within a month of the first advertisement of the application to amend. The opponent may then within fourteen days from the expiration of the month leave at the Patent Office statutory declarations in support of his opposition (Rule 55), and by Rule 56 the proceedings to the hearing AMENDMENT OF SPECIFICATIONS. 219 will go on according to Rules 38-41, as in the case of Chap. XII. oppositions to grants of patents. The case is then heard 1 ' by the Comptroller, from whom an appeal lies to the law ^JJamend-* officer: Patents Act, 1883, s. 18, s-s. 3. Where an meut. applicant fails to appeal to the law officer, he cannot post, p. 449. make a fresh application and then appeal : Arnold's Patent, Griff. App. 5. The appeal will be conducted according to the law officer's rules made under s. 38 post, p. 457. of the Patent Act, 1883. No appeal lies from the law officer, nor is he " a Court " to which a prohibition can go, if he exceeds his authority : Ex parte Simon, 1888, 6 R. P. C. 22. The Comptroller, as well as the law officer, has power to determine whether an opposer has a locus to be heard : Bell's Case, 2 Griff. 10. A prior patentee, or a person working according to a patent which he has purchased, but which has expired, is entitled to oppose if the amendment might affect his rights : Glossop's Patent, Griff. 285 ; Heath & Frost's Patent, Griff. 288 ; Hampton & Facer's Application, 1885, Griff. App. 13 ; and compare further the observations on " Opposition to Grants of Letters Patent," Chap. XVI. post, p. 24 P- 247 - In Re Wirtlis Patent, 1879, L. R. 12 Ch. D. 303, it was decided that a patent might be granted to an alien resident abroad, for an invention communicated to him by another alien resident abroad. This decision followed logically the principles that an importer might be con- sidered as an inventor, and that a patent could be granted to an alien resident abroad. But now, by notice April 21st, 1884, P. 0. J. May 9th, 1884, the Patent Office has announced that no such patents will in future be granted, and the Form of Application Al, naming the " county " of the applicant, will prevent a foreigner from post, p. 510. applying for a patent for a communication from some one else. It is to be noticed that Form A does not contain this word of description of the applicant's address. (As to " Extension," see p. 329.) 234 ENGLISH PATENT PRACTICE. Chap. xiii. 8. Meaning of the word " patentee." — The word " — _' "patentee" means in the Act the person for the time being entitled to the patent, and includes executors, pod. p. 462. administrators, and assigns : 13 & 14 Vict. c. 21, s. 4, and Patents Act, 1883, s. 46. When a patent is mort- gaged, the mortgagor is the " patentee." See also as to post, p. 281. personal representatives, Chap. XXII., sect. 7, and as to assignees generally, Chap. XXII. ( 235 ) CHAPTEE XIV. PATENT AGENTS. 1. Patent agents, though employed before the Patents Ohap. xiv. Act, 1888, were for the first time recognised by that Act : s. 1. The only privilege a patent agent apparently P°f;V o p 79 ^ has, is that no one else has a right so to call himself 8, post; pp. 484, 533 under a penalty of £20. By merely writing " Agent for X.," a man does not render himself liable to this penalty : Graham v. Fanta, 1892, 9 E. Y. C. 164. Communica- tions with a patent agent are not privileged like those with a solicitor : Moseley v. Victoria Rubber Co., 1886, 3 E. P. C. 355 ; and he is liable to his principal for fraud or misconduct : Lee v. Walker, 1872, L. E. 7, C. P. 121. The relation of agent to a patentee creates the duty of exercising uberrima fides, so that an infringement by him is to be more strictly viewed than one by a rival manu- facturer: Wheatstone v. Wilde, 1861, Griff. 247. In order to become a patent agent it is necessary to be placed on the Eegister of Patent Agents ; and for this purpose a preliminary examination must be passed or else a university matriculation, or Civil Service examina- tion, or else the candidate must have been for seven years pupil or assistant of a registered patent agent or agents. A final examination in patent law is in all cases necessary. The law regulating the admission of patent agents on the register is governed by the rules of the Board of Trade, made on June 11th, 1889. They are not officers SECT. 1 Patent agents. 236 ENGLISH PATENT PBACTICE. Chap. XIV. of the High Court of Justice, but of the Board of Trade, by whom their names may be removed from the register for misconduct or other specified causes. post, p. 533. l n August, 1891, the Institute of Patent Agents was re-incorporated by Royal Charter. Mere registration as a patent agent does not make the person so registered a member of the Chartered Institute of Patent Agents. (A description of the objects of the Institute is given in the post, p. 613. President's address, November, 1891.) On November 18, 1891, a set of rules was made applying the rules of 1889 to the Chartered Institute. The rights and privileges granted to patent agents do not seem to be commensurate with the duties and re- sponsibilities imposed upon them. They have no lien on documents, such as a solicitor possesses, though no doubt they have the usual common law lien on any document which they themselves have prepared or procured, or in respect of which they have paid fees or other money. The Patent Agents' rules provided for the payment of an annual fee. This rule has been held invalid and ultra post, p. 536. vires by the Scotch courts : Chartered Institute of Patent Agents v. Lochwood, 1893, 10 R. P. C. 167. (An appeal has been lodged against this decision.) post, p. 553. Lists of patent agents can be purchased. Elsewhere the very unsatisfactory state of the law relating to patent agents has been pointed out, and every day the number of unqualified persons who pretend to be patent agents is increasing. Ignorant inventors are being lured into taking out patents for inventions that are clearly old, and it is high time that a remedy should be applied to the evil. See the Presidental Address by Mr. Lloyd Wise to the Institute of Patent Agents, 1891. Proceedings, vol. x. p. 59 ; also a paper by A. V. Newton, ibid. ( 237 ) CHAPTEE XV. PROCEDURE TO OBTAIN A PATENT. [X.B. — For further details of Procedure the circular of information post, p. 541. published by the Patent Office may be usefully consulted. It is printed in the Appendix.'] 1. Whether to send in a provisional specification or c ^, ** ■ a complete specification in the first instance. — There are two modes in which an inventor may proceed to take out a patent, viz., to file a provisional specification, and then, within nine months, to follow it with a complete specification, or else to file a complete specification at once. In considering which of these courses to pursue, it is to be remembered that the date of the patent, from which its life begins to run, is the date of the application : Patents Act, 1883, s. 13. The first date after which porf,p.447. damages can be recovered is the date of the publication of the complete specification ; but no legal proceedings can % be commenced till the patent is sealed : sect. 15. A pro- visional specification, if abandoned, is not published, and hence does not prejudice a second or a third application for the same or another invention : Patents Act, 1885, s. 4. P»**> P- 476 - From one point of view it is, of course, desirable to have an early date for the patent, for from the date of application no subsequent publication of the invention, or independent discovery of it by another, can vitiate it : Patents Act, 1883, s. 14. Hence, then, it may often be post, p. 447. desirable to apply as early as possible, even before the 238 ENGLISH PATENT PRACTICE. Chap. XV. .SECT. 1. Whether to send in a provisional specification or a complete specification in the first instance. ante, p. 171. invention is complete in detail. On the other hand, its life begins to run from the date of the application ; and hence, if the inventor could be certain that his discovery would not leak out or be made independently, he would desire to commence the life of the patent only when he was completely ready to carry it out, and obtain the acceptance of the complete specification as soon as possible after his application. The reason why inventors usually commence with the provisional specification is, that after that date they can then shew the inven- tion to capitalists ; and hardly any invention is thus shewn without suggestions in detail being made to render it more likely to be a commercial success, which details can then be embodied in the complete specifica- tion. Besides, inventors often draw their provisional specifications very badly, and then, if they succeed in finding a capitalist, the matter is placed in the hands of some patent agent in whom the capitalist has confidence, and it is not too late either to draw a really good com- plete specification, or, if needful, to abandon the old provisional specification and commence de novo. If it is possible to file a complete specification at once, there is this further advantage, that the risk of disconformity is avoided : see " Provisional Specification," Chap. VII., sect. 3. On the other hand, however, there is a danger in filing the complete specification too soon. For when it becomes public, all those who have pending applica- tions, that is to say, who have sent in their provisional specifications, but not yet sent in their complete speci- fications, would be able to take from the complete so sent in any parts that pleased them, and which they could include within the limits of their provi- sional specifications ; and as their date of application PROCEDURE TO OBTAIN A PATENT. 239 would be prior to that of the inventor whose case we are Chap. x\ . SFC'T* 1 considering, they could pilfer from him with impunity. From these considerations we derive the result, that ^ lietlur to ' Bend in a where an invention is very original, quite complete, and provisional ii n • n specification not the least likely to be the subject of contemporaneous or a complete patents, an inventor, having scanned all pending appli- lithe-first"* cations, and finding that there is none whose title could lnstauce - cover his patent, might send in a complete specification in the first instance. In all other cases his wisest course would be to apply provisionally, and wait the full nine months before sending in his complete specification. (This question is very skilfully discussed by Mr. Lloyd Wise, in Engineering, date Jan. 29th, 188G.) 2. Procedure in sending in an application. — post, p. 542. Having determined upon a title, and decided on the scope and nature of the invention, and fixed upon the parties who are to be the applicants (see " Who may be a Patentee," Chap. XIII., s. 1,), the applicant procures ante, p. 228. from the Royal Courts of Justice, Strand, London, or else from any money order office in the United Kingdom, Form A or A 1, as the case may be, for which he will pay post, p. 508. £1. At the same time two copies of Form B will be given post, p. 497. to him, which he must fill up carefully without erasure : Patents Act, 1883, s. 5. No stamp is required for them, pott, p. 441. (Paper suitable for continuations of Form Bean be got post, p. 484. at any law stationer's, known as patent paper.) He then sends in the application and the provisional specification to the Comptroller : Patent Rules, 1890, 18. Where need- post, p. 487. ful a drawing must accompany the provisional : Patents post, p. 326. Act, 1883, s. 5, sub-s. 3. But this is not commonly done, for the object of the provisional is not to describe how to perform the invention, but to identify it: Chap. VII., s. 2. ante, p. 160. 240 ENGLISH PATENT PRACTICE. Chap. XV. These are then submitted to an examiner (Patents Act, S LCT ' ' 1883, s. 6), whose duty is to report upon whether the rrocedure m na t ure of the invention has been fairly described, whether sending m an • application. the application and specification are in due form, whether the title sufficiently indicates the subject-matter, and whether the specification includes more than one in- post, p. 456. vention : Patents Act, 1883, s. 33 ; or whether it contains post, p. 463. anything contrary to law or morality : Patents Act, 1883, s. 86. post, p. 442. As to the provisional specification, see sect. 5, sub-s. 3, ante, p. 161. and as to title, see Chap. VI. The question what con- stitutes " one invention " was discussed in Jones' Patent, Griff, 265. Lord Herschell (then A.-G.), said : " If you have a particular general (sic) 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 it was one invention ; but if there is no common purpose, so that you could say, ' I use this as a substitute for that,' . . . it strikes me that would be two inventions. I should always allow alternative devices for producing a par- ticular object as one invention. But if you say, ' I have invented six different kinds of railway sleepers,' each of which has its own merits, and purposes, and objects, then those are six inventions." An application was made for a patent for " improvements in rapidly heating water, a part of which improvements is applicable to other pur- poses." The invention consisted in a means of inter- locking taps, so that they could only be turned on or off in a certain order. It was stated that this plan was also useful for the cocks of oxy-hydrogen and other apparatus. It was pointed out by Davey, S.G., that he might either have a patent for his combination of cocks, or for its PROCEDURE TO OBTAIN A PATENT. 241 application to geysers, or for its application to oxy- Chap. XV. , ITT T A.' SECT 2- hydrogen apparatus, but that these were distinct m- ventions, and required separate patents : Eearsons Patent, ^J^™?^* 1886, Griff. 266. Again, another inventor who proposed application. to patent " improvements in the art of producing and utilising induced electrical currents for telegraphic and other purposes" was informed that he could either patent it for all purposes, or else take out separate patents for its application to telegraphy and for its application to other subjects. The inventor preferred the former alter- native, and the words in italics were struck out ; Robin- son's Patent, Griff. 267. An inventor who has included more than one invention in his application may amend it so as to apply to one invention only, or may make application for separate patents for the different machines : still preserving the date of his application. Patent post, p. 487. Rules, 1890, 19. 3. If the patent is contrary to law or morality it post, p. 463. may be refused ; Patents Act, 1883, s. 86. A patent for a lottery machine has been thus refused : Griff. 20. 4. The report of the examiner is private, but may in certain cases be produced : Patents Act, 1883, s. 9, post, p. 444. sub-s. 5. If the report is against the applicant, he will receive by letter an intimation of the fact, and be required to amend or correct his application or specifica- tion. But he may appeal if he please from the decision of the Comptroller to the law officer : Patents Act, 1888, post, p. 443. s. 7 ; and see Law Officer's Rules made under sect. 38. The Comptroller is not bound to follow the examiner's report: Cs Application, 1890, 7 R, P. C. 250. 5. Acceptance of the application and provisional post, p 443. i; 242 ENGLISH PATENT PRACTICE. Chap. XV. SECT. 5. Acceptance of the applica- tion and provisional specification. P. Act, 1S83, sect. 8, post, p. 382, and p. 371. As to Sundays and holidays, see sect. 98, j)ost, p. 350. specification. — As soon as the Comptroller is satisfied with the application and provisional specification, he will intimate by letter that they have been accepted, and publish a notice of the acceptance in the official journal : Patent Rules, 1890, r. 21. The patentee has now got nine months from and exclusive of the day of application to send in his complete specification, which may be extended for one month more. The date of the application is the day on which it is received at the Patent Office, not the day on which it is dated. The last day of sending in the complete specification is the same day of the month nine months on. Thus, an application dated, say, March 20th, might be received at the office on March 21st. This would be the date of the application and of the patent. The complete would then have to be in the office on December 21st. Documents are received up to twelve midnight by the policeman on duty if the other officials have gone home. ante, p. 201. post, p. 477. post, pp. 489, 544. ante, p. 178. post, p. 442. 6. Sending in the complete specification. — This is done on Form C, in duplicate, stamped with £3, and is accompanied by duplicate drawings (a specimen of which is to be found in the copies of the Patent Pules, 1890, which are supplied by the Patent Office, price 6d. It is also printed in Griffin's Patent Cases, p. 326.) If a drawing has been sent in with the provisional specification, it will be sufficient to refer to it if no further one is needed : Patents Act, 1886, s. 2. The drawings must be carefully prepared, according to Patent Kules, 1890, rr. 30-33. They should be clear, and black, to facilitate photo-litho- graphic reproduction. As to the complete specification, see Chap. VIII. It must conform to the provisional, and should end with claims : Patents Act, 1883, s. 5, sub-s. 5 ; PROCEDURE TO OBTAIN A PATENT. 243 though this is not fatal to its validity if it have been Chap. XV. passed by the Comptroller : see " Claims," Chap. IX. By a L ' distinct claim is meant more than a merely colourable f^Siete evasion of the requirements of the Act ; but when once specification. there is a clear claim, the Comptroller has no power to a "* e ' p " reject the application, because the claim goes beyond the description : Smith's Patent, 1884, Griff. 268. For the purpose of seeing whether the complete speci- fication is in due form, and whether it conforms to the provisional, it will be submitted to an examiner, who will report upon it : Patents Act, 1883, s. 9 ; and if his report is unsatisfactory, the applicant will, by letter, be required to amend it. 221. If he please, the Comptroller who has required altera- tions to be made may postpone the date of the patent till his requirements are complied with : Patents Act, 1888, s. 2. The patentee can, if he please, appeal to the law officer : Patents Act, 1883, s. 9, sub-ss. 2, 3, and Law Officer's post ' p> 444- Rules ; and see e.g., Be Everitt, 1886, Griff. App. 27. In the case of Grenfell v. MeEvoys Patents, the curious point was raised whether, when two persons had jointly applied for a patent, and jointly sent in a provisional specification, they could sever, and each send in a com- plete specification. This was not decided, but it was decided that one could proceed with the complete speci- fication if he pleased, and that it need not be signed by both : 1890, 7 R. P. C. 151. The fact that the complete specification is narrower than the provisional is no ground for the Comptroller refusing to accept it : Be Everitt, Griff. App. 27 ; but in that case he may, and ought to, require the applicant to amend the title and provisional if needful : Barfs Patent, Griff. 307. ante, p. 221 i? 2 244 ENGLISH PATENT PRACTICE. Chap. XV. 7. Acceptance of the complete specification. — As ' !_ ' soon as the complete specification is accepted, the ac- ceptance of it is published in the official journal, and the application, specifications, and drawings are open for poet, p. 445. public inspection : Patents Act, 1883, s. 10. The Comp- troller also gives notice to the applicant : Patents Act : post, p. 487. s. 7. sub-s. 4 ; Patent Eules, 1890, rr. 21, 22. This is an important date, as from it the possibility of infringement post, p. 447. begins: Patents Act, 1883, s. 13. The specifications post, p. 552. appear in print for sale about three weeks afterwards, and abstracts of them are given in the Patent Office Journal. If the complete specification is not accepted within twelve months from the date of the application, or within a further extended period of three months, then, except where an appeal against a refusal to accept is pending, post, p. 444. the application is void : Patents Act, 1883, s. 9, sub-s. 4. 8. Sending in the complete specification with the ante, p. 287. application : Patents Act, 1883, s. 5, sub-s. 4 ; as to the advisability of this, see Chap. XV., sect. 1. 9. Rival applications; interference. — If, after a patent had been applied for, but before it had been sealed, a second application came in bearing the same or a similar title, it was, under the Patents Act, 1883, customary to give an interference notice to the first applicant, and to let the two applicants dispute the question before the Comptroller, under s. 7, sub-ss. 5 and 6. But by the post, p. 480. Patents Act, 1888, s. 2, this was changed : see Chap. XVI. No such notices are now sent, but the second applicant may at any time within two months of the grant of the patent on the first application abandon his application, PROCEDURE TO OBTAIN A R A TENT. 245 or surrender his patent if it have been granted : see Chap. XV. RFf'T Chap. XVI., sect. 2 (post, p. 246). __ ' Kival applications ; 10. Powers of the Comptroller.— The Comptroller interference. may require any applicant to give a written or oral explanation of any matter : Patent Rules, 1890, 13 ; and post, p. 485. in all these cases of discretionary power of the Comp- troller he is required (Patents Act, 1883, s. 94 ; Patent post, p. 4G5. Rules, 11, 13), before deciding, to give ten days' notice to the applicant that he may be personally heard. If the applicant desires to be heard, he should then, within five days, give notice on Form E (£1 stamp) : Patent Rules, 1890, r. 12. ' The Comptroller always notifies his decisions to the applicant : Patent Rules, 1890, r. 14. He has no power to award costs. 11. An appeal lies to the law officer from any decision of the Comptroller : Patents Act, 1883, s. 9, sub-s. 3. The post, p. 444. Comptroller neither asks nor gives costs : see further Chap. XVI., sect. 8. post, v- 255. 12. Amendments of the specifications have been already dealt with in Chap. XII. anle > P- 215 - 13. Constitution of the Patent Office and powers of the Comptroller are dealt with in Patent Act, 1883, M p. 462. ss. 82, 83, 102 ; and it is provided that he cannot exer- cise a discretion adversely without affording the person affected an opportunity of being heard : sect. 94 ; post, PP- 4G5 » Patent Rules, 11-14. He may also dispense with evidence : Patent Rules, 80 ; and may refer doubtful post, p. 465. questions to the law officer. 246 ENGLISH PATENT PRACTICE. CHAPTER XVI. Chap. XVI. SECT. 1. OPPOSITION TO THE GRANT OF A PATENT. 1. Before the Patents Act, 1883, opposition to patents was regulated by the Patents Act, 1852, ss. 12, 13, 14, and the rules thereunder, and objections were referred to the law officer, and also could be taken before the Lord Chancellor. As a general rule, the sealing of the patent was not refused, except in a very clear case, on the ground that the effect of the refusal would be irre- parable : BusseWs Patent, 1857, 2 De G. & J. 130 ; Spenees Patent, 1859, 3 De G. & J. 523 ; Ex parte Sheffield, 1872, L. R. 8 Ch. 237, 42 L. J. Ch. 356. 4'J1. 2. Procedure under the Patents Act, 1883. — The old procedure is now abolished, and oppositions may now be made within two months after the advertisement of the acceptance of the complete specification, on which date the applications, specifications, and drawings become open to public inspection : Patents Act, 1883, s. 10. The pp. 445, procedure is regulated according to Patents Act, 1883, s. 11, Patents Act, 1888, s. 4, Patent Rules, 34-44, and Form D. In Brennaud's Patent, 1861, 7 Jur. 690, an ex- tension of time for opposing was granted. See a paper by Mr. Lloyd Wise, in the " Proceedings of the Institute of Patent Agents," vol. 8, p. 90. OPPOSITION TO THE GRANT. 247 3. Grounds of opposition. — The only grounds upon Chav. xvi. which an opposition may be made are those specified in 1. s. 11 of Patents Act, 1883, as amended by Patents Act, 1888, s. 4. In substance they are : (a) That the applicant has derived the invention from the opponent or an in- vention of whom the opponent is the legal representative, or his legal representatives ; (b) That the invention has already been patented on an application of prior date ; (c) That the applicant, after lodging his provisional specification, has incorporated into his complete speci- fication a different invention, for which the opponent has, in the interval, applied for a patent. 4. Opposition on the ground that the invention has been obtained from the opponent. — The obtaining must be within the United Kingdom, and not abroad. For an introducer is on the same footing as an inventor. Hence, no opponent can appear to say that the applicant has merely got the invention from him abroad : Edmunds' Patent, 1886, Griff. 281 ; Bairstow's Patent, 1888, 5 K. P. C. 287 ; Lake's Patent, 1888, 5 E. P. C. 415 ; Spiels' Patent, 1888, 5 E. P. C. 281 ; Biggins' Patent, 1892, 9 E. P. C. 74 ; see also Chap. XIII., sect. 7. ante, p. 232. But even when the applicant obtained the invention from the opponent with his consent in the United Kingdom, the patent was refused, as the applicant was not the first and true inventor : Marshall's Patent, 1888, 5 E. P. C. 661. ante, p. 229. It is to be observed, that only the person from whom the invention has been obtained, or his legal representa- tive, can oppose under this section, and it has been held that an assignee of an assignee is not sufficiently a " legal representative " : Spiels' Patent, 1888, 5 E. P. C. 281 ; and it has been queried whether a person holding a power of 248 ENGLISH PATENT PRACTICE. Chap. XVI. attorney is a " legal representative " : Edmunds' Patent, sectjL lg86j Griff _ 28Qi p ro tably the words here have the Opposition on same mea nin£ as in Patents Act, 1883, s. 34. the ground ° that the An opposition was made on behalf of a workman to a been obtained grant to his employer, but it was considered that the opponent workman in that case had only suggested improvements which belonged to his employer: David's & Woodley's Patent, 1886, Griff. App. 26; Soman's Patent, 1888, 6 K. P. C. 104 ; see further, Chap. XIIL, sect. 6 (p. 230). In the following cases the opposition was successful : Paterson & Dundon's Patent, 1886, Griff. 295 ; Griffins Patent, 1888, 6 E. P. C. 296. In order that a patent may be refused on the ground that the invention was obtained from the opponent, the evidence must be very strong indeed ; for that ground of opposition could always be employed to overturn the patent in an action : Stuart's Application, 1892, 9 R. P. C. 452. Cases, however, may arise in which the idea of the invention has been got from an opponent, and. yet has been so improved upon as to change the character of the invention. In these instances it is not necessary that the patent should be absolutely refused. Conditions may be imposed. Thus, where Hoskins had obtained from Needham an idea of a cot, held, he might have a grant, but on condition of stating that it was an improvement on a cot for which Needham had . taken out provisional protection : Hoskins' Patent, 1884, Griff. 291 ; followed in Newmans Patent, 1887, 5 11. P. C. 279. Cutting and Evans had been experimenting together, and Cutting took out a patent which Evans did not oppose. Subse- quently, Evans and Otway (a capitalist) applied for a OPPOSITION TO THE GRANT. 249 patent, which Cutting opposed. Held, that a patent Chap. XVI. SECT 4 would be granted to Evans and Otway on condition that — L ' Cutting and Evans each assigned half his patent to the 2?JSiSd ^ other. Otwav subsequently disappeared and could not that the J x "* *■ x invention has be found, so finally an order was made that a patent be been obtained not granted to Evans upon Cutting assigning to him half p ponen t. of his patent : Evans Patent, 1885, Griff. 279. Tathani opposed Luke's application on the ground that Luke had obtained the invention from him. The law officer made them share the patent, and provided for the event of either of them refusing to carry out his order : see the form of order, Lukes Patent, 1886, Griff. 294. Where B. had communicated an idea to E., who improved upon it, and suggested a joint patent, on B.'s opposition the patent was directed to issue to B. and E. jointly : Eadies Patent, 1885, Griff. 279. King and Garthwaite were joint inventors, and had each applied for a patent. On King's opposition to Garth waite's patent, it was held, that they must either have a joint patent or else each take out a patent and assign one half to the other : Garthivaite's Patent, 1886, Griff. 284. 5. Opposition on the ground that the invention had been previously patented on an application of prior date. — This was formerly a well known ground of opposition : see, e.g., StoU's Patent, 1853, 21 L. T. 233 ; Tolsons Patent, 1856, 6 De G. M. & G. 422 ; Ex parte Yates, 1869, L. E. 5 Ch. 1 ; Manceauxs Patent, 1870, L. K. 6 Ch. 272, 18 W. E. 1184 ; In re Scott & Young, 1871, 19 W. E. 425. It is not open to anyone to oppose on the ground that a prior patent for the same invention exists : IlooJchanis Patent, 1886, Griff. App. 32. The opposer must bu the 250 ENGLISH PATENT PRACTICE. Chap. XVI. prior patentee, or else a licensee of the prior patentee : ' Hill's Application, 1888, 5 K. P. 0. 599 ; Webster's Applica- Se P gr S ound° n tion > 1888 ' 6 K R C - 165 > or one who has Purchased the that the inven- prior patent, or worked under it, even though it has tion had been previously expired : Glossop's Patent, 1884, Griff. 285. But merely an application *° have manufactured according to the prior patent is of prior date. not su ffi c i e nt : MacEvoy's Application, 1888, 5 R. P. C. 285 ; nor to be intending to use the prior patent : Bairstow's Patent, 1888, 5 R. P. C. 286 ; nor has the agent of a prior patentee a locus to oppose : Heath & Frost's Patent, 1886, Griff. 288. An objection on the ground of a prior patent is equally good whether the prior patent has or has not expired : Lancaster's Patent, 1884, Griff. 293. An accepted prior complete specification is, for the purpose of opposition, sufficient, though the patent may not yet have been post, p. 447. sealed, by virtue of s. 15, Patents Act, 1883 : L'Oiseau do Pierraud's Application, 1886, Griff. App. 36. But a prior provisional specification for the same invention is not enough : Bailey's Patent, 1886, Griff. 269 ; nor, again, is a mere right to have a patent antedated under s. 103, Patents Act, 1883 : Everitt's Application, 1888, Griff. App. 28. But it is no objection to the sufficiency of a prior patent as giving locus to oppose that the invention has been put in the complete specification, but is not con- tained in the provisional: Green's Patent, 1886, Griff. 286; poet, sec. 6, Hayihornthwaite' s Application, 1890, 7 R. P. C. 70. A prior invention that has been merely described, but not claimed, will Dot afford a ground of opposition : Von Buck's Application, 1887, Griff. App. 40. The earlier view, that patents are not to be refused on mere suggestion of prior patents having been taken out OPPOSITION TO THE GRANT. 251 for the same invention, has been re-affirmed in the cases Chap. XVI. since 1883. " I am not here to stop patents, and certainly b hCT ' ' not at the instigation of an opponent because there is Opposition on _ L A the ground some general principle of patent law that has been in- that the inven- fringed " : Neivman's Patent, 1887, 5 R. P. C. 277 ; previously McHardy's Patent, 1891, 8 R. P. C. 432 ; Be Todd, 1892, S^JXn 9 R. P. C. 487. " By allowing a specification in any par- of P rior dute - ticular form no harm is done to persons who have a prior patent . . . but the law officer is bound to protect the pub- lic, so that they may not be misled " (per Webster, A.G.) ; opposition disallowed : Lorrains Patent, 1888, 5 R. P. C. 143 ; EilVs Application, 1888, 5 R. P. C. 599. In TattersalVs Patent it appeared that the second patent for a blower was very similar to the first on which the opposition was based, except that it provided for a receiver into which the blown air was to be gathered before being used. Held, that this was a possible improvement, and the second patent (subject to the insertion of a disclaimer of the first), was allowed to go : 1892, 9 R. P. C. 150 ; Atherton's Application, 1889, 6 R. P. C. 547. A real dispute as to an anticipation will not be tried under guise of an oppo- sition, nor for that purpose will evidence be taken before the law officer : Lake's Application, 1889, 6 R. P. C. 548. Examples of successful opposition on the ground of a prior patent are to be found in Daniel's Patent, 1888, 5 R. P. C. 413 ; Aire & Colder s Patent, 1888, 5 R. P. C. 345 ; Wallis & Badcliffe's Patent, 1888, 5 R. P. C. 347 ; Webster's Patent, 1888, 6 R. P. C. 103 ; Be Bailey, 1887, Good. Prac. Cas. 57 ; Boidt's Patent, 1893, 10 R. P. C. 275. The alleged anticipation must be clear and definite, and not depend on the piecing together of a number of prior patents : Be Boss, 1891, 8 R. P. C. 477. Unsuccessful oppositions— Pitt's Patent, 1888, 5 R. P. ( !. 252 ENGLISH PATENT PRACTICE. Chap. XVI. 343 ; Dundon's Patent, 1885, Griff. 278 ; Ruth's Patent, sectJ). lg84 ^ Qriffi 292 . metcher > s p atmtf 1889, Griff. App. 30 ; Opposition on ^gjg the inventions were almost, but not quite, identical. tlie ground - 1 that the inven- See also Gumming s Patent, 1884, Griff. 277 ; Stubbs' Patent, previously 6611 1884, Griff. 298 ; Jones' Patent, 1885, Griff. App. 33. ampliation It is frequently usual, upon an opposition to a grant of prior date. on ^q g r0 und of a prior patent, to impose on the appli- cant the condition of disclaiming the prior invention : Curtis v. Andre, 1892, 9 E. P. C. 495. The disclaim- ing clause must disclaim not merely the invention as described, but as claimed : Gozney's Application, 1888, 5 K. P. C. 597. Sometimes a specific disclaimer naming the prior patent is required : Sail & Hall's Patent, 1888, 5 E. P. C. 283 ; Welch's Patent, 1885, Griff. 300 ; Airey's Patent, 5 E. P. C. 348 ; Lynde's Patent, 1888, 5 E. P. C. 663 ; and this specific disclaimer is especially enforced when the applicant's patent contains a specific reference to the prior patent : Hookham's Patent, Griff. App. 32 ; Wallace's Patent, 1888, 6 E, P. C. 134 ; or again, where the prior patent is a " master patent " : Hoffman's Patent, 1890, 7 E. P. C. 92. But otherwise specific mention of previous patents in disclaimers is not generally desirable : Andersen & Maclunnell's Patent, 1887, Griff. App. 25, approved in Sielaff's Application, 1888, 5 E. P. C. 484 ; Guest & Barrows' Patent, 1888, 5 E. P. C. 312 ; Stell's Patent, 1891, 8 E. P. C. 235 ; Kilner's Patent, 1891, 8 E. P. C. 35 ; Welch's Patent, 1891, 8 E. P. C. 442 ; and where a disclaimer might prejudice the construction of a patent a similar reference to the prior patent may be sufficient : Van Gelder's Patent, 1892, 9 E. P. C. 325. A successful opponent is sometimes allowed to elect whether applicant's claim should be struck out or a disclaiming clause inserted : "league's Patent, 1885, Griff. 298. OPPOSITION TO THE GRANT. 253 6. Opposition on the ground that the applicant is Chap. XVI. . SECT. G. seeking to put into his complete specification an invention for which the opponent has applied for a patent in the interval between the applicant's provisional and complete specifications : Ander- sen & Andersen s Patent, 1890, 7 E. P. C. 323. In the older cases the person who by diligence could first get his patent sealed was allowed the patent : Ex parte Dyer, 1812, Holroyd, 59; Be Sampson, 1853, 21 L. T. 81; Bates & Bedgate's Application, 1869, L. E. 4 Ch. 577 ; 38 L. J. Ch. 501 ; Henry's Application, 1872, L. E. 8 Ch. 167, 42 L. J. Ch. 363. This was called " racing for a patent," or "racing for the seal." But this procedure was dis- approved by Lord Cairns : Be Bering, 1880, 13 Ch. D. 393. Sometimes where the applications were concurrent, joint patents were granted : Heath v. Smith, 1854, 2 W. P. C. 271 ; or else if the inventions were different they were severed : Macfarlane's Application, 1883, Johns. 165. This racing for a patent was stopped to some extent by the Patents Act, 1883, which antedated the grant to the date of application. But a danger was still left, for if A. had (provisionally) applied, say, on January 1st, and B. on February 1st, then A., if he could discover B.'s invention, and if his provisional specification were sufficiently wide, might incorporate into his complete specification what was really B.'s invention, and retain it post, j>. 445. against B. On the other hand, B. was unable to do this as against A., whose priority of application always protected him. B. thus required protection against A. The Patents Act, 1883, s. 11, instead of giving this protection to B., only aggravated the evil by allowing A. to put what he pleased into his complete specification, to the detriment of B., even though by this disconformity was produced 254 ENGLISH PATENT PRACTICE. Chap. xvi. in A.'s patent, and then when he had thus practically SPCT fi "" ' ruined B.'s patent, he was also allowed to oppose the grant of it : Green's Patent, 1886, Griff. 286. This glaring post, p. 445 injustice was remedied by the Patents Act, 1888, s. 4. 7. Hearing before the Comptroller. — The notice of opposition must be accurately drawn, and as a rule oppositions will not be allowed on grounds which have not been given in the notice (Patent Eules, 1890, r. 42). In a notice of opposition on the ground that the invention has been patented before, the title, name, and date of the prior patent must be given. But a defect in this respect has been allowed to be amended at the hearing : Airey's Patent, 1888, 5 B. P. C. 349 ; and where a patent agent died after the notice, but before the hearing, the notice was allowed to be amended by inserting the opponent's name : Lake's Application, 1887, Griff. App. 35. The notice should not state that the invention is " sub- stantially the same " : Jones' Patent, 1886, Griff. App. 33 ; nor should it say that the invention, " or material parts thereof," are the same : Fawcett's Application, 1889, Good. P. P. 10 ; for this would be to raise the question of con- struction and of infringement, which could not be tried. It is only cases of substantial identity which are the grounds of opposition. The Comptroller cannot take oral evidence ; hence, when it is desired to try the case on examination and cross-examination of witnesses it is usual to take merely a formal order from the Comptroller, and then to appeal to the law officer, who has full powers in this respect : Luke's Patent, 1886, Griff. 294 ; Hatfield's Patent, 1884, Griff. 288. The Comptroller cannot give costs. Where an opponent did not appear owing to not having OPPOSITION TO TEE GItANl. 255 received the notice of the day fixed for hearing, and the chap. XVI Comptroller declined to re-hear, the law officer directed him to do so : Warmaris Application, 1886, Griff. App. 43. Hearing before the Comptroller. 8. Appeals to the law officer. — The time for appeal see Law dates, not from the hearing, but from the time when the pos t%. 500. order or amendment is made after that hearing : Chandler's Patent, 1887, Griff. 270 ; Cooper & Ford's Patent, 1886, Griff. 275. Every appeal is a re-hearing : Stubbs' Patent, Griff. 298 ; but in general fresh evidence will not be allowed which might have been produced before the Comptroller : Hampton & Facer's Patent, 1887, Griff. App. 13. An appeal is allowable, though it does not ask that the grant should be refused, but only that terms should be imposed : BroimhilVs Patent, 1889, 6 R. P. C. 135. The applicant usually begins, except where an opponent alleges fraud : Lukes Patent, 1886, Griff. 294. Notice of appeal need not be given to the applicant by an opposer, but is to be given by the Patent Office or official clerk : EilVs Application, 1888, 5 R. P. C. 599. On the non-appearance of a party costs can be given against him : Dietz Patent, 1889, 6 R. P. C. 297 ; Ains- worth's Patent, 1886, Griff. 269 ; in which latter case a re-hearing was fixed on the respondent's explaining his absence. An appellant withdrawing his appeal may also be compelled to pay costs : Knight's Application, 1887, Griff. App. 35. As a rule the costs of the opposition will follow the event: Andertons Patent, 1886, Griff. App. 25; except where an opponent who successfully demanded an altera- tion in certain terms ought to have asked the applicant to consent to it before appealing : Woodhead's Application, 1887, Griff. App. 44. As the Comptroller cannot take 256 ENGLISH PATENT PRACTICE. Chap. XVI. SECT. 8. Appeals to the law officer. post, p. 446. ante, p. 219. oral evidence, nor have a cross-examination conducted before him, it is important that the declaration should be in the fullest good faith, and, therefore, when the appli- cant's declaration did not give the whole truth he was not allowed the costs even when successful on an appeal : Andertons Application, Griff. App. 25. On appeal, each party should hand in a statement of what fees have been paid by him, so as to enable the law officer to fix the costs at once {per Webster, A.G.): Sielaff's -Application, 1888, 5 E. P. C. 487. A stamp of £3 on the appeal will be allowed as part of these costs : Aire & Colder 's Patent, 1888, 5 K. P. C. 315. The law officer has power to order the assistance of an expert (Patents Act, 1883, s. 11, sub.-s. 4), but this power is not often exercised. He has once looked at a model which had not been properly made an exhibit, but only to explain the drawings, not as evidence : Lancaster's Patent, 1884, Griff. 293. The decision of the law officer is not reviewed on appeal by way of prohibition : Van Gelders Patent, 1888, 6 E. P. C. 22. 9. Opposition on the ground of fraud. — Prior to the Act of 1883 there was always a jurisdiction in the Court to prevent an inventor being robbed of his invention by a fraudulent application made by some other person Ex parte Scott v. Young, 1871, L. E. 6 Ch. 274. The Act post, p. 45G. of 1883, s. 35, provided that " a patent granted to the first and true inventor shall not be invalidated by an application in fraud of him, nor by provisional protection obtained thereon, nor by any use or publication of the invention subsequent to that fraudulent application during the period of provisional protection : " see also OPPOSITION TO THE GRANT. 257 ~E(lmund£ Patent, 1886, Griff. 283 ; Anderson's Patent, Chap. XVI. 1890, 7 E. P. C. 324 ; and Fiechters Patent, Griff. 284 ; SECT " 9 " re Hetherington, 18S9, 7 R. P. C. 419. Opposition on J the ground of fraud. (N.B. — Mr. Goodeve has published a useful abstract of cases decided by the Comptroller and law officers, 1893.) 258 ENGLISH PATENT PRACTICE. CHAPTER XVII. THE GKANT OF THE PATENT. Chap. XVII. 1. Form of the grant.— Under the Patents Act, 1883, SFCT 1 — ' s. 12, the patent is sealed with the Patent Office seal, which has the same effect as the Great Seal of the United post, p. 463. Kingdom, and by sect. 84 is to be judicially noticed and given in evidence. The time for sealing is within fifteen months of the date of application, except where (1) the sealing is delayed by an appeal or opposition to the grant ; (2) where the applicant dies within fifteen months ; (3) where the time for leaving the conqnete specification has been extended : Patents Act, 1883, post, p. 446. s. 12, sub-s. 3, and Patents Act, 1885, s. 3. The grant may be in the form in the first schedule to the post, p. 456. Patents Act, 1883 (s. 33), which, form may, however be altered or amended by the Board of Trade under post, p. 467. sect. 101, sub-s. 2. There are now in use eight special forms of grant, the different forms being modified to suit the cases : (A) single inventor, (B) joint inventor, (C) importer, (D) joint applicants, some of whom are inventors, (E) legal representatives of a deceased applicant, (EE) legal representatives of a deceased in- ventor, (F) to a female applicant, (G) joint applicants where one of the original applicants is dead. GRANT OF THE PATENT. 259 Form A of a grant to a single inventor is as follows, Chap. XVII. slightly altered from the Form given in the Schedule to L_ ' the Act of 1883, bv leaving out after the word " hath " * Fnr ™ of the ' J o grant, the words " by his solemn declaration," which, by virtue of Patents Act, 1885, s. 2, and Patent Rules, 1892, 5 (2), is now no longer required. post, p. 442. Form of Patent. Victoria, by the grace of God, of the United Kingdom of Great Britain and Ireland, Queen, Defender of the Faith : To all to whom these presents shall come, greeting : Whereas John Smith, of 29, Perry Street, Birmingham, in the county of Warwick, Engineer, hath * represented unto us that he is in possession of an invention for " Improvements in Sewing Machines," that he is the true and first inventor thereof, and that the same is not in use by any other person to the best of his knowledge and belief: And whereas the said inventor hath humbly prayed that we would be graciously pleased to grant unto him (herein- after together with his executors, administrators, and assigns, or any of them, referred to as the said patentee), our Boyal Letters Patent for the sole use and advantage of his said invention : And whereas the said inventor hath by and in his com- plete specification particularly described the nature of his invention : And whereas we being willing to encourage all inventions which may be for the public good, are graciously pleased to condescend to his request : Know ye, therefore, that we, of our especial grace, certain Note (a) knowledge, and mere motion, do by these presents, for us, our heirs and successors, give and grant unto the said patentee our especial license, full power, sole privilege, and Note (b) 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 Note (c) vend the said invention within our United Kingdom of Great Britain and Ireland, and Isle of Man, in such manner Note ( Both Clarendon and Coke bear witness to the fact that infringers of monopoly grants were summoned before it, but few instances will probably be found of Star Chamber patent cases after the date of the Statute of Monopolies. See Hudson's treatise on the Star Chamber. 7. Note (f). — As to the beneficial construction, see note (a) above, and " Construction of Specifications," Chap. XI., Sect. 1. ante, p. 203. 8. Duration of the grant. — A patent thus granted is post, p. 4-1 8. for fourteen years from the date thereof. It is dated as of post, p. 447. the same date as the day of the application. This period ante, p. 242. is computed inclusively of the day of application, so that a patent dated Feb. 26th, 1825, would expire at midnight, Feb. 25-6, 1839 : Russell v. Ledsam, 1845, 14 M. & W. 574, 16 M. & W. 633, 14 L. J. Ex. 353, 1 H. L. C, 687 (per Parke, B., whose decision, though reversed, was affirmed so far as the computation of the time of expiry was concerned). The patent thus granted ceases, how- ever, if the patentee fails to make the proper payments. The dates for making these payments are specified in the table of fees, and the time for making them is com- post, p. 270. puted exclusively of the date of the patent : Williams v. Nash, 1859, 28 Bcav. 93, 28 L. J. Ch. 886. Therefore, if a patent were dated May 1st, 1890, the first renewal fee would have to be paid on May 1st, 1894, but the patent would expire at midnight on April 30th, 1904. No proceedings can be commenced for infringement 266 ENQLISH PATENT PRACTICE. Chap. XVII. until the patent is sealed, and then only for infringe- SECT 8 ' ments committed after the acceptance of the application : the r grant.° f Patents Act, 1883, sect. 15. 9. Lost Patent. — If a patent is lost or destroyed or its non-production accounted for to the satisfaction of the Comptroller, a duplicate may be sealed: Patents Act, post, p. 457. 1883, sect. 37. 10. Sealing of a patent in respect of an invention for which a prior patent has been obtained is t, p. 447. permissible, provided the patent so sealed was on an earlier application : Patents Act, 1883, sec. 13. — For the intention of the Act is that patents shall date and take effect, not from the actual day on which the Great Seal is affixed to them, but from the date of their application. ( 267 ) CHAPTER XVIII. THE REGISTER OF PATENTS. The keeping of the register. — This is governed by Chap. XVIII. Patents Act, 1883, ss. 23, 85, 87, 88, 89, 90, 91, 93, ^"^^l, 101, 114, and Patent Rules, 1890, 67-79, which point 463,' 496. out the procedure to be followed by any person applying to have any matter relating to the patent registered. The register contains a notice of the grant, any assignments, mortgages, licenses, extension, or revocation, together with a note of what fees have been paid. The register is open for inspection, and copies may be taken. Trusts are not entered on the register : Patents Act, post, p. 473. 1883, s. 85 ; but an equitable assignment of a share of a patent is more than a mere trust, and should be registered : Steivart v. Casey, 1891, 8 R. P. C. 259 ; con- trary to the previous decision in Haslett v. Hutchinson, 1891, 8 R. P. C. 457. The register may be rectified by post, p. 474. order of Court : sect. 90. Clerical errors may be altered by the Comptroller : sect. 91 ; and false entries punished : ante, p. 226. sect. 93. post, p. 431. The Comptroller is not bound to enter on the register of any patent an assignment not specifically relating to that patent. Thus, an agreement relating 268 ENGLISH PATENT PRACTICE. Chap. XVIII. generally to " future " patents would not be registered. The keeping Again, the Comptroller is not obliged to register, until of the register. t k e p a ^ en t is taken out, an agreement which had been made previously : Pamell's Patent, 1888, 5 E. P. C. 126. If a deed is made, either fraudulently : Green's Patent, 1857, 24 Beav. 145 ; Moreijs Patent, 1858, 25 Beav. 581 ; or which is clearly ultra vires on the part of the grantor, as if it purported to assign a patent belonging to some- one else, the register may be corrected by expunging it: Eorsley & Knighton's Patent, 1869, L. K. 8 Eq. 475, 39 L. J. Ch. 157. There used formerly to be no appeal against the order of the Master of the Bolls for rectifying the register : ibid. ; but now the rectification post, p. 464. is done by the H. C. J. : Patents Act, 1883, s. 90 ; and see Morgan's Patent, 1876, 24 W. B. 245 ; Myers Patent, 1882, W. N. 1882, 53 ; and an appeal would lie. Begistration is necessary to give third parties notice of an assignment, and used formerly to be necessary to enable an assignee to sue a third party : Chollett v. Hoffman, 1857, 7 Ell. & B. 686, 26 L. J. Q. B. 249 ; but not as between assignor and assignee. It may perhaps be doubted whether registration is now needful to enable a plaintiff to sue: see "Action of Infringement," post,?. 357. Chap. XXVIIL, sect, 2. When an assignment is registered (semble), that the registration dates back to the date of the assignment, so as, under the old law, to enable an assignee to sue, not as from the date of the registration, but as from the date of the assignment : Hassall v. Wright, 1870, L. B. 10 Eq. 509. Begistration is notice to the world of the ownership of a patent, but not necessarily of all the terms and con- ditions of the assignment, so that where a license had REGISTER OF PATENTS. 269 been granted to a person for a particular district, Chap. XVIII. purchasers who bought in good faith patented articles The keeping out of the district were not held to infringe by bringing of the re S lster - them into the district : Heap v. Hartley, 1889, 42 Ch. 1). 461, 6 K. P. C. 495. The register is prima facie evidence of any matters post, p. 451. contained therein. The seal of the Patent Office is also to be judicially noticed : Patents Act, 1883, sects. 84, 89. post, p. 453. As to enrolment in Scotland and Ireland, see Patents Act, 1883, sect. 100. post, p. 456. 270 ENGLISH PATENT PRACTICE. CHAPTER XIX. FEES. Chap. xix. 1. The fees to be taken under the Patents Acts are 1 " regulated by Patents Act, 1883, s. 24 ; Patent Rules, post, pp. 451, 1890, rr. 4, 75, 76. A new schedule of fees came out 493 505 on October 1st, 1892. — These fees are very easy to re- collect ; £1 is charged on application, £3 on sending in the complete, and then in respect of the fifth year of the patent £5 ; the sixth year £6 ; and so on for each year as many pounds as the years of the life of the patent. If post, p. 448. the fees are not paid at the proper time the patent lapses. The Patent Office is open from 10 to 4 every day, except post, p. 484. the public holidays : Patent Eules, 1890, r. 7 ; and the time for payment of the fees excludes the day of the date ante, p. 265. of the patent : Williams v. Nash, 1859, 28 Beav. 93. Where a patentee contracts to complete the patent, he is not bound to go on and pay the fees to the end of its life; he has done his duty if he files the complete specification and obtains the grant : Seguelin v. Terrell, 1867, 16 X. T. (N.S.) 539. 2. Enlargement of time for paying the renewal post, pp. 44S, fees may be granted up to three months : Patents Act, 1883, s. 17, on payment of enlargement fees as prescribed in the schedule. FEES. 271 For form of application see Patent Kules, 1890, r. 49, chap. XIX. and Form E. (post, p. 377). " ' * After the time for enlargement has passed, a patentee's Enlargement only remedy is to obtain a private Act of Parliament paying the extending the time. In 1887 a Select Committee re- ported that Extension Acts ought not to be granted without serious illness or some other similar cause, and that clauses should be put in for the protection of those who may have infringed after the publication of the lapse of the patent in the official journal. For an example of an extending Act where the assignees had omitted to pay the fee through illness, see Potter's Patents Act, 50 & 51 Vict. c. Cxxi., 1887. These Acts are usually obtained with the aid of parliamentary agents. For an example of the advertisement employed, see official journal, May 25, 1892, p. 1. Formerly, notice of the impending expiration of the time for paying fees used to be given to patentees. This is now no longer done. 3. Stamps. — The fees, as in cases of judicial fees, are charged by means of stamps. 4. The Privy Council fees are given in a Table in the Appendix. 272 ENGLISH PATENT PRACTICE. CHAPTER XX. THE CROWN. Chap. XX. Prior to the Act of 1883 the Crown was not re- stricted in using an invention by reason of the grant of letters patent : Feather v. The Queen, 1865, 6 B. & S. 257. But a mere contractor for the Crown was liable : Dixon v. Small Arms Co., 1875, L. R. 10 Q. B. 130, 1 App. Cas. 632. But this is now altered by the Patents post, p. 454. Act, 1883, s. 27, sub-s. 1, which provides that a patent shall have to all intents the like effect as against the Queen as it has against a subject, with, however, the proviso (sub-s. 2) that the Crown may use the invention upon terms to be settled by agreement, or in default of post, p. 459. agreement, by the Treasury (see also sect. 44). In granting extension of patents, it used to be customary to insert a clause in favour of the Crown : see " Extensions of Patents ; Conditions," Chap. XXV., sect. 17) ; but this has not been done since the Act of 1883, though there is nothing to prevent its being inserted if the Judicial Committee thought fit : Patents post, p. 452. Act, 1883, s. 25, sub-s. 5. The Science and Art Department has a right to demand models of patented inventions on paying for post, p. 458. them : Patents Act, 1883, sect. 42. Subject as aforesaid the Crown's prerogative is expressly post, p. 474. saved, sect. 116. ( 273 ) CHAPTER XXI. FOREIGN GOVERNMENTS. The rights of foreign governments not to be made Chap. xxi. amenable to the laws of Great Britain, have always been recognised. A patentee bad obtained an injunction against the agent of a foreign government which had bought some shells in Germany and brought them to England to be put on board a ship of war. The patentee applied to have the shells delivered up to be post, p. 404. destroyed. Held, that before making the order, the foreign government which owned the shells must be before the Court, and the foreign government having been made a defendant, was allowed to remove the shells, notwithstanding the injunction : Vavasseur v. Krupp, 1878, 9 Ch. D. 351. 274 ENGLISH PATENT PRACTICE. CHAPTEK XXII. ASSIGNMENT | DIVISION ; MOETGAGE ; AND DEVOLUTION OF PATENTS BY DEATH OR BANKRUPTCY. CO-OWNER- SHIP AND PARTNERSHIP IN PATENTS. Chap. XXII. 1. Assignments. — An inventor has no property in his invention analogous to a copyright, for all monopolies are illegal unless allowed by a patent ; and hence it is not the invention that he may assign, but the patent : Duvergier v. Fellows, 1830, 10 B. & C. 829. But breach of an agreement to keep an invention secret gives rise to damages : Smith v. Dickinson, 1804, 3 B. & P. 630 ; though an injunction to restrain a person from revealing a secret invention will not in general be granted unless it has been revealed for the purpose of taking out a patent. The form of grant of a patent gives a right to the ante, p. 263. patentee to assign it, without which form it would be unassignable : see Duvergier v. Fellows, cited supra. An assignment may be made to any person, or number of persons, capable of holding a patent, including a cor- poration or public company : Patents Act, 1883, s. 117, pod, p. 474. sub-s. 1. The former law, that the patent became void if vested in more than a given number of persons, has been abolished. An assignment must be by deed. This rests on two ASSIGNMENT, ETC. 275 grounds, first, that it is an incorporeal chattel : Co. Litt., Chap. xxir. 9 C. ; and secondly, on the principle that that which B E0T ' cannot be created without deed cannot be assigned without Assignments. deed : Coke's Eep., part 3, 63 a ; Morris on Patent Con- veyancing, p. Ill ; Stewart v. Casey, 1891, 8 K. P. C. 250. Where there is an agreement to assign, it may in equity be treated as an assignment, and enforced as in the case of leases : Morris, " Patent Conveyancing, Form of Agreement for Sale of Patent," p. 70. 2. Division of a patent, and assignment of portions of it. — A patent may be divided up in three different ways to an indefinite extent, (a) by separating the parts of the invention, (h) by dividing the geographical area into districts, (c) by a number of persons each having concurrent rights to use it. (a) The case of Dunnicliff v. Mallet, 1859, 7 C. B. (N.S.) 209, 29 L. J. C. P. 70. Two joint patentees of a patent containing two inventions for " warp fabrics " and " purles," split it up, Donnicliff to take the " warp fabrics," Bagley the " purles," and each assigned to the other accordingly. Donnicliff then assigned his share to Ball and others, who reassigned to Donnicliff, with the assent of Bagley, all the patent, " as far as it related to the 6th claim " (which really related both to warp fabrics and purles. This of course left a part of the patent still remaining in Ball, viz., all such parts of Donnicliff s share as had not been reassigned to him.) Donnicliff and Bagley then brought an action of infringement in respect of the 6th claim (as to which of course they were complete owners). Plea in abatement that Ball had not been joined was held bad, for that portion of the patent upon which they were suing was completely t 2 276 ENGLISH PATENT PRACTICE. Chap. XXII. SECT. 2. Division of a patent, and assignment of portions of it. post, p. 456. vested in them, and was severable from that which was not so vested. (b) A patent may be geographically divided into dis- tricts. This power is expressly given by the Patents Act, 1883, Ch. 36. For a form of agreement for such a division, see Morris's Patent Conveyancing, p. 115, et seq., and 139. In thus subdividing a patent, special care should be taken as to the rights of the patentees inter se. Thus, for instance, if a patent were divided between two counties, a purchaser who bought an article in good faith in one, without notice of the subdivision, might use it in the other : see Heap v. Hartley, 1889, 42 Ch. D. 461, 6 E. P. C. 495 ; for the registration of the division does not affect all the public with notice of the details of it. Hence, then, the agreement ought to provide that articles should be marked, " To be used only in such and such a district," unless it is intended to allow user in other districts. (c) A patent may be owned jointly, in common, or in shares. This point first seems to have come before the Court in Walton v. Lavater, 1860, 8 C. B. (N.S.) 162, 29 L. J. C. P. 275, in which it was argued that a patent being a franchise, was indivisible. But the judges decided that the Patents Act, 1852, had, in sects. 35 & 36, clearly recognised "shares" in patents, and that they were quite common. At that time the form of the patent to joint patentees differed from the present form. For it used to be "to the patentees, their executors, administrators, and assigns, that they, and every of them ... by themselves, their servants, and those with whom they shall agree, may use, exercise, and vend," etc. This certainly points to the subdivision of interest in shares. The modern form of patent to joint patentees ASSIGNMENT, ETC. 277 does not contain the words in italics : see further on Chap. XXII. this point under the heading, " Co-ownership in Patents," ' Chap. XXII., sect. 9 ; and see a paper by C. M. Owen JSJJKrii* in the " Proceedings of the Institute of Patent Agents," assignment of ° portions of it. vol. 9, p. 157 ; see also a paper by W. Carpmael, vol. 3, p. 175. 3. Agreement to assign. — An agreement to assign may be by parol, and need not be in writing, under the Statute of Frauds, even though the assignee agrees to pay the fees which extend over a period of more than a year. For, in order that a contract may come within the 4th sect., the things to be done by both parties must be to be performed in a time greater than a year : Smith v. Neale, 1857, 2 C. B. (N.S.) 67, 26 L. J. C. P. 143. A covenant to assign on the happening of a future event is inter- preted as constituting an assignment conditional on the happening of it, and hence, when it happens, the assignment is complete without further deed : Cartivright v. Amatt, 1799, 2 B. & P. 43, D. P. C. 240. An agree- ment to purchase a patent may of course be set aside on the ground of fraud : Lovell v. Hides, 1836, 2 Y. & C. 46, 481 ; Chevasse v. Stevens, 1874, W. N. 193. Where a purchaser agreed to find £300 by a given day to enable the patentee to take out foreign patents, and did not perform it by that day, held, that this was of the essence of the contract, and that the patentee could rescind : Payne v. Banner, 1846, 15 L. J. Ch. 227. There is nothing against public policy in an agreement by a patentee to give the benefit of all future inventions of like character to a purchaser : Printing and Numerical Registering Co. v. Sampson, 1875, L. E. 19, Eq. 462 ; 44, L. J. Ch. 705. It is a very common clause in assignments. 278 ENGLISH PATENT PRACTICE. Chap. XXII. For an example shewing when a clause in an agree- L ' ment will be construed as a condition, see King v. Oliver, ; tsigu ment t0 1884 > l R ' R C ' 23 > 42 ' 4. Warranties and estoppels in assignments. — The warranties implied in the assignment of patents are the same as those usual in assignments of other things. Thus, just as the vendor of an article does not in general warrant its quality, so the assignor of a patent does not warrant its validity: Hall v. Conder, 1857, 2 C. B. (N.S.) 22, 53, 26 L. J. C. P. 138, 288 ; Smith v. Neale, 1857, 2 C. B. (N.S.) 67, 26 L. J. C. P. 143 ; Smith v. Buckingham, 1870, 18 W. R. 314, 21 L. T. (N.S.) 819 ; Liardet v. Hammond Electric Light Co., W. N. 1883, 96, 31 W. R. 710. Hence, to an action by the assignor for the purchase money, it is no plea that the patent is bad. " What sensible being in this world who buys a patent buys it on the strength of the assertion made by the patentee in the petition that the patent is new. We all know that everybody who buys it as a rule takes it for what it is worth" (per Bowen, L.J.) : Cropper v. Smith, 1884, 1 R. P. C. 94 ; Stavert v. Passburg Grain Syndicate, 1891, 8 R. P. C. 400. The warranty of title given by the assignor is exactly that which occurs in ordinary sales of chattels, and if he expresses to sell "as beneficial owner," of course a warranty of title to convey will be included. There is no implied warranty by a patentee who as- signs that he will refrain from communicating to others facts which might invalidate the patent : London Hosiery Co. v. Grisivold, 1886, 3 R. P. C. 251. On an assignment of a patent on terms of the assignor receiving payment upon each article manufactured, there ASSIGNMENT, ETC. 279 is no implied undertaking by the assignee to manufac- Chap. XXII KFPT 4- ture : Be 'Railway Appliances Co., 1888, 38 Cli. D. 597. ' Fraud of course would vitiate an assignment of a Warranhes & and estoppels patent, and though neither the validity nor the actual in assign- ments, goodness of the patent are warranted, yet a sale by one who knew or must have known that he had no title, or that the patent is invalid, would naturally not be enforced. Estoppel arises where a litigant is not allowed to dispute a state of facts which he has agreed to take for granted, or on the faith of which he has induced others to act. It arises either by record ; by recital in deeds ; or in pais, that is to say by reason of conduct. If therefore there be a recital in a deed respecting the validity of a patent, it binds those who have signed the deed, none of whom can dispute it. Bowman v. Taylor, 1834, 2 A. & E. 278. But it only binds the actual signatories and not even their partners. post, p. 288. Again a judgment between two parties as to the validity of a patent would estop either from raising the question. Estoppels on the assignment of patents may also arise by reason of conduct. Thus, for example, an assignor of a patent is estopped from alleging its invalidity against the assignee by his conduct in receiving the price of it: Walton v. Lavater, 1860, 29 L. J. C. P. 275; Oldham v. Langmead, 17S9, 3 T. E. 439 ; Chambers v. Crichley, 18G4, 33 Beav. 374 ; Hocking v. Hocking, 1889, 6 R. P. C. 72. But in case of fraudulent representations, such estoppels would not be allowed to prevail. For no estoppel can be of effect in a case of fraud. So that where an assignee sued for the recovery of money paid for a patent which was a mere bubble and the nature of which had been misrepresented, the deed was set aside and the money ordered to be refunded : Hayne v. Maltby, 280 ENGLISH PATENT PRACTICE. Chap. XXII. SECT. 4. Warranties and estoppels in assign- ments. •pott, p. 288. 1789, 3 T. R. 439. Lovell v. Hicks, 1836, 2 Y. & C. 46 ; and mutual mistake would also, like fraud, invalidate any agreement or deed : Ashivorth v. Laiv, 1890, 7 R. P. C. 234. But where no such fraud existed a person who had worked a patent could not recover back the payments he had made before the patent was declared invalid : Hare v. Taylor, 1803, 1 W. P. C. 292. The true ground of the estoppel which arises on the sale of the patent, therefore, either is, the recitals in a deed, or else the conduct of the parties. Hence, then, in a sale where neither of these grounds exists there is no estoppel. Thus, where the owner of a patent who had purchased from a trustee in bankruptcy sued the bank- rupt for infringement, it was held that the bankrupt was not estopped from alleging that the patent was bad. For there was no estoppel by conduct, as he had not taken the purchase money, nor by recitals, for there were none which he had signed, nor was there any estoppel of record against him by reason of the statements in his petition saying that " he was the true inventor " : Cromer v. Smith, 1884, 1 R. P. C. 92. On the question of estoppels, see further under the head of " Licenses," for many of the cases apply mutatis mutandis to Assignments, Chap. XXIII., sect. 2. 5. An assignee with notice of prior covenants takes subject to them, so that if a patentee assigns, reserv- ing a right to an account against his assignee, a second assignee who takes knowing of this right is bound to render an account to the original assignee : Werderman v. Societe Generate d'Electricite, 1881, L. R. 19 Ch. D. 246. 6. Mortgage of a patent. — A patent may be mort- gaged and the mortgage registered, but the mortgagee ASSIGNMENT, ETC. 281 is not in the position of an assignee. On the contrary, Chap. xxii. • ' x-j.1 1 6ECT - 6 - the mortgagor in possession remains the " person entitled to the benefit of the patent," and hence is the " patentee," * pjjfjff ° under the Patents Act, 1883, s. 87. It, hence, follows that he can sue alone, as a mortgagor in possession is en- titled to do, without joining the mortgagee : Van Gelder v. Sowerby Bridge Flour Society, 1890, 7 R. P. C. 211. 7. Death and devolution of the patent to personal representatives. — By the form of the grant executors and administrators acquire the patent on the death of the patentee : Chap. XVII., sect. 1 ; and under the an t e , p. 263. Patents Act they have further time to complete the taking out of a patent applied for by the patentee during his life, or to apply in respect of an invention of which he died possessed : Chap. XIII., sect. 3. The executor may validly assign a patent before ob- taining registration of the probate : EUwood v. Christy, 1864, 17 C. B. (N.S.) 757, 31 L. J. C. P. 130. anfe , p . 229. Where, however, by agreement two persons had taken an assignment as tenants in common, and not as joint tenants, and the patent was infringed, and one of them died, and the other sued alone, it was held that the right of action survived, and that the plaintiff might recover the whole damages : Smith v. London & N. W. Bail. Co., 1853, 2 E. & B. G9. In the absence, however, of such express agreement, the rights of a co-owner of a patent would descend by the terms of the grant to his personal legal representa- tives : Form B of grant, Chap. XVII., sect. 1. an t e , p. 258. 8. Bankruptcy of patentee. — In Hesse v. Stevenson, 1803, 3 B. & P. 577, it was contended that a patent, being the fruit of invention, is not such property as 282 ENGLISH PATENT PRACTICE. Chap. XXII. SECT. 8. Bankruptcy of patentee. ante, p. 280. passes to a bankruptcy assignee ; but held, that it did pass : Bloxam v. Elsee, 1827, 6 B. & C. 169, 9 D. & E. 215. In Ex parte Granger the question was raised whether a patent used and worked by a bankrupt patentee, after he had mortgaged it, continued in his " use and occupa- tion," so as to pass to his creditors. The question was not decided : Ex parte Granger, 1812, Godson's Pat., 2nd ed., 225. If a bankrupt take out a patent before he obtains a certificate of discharge, it goes to his creditors, but if after his discharge he patent something that he had discovered before, it does not pass : Hesse v. Stevenson, 1803, 3 Bos. & P. 565. A patentee whose patent has passed to his trustees in bankruptcy is not estopped from disputing its validity as against one who buys it from those trustees, for there is no privity whereby the estoppel may arise : Cropper v. Smith, 10 App. Cas. 249, 2 E. P. C. 17. 9. Co-ownership and partnership in patents. — A patent is a franchise, that is to say, a privilege which may be enjoyed by a number of persons to the exclusion of others. If a patent be granted to A and B, each of them may use it, and it is clear that in the absence of some agreement for a partnership, neither is bound to share with the other the profits he makes out of it. In Mathers v. Green, 1865, 1 Ch. App. 32, the defendants had paid the patent fees, and the patent was taken out jointly by them and the plaintiff. Held, that the plaintiff had no right to share in their profits : see also Steers v. Rogers, 1892, 9 E. P. C. 185 ; confirmed on appeal, L. E. App. Cas. [1893] 232. These cases only decide that the mere fact of joint ownership creates no duty to share the profits, but if there are circumstances from which a joint adventure ASSIGNMENT, ETC. 283 could be inferred, as, for instance, joint contribution Chap. XXII. towards expenses, then it might well be argued that this . 1 ' gave rise to a duty to share the profits. The law has been ^SjJ£ p differently, laid down in the case of ioint copyrights : shi P in J J LJ ° patents. Poivell v. Head, 1879, 12 Ch. D. 686 (per Jessel, M.K.). The rights of co-owners are very curious. For in the absence of agreement each of them can cut his share into as many pieces as he pleases, each of which will give full powers of user to the grantee. Hence, to possess one-tenth of a patent is just as valuable as to possess the remaining nine-tenths. This seems to raise some in- ference that where a patent is divided into aliquot shares, it was intended that some division of profits should ensue, but this view was not taken in Steers v. Bogers above-mentioned. In every case the question of partnership in the profits must be one of fact. Plaintiff agreed to try a patent, and if it succeeded to employ the patentee to work it for him, at a salary and a share of the profits. The experi- ment succeeded, but nothing was done. Plaintiff filed a bill for dissolution of the quasi-partnership ; but held, that there was no partnership at all : Osborne v. Jullion, 1856, 26 L. J. Ch. 6. Plaintiff agreed to lend defendant £59 to perfect two inventions, on terms of receiving half profits. The question whether this constituted a partner- ship was raised, but not decided : Elgie v. Webster, 1839, 5 M. & W. 518 ; see also Kenny's Patent Buttonholing Co. v. Somerville, 1878, 38 L. T. (N.S.) 878; Wilson v. Barbour, 1888 (Ir.) 5 E. P. C. 675. 10. Assignments to the Secretary of State for War are regulated by Patents Act, 1883, sec. 44, which post, p. 459. contains twelve subsections dealing with the matter. 284 ENGLISH PATENT PEACT1CE. CHAPTER XXIII. LICENSES. Chap. XXIII. 1. Licenses. — The form of the grant expressly gives cxfpnn 1 !_ ' power to the patentee to grant licenses to persons to ante, p. 260. uge an y p ar ^. f j. ne i nven ti n, in any way, for any time, or over any part of the area of the patent : Chap. XVII., sect. 1 ; and if each of two joint patentees may assign ante, p. 275. his share (Chap. XXII., sect. 2), it is to be presumed that each of them may also license. The somewhat extra- ordinary result seems to follow that one of two co-owners might by licensing everyone who asked for it, ruin the patent altogether if he were in the mind to do so. The permission to use a patent, though in form a license, may in some cases, if the operative words are sufficiently wide and the license is exclusive, to one person, and for the whole invention and whole duration of the patent, amount to a grant, just as a lease of premises for the remainder of the term may amount to an assignment. Benard v. Levinstein, 1864, 3 N. R. 665 ; 5 N. R. 301 ; Newby v. Harrison, 1861, 1 J. & H. 393. But it by no means follows that an exclusive license would always be construed as a grant, and accordingly in Heap v. Hartley, 1889, 6 R. P. C. 501, an exclusive license for a particular district for four years from the second year of the life of the patent was not considered as an assignment, and hence the licensee was held not entitled to sue without joining the patentee. LICENSES. 285 The law respecting the form which a licence ought to Chap. xxih. SFCT 1 have is still somewhat obscure. For it is by no means 1 ' clear from the terms of the grant whether licenses ought Llcense8 - to be by deed or may be by parol. In the early part of ante> p 2 59. the grant it is said " the patentee by himself his agents or licensees and no others, may .... make use exercise and vend the said invention." But further on we find the words " the consent license or agreement of the said patentee in writing under his hand and seal," and at the end, " Provided also that nothing herein contained shall prevent the granting of licenses in such manner and for such considerations as they may by law be granted." This last proviso was originally attached to the old condition (now obsolete) rendering the patent void if assigned to more than twelve persons, and was inserted in order to prevent the wide grant of exclusive licenses for the life of the patent to a large number of persons from being considered as voiding the patent. When the main clause was removed the proviso was left, though its effect in its present position is difficult to determine. Upou the whole it seems probable that in order to affect third parties, and give a real interest to the licensee as against all the world, a deed would be necessary. But the cases shew that as between the patentee and his licensees, licenses by parol (i.e., verbal or in writing) are not wholly inoperative. For example, it is certain that a man who buys a patented article from an inventor acquires a license to use it, without any deed. And a person who uses an invention under a parol license would have to pay for that use. Chanter v. Dewhurst, 1844, 12 M. & W., 823, 13 L. J. Ex. 198. Crosslcy v. Dixon, 1863, 10 H. L. C. 293, 32 L. J. Ch. 617. Wilson v. Union Oil Mills, 1892, 286 ENGLISH PATENT PRACTICE. Chap. XXIII. SECT. 1. Licenses. 9 E. P. C. 63. Crossthwaite v. Steel, 1889, 6 R. P. C. 190, and compare Chanter v. Leese, 1838, 4 M. & W. 311, 5 M. & W. 698. A license in writing does not need any stamp, Chanter v. Johnson, 14 M. & W. 408, though it would if it amounted to an agreement. Wilson v. Union Oil Mills, cited supra. A license by deed must be duly stamped. An agreement for a license, by which the preparation of a formal deed is in contemplation, differs from a parol license, for it can be specifically performed, and in equity will be equivalent for many purposes to the deed itself. Postcard Automatic Supply Co. v. Samuel, 1889, 6 R. P. C. 562. A license may be granted after the provisional specification, but before the complete specification has been filed or the patent granted, Otto v. Singer, 1889, 7 R. P. C. 7. An agreement to work a patent " as long as it could be worked at a profit" was held as meaning profit after paying royalties. Kernot v. Potter, 1861, 30 Beav. 343. For an example of interpretation of a particular license see Boivn v. Rumber, 1889, 6 R. P. C. 9. At common law a license is by its nature revocable, and therein differs from a grant. Brooke's Abridgment, License, pi. 9. And provided that it is only a license it is equally revocable whether it is by parol or by deed. Wood v. Ledbitter, 1845, 13 M. & W. 838, 14 L. J.Ex. 161. It is equally revocable even though a consideration had been paid for it, though if revoked the consideration would probably be recoverable, ibid. If however the license be coupled with an interest this would make it irrevocable, and indeed every irrevocable license, depending not merely on the con- tinuing will of the licensor, does give an interest. In each case the question of revocability must depend upon the intention of the parties, but it seems clear, thai LICENSES. 287 a mere license to use a patent without specifying any Chap, xxiii. time would be interpreted as meaning only as long as 1 ' the respective parties chose, Clark v. Adie, 1873, L. E. Llcenses - 2 App. Cas. 315. Crossleij v. Dixon, 1863, 10 H. L. Cas. 293. Redges v. Mulliner, 1892, 10 R. P. C, 21. A revo- cation of a license granted by deed should be by deed. And notice of revocation is necessary. Cornish v. Stulbs, 1870, L. R. 5 C. P. 334. Mellor v. Wathins, 1874, L. R. 9 Q. B. 400. The words " upon the terms and conditions following " in a license were held to give a right of revocation if those terms were broken : Ward v. Livesey, 1887, 5 R. P. C. 102. A right of rescision reserved in a patent license may of course be waived by receipt of royalties : Warwick v. Hooper, 1850, 3 Mac. & G. 60. Where an exclusive license is given by deed there is no implied condition that the licensees shall pay the fees or keep up the patent : Re Railway & Electrical Appli- ances Co., 1888, 38 Ch. D. 597. In Mills v. Carson, 1892, 9 R. P. C. 338, 10 R. P. C. 9, a patentee had granted a license by deed for the residue of the term of the patent, with covenants for quiet enjoyment and payment of the royalties during the term of the patent, royalties to cease if the patent should not be novel or the patentee should not defend his patent. The patent fees were not paid, and, therefore, the licensee refused to pay further royalties, and endeavoured to set up want of novelty in the patent. Held, (1) That it was doubtful whether the covenant for quiet enjoyment made it the duty of the plaintiff to pay the fees. (2) That even if it did, the covenant for quiet enjoyment and that for payment of royalties were not co-extensive, so that one was conditioned upon the other. (3) That inasmuch as the deed contained express provi- 288 ENGLISH PATENT PRACTICE. Chap. XXIII. sions for defeasance of the royalties (among which failure S ECT ' ' to keep up the patent was not included), it must be held Licenses. to j iaye no ^. b een intended that the failure to keep up the fees absolved the licensee from paying royalties, and (4) That the condition making the royalties cease if the patent was not novel did not release the licensee from the ordinary doctrine of estoppel. A license may in its terms be assignable : Hindmarcb, 242 ; Bower v. Hodges, 1853, 22 L. J. C. P. 194. An agreement for a license does not constitute a partnership, as was argued in Ridge- way v. Philip, 1834, 1 C. M. & E. 415. 2. Estoppel may arise either (a) by deed, (b) by conduct, that is to say, "in pais," or else (c) by record. — It is an equitable doctrine in its nature, though it has always been applied at common law, and arises in cases where it would be against good faith to assert facts which might be true.. Hence, an estoppel can never be created by fraud : Chap. XXII., sect. 4. When the ante, p. 270. license comes to an end the licensee is released from his estoppel, Dangerfield v. Jones, 1865, 13 L. T. N.S. 142. Axman v. Lund 1874, 18 Eq. 330. Neilson v. Fothergill, 1841, 1 W. P. C. 290; (a) The parties to a deed ante, p. 279. are estopped by its recitals, but not their partners: Heugh v. Chamberlain, 1877, 25 W. E. 742; Gaucher v. Clayton, 1865, 34 L. J. Ch. 239, 13 W. E. 336. Where the license is by deed, the licensee cannot dispute the validity of the patent, and it is not enough simply to allege that the licensor knew that the inven- tion was not new, unless distinct fraud is alleged and proved: Smith v. Scott, 1859, 28 L. J. C. P. 325 ; Oldham v. Langmead, 1789, 3 T. E. 439 ; Cutler v. Bower, 1848, 11 Q. B. 973, 17 L. J. Q. B. 21 7 ; Bills v. Laming, 1853, 23 L. J. LICENSES. 289 Ex. 60 ; Bowman v. Taylor, 1834, 2 A. & E. 278 ; Collinge Chap, xxiii. SFPT 2 v.Bowman, 1834, 1 W. P. C. 294; Grover Seioing Machine __ ' Co. v. IfiZftmZ, 1862, 8 Jur. (N.S.) 714; (b) Estoppel by gSSSj^ conduct or in pais arises where the parties so act as to («) by deed, 1 x (o) by con- render it inequitable for them to deny the existence of duct, that is m , , i to say, " in the facts in question. Thus even where no regular pa i s ,»orelse license by deed has been made and subsists, yet a 00 by record. licensee who has used the license is estopped from denying the licensors title, just as a tenant is prevented from disputing his landlord's title. "A man has no right to work the patent of another without enquiry for a long time under an agreement whereby he contracted to pay royalty, and then when he is called upon to pay royalty to say, 'Oh, your patent is invalid'"' (per Charles, J.) : Wilson v. Union Oil Mills, 1892, 9 R. P. C. 63. Grossthwaite v. Steel, 1889, 6 R. P. C. 190. Clark v. Adie, 1873, L. R. 2 App. Cas. 423. Noton v. Brooks, 1861, 7 H. & N. 499. Crossley v. Dixon, 1863, 10 H. L. C. 293. Trotman v. Wood, 1864, 16 C. B. (N.S.) 479. Ashvorth v. Law, 1890, 7 R. P. C. 234. Lawes v. Purser, 1856, 6 Ell. & Bl. 930. (c) Estoppel by record would arise in a patent case by reason of a judgment between the same parties and in respect of the same subject matter. But the estoppel would have to be precise and clear. A mere general finding by an arbitrator that a patent is not illegal nor void would not estop the same defendant from raising the same plea to a fresh action by the same plaintiff : Newall v. Elliot, 1863, 32 L. J. Ex. 120. On the other hand, consenting to an injunction in an action where he had pleaded want of utility and novelty would certainly estop a defendant on a motion to attach him for again infringing from raising the question of the validity of the patent. u 290 ENGLISH PATENT PRACTICE. Chap, xxiir. A patentee by taking out a patent does not estop him- ' self by record from denying the validity of his own Estoppel may t t Cropper v. Smith, 1884, 1 E. P. C. 94. arise e.ther J- ll ' (a) by deed, Estoppel by record must not be confused with such duct, that is quasi estoppel as arises from the prior decision of a Court pais]" or else °f competent jurisdiction upon the validity of the patent. (c) by record. p or ^g decision of a superior Court upon a patent, so far as it is upon law (e.g., upon the construction of a patent), will be followed till it is reversed, but so far as the decision merely depends upon evidence (e.g., as to novelty or utility), it might be varied on the production of evidence of a different description in an action between different parties : Edison v. Holland, 1889, 6 B. P. C. 243. A licensee against whom an action is brought for royalties is in the position of an infringer, and though he may not dispute validity, lie may of course shew that what he has done is outside the patent upon its true con- struction : Young v. Hernand Oil Co., 1891, 8 E. P. C. 293, and cases there cited. This case was reversed on appeal (9 E. P. C. 373), on the ground that the licensee's acts constituted infringement, but the principle in the text was left untouched. pud p 47G 3. Compulsory licenses. — By the Patents Act, 1883, s. 22, it is provided that where the patent is not worked in the United Kingdom, or the reasonable requirements of the public are not complied with, or where any person is prevented from working to the best advantage an inven- tion of which he is possessed, the Board of Trade may compel the patentee to grant licenses on terms to be post, p. 495. settled : see Patent Eules, 1890, 60-66, Forms H., I. No petitions under this section appear to have been prosecuted. ( 291 ) CHAPTER XXIV. INFRINGEMENT. 1. Infringement in general. — By the form of grant Chap. XXIV. scheduled to the Act of 1883 (Chap. XVII., sect. 1), it is L ' provided that the patentee, " by himself, his agents, or ante, p. 259. licensees, and no others, may at all times hereafter during the term of years herein mentioned, make, use, excercise, and vend the said invention within our United Kingdom of Great Britain and Ireland, and the 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, and ... we do by these presents . . . strictly command all our subjects 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 in any wise imitate the same, nor mahe, or cause to be made, any addition thereto, or subtraction therefrom, ivhereby to pretend themselves the inventors thereof, without the consent," etc. These words have remained practically unaltered for a very long period : compare Walton v. Bateman, 1842, 1 W. P. C. 616. If an invention consist of several distinct and severable parts, it is obviously not needful to con- stitute an infringement that the thing done should u 2 292 ENGLISH PATENT PRACTICE. ('map. xxiv. infringe all of them : Gillet v. Willy, 1839, 9 C. & P. 336 ; 1 ' Cornish v. Keene, 1835, (J L. J. C. P. 225. In considering Infringement infringement two questions arise, first, whether the in general. £> i essence of the invention has been infringed by some machine or article or process which -resembles it ; and, secondly, what are the acts of user complained of. 2. The infringement must infringe the essence of the invention. — For an infringement is not a mere re- semblance in outward appearance, nor a similarity of result, but a user of the essence of the invention : Auto- matic Weighing Machine Co. v. National Exhibitions Association, 1892, 9 R. P. C. 41. The law as to this is thus laid down in Dudgeon v. Thompson, 1877, L. E. 3 App. Cas. 34. "The words ' colourable imitation ' are words which appear to me not very happily chosen, and calculated to create some confusion. I am quite aware that they are words which are used sometimes in the argument of patent cases, but I doubt very much whether the particular expression is one which has any great authority for its use. There is a well known manner in which the word ' colourable,' or ' colourably,' is used in patent cases. I have referred to the ordinary form in which injunctions are granted in patent cases, by the Court of Chancery, and I take from Mr. Seton's book an example which appears to me to be exactly in accordance with what I recollect to be the practice of the Court in granting injunctions. It is in a case which, I think, came before my noble and learned friend as Vice-Chancellor, the case of Be la Rue v. JDichenson. The injunction restrains the defendants, their agents, and servants, during the continuance of the patent from ' using or employing any INFRINGEMENT. 293 machines similar to the machine in the plaintiff's bill Chap. xxiv. stated, or any machinery, mechanism, or mechanical con- ' '_' trivance made or arranged according to the plaintiff's The mfnn s e - ° ox inent must said patent inventions, or differing- therefrom only infringe the . essence of the colourably, or by the substitution 01 mere mechanical invention. equivalents for the same.' jN t ow, my Lords, what I understand by that is this, that if there is a patented invention it will not save you from the punishment of the Court that you have, at the same time that you have taken the invention, dressed it up colourably, added something to it, or taken, it may be, something away from it so that of the whole of it may be said, as is said in this injunction, ' Here is a machine which is either the plaintiff's machine, or differs from it only colourably . . . '' ( per Cairns, L.C.). " If part of the property in the invention be really taken, then there is an infringement, however much that may be disguised or sought to be hidden " ( per Lord Blackburn) : see also Hill v. Thompson, 1818, 1 W. P. C. 242. " There never were two things more different to the eye than the plaintiffs invention and what the de- fendant had done in contravention of his patent right" : Jupe v. Pratt, 1836, 1 W. P. C. 146. "One (the in- fringement) is a servile copy of the other, with that dr. XXIV. axles to become inclined to each other. Two infringe- * ments were complained of; one by Spiller, in which a The infringe- L . merit must spiral spring was substituted for the india-rubber pad. infringe the • lii i ■ p ■ essence of the JLnis ot course was held to be an infringement, lhe invention. other infringement was the Wilson skate. The body, which carried the wheels, was pivoted to the stand of the skate, by an elastic vertical bearing so that the axles of the wheels could become inclined. To cause them to do so, a cone, or inclined plane was fixed to each side of the skate, so as to press forward the body which carried the wheels, on that side on which the pressure was applied (Fig. 2). This was in appearance different, but was held to be an infringement, regard being had to the wide ambit of Plimpton's patent. The invention was also attacked on the ground of anticipation, for it had been previously patented in America, and a description of it then had come to England. The drawing, of which Fig. 3 is an outline, and some letterpress, which, with a figured drawing, will be found at p. 535 of the Law Eeports, 3 Chancery Division (1876). It was held that from this description no workman could have understood the invention sufficiently to carry it out, and hence this was no anticipation. And it was also held, that the drawing, having been on the shelf of a room in the Patent Office, not generally accessible to the public, had not been sufficiently published to con- stitute an anticipation. Voeverk v. Evans, 1890, 7 E. P. C. 205.— This was a patent for (inter alia) a method of weaving curved ribbands with one edge longer than the other by the use of conical drawing-off rollers. The main features of the machinery were shewn to have been anticipated by a 296 ENGLISH PATENT PRACTICE. Chap. XXIY. specification which, though not so drawn perhaps as to SECT - 2 - describe a workable machine, was sufficient to narrow The infringe- verv greatly the ambit of the plaintiff's patent. In nient must J fo J r . * infringe the consequence it was held that the deiendant had not essence of the . „ . , . . invention. infringed it. Automatic Weighing Machine Co. v. Knight, 1889, 6 K. P. C. 113 ; Automatic Weighing Machine Co. v. Combined Weighing Machine Co, 1889, 6 R. P. C. 120, 367 ; Automatic Weighing Machine v. National Exhibitions Association, 1892, 8 R. P. C. 345, 9 R. P. C. 41; Automatic Weighing Machine Co. v. International Hygienic Society, 1889, 6 R. P. C. 475.— This group of cases affords an example of the application of the rule under discussion. The patent of Everitt was for a weighing machine, in which a counter- weighted lever rose when a person stood on a platform, and this indicated his weight. But that result was concealed. In order to render it visible, a penny put in a slot caused a visible arm to rotate till it came iti contact with the counterweight, and thus the weight was indicated. Knight's alleged infringement was a machine so arranged that when a penny was put in a slot, it became possible for the person being weighed to draw out a handle, which, being done, the weighing mechanism came into play, and the result was visible. It was held that Everitt could not claim every mode of weighing people by means of a penny-slot arrangement, for that would be to claim a principle. Hence, therefore, the plan by which the person being weighed pulled a handle in order to operate the machine was so different from the plaintiff's as not to infringe his patent. The alleged infringement by the Combined Weighing Machine Company also operated as Knight's did, by INFRINGEMENT. 297 means of a button or handle pushed by the person being Chap. XXIV. weighed, but with this difference, that whereas in Knight's machine, when the coin was put in it allowed The mfnnse- ~ x mcnt must the pushing of the knob to do the work of releasing the infringe the machinery, in the Combined Weighing Machine Com- invention, pany's machine when the knob was pushed in, it pressed against the coin, and the coin so pressed, then released the catch and set the machinery at work. This was held to make all the difference, and the latter machine was held to be an infringement. The test applied was whether substantially the coin did the work of releasing the catch, or whether the coin merely permitted the knob to do the work. The infringement of the National Weighing Machine Company consisted of an arrange- ment whereby when a penny was put into a slot, it made an electric contact, which caused an armature to revolve and carried a visible hand to the proper positions to indicate the weight. This was held an infringement, as it was clearly only a modification of Everitt's machine. The infringement by the International Hygienic Society was a machine so constructed that when a person stood on a platform he was weighed by the rotation of a counter-weighted lever, but the result was concealed until a penny was put into a slot, upon which a door was opened which enabled the result to be seen. This also was held to be an infringement. A patent directing the use of the finest copper for making an alloy for sheathing ships may be infringed by the use of an inferior copper : Muntz v. Foster, 1844, 2 W. P. C. 101. Patent for two iron retorts worked in connection with one another at different temperatures for two stages of the process of making sulphate of soda. Held, substantially an in- fringement to use a chamber of brick and an iron retort 298 ENGLISH PATENT PRACTICE. Chap. XXIV. for the same purpose : Gamble v. Kurtz, 1846, 3 C. B. 435. SE0T ' 2- A patent for mixing two chemical substances and boiling The infringe- them to produce a certain result may be infringed by ment must k , infringe the mixing them in the presence of a third without boiling : invention. Simpson v. Holliday, 18G4, 20 Newton's Lond. Journal (N.S.) 111. A patent for prismatic reflecting pave- ment lights which were shewn made with prisms with plane surfaces. Held, infringed by the use of prisms with curved surfaces : Hayward v. Pavement Light Co., 1884, 1 E. P. C. 207. The Edison telephonic speech transmitter consisted of a diaphragm in contact with a ante, p. 32. " tension-regulator," or piece of substance kept in con- tact with it either by its own resilience or by a spring. When vibrated by the voice the combination offered a tremulous varying resistance to an electric current passing through it, and thus transmitted speech. Defen- dant used a diaphragm of carbonised leather and a ball of carbon held on by a spring. Held, an infringement : United Telephone Co. v. St. George, 1886, 3 K. P. C. 321. A patent for an organette consisted of a circular perforated disc rotated over a fixed wind-chest so as to actuate levers and open and close organ-pipes, and thus play tunes. An organette in which the wind-chest rotated and the disc was fixed, was held an infringement, and though it might be an improvement, this made no difference : Erhlich v. Ihlee, 1888, 5 E. P. C. 453 ; see also Stead v. Anderson, 1847, 2 W. P. C. 155 ; Penmjcook v. Mackenzie, 1882, 19 Scottish Law Eeports 353 ; Cochrane v. Braithwaite, 1830, 3 Lond. Jour. C. 8. 42 ; Kaye v. Chubb, 1888, 5 E. P. C. 651. In Laine v. Berold, 1892, 9 It. P. C. 447, it was held, that a patent for a beetle poison was infringed by the use of the same ingredients with immaterial alterations. INFRINGEMENT. 299 3. The ambit of an invention. — From the above- chap. XXIV. mentioned rule it follows that every invention has an S ECT - 3 " area or " ambit," or, as it might be termed, certain The ambit of .... ^ . . ,, ... i-i an invention- " limits ot deviation, within which the patentee will be protected. And in every patent case the real difficulty is to determine what these limits are. The fixing of these limits depends on the language of the specification, but always with regard to the state of knowledge at the time. In the case of a very new and original invention which strikes out a fresh path in discovery these limits would be widely construed, whereas, if the invention is not of a novel character, the limits will be narrow. For instance, the Court would be much more liberal in con- struing a patent for the first invention of the telephone than it would be in construing a patent for some special sort of telephone at the present day. " 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 machines for effecting the same purpose. . . . When the object itself is one which is not new, but the means only are new, one is not inclined to say that a person who invents a particular means of doing some- thing that has been known to all the world long before has the right to extend very largely the interpretation of those means which he has adopted for carrying it into effect " (per Wood, V.-C.) : Curtis v. Piatt, 1863, L. E. 3 Ch. D. 136 n. ; commented upon in Thompson v. Moore, 1889, 6 K. P. C. 426 ; see Procter & Bennis, 1887, 36 Ch. I). 756, 4 R. P. C. 333 ; and Couclman v. Greener, 1884, 1 R. P. C. 200, where weight is given by Lord Blackburn to the fact that the common object of the 300 ENGLISH PATENT PRACTICE. Chap. XXIV. plaintiff and defendant had been known before. In mnj. Gomel i Y Bishop, 1888, 5 R. P. C. 159, Bowen, L.J.,. T1 ". !amb « of says: "What is the law laid down in Curtis v. Plait? an invention. Precisely what the Lord Justice has said, that where you get a specific mechanism directed to a certain end which ante, p. 34. Avas previously well known directed to facilitate a certain result the benefit of which had been previously dis- covered, then in a patent of that description the doctrine of mechanical equivalents is not applicable, and that any other person is entitled to the use of old and known principles provided he does not take substantially the means in which the excellence of the patent alone con- sists " : see also the same principles applied in Hocking v. Hocking, 1889, 6 R. P. C. 76, by the Lord Chancellor ; Bovill v. Pinn, 1856, 11 Ex. 739 ; Seed v. Higgins, 1860, 8 H. L. C. 551 ; per Lindley, L.J., in Jahncke v. Bell, 1892, 9 K. P. C. at p. 100 ; Nettle/old v. Reynolds, 1892, 9 K. P. C. 270 ; where the doctrine of mechanical equivalents was held not to apply, because the ambit was so narrow ; see also Miller v. Clyde Bridge Street Steel Co., 1892, 9 R. P. C. 470. Nettlefolds v. Reynolds, 1891, 8 R. P. C. 410. This was a patent for making carpenter's wood screw. Screws used formerly either to be cut out of the solid or el«e squeezed into shape by screwing them into screw-plates, which latter operation lengthened them. Gradually, however, the idea grew up that they might be made by rolling wire between grooved rollers. This does not appear to have been a sucess until the patent of Nettlefold in 1884. According to this invention, the wires which are to be made into screws fall down a trough a. When they arrive at the bottom they are pushed forward by a metal finger b., so as to be caught INFRINGEMENT. 301 between the outside of a revolving cylinder and a Chap. xxiv. .concentric circular recess (Fig. 1.) These are fluted on S ECT ' the inside in an ingenious manner (Fig. 3) so as to roll Tlie amtj t of an invention. .a thread on the screw, which falls out at the other side. But owing to previous inventions, this patent was held to have a very narrow ambit. The infringement com- plained of is shewn in Fig. 2, and consisted in the substitution of two flat dies for the curved ones of the plaintiffs. If the invention of the plaintiffs had been the first of its kind, there can be no doubt that the machine of the defendant would have been held to infringe it, but prior discovery had so narrowed it, that it was held good only for the particular arrangement of circular dies shewn in it, and the defend- ant's machine was held not to be an infringement. Bailey v. Boberton, 1878,3 App.Cas. 1055. The plaintiff in his provisional specification described his invention as a means of preserving meat by coating it with a liquid made of certain proportions of bisulphite of lime, gelatine, and water. But in the complete specifi- cation he described the preparation of four liquids, viz : — No. 1, A certain solution of bisulphite of lime. No. 2, A mixture of No. 1 with gelatine in certain proportions. Nos. 3 and 4, a mixture of No. 1, with salt in two different defined proportions. The modes of using No. 2, 3, and 4 were described, but no mode of using No. 1 was given, except for cleansing vessels or ruixino- to form Nos. 2, 3, and 4. The claims were for the use of Nos. 1,2,3, and 4 for preserving animal substances, and a 302 ENGLISH PATEN I 1 PRACTICE. Chap. XXIV. disclaimer of the use of No. 1, except for preserving S ECT - 3 - animal substances, or in connection with salt or gelatine. The ambit of The use No. 1 for cleansing vessels was also disclaimed. an invention. . The infringement complanied 01, was the use ol JNo. 1 solution alone for preserving meat. It was proved that the use of bisulphite of lime for preserving meat was old at the date of the patent. The Court considered that the patent was bad. (1) For want of novelty in having claimed the use of No. 1, for preserving meat, which was old. (2) For want of sufficient description how to use No. 1. (3) For dis- conformity in not having described the use of No. 1 alone in the provisional ; and further, that if the patent could be read as not claiming No. 1 for preserving meat (which would be the only way to save it) then there had been no infringement. It is impossible to construe a patent, either for the purpose of determining whether it has been infringed or anticipated, without considering the specification, in the light of the knowledge at the time. Some patents will require much of this evidence to throw light upon them ; some are so sharply defined and narrow as to enable it almost to be dispensed with ; in most cases it is useful, if not indispensable. A patent with a very wide ambit is called a master-patent. 4. Infringement by the substitution of mechanical or chemical equivalents. — In the sections dealing with the necessity that the " essence " of the invention should have been infringed, and that in order to determine this essence the ambit must be determined in the light of the state of knowledge at the time the specification was sent in, examples were given of the mode in which INFRINGEMENT. 303 infringements have been considered : Chap. XXIV., Chap. XXIV. sects. 2, 3. Some examples in which infringements have S ECT " 4- been considered to have been committed by the use of Infringement ... by the substi- mere mechanical or chemical equivalents may be added, tution of always, however, remembering that in order to be able or chemical to use these cases the ambit of the invention must be e< l uivalent8 - moderately wide : see cases cited in last section. " If you believe that the defendant's instrument, though he might have employed skill and knowledge upon it, was taken by him substantially from the plaintiff's, and that what he has produced is nothing more than a substitu- tion of other and equivalent means for producing the same end, even though the means employed might be better than those of the plaintiff's, it is an infringement. ... If it were permitted to persons of ingenuity to sub- stitute, in lieu of the patent, some equivalent, it would be useless to grant patents of this kind, for an ingenious man could at any time infringe them by adopting other and possibly better means than those specified" (per Martin, B.) : Bateman v. Gray, 1855, M. P. C. 102. "The next thing is to see what really has been done. In one sense what has been done is undoubtedly a mechanical equivalent, but whether it is a mechanical equivalent in the sense in which that expression is used in patent law is, of course, the question I have to decide " ( per Jessel, M.R.) : Thorn v. Worthing Skating Rink Co., L. E. 6 Ch. D. 415 n. ; Saxby v. Clunes, 1874, 43 L. J. Ex. 228. " The question, What is an equivalent ? depends on the state of knowledge at the time ; " and chemical equivalents are by no means so obvious as mechanical equivalents " : Stevens v. Keating, 1847, 2 W. P. C. 188. A patent had been granted for using carburet of manganese for the manufacture of steel. The 304 ENGLISH PATENT PRACTICE. Chap. XXIV. t SECT. 4. Infringement by the substi- tution of mechanical or chemical equivalents. defendant mixed oxide of manganese and tar in the crucible to effect the same purpose. It was proved that this would really produce carburet of manganese, but it was not shewn that at the time the patent was taken out it was known that the mixture would be a chemical equivalent for carburet of manganese. The defendant's method was cheaper. Held, that it was not an infringe- ment (per Lord Cran worth) : Heath v. Univin, 1850, 2 W. P. C. 319. On the other hand, a patent for improving caoutchouc by heating it with sulphur was held to be infringed by the process of heating it with hyposulphate of lead and artificial sulphuret of lead : Hancock v. Moulton, 1852, John, Pat. Man., 3rd ed., 208. In Barrett v. Vernon, 1877, 35 L. T. (N.S.) 755, the plaintiff had obtained a patent for stopping soda-water bottles by means of a plug of heavy wood. The defendant substi- tuted a plug of light wood, but temporarily applied a weight to it to effect the stopping. Held, an infringe- ment. In a door lock, the substitution of a V-spring acting on a lever for a spiral spring is merely a colour- able variation : Kaye v. Chubb, 1888, 5 K. P. C. 651. In Johnson v. Bylands, 1873, Griff. 138, the patent was for an arrangement for testing wire and expanding it by rolling it off one drum on to another moving at a greater surface speed. The defendant rolled it on to one drum from another which was retarded by a clip, and thus it was strained and expanded. Held, no infringement : see Winby v. Manchester Steam Tramways Co., 1889, 6 R. P. C. 365 ; B. v. Lister, 1826, 1 W. P. C. 80 ; in which the heating of rollers for a certain purpose with hot irons was held an infringement of a patent for heating them for the same purpose with steam : Hills v. Liverpool Gas Light Co., 1862, 32 L. J. Ch. 28, INFRINGEMENT. 305 7 L. T. (N.S.) 537 ; see also Peckover v. Rowland, 1893, Chap. xxiv. 10 B. P. C 234. SE _!!l 4 - 5. Infringement of a combination. — As the essence of a combination patent is the union of its parts, and not the parts themselves (Chap. I., sect. 8, Chap. VIII., PP- 55, sect. 5), it follows that an infringement must be, not of the individual parts, but of the combination. But a patent is infringed when its essence is infringed, although each particular part may not have been taken : Chap, ante, p. 292. XXIV., sect. 2. Applying this doctrine to patents for combinations, it follows that a combination may be in- fringed by a machine which, though it substantially consists of the combination, does not take every part of it. In fact, one combination may be a colourable imita- tion of the other. This was decided in Lister v. Leather, 1858, 8 Ell. & B. 1031. But the case was subsequently misunderstood, as if it meant that unless all the parts of the combination were taken there could not be an infringement. That view, however, was corrected in three cases in which the whole law of infringement of combinations is to be found : Clarke v. Adie, 1873, L. R. 2 App. Cas. 315. " One mode of infringement would be a very simple and clear one. The infringer would take the whole instrument from beginning to end, and would produce a clipper made in every respect like the clipper described in the specification. About an infringement of that kind no question could arise. The second mode would be one which might occasion more difficulty. The infringer might not take the whole of the instrument here described, but he might take a certain number of parts of the instrument he had described. He might make an instrument which in many respects might x 306 ENGLISH PATENT PRACTICE. Chap. XXIV. resemble the patent instrument, but would not resemble it in all its parts, and then the question would be, either Infringement of a combina- for a judge, or for any tribunal which was judging of the tion. facts of the case, whether that which was done by the alleged infringer amounted to a colourable departure from the instrument patented, and whether in what he had done he had not really taken and adopted the sub- stance of the instrument patented. But there is a third way in which it is possible to conceive an infringement of a patent of the kind to which I have referred. Inside the whole invention there may be that which is a minor invention, and which does not extend to the whole, but forms only a subordinate part or integer of the whole. Now again, that subordinate integer may be a step or a number of steps in the whole, which is, or are, perfectly new, or the subordinate integer may not consist of new steps, but may consist of a certain number of steps so arranged as to form a novel combination within the meaning which is attached by the patent law to the term combination. Suppose that in a patent you have a patentee claiming protection for an invention consisting of parts which I will designate as A, B, C, and D. He may at the same time claim that as to one of those parts, D, it is itself a new thing, and that as to another of those parts, C, it is itself a combination of things which were possibly old in themselves, but which, put together and used as he puts together and uses them, produce a result so new that he is entitled to protection for it as a new invention. In a patent of that kind the monopoly would or might be held to be granted, not only to the whole and complete thing described, but to those subordinate integers entering into the whole, which I have described. But then the invention must be described in that way, it INFRINGEMENT. 307 must be made plain to ordinary apprehension upon the Chap. XXIV. ordinary rules of construction that the patentee has had 1 in his mind, and has intended to claim protection for, ^fr^gement r ' ot a combina- those subordinate integers, and, moreover, he is, as was tion - said by the Lords Justices, at the peril of justifying those subordinate integers as themselves matters which ought properly to form the subject of a patent of in- vention " (per Lord Cairns). Harrison v. Anderston Foundry Co., 1876, 1 App. Cas. 593. — "The case of Lister v. Leather has been cited and com- mented upon as an authority for the proposition that a patent for a combination covers and protects all sub- ordinate combinations or parts, or at least such of them as are new and material. It is plain, however, that the case did not go this length ... it decided nothing more than this, that though the patent is for a combina- tion, it does not follow that there can be no infringement of it unless every part of that combination without exception is pirated. What the Court said was, that the taking of a subordinate part or parts of the combination might be, not that it necessarily would be, an infringe- ment of the patent ; and that whether it would be so or not depended, as the Court of Error said, upon what the parts taken were, how they contributed to the object of the invention, and what relation they bore to each other. This only amounts to saying that on a question of in- fringement the essential nature of the invention will be regarded " (per Lord Penzance) ; and in Nordenfelt v. Gardner, 1884, 1 K. P. C. 10, 61, Lord Esher, M.K., says : " Some stress was laid by some of the counsel, not by all, I think, upon the words ' the general construction.' I take it that the general construction there means the whole of the construction. The arrangement, that is, the x 2 308 ENGLISH PATENT PEAGTICE. Chap. XXIV. whole of the arrangement, and mode of using the & EC • feeding apparatus, that is, the general construction of the Infringement combination, or the construction of the whole combina- or a combina- tion, tion. The general arrangement, that is, the whole arrangement, and the mode of using what ? — the feeding apparatus. That seems to me to claim the feeding apparatus as a combination, and to claim the combina- tion, and the combination alone. If that be so, how can such a combination be infringed ? The machine which is challenged may have that combination actually, with- out any variance at all. If so, it is obvious that the challenged machine is an iafringement. Or it may have that combination with some alteration. The alter- ation of a combination, as it seems to me, may be by addition, or subtraction, or substitution of parts. Any one of those alters the combination. If the alteration, whether it be by addition, or subtraction, or substitu- tion, be merely colourable, 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 by 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 in- vention as an improvement, and by shewing distinctly what the addition is so as to shew what the improvement is. An alteration by subtraction, if it were more than a colourable subtraction, 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 INFRINGEMENT. 309 things ; and if the combination were altered by a material Chap. XXIV. ° . SECT. 5. subtraction, I should think that it was a new combina- tion. But an alteration by substitution, that is, by j? awmbina- substitution of one of the material elements of the tlon - original combination, must, to my mind, be a new com- bination. The second combination, then, is a combination of different things from the first ; there is the 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. Somebody tried to express these things by ante, p. 306. A, B, and C. But if the original combination is of A, B, C, and you take away C, and make a combination of A, B, and D, it seems to me as clear as possible that the new combination is a different combination from the old." From these cases it is clear that an infringement of a combination may be committed by any substantial union of the essential parts composing it, whether or no any- thing is added, or anything immaterial be substituted, and that the question is one of fact in each case ; but that as the essence of a combination patent is not the parts, but the combination, it must be the combination which is infringed, not the parts composing it : Proctor v. Bennis, 1886, 36 Ch. I). 740 ; Paries v. Stevens, 1869, L. K. 8 Eq. 358 ; Sellers v. Dickinson, 1850, 5 Ex. 324, Rill v. Thompson, 1818, 8 Taunt. 391, 2 B. Moo. 448, 1 W. P. C. 242 ; Flower v. Lloyd, 1877, 6 Ch. D. 297, 10 Ch. D. 327. The following cases also may be referred to as examples of these principles. Wenlmm Gas Co. v. May, 1887, 4 E. P. C. 303.— Patent for a combination and arrangement of a gas lamp consisting (inter alia) of two gauze coverings to moderate 310 ENGLISH PATENT PRACTICE. Chap. XXIV. and equalize the air. Held, that a substantially similar 1 ' lamp with but one gauze covering was an infringement. infringement Kekewich, J., after citing Clarice v. Adie, 1875, L. K. 2 of a combma- ° tion. -A-PP- Cas. 335, said : " One must ascertain whether the differences really go to the essence of the patent article." Thompson v. Moore, 1889, 6 E. P. C. 426.— A patent for a compass-card, consisting of a large but very light rim of aluminium and card attached by silk threads to a group of very small needles. The object was to get a slow swing and yet with a small inertia, and a small magnetic moment. The defendants made a very similar compass-card, but with differently arranged needles, and aluminium wire was used instead of the silk thread, field, by the Master of the Eolls, that as plaintiff's in- vention was only a new means of obtaining an old result, it must be strictly construed on the principles of Curtis v. Piatt. But on appeal this judgment was reversed, on the ground that the results obtained by the plaintiff's invention were new, and that the essence of the combination had been infringed. This case is important as limiting and explaining the scope of Curtis v. Piatt. For infringements of combinations see also the fol- lowing cases : Smith v. London & N. W. Rail. Co., 1853, 2 Ell. & B. 76 ; Bovill v. Keyworth, 1857, 7 Ell. & B., 725 ; Be la Rue v. Dickenson, 1857, 7 Ell. and B. 738, 3 Jur. (N.S.) 841 ; Finlay v. Allen, 1857, 19 Dec. C. Sess. 2nd Series, 1,087; Patent Bottle Envelope Co. v. Seymer, 1858, 5 C. B. (N.S.) 164: 28 L. J. C. P. 22; Thomas v. Foxwell, 1858, 5 Jur. (N.S.) 39 ; Lister v. Eastwood, 1864, 9 L. T. (N.S.) 766 ; Bovill v. Crate, 1867, 5 Griff. App. 46 ; Bovill v. Smith, 1867, Griff. App. 49 ; White v. Fenn, 1867, 15 W. E. 348, 15 L. T. (N.S.) 505; Tatham v. Dania, INFRINGEMENT. 311 1869, Griff. 213 ; Saxhy v. Clunes, 1874, 43 L. J. Ex. Chap. xxiv. 228 ; Flower v. Lloyd, 1877, W. N. 1877, 71, 132 ; John- SE i!l 5 ' son's Pat. Man., 4th eel., 245 ; Henderson v. Clippens Oil 5^Sffi2 Co., 1883, 20 Soott, Law Kep. 423 ; Lawrence v. Perry, tion - 1885, 2 K. P. C. 184; United Telephone Co. v. iVeZsorc, 1887, W. N. 1887, 193; Ellington v. Clark, 1888, 5 K. P. C. 319 ; Garrard v. Edge, 1889, 6 E. P. C. 372, 563, 44 Ch. D. 224 ; Mason v. Goodwin, 1889, 6 E. P. C. 235 ; Boyd v. EorroeJcs, 1892, 9 E. P. C. 77 ; Peckover v. Rowland & Co., 1893, 10 E. P. C. 118. Ellington v. Clarke, 1888, 5 E. P. C. 135, 319.— The ft wQ patent was for improvements in hydraulic lifts. The old form of hydraulic lift is shewn in Fig. 1. The cage (p) is raised by the pressure of water acting on a long piston working in a water-tight collar. The cage is balanced by a weight (w). A great deal of water is wasted upon each ascent. To remedy this, as also to get rid of the chain and weight, which are sometimes dangerous, Berly devised the form shewn in Fig. 2. The water is admitted to the chamber (a) and drives down the piston (b), which in its turn drives the water out of the cylinder (c) into the cylinder of the lift, b is counterweighted by a chain consisting of heavy weights linked together, and passing over a pulley ; so that as it descends the 312 ENGLISH PATENT PRACTICE. Chap. XXIV. weight pressing on it increases. Ellington's invention 8 B0T ' ' is shewn in Fig. 3. The cylinder (a) was made smaller Infringement an( ^ pi ace( l horizontal, so as to work with high pressure ; of a combma- * \ _ . tion. Lut this was not specifically claimed, and the weight, pressing B downwards, was replaced by a water-tube (a) connected into the cylinder (c), which pressed on the back of the piston (b). The infringement complained of was made according to Andrews' patent. Fig. 4. — Here both cylinders are amalgamated. The arrangement is such that the upper cylinder (a) is really the smaller, as the water only acts on an annular surface. The weight on B is put at w ; so that this machine is midway between 2 and 3. It was held that the weight (w) was really only a mechanical equivalent for the tube (a) in Fig. 3, but on appeal this was reversed on the ground that defendant's machine was essentially the same as Fig. 2. In the case of Tweedale v. Ashiuorth, 1892, 9 R. P. C. 121, the plaintiff had invented a new mode of attaching the cards on to the flats of carding engines. The cards consist of " foundations " of some elastic substance in which the carding-pins are fixed ; and the foundation was fixed on to the flat by bent strips of metal, as shewn in section in Fig. 1. These metals gripped hold of the sides of the foundation, and the width of the card being rather smaller than that of the flat on which it was placed, the strips stretched the card into its place. The defendant's method (complained of as an infringement) is shewn on Fig. 2. There is no gripping action of the metal clips, only a wedging or squeezing of the foundation INFRINGEMENT. 313 against the flat, and the foundation has to be stretched Chap. XXIV. • -i i -i~-- SECT. 0« by a special machine. The case was carried to the House of Lords, where it was decided that the method of gripping Jf a'comSna- flexible substances with metal strips was old; hence tion. the patent could only be for a particular application of that method carried out in a particular way, and they considered that the defendant had not infringed it. 6. A patent is not infringed by the use of the same means for a different purpose. — Thus, where a patent had been granted for treating sewage-water chemically by means of hydrate of lime in order to make manure, it happened that this process also purified water, but this purpose was not claimed in the patent. The defendants used the process for purifying water, and did not sell or use any of the precipitated manure so obtained. Held, no infringement : Higgs v. Goodwin, 1858, E. B. & E., 529, 27 L. J. Q. B. 421 ; compare semble by Parke, B., in Morewood v. Tupper, 1855, 3 C. L. B. 718 ; Lister v. Eastwood, 1864, 9 L. T. (N.S.) 766. In Fletcher v. The Glasgow Gas Commissioners, a piece of metal attached to the latch of an oven to prevent the door flying open was held not to infringe a patent comprising a similar arrangement for keeping an oven door open to admit the air : 1887, 4 E. P. C. 389. On tbe other hand, if the different purpose for which the infringement was used were simply in addition to the purpose disclosed in the patent, there would be infringement : Cannington v. Nuttall, 1871, L. R. 5 H. L. 205 ; Edison v. Holland, 1888, 5 R. P. C. 482. 7. It is no answer to an allegation of infringe- ment for the defendant to say that the means used 314 ENGLISH PATENT PRACTICE. Chap. XXIV. are an improvement on the original patent, for, SECT " 7 ' as has been seen (Chap. I., sect. 5), a patent may be It is no answer p-ranted for an improvement on a previous patent, but to an allega- ° r . - tion of in- the use of the second may be an infringement oi the foXT* first : Neilson v. Harford, 1841, 1 W. P. C. 310 ; per Ihat a the t0Say Parke > R > Bussdl v - Ledsam, 1843, 14 M. & W. 578; means used Needliam v. Johnson, 1884, 1 E. P. C. 53. are an in- provement on patent gmal 8- Coextension of anticipations and infringe- ments. — A test sometimes applied to decide whether a thins is an infringement is to ask whether it would have been sufficient as an anticipation to invalidate the patent. In Davis v. Feldtman, 1884, 1 E. P. C. 13, 193, the plain- tiff had patented an improvement in umbrellas. It was found that, so far as the defendant had infringed, he had only used an old contrivance : per Fry, L.J. : " I think the plaintiff is in a dilemma. If his second claim covers the defendant's user, then he has been anticipated by Weeks." The Court, however, held there had been no infringement ; see also Dowries v. Falcon Engine Works, 1886, 3 E. P. C. 70, 2 E. P. C. 197. In Young v. Rosenthal, 1884, 1 E. P. C. 29, the patentee had been anticipated by the use of curved instead of straight lines for corsets. Held, that he was in a similar dilemma with regard to an infringement in which such curved lines were used. In applying this principle, some care must be exercised. For the above rule assumes that at the supposed time of the hypothetical prior invention public knowledge is in the same condition as it is at the time of the infringement. For instance, take the case of an inventor who has tried a certain process imperfectly and abandoned it owing to a mistaken notion that it INFRINGEMENT. 315 would not work, and that his experiments and results are Chap. XXIV. published and known. A subsequent experimenter tries it again, shews that it can be made a success, and patents - f Stioipa- it. No doubt this patent would be good (Chap. V., gjj£££; sect. 7). And yet, suppose the patent had been taken out before the operations of the first inventor ? Those very operations of the first inventor would no doubt have been infringements, although, as has been said, they would not have been sufficient anticipations to have invalidated the patent ; so that here you have a case in which infringement is not tested by seeing whether or no it would have been an anticipation. The explanation is, that the first process prior to the invention was con- ducted blindly, in the dark, whereas the very same process conducted subsequently to the invention would be in the light of the knowledge which the invention has conferred. This, it is submitted, is the true meaning of Caldwell v. Van VTissengen, 1851, 9 Hare, 421, and Mur- ray v. Clayton, 1872, L. E. 7 Ch. 585, where it was held, that " a clumsy imitation of a patented machine or a patented article may be an infringement, although it is not such as would have been an anticipation defeating an inventor's right to a patent : see also Daw v. Eley, 1865, L. R. 3 Eq. 501 n. ; Newton v. Grand Junction Rail Co., 1846, 5 Ex. 334. 9. Time when an infringement may be com- mitted. — An infringement may be committed after the publication of the complete specification and during the life of the patent (Patents Act, 1883, s. 13). Extensions post, p. 447. are now dated the day after they are granted, but if an interval occurred between the expiration of a patent and its extension, no act done in the interval could constitute 316 ENGLISH PATENT PRACTICE. Chap. XXIV. an infringement : Russell v. Ledsam, 1845, 14 M. & W. SECT - 9 - 574, 16 M. & W. 641, 1 H. L. C. 687. Time when an infringement may be 10. The intention to infringe is not material. — The committed. . . , question of mirmgement does not depend upon tlie in- tention of the infringing party. The view that intention is material was at one time held : Heath v. Unwin, 1845, 2 W. P. C. 227 ; but in the same case, at p. 300, it was negatived, and in Stead v. Anderson, 1847, 2 W. P. C. 156, the Court says : " We think it clear that the action is maintainable in respect of what the defendant does, not what he intends " : Wright v. Hitchcock, 1870, 39 L. J. Ex. 103 ; McGormich v. Gray, 1861, 31 L. J. Ex. 48, 7 H. & N. 25 ; Newall v. Elliot, 1864, 10 Jur. (N.S.) 954, 13 W. E. 11 ; Curtis v. Piatt, 1863, 11 L. T. (N.S.) 245. Nor is it necessary that the defendant should have known that the invention he infringes was the subject of a patent at all : Walton v. Lavater, 29 L. J. C. P. 279 ; Nobel's Explosives v. Jones, 1880, L. E. 17 Ch. D. 721 ; Young v. Rosenthal, 1884, 1 E. P. C. 39 ; Davenport v. Bylands, 1865, L. E. 1 Eq. 303; Wright v. Hitchcock, 1870, 39 L. J. Ex. 103 ; Wittman v. Oppenheim, 1884, 27 Ch. D. 260 ; Gearij v. Norton, 1846, 1 De. G. & S. 9 ; Plimpton v. Spiller, 1876, L. E. 4 Ch. D. 286. Innocence of intention may, however, have a great effect upon costs : poet, p. 408. Chap. XXVIII., sect. 39. 11. In order to constitute an infringement, the aet complained of must be one calculated to injure the trade profits of the patentee. — Having regard to the words " the ivhole profit and advantage of the invention" and remembering that the object of patent law is not to reward scientific discovery, but to encourage trade, it INFRINGEMENT. 317 follows that in general only those acts will be treated as Chap. XXIV. SECT. 11. infringements which are held either directly or indirectly to injure the trade of the patentee. constitute an And therefore, merely to use a patented invention for infringement, J x the act com- experiment will not be an infringement. And perhaps plained of even to use a patent in a private way for self-instruction, ca i C uiated to not for profit or for business purposes, would not be an in- {^eprofitaof fringement, though that is more doubtful. But to make tue patentee. use or sell an object made according to the invention for the purposes of profit will be an infringement, and to buy an article made according to the patent would also be P od ' P- 32 °- an infringement. The true test in every case will be whether the acts complained of are calculated substan- tially to interfere with the profits of the patentee. 12. Infringement by manufacture. — It is an infringe- ment to make a patented article with a view directly or indirectly to obtain profit therefrom. But inasmuch as the very nature of the power of the Crown to grant mono- polies depends on its position as protector of trade, it follows that merely to make a thing is no infringement unless in some way the trade in the thing is affected. Thus, Patterson, J., considered that to " make a thing merely for amusement or as a model was not an infringe- ment : Jones v. Pearce, 1832, 1 W. P. C. 125. But it is submitted that it would not be permissible to make a patented invention for private amusement unless for the purposes of experiment or of improving it, and if the article has been made for profit and is a piracy, the buyer would no doubt be liable as well as the seller, even though the buyer had merely purchased it for amusement, and not to make any profit by means of it (per Kay, J.) : United Telephone Co. v. Sharpies, 1885, L. R. 29 Ch. D. 164. 318 ENGLISH PATENT PRACTICE. Chap. xxiv. 13. Experimental user. — Mere experimental user — L ' will not infringe a patent provided no pecuniary benefit uso?. enmeiltal is opined thereby. "If a man makes things merely by way of bond fide experiment, and not with the in- tention of selling and making use of the things 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 prevent persons of ingenuity exercising their talents in a fair way. . . . But when you see a man using a machine as this defendant has done, under a claim of a right to use it, and under that claim of right he makes a quantity of goods, even though a small quantity, I cannot call that an experiment within the meaning of the rule as to ex- periments. He has made a machine, and knowing it to be an infringement of a patent, he claims a right to make and use it, and his experiment is made to see how his machine works " {per Jessel, M.E.) : Frearson v. hoe, 1878, L. E. 9 Ch. 67 ; see also Muntz v. Foster, 1844, 2 W. P. C. 101. An instructor who bought pirated instruments to teach his pupils so as to save the expense of the patented articles, was held to have infringed, as he had done so indirectly for profit : United Telephone Co. v. Sharpies 1885, L. E., 29 CD. 164, 54, L J., Ch. 633. 14. Infringement by user. — Subject to what has been said as to experimental user, the unauthorized use of a patented invention will be an infringement of it. Thus, in Betts v. Neilson, 1865, 6 N. E., 221, L. E. 3 Ch. 429, the defendants sent some beer in bottles, fastened with a INFRINGEMENT. 319 capsule, from Scotland to an English port for shipment Chap. XX I v. CppT 1 A abroad. Held, that during the time the bottles were in _J England the capsules were being used to hold the beer. I nfl-m s ement 010 by user. Wood, V.-C, said he could conceive a case in which foreign tools lying inert in boxes, and merely for transhipment, could not be said to be used so as to infringe a patent, and referred to the case of Caldwell v. Van Vlissingen, 1851, 21 L. J. Ch. 97 ; 9 Hare, 415, in which case the use of a screw-propeller in English waters was held an infringe- ment. But custom-house agents merely receiving goods and storing them are not infringers: Nobel's Explosives Co. v. Jones, Scott & Co., 8 App. Cas. 5, 17 Ch. D. 721. In Adair v. Young, 1879, L. K. 12 Ch. D. 13, an injunction was granted to prevent a master of a ship from using pumps which the owners had fitted up on the ship. This was on the ground, not that he had committed an infringe- ment by simply having the pumps there, but that he might do so. In Proctor v. Bailey, 1889, 6 K. P. C, 106, the putting-up of fire-engines was held not to be experi- mental but an infringing user. The possession of a number of instruments by a trading company is sufficient to warrant the granting of an injunction, although they have not sold any : United Telephone Co. v. Globe Tele- phone Co., 1884, 26 Ch. D. 766 ; Forsyth v. Riviere, 1819, 1 W. P. C. 97. 15. After a patent has been granted, a man who has previously used the invention privately may not continue to do so except experimentally: Smith v. Davidson, 1857, 19 C. S. 697 ; and compare Cornish \. Keene, 1835, 1 W. P. C. 571. It thus appears as if by obtaining a patent a man can stop another from doing what he was doing before. This, however, is not 320 ENGLISH PATENT PRACTICE. Chap. XXIV. involved in the above proposition. For if the prior user BB aCm were experimental and secret, the experimenter may still After a patent cori tiniie to experiment as before, and he will not infringe. has been x granted, a If the prior user were abandoned, and had never been previously ' " brought to perfection, then the rediscoverer and patentee used the j ^ t inventor. If on the other hand the prior user invention x privately may were public, then the patent would be invalid. not continue r to do so except taily rimen " 16 - Infringement by sale or purchase.— The sale of a patented article or of an article made according to a patent is an infringement : Gibson v. Brand, 1841, 1 W. P. C. 630. It was apparently considered in Winter v. Williams, 1835, 1 W. P. C. 137, 5 Nev. & M. 647, 4 A. & E. 251, that the mere exposing for sale was not an infringe- ment. In Muntz v. Foster the making of a quantity for sale was held to be an infringement : 1844, 2 W. P. C. 101 ; and offering for sale was also held to be an infringement in Oxley ^Holden, 1860, 8 C. B. (N.S.) 666, 30 L. J. C. P. 68. A buyer of a patent article infringes the patent as well as the seller : United Telephone Co. v. Sharpies, 1885, L. E. 29 Ch. D. 164 ; though perhaps a small quantity bought in ignorance for private purposes would not render the buyer liable: Wright v. Hitchcock, 1870, 39 L. J. Ex. 106; Davonport v. Rijlands, 1865, L. K. 1 Eq. 308. In the United Telephone Co. v. Henry & Co., 1885, 2 K. P. C. 12, a workman of the plaintiffs' went to the defendants to buy a pirated telephone which he saw in their shop. He, however, only got a loan of it, and pro- mised to return it. Held, that the defendants were not proved to have sold or intended to sell the telephone, and the action was dismissed. INFRINGEMENT. 321 17. The sale in Great Britain of an article patented Chap. xxiv. in Great Britain but made abroad is an infringement : __ Walton v. Lavater, 1860, 29 L. J. C. P. 279; see also 1 W. P. C. 48 n. ; and a sale in Great Britain of an article made abroad according to a process patented in Great Britain is an infringement, though the patent is not for the article but the process of making it : Elmslie v. Boursier, 1869, L. B. 9 Eq. 217, 39 L. J. Ch. 328; Von Heyden v. Neustadt, 1880, 14 Ch. D. 230 ; Cartsbum Co. v. Sharpe, 1884, 1 R. P. C. 181. " If a man buys and sells he may be said to be ' making ' by the hands of another " : Holmes v. London & N. W. Rail. Co., 1852, M. P. C. 23. It is no answer to an action of infringement to say that the number of articles made is small : Cole v. Saqui, 1888, 5 B. P. C. 489. Where, however, a patentee or his licensee sells an article to a purchaser there is an implied permission to use it and to resell it again and again within the area which the patent covers : Thomas v. Sunt, 1864, 17 C. B. (N.S.) 183 ; Smith v. Buchanan, 26 S. J. 347. But a license to manufacture articles in a foreign country under a foreign patent does not give an implied rio-ht to sell them here : Betts v. Willmot, 1870, L. R. 6 Ch. 239, 19 W. R. 369 ; Societe Anonyme des Glaces v. Tilffhmans, 1883, 25 Ch. D. 1. A person who buys from a patentee without notice of the area within which the patent may be used takes it with power to resell in the whole area of the patent : Heap v. Hartley, 1888, 5 B. P. C. 603, 6 R. P. C. 496. 18. It is no infringement of a patent to sell the materials for infringing it, provided that the vendor does not take such part or profit in the putting them Y infringing: it. 322 ENGLISH PATENT PRACTICE. Chap. XXIV. together, or preparing them for being put together, !_ ' as makes him a partner or joint tort feasor. This was It is no j a j^ c | own jjy J esse l M.R., in Townsend v. Haworih, infringement J ' of a patent to 1875, L. R. 12 Ch. D. 831 n., but a fuller account of the materials for judgment is given in Higgins' Digest of Patent Cases, 2nd Ed. p. 1G(J ; see also Sykes v. Howarth, 1879, L. R. 12 Ch. D. 832; Goucher v. Clayton, 1865, 11 Jur. (N.S.) 462, 13 L. T. (N.S.) 115 ; McCormic v. Gray, 1861, 31 L. J. Ex. 47. But to sell the component parts of an invention so adapted to one another that they merely require to be put together, would be an infringement : semble United Telephone Co. v. Bale, 1884, 25 Ch. D. 778 ; and see Neivall v. Elliot, 1864, 10 Jur. (N.S.) 958, where Bramwell, B., said : " If a man fits up on board a ship a part of a machine, and has the other part there so that he may apply the whole part of the invention when he gets out of England, he may infringe the invention " : see also Abbot v. Williams, 1837, 9 Rep. Arts. 103. 19. Repairs. — When a machine has been purchased from a patentee or his licensees, and the patentee has thus been paid for the use of the patent, its component parts may not be restored if broken, if the parts form an essential part of the combination, except by persons duly licensed to do so : United Telephone Co. v. Nelson, 1887, W. N. 1887, 193. 20. Use on board ships. — The jurisdiction of the Courts to restrain patent infringements extends to British waters : Adair v. Young, 1879, L. R. 12, Ch. D. 13 ; but not to British vessels on the high seas : Newall v. Elliot, 1S64, 10 Jur. (N.S.) 954, 13 W. R. 11. By Common ; INFRINGEMENT. 323 Law this jurisdiction extends also to foreign vessels in Chap. XXIV. British waters. In Caldwell v. Van Vlissingen, 1851, 16 _1_ Jur. 115, 21 L. J. Ch. 97, a Dutchman was restrained ^ a on board from using on board a Dutch vessel a screw-propeller which was the subject of an English patent. In 1852, however, this law was altered by statute, and it is now pro- vided by the Patents Act, 1883, s. 43, that a patent shall not prevent the use in a foreign vessel of anything, pro- post, p. 458. vided (a) that it is used for the purpose of navigation ; (b) that it is not used for or in connection with the manu- facture or preparation of anything intended to be sold or exported from the United Kingdom ; (c) that the state to which the ship is subject shall afford like privileges to English vessels. 21. Manufacture, use, and sale by agents. — The ordinary law of principal and agent as applied to torts applies also to infringement of patents. Thus a prin- cipal is liable for the acts of his agent : " He that comes and procures articles to be made may well be said to have made them himself" (i^er Tindal, C.J.) : Gibson v. Brand, 1842, 1 W. P. C. 631. If, however, the work is done by a contractor, he need not necessarily be the agent of the person who employs him, nor need the employer be necessarily liable for the contractor's acts : Benley v. Blore, 1851, 38 Lond. Jour. 224. On the same principle, the mere fact that the defendants were con- tractors for the Crown, was held not to justify them in infringing a patent which agents of the Crown could have done with impunity under the then law : Dixon v. Small Arms Co., 1877. L. K. 1 App. Cas. 632, 1 Q. B. D. 384. The defendant contracted to clothe a machine with cards, which infringed a patent if they were fixed y 2 324 ENGLISH PATENT PRACTICE. Chap. XXIV. on in a peculiar manner, but not otherwise. The de- SFCT 21 fendant paid a nailer to do the work who was, how- Manufacture, use, and sale by agents. ever, chosen by the owner of the machine. Held, that defendant had infringed : Syhes v. Howarth, 1879, L. R. 12 Ch. D. 832. Directors of a company may make themselves liable by directing acts of infringement : Betts v. De Vitre, 1868, L. R. 3 Ch. 441, 37 L. J. Ch. 325 ; Spencer v. Ancoats Vale Bubher Co., 1888, 6 R. P. C. 46, 4 T. L. R. 681. Of course servants and managers can be restrained as well as principals : Betts v. Neilson, 1865, 6 N. R. 221 ; but a mere workman would not in general be treated as an infringer: Toivnshend v. Haivorth (per Jessel, M.R.), Higgins' Digest, p. 168. Custom-house officials merely storing goods, and not having possession or control over them, would not be considered as infringers : Nobel's Explosive Co. v. Jones, Scott & Co., 1883, 8 App. Cas. 5, 17 Ch. D. 721 ; and public carriers would probably be in the same position. Where a defendant committed an infringement at the instance of the plaintiff who wished to entrap him, held that he did so as agent for the plaintiff, and the action failed : Kelly v. Batchelar, 1898, 10 R. P. C. 289. 22. The question of infringement is one of fact, and therefore is for the jury if the action is being tried by jury : Walton v. Potter, 1841, 1 W. P. C. 586 ; Macnamara v. Hulse, 1842, Car. & M. 471 ; Newton v. (! rand Junction Bail. Co., 1846, 5 Ex. 331 ; Stevens v. Keating, 1847, 2 W. P. C. 191 ; Sellers v. Dickinson, 1850, 5 Ex. 323 ; De la Bue v. Dickinson, 1857, 7 E. & B. 738 ; Seed v. Higgins, 1858, 8 H. L. C. 550. Sometimes, however, INFRINGEMENT. 325 it may be a mixed question : Curtis v. Piatt, 1SG6, 35 Chap. xxrv. L. J. Ch. 852 ; see also Chap. XXVIII., sect. 24. bE ^_ 23< 23. The opinion of an expert as to facts is admis- sible, but not to say whether or no there has been an infringement : Seed v. Higgins, 1860 (^er Lord Wensley- dale), 8 H. L. C. 550. 326 ENGLISH PATENT PRACTICE. CHAPTER XXV. EXTENSION OF LETTEKS PATENT. Chap. xxv. 1. Old practice. — Prior to the year 1835 patents were ' ' occasionally extended by Act of Parliament. A number of instances of such acts are given in Webster's Patent Cases (see Index, " Extension of Terms "). In 1835, by 5 & 6 Will. IV. c. 83, s. 4, power to extend patents for seven years was given upon report of the judicial com- mittee of the Privy Council : see also 2 & 3 Vict. c. 7, and 7 & 8 Vict. c. 69, s. 2. Opposition to such ex- tension was made by entering a caveat. For cases under the Act of 1835, see 1 W. P. C. 557. 2. Practice under the present law. — Under the Act post, p. 451. of 1883, s. 25, a patentee may, at least six months before the expiration of his patent, petition for extension, upon which a further term of seven years, or in exceptional cases of fourteen years, may be granted, on such con- ditions as the judicial committee of the Privy Council thinks fit. Any one may enter a caveat against the For the Kulcs petition. Rules of procedure may be made by the Privy p C °5t;5? ' Council, who may also award costs. All petitions presented at present are for the exten- sion of patents which were granted under the old acts, EXTENSION OF PATENTS. 327 and hence are governed by the old law : Brandons Chap. XXV. Patent, 1884, 1 R. P. C. 154 ; though when once the SE _!Zl ' extension is granted, a new patent is sealed under the ^erthe Patent Act, 1883, as will be seen hereafter. Hence the P rcsent law - limit of six months does not apply to applications for V ^ P- 34 ?. extension of patents granted under the old acts, and the rules of the Privy Council are still in force, and no new ones have been made. There is really no practical difference between the old practice and the new, except as to the requirement of petitioning six months before the expiration of the patent. 3. The persons who may petition. —The Patents Act, 1835, s. 4, provided that " if any person who now hath, or shall hereafter obtain, a patent, shall petition," etc. The Patents Act, 1883, provides that " a patentee " may post, pp. 451, 402 petition which now, by sect. 46, includes the persons for the time being entitled to the patent. Under the Act of 1835, a patentee might petition though he were only trustee of the patent for an alien : Newton s Patent, 1861, 14 Moo. P. C. C. 156; and a public company may also be a petitioner : Cook's Patent, 1851, 38 Lond. Jour. 223; Deacons Patent, 1887, 4 R. P. C. 119 ; and Patent Act, 1883, ss. 25, 46, 117. Pft, PP- 451. 4G2. An executor can petition : Bodmers Patent, 1849, 6 Moo. P. C. C. 469 ; and an administrator : Bowntons Patent, 1839, 1 W. P. C. 565 ; Heatlis Patent, 1853, 2 W. P. C. 247 ; Willacy's Patent, 1888, 5 R. P. C. 690. Under the Act of 1835, extensions were and are fre- quently granted on the petition of assignees : Wright's Patent, 1837, 1 W. P. C. 561 ; Morgans Patent, 1843, 1 W. P. C. 737 ; Whilehouses Patent, 1838, 1 W. P. C. 476; Russell v. Ledsam, 1845, 14 M. & W. 574, 16 328 ENGLISH PATENT PEACTICE. Chap. XXV. SECT. 3. The persons who may petition. M. & W. 633, 1 H. L. C. 687 ; Norton s Patent, 1863 ; 1 Moo. P. C. (N.S.) 339; Pitman s Patent, 1871, 8 Moo. P. C. C. (N.S.) 297; seo also 1 W. P. C. 725 note (e.). An equitable assignee is entitled to be a co-peti- tioner: Nobles Patent, 1850, 7 Moo. P. C. C. 191. An assignee's title must, however, be strictly proved : Wright's Patent, 1843, 1 W. P. C. 737 ; Gallowai/s Patent, 1843, 1 W. P. C. 725. The executor of an assignee may also petition : Bodmer's Patent, 1849, 6 Moo. P. C. C. 469. It is usual to join in the petition all who have an interest in the patent. Thus, in Beacons Patent, 1887, 4 K. P. C. 119, where a patentee had assigned to a company for a sum down and shares, both the patentee and the company joined in the petition. In Church's Patent, 1886, 3 E. P. C. 95, the Privy Council decided that where a patent had been mortgaged, the mortgagee as legal owner ought to have joined in the petition. In Berosnes Patent, a part assignment had been made, but only for the original term of the patent, the assignees did not join in the petition which was granted to the patentee : 1844, 2 W. P. C. 2, note e. The claims of an inventor to an extension rest on his ingenuity, and are far more favourably considered than the claims of an importer of an invention, or of an assignee : Electric Telegraph Co.'s Patent, cited, 1 Moo. P. C. C. (N.S.) 339. Thus in Norton's Patent, 1863, 1 Moo. P. C. 339, the Master of the Polls said, " 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 as the original inventor " : see Morgan's Patent, 1843, 1 W. P. C. 737 ; Normand's Patent, 1870, 6 Moo. T. C. C. 477 ; Pitman's Patent, 1871, EXTENSION OF PATENTS. 329 8 Moo. P. C. C. (N.S.) 297 ; BovilVs Patent, 1863, 1 Moo. Chap. xxv. SECT. 3. P. C. (N.S.) 348. A mere importer of an invention is not so favourably wl ^ ^y " 8 regarded as the inventor : Claridges Patent, 1851, 7 Moo. petition. P. C. C. 394; Soame's Patent, 1843, 1 W. P. C. 733 ; Bernjs Patent, 1850, 7 Moo. P. C. C. 187 ; Betts Patent, 1846, 2 W. P. C. 160. As to the conditions sometimes inserted for the benefit of inventors, see " Conditions," sect. 17. post, p. 345. 4. Procedure. —The first step is to advertise, as P ost > P- 565 - provided by 4 & 5 Will. IV., c. 83, and P. C, rule ii. For forms of advertisement see Appendix and sect. 6, infra. The petition (sect. 7, infra) is presented within post, p. 330. a week after the last advertisement (Privy Council post, p. 5G5. Rules III.), accompanied by affidavits verifying the insertion of the advertisements (and under the Act of 1883, at least six months before the expiration of the patent). post, p. 452. By entering a caveat, any person (see sect. 9, infra) post, p. 332. obtains the right to have served upon him by the peti- tioner a copy of the petition, within a fortnight of receiving which he must give notice of objections if he means to oppose the grant of the patent : Rule VI. (see sect. 10, infra). An application is then made post, p. 332. by the petitioner, on the day named in the adver- tisement, to the Privy Council to fix a hearing day for the petition, on affidavit of service of the petition, on all persons who have entered caveats : Rule V. The hearing day is thus fixed, and the petitioner gives four weeks' notice of it to all the persons who have entered caveats : Rule III. Certain copies of the specification and ac- counts must be lodged at the Privy Council one week before the hearing day: Rule IX. (see sect. 11, infra), post, p. 332. 330 ENGLISH PATENT PRACTICE. Chap. XXV. and all parties at their own expense may have copies of L ' any documents lodged in respect of any application. Procedure. 5. Inspection by an opponent of the petitioner's accounts is not allowed before the hearing day : Brid- son s Patent, 1852, 7 Moo. P. C. C. 499 ; but copies of them are sent from the Privy Council Office to the law officer for examination. 6. The advertisements should be inserted in news- papers in places where the patent is being worked : Derosnes Patent, 1844, 2 W. P. C. 2, and should contain the names of all who wish to support the petition, as, for instance, the equitable as well as the legal assignees : in Be Nobles Patent, 1850, 7 Moo. P. C. C. 191. 7. The petition.— The petition should contain all the facts upon which the petitioners rely, for it will be very difficult, if not impossible, for them to bring forward at the hearing facts which they have not set out in outline in their petition : Pitman's Patent, 1871, L. R. 4 P. C. 84. In drawing a petition great care must be taken to set out the facts clearly, fully, in order, without repeti- tion, and yet in as condensed a form as possible. A well- drawn petition is of great influence in gaining the case. It should be in paragraphs, and, where necessary, clear marginal references should be given to the pages and lines of any documents cited. In all petitions to the Privy Council, the utmost good faith in their preparation is re- quired. They are not like pleadings, where affirmations and denials are made in order to cast the burden of proof on other parties, and perhaps secure a right to reply, or for some such tactical advantage. They are supposed to be statements of the facts, and nothing but the facts, and EXTENSION OF PATENTS. 331 uberrima fides is expected in their preparation. In Hor- Chap. xxv. * . SECT. 7. seij's Patent a petition set out an assignment to a company, but did not state (as the fact was) that the company, though The P utltl0n - registered, had not, in any commercial sense, been formed at all, and that the only real owners of the patent were the patentee and his creditors. The Privy Council con- sidered that they had not been treated with candour, and though the invention had merit, and the patentee had not been sufficiently remunerated, the petition was rejected : 1884, 1 E. P. C. 225 ; see also Pitman s Patent, 1871, L. E. 4 P. C. 84, 8 Moo. P. C. C. (N.S.) 293 ; Johnson's Patent, 1871, L. E. 4 P. C. 83 ; Adair s Patent, 1881, L. E. 6 App. Cas. 176. In one case where certain facts relating to the petitioner's title had been omitted in the petition, leave to amend was granted, and the hearing postponed : Hutchinson's Patent, 1861, 14 Moo. P. C. C. 364. In Fountain Livet's Patent, where a petitioner knew of a prior patent, which might be held to antici- pate his own ; held, that he ought to have disclosed it in his petition : 1892, 9 E. P. C. 327. As to the grounds upon which the petition is granted, and which should be specified in the petition : see infra, sect. 13, and for a post) p . 333. form of petition ; see e.g., Nussey & Leachmaiis Patent, 1889, 7 E. P. C. 22. The petition should state if the akopost, patent is an importation : Pitman s Patent, 1871, supra, ante, p. 327. 8. The time for presenting the petition is shortly before the last six months of the patent's life. A petition ante, p. 327. presented too long before its expiration (e.g., eighteen months) may be ordered to stand over to see what the profits will be : Mackintosh's Patent, 1837, 1 W. P. C. 739. The petition should be presented within a week of the publication of the last advertisement : Eule III. ; P ust > P- 5GG - 332 ENGLISH PATENT PRACTICE. Chap. XXV. but a mistake of a few days has been allowed to be SECT - 8l rectified : Hutchinson's Patent, 1861, 14 Moo. P. C. C. 364. The time for presenting the g Caveators. — Any one may enter a caveat, but at petition. J , the hearing the caveat must be supported by a real post, P. Art, opponent, and not simply by a patent agent : Lowes IS^S*' Patent, 1852, 8 Moo. P. C. C. 1. 10. Notice of objections to the extension should be full and detailed, but the committee may notice an anticipation not set forth in the objections, in which case they may deprive the opponents of costs : Stewart's Patent, 1885, 3 E. P. C. 7. The Attorney-General is not bound to give any notice of objections, and may raise objections at the hearing without any notice : Ball's Patent, 1879, L. K. 4 App. Cas. 171; Stewart's Patent, 1885, 3 E. P. C. 7 ; Church's Patent, 1886, 3 E. P. C. 101; Fountain Livet's Patent, 1892, 9 E. P. C. 327. 11. Lodging of the documents at the Privy Council Office one week before the hearing day : P. C, r. ix. Non-compliance with this rule may not be fatal : Bell's Patent, 1846, 2 W. P. C. 159 ; but the accounts ought to be lodged in time, otherwise the committee may dismiss post, p. 338. the petition (see infra, sect. 14, " As to Accounts "). 12. The hearing. — The evidence follows as nearly as possible the rules of the H. C. J. The advertisements must be duly proved : Perkins' Patent, 1845, 2 W. P. C. 8 ; Belts Patent, 1846, 2 W. P. C. 160 ; and the evidence is orally given. The Attorney-General appears to watch the case for the Crown : Erard's Patent, 1835, 1 W. P. C. 557 n. ; and this whether or no a caveat has been entered : Pettit Smith's Patent, 1850, 7 Moo. P. C. C. 133. EXTENSION OF PATENTS. 333 No more than two counsel are heard in any one interest: Chap. xxv. Woodcroffs Patent, 1841, 3 Moo. P. C. C. 171 n. A preliminary objection is often taken that the accounts are The heann s- on the face of them insufficient. If this is well founded the petition is at once dismissed, if not then the evi- dence proceeds. The Court, under the Patents Act, 1883, s. 28, sub-s. 2, may call in the aid of a skilled assessor : see Chap. XXVIII., sect. 21. 5°* PP- 385, x 454. 13. Grounds upon which a petition is granted : post, P. Act, .. . „ sec. 25, ss. 4, (a) Public interest in the extension. — In the Acts ot p . 452. Parliament by which prior to 1835 patents were ex- tended, it was usual to recite matters shewing that it was for the public interest as well as that of the patentee, that the patent should be extended : see, e.g., Liardefs Patent, 1776, 1 W. P. C. 52; Hartley's Patent, 1777, 1 W. P. C. 55 ; and the same considerations will weigh with the Privy Council in granting extensions under the statute : 1 W. P. C. 557 n. In McBougalVs Patent, the fact that the public would be excluded from using alum, clay, and charcoal in certain proportions for de- odorizing manure, held, to weigh against the somewhat dubious utility of the patent : 1867, L. H. 2, P. C. 1, 5 Moo. P. C. C. 1 ; Sittar's Patent, 1882, Good. P. C. 581 ; see also Morgans Patent, 1843, 1 W. P. C. 739 ; Soames Patent, 1843, 1 W. P. C. 734. A patentee had granted an exclusive licence to a company for a patent, and any prolongation that should be granted. Held, to be against the extension, for such exclusive use is contra to public policy: GardwdVs Patent, 1856, 10 Moo. P. C. C. 488. But in Shone s Petition for Prolongation, 1892, 9 R. V. C. 438, this objection was not pressed, and the patent granted, but on condition that the exclusive licence p. 342. 334 ENGLISH PATENT PRACTICE. Chap. xxv. should cease. It was held, no ground for refusing to SE CT ' ' extend a patent for smoke prevention (which had been Grounds upon recently rendered compulsory in furnaces in the me- which a _ J . petition is tropolis by Act of Parliament) that the public might be (a) Public compelled to use the invention : Foardes Patent, 1855, lxtenln? the 9Moo.RC.C.376. (b) The benefit already received by the public from the invention. — In Derosnes Patent, the patentee See post, had made over £8000 by a patent for refining sugar. The public had benefited by from l^d. to 2d. per lb. The committee considered that though the profit to the patentee had been great, that the public had so greatly benefited, that they gave an extension of six years : 2 W. P. C. 4 ; Erard's Patent, 1835, 1 W. P. C. 557 ; Soames Patent. — " The public has somewhat gained " : 1843, 1 W. P. C. 735 ; Jones' Patent, 1840, 1 W. P. C. 557. — " An invention may not be a very difficult one, but it may be of such usefulness to the public that it may seem fair that the patentee should have a further portion of remuneration" (per Lord Hobhouse) : Bean- land's Patent, 1887, 4 K. P. C. 491. In this case, however, the application was refused, as there was no exceptional merit in the invention. (c) The merit of the invention. — The merit of the invention, that is to say, its ingenuity, novelty and utility, are looked upon from a different point of view in a petition for extension to that in which they are re- garded in an action for infringement. For on the one hand, the mere fact that a patent would be supported on those grounds is not sufficient to make out a case of such exceptional merit as to warrant an extension. It is not every meritorious patent that will be extended, but only patents of exceptional character. On the other hand, the EXTENSION OF PATENTS. 335 Court, if convinced that the invention has exceptional Chap. xxv. SECT I S merit, will not try out questions of novelty or anticipation. " It is not the practice of this tribunal to decide upon ^hioh? UP ° n the novelty or utility of a patent ; and although they petition is would of course abstain in any case from prolonging a (c) The merit patent which was manifestly bad, yet they are in the invention, habit ... to consider not only that amount of utility which would be necessary to support a patent, but that sort of utility which might more properly be described as merit " ( per Lord Cairns) : Saxbij's Patent, 1870, L. K. 3 P. C. 294, quoted with approval in Cocking 's Patent, 1885, 2 R. P. C. 153 ; see Stewart's Patent, 1885, 3 E. P. C. 10. Church's Patent, 1886, was on the same principle ex- tended for five years in spite of alleged anticipation : 3 R. P. C. 101 (an action of infringement was then pending: 2 R. P. C. 175, 3 R. P. C. 127). Heath's Patent, 1853, 2 W. P. C. 247, was extended, the Court expressing no opinion on its validity ; it was ultimately found bad for want of novelty : Heath v. Smith, 1854, 2 W. P. C. 275. Similarly, Kay's Patent, for spinning machinery, was extended for three years in 1839 : 1 W. P. C. 5G8 ; but Chancery proceedings which had been commenced in 1835, and which were then pending, ended in 1841 by the invalidation of the patent by the House of Lords : 2 W. P. C. 83 ; see also Lane-Pox's Patent, 1892, 9 R. P. C. 411, where pending proceedings were not considered as preventing an application for extension, even though the judgment of a Court of the High Court of Justice had recently declared the patent invalid. Pinkus' Patent, 1848, 12 Jur. 234 ; Betts Patent, 1862, 1 Moo. P. C. C. (N.S.) 49. " Before their Lordships can recommend . . . the prolongation of a patent they must be convinced that the patentee has been inadequately 336 ENGLISH PATENT PRACTICE. Chap. XXV. remunerated ; . . . but that is not all, . . . there must !_ ' be some exceptional merit in the invention" (per Lord Grounds upon Hobhouse) : Beanland's Patent, 1887, 4 E. P. C. 491 ; which a ' petition is and see Stoneys Patent, 1888, 5 R. P. C. 522 ; Swaine's ^ The merit Patent, 1837, 1 W. P. C. 559 ; Woodcroft's Patent, 1846, invention. 2 W - p - C - 32 5 Mclnnes' Patent, 1868, 5 Moo. P. C. C. (N.S.) 72, L. K. 2 P. C. 54. It is, however, no objection against the merit of an invention for the purposes of an extension that great subsequent improvements have been made in it, which are being worked : Galloway s Patent, 1843, 1 W. P. C. 727 ; Soame's Patent, 1843, 1 W. P. C. 734. (d) Utility of the invention as evidenced by its successful working : Doivnton's Patent, 1839, 1 W. P. C. 565. If the invention has not been practically and successfully worked, this, on petition for its extension, will put its merits as to utility in an unfavourable light unless some explanation be forthcoming as to why it was not made a success : Allans Patent, 1867, 4 Moo. P. C. C. (N.S.) 443 ; Pinkus Patent, 1848, 12 Jur. 234 ; Hughes Patent, 1879, L. K. 4 App. Cas. 174; Norton's Patent, 1863, 1 Moo. P. C. C. 339 ; Simister's Patent, 1842, 4 Moo. P. C. C. 161, 1 W. P. C. 721. " We expect a very strong case of hardship to be made out, as well as a strong case upon the utility of the invention " (per Lord Lyndhurst) : Erard's Patent, 1835, 1 W. P. C. 559 ; Willacy's Patent, 1888, 5 K. P. C. 694 ; Perkins' Patent, 1845, 2 W. P. C. 6. But even though the invention may not have been largely used, if the non-user is explained by difficulties in the way of making it known or working it, an extension may be granted. Thus, where the very nature of the inven- tion rendered it difficult to introduce, the non-user may be explained : Woodcroft's Patent, 1846, 2 W. I\ C. 32 ; i EXTENSION OF PATENTS. 337 Stoney's Patent, 1888, 5 R P. C. 522 ; Herbert's Patent, chap. XXV. 1867, 4 Moo. P. C. C. (N.S.) 300 ; Sopor's Paten*, 1887, SE(T - 1:1 4 R. P. C. 201 ; Kohlman's Patent, 1839, 1 W. P. C. 5G4. Grounds upon n i t i ii • which a A lire believed to be by an incendiary and a combination petition is of workmen, and piracies, were held to excuse non-user in futility of Roberts" Patent, 1839, 1 W. P. C. 573. (Bankruptcy and the »"•■" as evidenced. legal proceedings), Southworth's Patent, 1837, 1 W. P. C. by its success- 487 ; (pecuniary embarassment of inventor), Wright's Patent, 1839, 1 W. P. C. 575 ; (prejudice against the inventor), Jones Patent, 1840, 1 W. P. C. 578 ; (prejudice and impecuniosity of patentee), Stafford's Patent, 1838, 1 W. P. C. 563; Paynes Patent, 1854, Coryton 220; (prejudice and difficulty of teaching workmen), Erard's Patent, 1835, 1 W. P. C. 558; (prejudice and litiga- tion), Heath's Patent, 1853, 2 W. P. C. 247 ; (derange- ment of the labour market), Napier s Patent, 1861, 13 Moo. P. C. C. 543 ; (actions at law), Pettit Smith's Patent, 1850, 7 Moo. P. C. C. 133. In Southby's Patent, where great merit was admitted by the Crown, an extension was granted though no user was proved ; the non-user was accounted for by the fact that unforeseen difficulties of detail had presented themselves, and that the machine was large and expensive : 1891, 8 E. P. C. 433. Put the mere fact that the patentee had disputes with assignees: Patterson's Patent, 1849, 6 Moo. P. C. C. 169 ; or that he tried in vain to form a company, without which he could not work it, are not sufficient : BalceicelVs Patent, 1862, 15 Moo. P. C. C. 385. (e) The position, circumstances and conduct of the petitioners are also matters to be considered. Thus, in Steivart's Patent, the committee " were not quite satisfied that the patentee had at all times been so ready to give the public the benefit of his invention as might be z conduct of the petitioners. 338 ENGLISH PATENT PRACTICE. Chap. XXV. desired," and rejected his petition, but on the ground of _L ' want of merit : 1885, 3 E. P. C. 10. "Where the petitioner had wMchf upo ° n ot made large profits, but had slumbered on his rights, petition is an( j no t brought an action of infringement, the extension granted. ° ° (e) The posi- was refused : Simister's Patent, 1841, 1 W. P. C. 721. 8tan'ces r and" ( f ) Smallness of profit made by the inventor: see " Accounts," sect. 14 (post, p. 340). (g) Pending legal proceedings is no bar to obtain- ing an extension : see supra, sect. 13 ( Q ne reason f this i s? in orc ler that they may be sent for the inspection of the law officer : Perkins Patent, 1845, 2 VV. P. C. 14. But as has been said supra, the oppo- nents are not allowed to inspect them until the hearing. The question of remuneration must be considered as a whole, not for each separate part of the invention : Perkins" Patent, 1845, 2 W. P. C. 9. The fact that the profits have been very recent, and that in the earlier years nothing was got, is no reason for granting an extension if the total is sufficient : Ryder s Patent, 1855, John. 213 ; but see Perkins' Patent, 1845, 2 W. P. C. 16 ; Doivntons Patent, 1839, 1 W. P. C. 566. Amendment of the accounts is sometimes, but very rarely, allowed : Perkins' Patent, 1845, 2 W. P. C. 17 ; Heath's Patent, 1853, 2 W. P. C. 257, contra, Yates & Kellett's Patent, 1887, 4 K. P. C. 150. The following deductions in favour of the applicant have been allowed in the accounts : — (a) Expenses of taking out and defending the patent at law: Roberts' Patent, 1839, 1 W. P. C. 573; Kays Patent, 1839, 1 W. P. C. 572 ; Galloways Patent, 1843, 1 W. P. C. 729 ; Beits' Patent, 1862, 1 Moo. P. C. C. (KS.) 49. But where a case was compromised, and costs sur- rendered, this would not be a proper deduction, for benefit was obtained thereby : Hill's Patent, 1863, 1 Moo. P. C. C. (N.S.) 258. (b) Patentee's time devoted to perfecting the invention and bringing it into use : Roberts' Patent, 1839, 1 W. P. C. 575 ; Carr's Patent, 1873, L. K. 4 P. C. 539 ; Newton's Patent, 1861, 14 Moo. P.C. C. 156 ; Fitness' Patent, 1885, 2 R P. C. 175 ; Bailey's Patent, 1884, 1 R. P. C. 2. 1 EXTENSION OF PATENTS. 341 (c) Making experiments : Kai/s Patent, 1839, 1 W. P. C. Chap. XX V. 572 ; Bates' Patent, 1836, 1 W. P. C. 739 n. SE ^- 4 " (d) Manufacturer's profits ; and these should be kept strictly separate from the patentee's profits : Betts' Patent, 1862, 1 Moo. P. C. C. (N.S.) 49 ; Galloway's Patent, 1843, 1 W. P. C. 729 ; Saxby's Patent, 1870, 7 Moo. P. C. C. 82. By manufacturer's profits is here meant that part of the total profit which may have arisen, not by reason of the patent monopoly, but as a fair return to the capital em- ployed, and the manufacturer's labour of superintendence. It will of course only be deducible where the patentee is himself the manufacturer, or where manufacturers have been selling under a license and making profits. Two- thirds of total profit would be considered an excessive share to assign to this head : Hill's Patent, 1863, 1 Moo. P. C. C. (N.S.) 258; Dtmcan & Wilson's Patent, 1884, 1 K. P. C. 257 (which affords an example of the way in which accounts are criticised). Where the manufacturing profits only arise by reason of the patent and not other- wise, they should all be reckoned as profits made by the patent: Johnson's Patent, 1871, 8 Moo. P. C. C. (N.S.) 291 ; Mimtz' Patent, 1846, 2 W. P. C. 121. (e) Expenses of bringing the invention into use : Galloway's Patent, 1843, 1 W. P. C. 729 ; such as allow- ing half profits to an agent for introducing the invention : Poole's Patent, 1867, L. R. 1 P. C. 514. It is quite evident that, in dealing with the profits, it is not only the patentee's profits that are to be considered, but the profits made out of the invention over and above the ordinary trade profits, that are really in question, no matter in whose hands, or by whom such profits have been made. For a patentee would have no right to sell his patent for a small sum to assignees who made an 342 ENGLISH PATENT PRACTICE. Chap. xxv. enormous profit out of it, and then come and say that '_ ' the invention had been improperly rewarded. The in- Accouuts. sufficient remuneration of the inventor is one circum- stance, but only one, in the various questions that have to be considered. The following items must be reckoned into the profits : (a) Gains from foreign patents : Adair s Patent, 1881, L. R. 6 App. Cas. 176 ; Johnsons Patent, 1871, 8 Moo. P. C. C. (N.S.) 291, explaining Poole s Patent, 1867, 4 Moo. P. 0. C. (N.S.) 456. (6) Gains from articles made and exported must also be reckoned in as profits : Hardy s Patent, 1849, 6 Moo. P. C. C. 441. Gains or losses by speculative dealings with the patent, as by buying and re-selling it, are not to be reckoned either as profits or losses : Wield's Patent, 1871, 8 Moo. P. C. C. (N.S.) 300 ; nor the rise in values of shares taken in payment for it : Child's Patent, 1883, John. 214. Of course the high dividends will have been counted, but if the dividends paid had been small through (say) the creation of an enormous reserve fund which caused the share values to rise, surely this should be reckoned? The following are examples of cases in which the remuneration was held insufficient, and the patent was extended : Deacon's Patent, 1887, 4 E. P. C. 119, where three years' extension was granted though the patentee had made £6000 and his accounts were not very satis- factory ; Bischofs Patent, 1884, 1 R. P. C. 162, for purification of water. A loss had been made here, and seven years' extension was granted : Derosne's Patent, where over £8000 had been made, but the public benefit had been very great : 1844, 2 W. P. C. 4. In Fountain Livet's Patent, where extension was refused, it was said that if the invention had possessed merit, £6000 profit EXTENSION OF PATENTS. 343 Accounts. would not be too much for fourteen years' work : 1892, Chap. XXV. SECT. 1-i. 9 E. P. C. 327. In Joi/s Patent an extension for seven years was granted, though the patentee had made over £6000 : 1893, 10 R. P. 0. 89. In Thomas' Patent a profit had been made of £250,000 : 1892, 9 R. P. C. 367. This was considered far too large. In Nussetj & Leachmans Patent, 1889, 7 R. P. C. 22, the patentees had made £4000, including payment for patentees' whole time, and were working another patent which had practically superseded the old one. The merit was not considered very great, and extension refused. BeanlancVs Patent, 1887, 4 R. P. C. 489, where a patent for keeping windows open had brought in about £1000, and there was no exceptional merit, extension refused. Furness' Patent, 1885, 2 R. P. 0. 175, extension refused where the patentee had made £6000. Muntz Patent, 1846, 2 W. P. C. 113, the in- vention was considered most valuable, but the patentee had made £55,000, and therefore extension was refused. See also Betts Patent, 1846, 2 W. P. C. 160. The account should be entered debtor and creditor for each year of the patent, and a summary be put at the end. The following form may give some idea of what is required : In the Privy Council. -'s Patent, 18 [Title ,No. •] PETITIONS FOR PROLONGATION. Account of expenditure and receipts of Petitioner for the th year, from 18 , to Expenditure. 18 Expenses of experi- ments, i.e. : — Models . Journeys Materials Labour Receipts. Royalties on articles from Fees (from licensees ?) Cash on account of expenses s. d. 344 ENGLISH PATENT PRACTICE. Chap. XXV. SECT. 14. Accounts. Expenses of taking out patent : — Paid to for making articles Travelling expenses Trials . . . Law expenses . Experiments Photographs. Models . . . Law expenses : — In connection with action v. for infringement Salaries. Rates and taxes Exhibition expenses Show cases, rent of show rooms. Commissions to agent Bank commission . Advertising Stationery and print ing .... Insurance . Postage Bad debts . s. d. By sale of articles less discount and commission, if any Value of articles on hand, plant, furni- ture, less deprecia- tion . . Any other receipts N.B. — Many of the above items would be proportioned if other business was being carried on as well as the patent business. The above is a patentee's account, but where there have been licenses or assignments the account will of course be much more elaborate. poet, \>. 45'.!. 15. The period of extension. — By the Act of 1835, power was given to extend for seven years, but this was increased to fourteen years by the Act of 1844. Under the Act of 1883, c. 25, seven years' extension is permitted, EXTENSION OF PATENTS. 345 or in exceptional cases, fourteen years. Stoneys Patent, Chap. XXV. for rollers for sluice gates, to which the patentee devoted , — L his attention for fourteen years, and which at last ended ^^n. ° in a success, was considered an exception, and was ex- tended for ten years ; 1888, 5 E. P. C. 524. 16. When an extension has been granted, the powers of the committee are exhausted, and no second extension can be given : Gouchers Patent, 1865, 2 Moore P. C. C. (N.S.) 532. 17. Conditions of extension. — In extending a patent the committee frequently stipulate for some further remuneration to the patentee, if he have parted with his rights. Thus, in Whitehouse's Patent, 1838, 1 W. P. C. 476, extension was granted on condition that the as- signees executed an agreement to pay the inventor an increased annuity (this agreement afterwards became the subject of a lawsuit: Russell v. Ledsam, 1845, 14 M. & W. 574, 1 H. L. Cas. 687) ; see also Markwick's Patent, 1860, 13 Moo. P. C. C. 310; Pitman's Patent, 1871, L. R. 4 P. C. 87. But this will not be done where the patentee has sold for value, and the assignee has made a loss : Bodmer's Patent, 1849, 6 Moo. P. C. C. 468 ; Napier's Patent, 1861, 13 Moo. P. C. C. 543. Where contractual relations exist between the peti- tioner and others, the committee will protect them. Thus, on extension granted to the assigns of a moiety of a patent, it was stipulated that they should hold a moiety in trust for the legal representatives of a deceased inventor who possessed the other moiety : Herbert's Patent, 18(57, 4 Moo. P. C. C. (N.S.) 300; and see Normanby's Patent, 1855, 9 Moo. P. C. C. 111. Two 346 ENGLISH PATENT PRACTICE. Chap. XXV. SECT. 17. Conditions of extension. apprentices opposed an extension on the ground that they had served the patentee in the expectation of using the patent on its expiration. Held, that if that had been proved they might have been entitled to a clause in their favour, but it was not proved : Baxter's Patent, 1 849, 13 Jur. 593. Conditions as to the price at which the patent article is to be sold are sometimes put for the benefit of the public. This extension was granted to assignees on terms of securing half profits to the patentee, and selling to the public at a fixed price : Hardy's Patent, 1849, 6 Moo. P. C. C. 441. Extension granted on terms of licensing the public upon terms not higher than those licenses already granted : Mallet's Patent, 1866, 4 Moo. P. C. C. (N.S.) 175. In Pettit Smith's Patent, 1850, 7 Moo. P. C. C. 133, a condition was imposed that the Admiralty Commissioners might use the invention without license ; see also Napier's Patent, 1881, L. R. 6 App. Cas. 174. But like conditions were refused to the Crown in Lancaster's Patent, 1864, 2 Moo. P. C. C. (N.S.) 189, and Carpenter's Patent, 1854, 2 Moo. P. C. C. (N.S.) 191 n. 18. Costs. — Under the Patents Act, 1883, s. 25, post, p. 452. sub-s. 7, costs are in the control of the committee. This power they always had. Costs are usually given to a successful petitioner where there is no good ground of opposition : Downton's Patent, 1839, 1 W. P. C. 567 ; but where there is good ground of opposition, and the patent is doubtful, they may be refused : Church's Case, 1886, 3 R. P. C. 102. Costs are usually given to a successful opponent : Westrxtpp & Gibhin's Patent, 1836, 1 W. P. C. 554; Costs. EXTENSION OE PATENTS. 347 Wield's Patent, 1871, 8 Moo. P. C. C. (N.S.) 300; unless Chap. XXV. SECT. 18. where the opponents have been guilty of misconduct : Honihall's Patent, 1855, 9 Moo. P. C. C. 394 ; or where the petitioner has very fully and fairly stated all the facts both for and against himself, and the opposition has not been of any assistance to the committee : Muntz Patent, 1846, 2 W. P. C. 122 ; or where an opponent raises at the hearing a new ground of opposition not mentioned in his objections : Stewart's Patent, 1885, 3 R. P. C. 7. These costs are sometimes assessed by the committee at a gross sum : Jones Patent, 1854, 9 Moo. P. C. C. 41, where £100 was directed to be divided between two suc- cessful opposers ; and HilVs Patent, 1863, 1 Moo. P. C. C. (N.S.) 282, where £1000 was similarly apportioned ; see also Johnson's Patent, 1871, 8 Moo. P. C. C. (N.S.) 282. In the case of an abandoned petition the opposer's costs are also given : Macintosh's Patent, 1837, 1 W. P. C. 739 ; Bridson's Patent, 1852, 7 Moo. P. C. C. 499; Morgan Brown's Patent, 1886, 3 R. P. C. 212 (on motion by opposer for costs after notice of withdrawal of the peti- tion). Sometimes in such case of abandonment a lump sum is given : Milner's Patent, 1853, 9 Moo. P. C. C. 503. 19. The extension and new grant. — Formerly, when the committee had decided to extend a patent in part, but not to extend all of it, they used to put the patentee on terms of disclaiming part of his patent before the extension was granted : Bodmers Patent, 1853, 6 Moo. P. C. C. 282. But this mode of attaining the result is not needed now, and it is customary to direct a new patent to be sealed only for such part of the patent as the committee has seen fit to prolong: Lee's Patent, 1856, 10 Moo. P. C. C. 226 ; Napier's Patent, 1881, L. R. 6 App. 348 ENGLISH PATENT PRACTICE. Chap. XXV. Cas. 174 ; Church's Patent, 1886, 3 R. P. C. 102 ; Willacy's sect^j. Patent, 1888 (per Sir Barnes Peacock), 5 K. P. C. 695. Jiou audnew ^e extens i° n °f the patent has always been virtually grant. considered as a new grant : Betts' Patent, 1862, 1 Moo. P. C. C. (N.S.) 49 ; Stoney's Patent, 1888, 5 E.P. 0. 524. Under the Patents Act, 1883, the Privy Council may either extend the time, or make a new grant com- mencing at or after the expiration of the old one. The usual practice is to make a new grant dated the day after the expiration of the old one. It hence follows that patents extended after the Act of 1883 are subject to the conditions of patents granted under that Act, e.g. sect. 22 as to licenses, and sect. 27 as to the Crown : Cooking's Patent, 1885, 2 R. P. C. 152 ; Wasteneys Smiths' Patent, 1885, 2 R. P. C. 14. No new specification need be tiled ; ibid. An office copy of the order of the Privy Council must post. p. 497 be left at the Patent Office : Patent Rules, 1890, r. 74. It used to include the Channel Islands, but having regard to the provisions of the Patents Act, 1883, s. 16, it is doubtful how far the provisions of such a grant would apply to them. If a gap occurred between the expiration of the patent and the new grant, the patent would not be considered as existing during that period : ante ' r# 314, see " Infringement," Chap.XXIV., sect. 9. 20. There is power to revoke an order for extension when it has not been acted on by reason of the grantee's laches and long delay : In re Sehlumbergers Patent, 1853, 9 Moo. P. C. C. 1. ( 349 ) CHAPTER XXVI. CONFIRMATION OF PATENTS. By the Patents Act, 1835, 5 & 6 Wm. IV., c. 83, s. 2, it chap XXVI was provided, that if in any suit or action it should be found that a patent had been anticipated, the patentee might petition the King in Council to confirm the , patent. This Act is now abolished, but since, by Patents Act, 1883, s. 113, the privileges of patents granted prior to pos«, p. 473. that Act are preserved (Brandons Patent, 1884, 1 R. P. C. 154), it would still be possible to apply for confirmation of patents granted prior to the coming into force of the Patents Act, 1883 : Jdblochkoff's Patent, 1891, 8 R. P. C. 281. In such case, however, the applicant cannot have a confirmation on grounds dependent on the privileges conferred by the Act of 1883. If, for the purpose of obtaining a confirmation, he relies on the older law, his patent must be treated as subject to the older law, and not to the new. It is not very likely that a similar application will again occur, as the patents granted prior to the Act of 1883 are rapidly running out. The following cases were decided under the old law, and may serve as examples of the practice then in vogue : Westrupp & Gibbin's Patent, 350 ENGLISH PATENT PRACTICE. Chap. xxvi. 1836, 1 W. P. C. 555 ; Heurteloup's Patent, 1836, 1 W. P. C. 553 ; Robinsons Patent, 1845, 5 Moo. P. C. C. 65 ; Stead's Patent, 1846, 2 W. P. C. 146 ; Card's Patent, 1848, 2 W. P. C. 161 ; Lamenaude's Patent, 1850, 2 W. P. C. 164 ; Honibatt's Patent, 1855, 2 W. P. C. 201 ; Stead v. Carey, 1845, 1 C. B. 496. ( 351 ) CHAPTER XXVII. INTERIM INJUNCTIONS AND INTERIM ACCOUNTS. 1. General principles. — Prior to the Judicature Acts, Oh. XXVII. ... t SECT - !• the power of granting injunctions was only possessed by the Court of Chancery. The usual practice was to grant an interim injunction, and then send certain issues to be tried before a jury in a court of law. But the necessity for this is now removed by the Judicature Acts, and the modern practice is to apply for an interim injunction as soon as the writ has been issued : J. A. 1873, s. 25, sub-s. 8. The object of the application is to preserve the rights of the parties until the trial, and the " balance of P. Act, 1SS3, convenience " is generally considered as the foundation p 455 ' pos ' of the order : Harmer v. Plane, 1807, 14 Ves. 130 ; Neilson v. Thompson, 1840, 1 W. P. C. 278; Bridson v. McAlpine, 1845, 8 Beav. 229 ; approved in Plimpton v. Spiller, 1876, 4 Ch. D. 290 ; Thomson v. Hughes, 1890, 7 R. P. C. 77 ; Bracher v. Bracher, 1890, 7 R. P. C. 422. 2. Long and uninterrupted user is good ground for an application for an interim injunction. In Jackson v. Needle, where the patent was of very recent date, the Court refused an interim injunction : 1884, 1 R. P. C. 176. In Lister v. Norton, 1884, Chitty, J., intimated an opinion that more than three years' peaceful enjoyment 352 ENGLISH PATENT PRACTICE. Ch. XXVII. of a patent was needful to support the application : 1 SECTJ2. R p c n5 In Br .^ s v Lardem . } 18g4j J R p unki^rapted ^®> wnere a patent was ten years old, an interim injunc- Ut,er - tion was granted ; see also Shillito v. Larmouth, 1884, 2 R. P. C. 1. And in Bothwell v. King, 1886, 3 R. P. C. 380, user for six years, coupled with the fact that the plaintiffs had on four occasions induced infringers to ab- stain, was sufficient. In the British Tanning Co. v. Groth, 1889, 7 R. P. C. 1, two years' user was held too little. In earlier cases also some period of user was required to warrant the Court in granting an injunction : e.g., Harmer v. Plane, 1807, 14 Ves. 130 ; Hill v. Thompson, 1817, 3 Mer. 622 ; Beeston v. Ford, 1839, 2 Coop. Ch. Cas. 58 ; Bickford v. Shelves, 1838, 1 W. P. C. 213 ; Collard v. Allison, 1839, 4 My. & C. 487 ; Curtis v. Cutis, 1839, 2 Coop. C. C. 60 n. ; Muntz v. Foster, 1843, 2 W. P. C. 95 ; Electric Telegraph Co. v. Nott, 11 Jur. 273 j Stevens v. Keating, 1847, 2 W. P. C. 177 ; Caldwell v. Van Vlissingen, 1851, 9 Hare 424 ; Hancock v. Moulton, 1852, Monthly Digest, 506 ; Lister v. Eastwood, 1855, 26 L. T. 4 ; Betts v. Menzies, 1857, 3 Jur. (JST.S.) 358 ; Davenport v. Richards, 1860, 3 L. T. (N.S.) 503 ; Bernard v. Levinstein, 1864, 10 L.T. (N.S.) 177 (in which Knight, V.-C, thought that three years might be sufficient) ; Davenport v. Goldberg. 1865, 2 H. & M. 282; Dudgeon v. Thomson, 1874, 30 L. T. (N.S.) 244. The user must have been an actual active user by the plaintiff, even where the patent is eight years old, for it is not simply the age of the patent, but the long public user of it, on which the interim injunction is founded : Plimpton v. Malcolmson, 1875, L. R. 20 Eq. 37, 44 L. J. Ch. 257. The period of user ought to be computed from and INTERIM INJUNCTIONS. 353 after the time when the patentee ceases to pay royalty Ch. xxvil. SFCT 2 under a prior patent : Heugh v. Magill, 1877, W. N. p. 62. 1 ' Long and uninterrupted 3. Prior judicial establishment of the patent, user - though not absolutely conclusive, greatly strengthens the application : Farbenfabrih Co. v. Dawson, 1891, 8 R. P. C. 397 ; Hayward v. Pavement Light Co., 1884, 1 R. P. C. 206 ; Dudgeon v. Thomson, 1877, 30 L. T. (N.S.) 244 ; Newall v. Wilson, 1852, 2 De G. M. & G. 282 ; Lister v. Eastwood, 1855, 26 L. T. 4 (where an award of an arbi- trator had previously affirmed the validity) ; Bovill v. Goodier, 1866, 35 L. J. Ch. 174; Davenport v. Jepson, 1862, 1 N. R. 173. 4. The inability of the defendant, if defeated in the action, to compensate the plaintiff, or to pay costs, is also considered : Newall v. Wilson, 1852, 2 De G. M. & G. 282 ; Plimpton v. Spiller, 1876, 4 Ch. D. 291 ; Kensington Co. v. Lane-Fox Co., 1891, 8 R. P. C. 277. 5. Delay greatly prejudices an application for an interim injunction : Thomson v. Batty, 1888, 4 T. R. 36 ; and even a delay of three weeks after knowledge of defendant's infringement was fatal in Greer v. Bristol Tanning Co., 1885, 2 R. P. C. 268 ; see also Bovill v. Crate, 1866, L. R. 1 Eq. 388; Baxter v. Coombe, 1850, 1 Ir. Ch. R. 284 ; Bridson v. BeneeJce, 1849, 12 Beav. 3 ; Bacon v. Jones, 1839, 4 My. & Cr. 439 ; Smith v. London & 8. W. Rail. Co., 1854, 23 L. J. Ch. 564 ; Lister v. Norton, 1884, 1 R. P. C. 116. But the delay may be accounted for and explained. Thus, where the plaintiffs had been advised not to take action on mere threats of infringement, but to 2 A 354 ENGLISH PATENT PRACTICE. Ch. xxvii. wait for actual infringement, their delay did not prevent SECT *) L ' an interim injunction being obtained : United Telephone ^rlfl£Sfl Co - v - Equitable Telephone Co., 1888, 5 K. P. C. 233. And application for where the plaintiff had reasonably spent some two months un interim L . injunction. in making enquiries, the application was held not to be too late : Losh v. Hague, 1837, 1 W. P. C. 201 ; see also Osmond v. Hirst, 1885, 2 R. P. C. 265. Acquiescence by the plaintiff in the infringement will generally be fatal to the application : Neilson v. Thompson, 1841, 1 W. P. C. 280. Interim injunctions may be granted " quia timet " : Frearson v. Loe, 1878, 9 Ch. D. 65 ; Adair v. Young, 1879, 12 Ch. D. 13, 20 ; United Telephone v. London & Globe Telephone, 1884, 1 R. P. C. 117 ; Proctor v. Bailey, 1888, 6 R. P. C. 106, 538. 6. In rare cases interim injunctions are granted ex parte : Gardner v. Broadbent, 1856, 2 Jur. (N.S.) 1041 ; but only when there is a danger of some property being lost or destroyed, and such cases will be very rare in patent practice : R. S. C, O. L., r. 6. 7. The infringement must be plain and clear to give rise to an application for an interim injunction : Electric Telegraph Co. v. Nott, 1847, 2 Coop. 41. 8. Affidavits in support of the application should clearly state the nature of the patent, that it is valid, that the plaintiff was the first and true inventor, and that there has been infringement, and the nature of the infringe- ment should be set forth : Hill v. Thompson, 1817, 1 W. P. C. 230; Wliitton v. Jennings, 1860, 1 Dr. & S. 110; Mayer v. Spence, 1860, 1 J. & H. 87. The affidavits INTERIM INJUNCTIONS. 355 should always be made in the utmost good faith : Ch. XXVII. 8ECT 8 Dagleish v. Jarvis, 1850, 2 Mac. & G. 231 (a copyright 1 " cag „\ Affidavits in support of the application. 9. In granting interim injunctions the Court endeavours to avoid any expression of opinion as to the validity of the patent : Plimpton v. Malcolmson, 1875, 20 Eq. 37 ; Briggs v. Lardeur, 1884, 1 K. P. C. 128 ; Shillito v. Larmouth, 1885, 2 E. P. C. 3; Plimpton v. Spiller, 1876, 4 Ch. D. 289. 10. An interim injunction is most frequently refused on the defendant undertaking to keep an account till the hearing : Lister v. Norton, 1884, 1 K. P. C. 114; Jackson v. Needle, 1884, 1 E. P. C. 174; Copeland v. Webb, 1862, 11 W. E. 134; Gardner v. Broadbent, 1856, 2 Jur. (N.S.) 1041. 11. Sometimes the interlocutory application is ordered to stand over till the hearing without any undertaking to keep an account : British Tanning Co. v. Groth, 1889, 7 E. P. C. 1. This is done in order to postpone the consideration of the costs on the inter- locutory application, and is preferable where there is some case against the motion, as delay, or acquiescence : Lister v. Norton, 1884, 1 E. P. C. 114. 12. Terms upon which interlocutory injunctions are granted.— Upon the grant of an interim injunction, the Court always requires that the plaintiff should give an undertaking to be responsible in damages, supposing it should turn out that it ought not to have been granted : Fenner v. Wilson, 1893, 10 E. P. C. 287. In addition to 2 a 2 356 ENGLISH PATENT PRACTICE. Ch. XXVII. SKCT. 12. Terms upon which inter- locutory injunctions are granted. this, other terms are also sometimes imposed. Thus, where it was alleged by the plaintiffs that the de- fendants were infringing, but by the defendants that the plaintiffs had contracted to supply them with instruments, an interim injunction was granted upon the usual terms as to damages, but also, lest the injunction should ruin the defendants' business, the plaintiffs were compelled to undertake till the hearing to supply the defendants with telephones on the usual terms of pay- ment : United Telephone Co. v. Tasker, 1888, 5 E. P. C. 633 ; see also Bovill v. Smith, 1866, L. E. 2 Eq. 459. An undertaking is also sometimes required as to prompt procedure : Muntz v. Grenfell, 1842, 2 W. P. C. 91. 13. By consent, the hearing of the interim injunc- tion is sometimes treated as the final hearing to save expense where the point is chiefly one of law : e.g., United Telephone Co. v. Townshend, 1885, 3 E. P. C. 10. 14. An interim injunction, when granted, may be dissolved upon application if the plaintiff makes undue delay in prosecuting his action : Stevens v. Keating, 1847, 2 W. P. C. 175. Interim injunctions are also granted in case of threats : Kensington Co. v. Lane-Fox Co., 1891, 8 E. P. C. 277 ; see Chap. XXIX., sect 5. post, p. 402. 15. Breach of the interim injunction, and committal for contempt : United Telephone Co. v. Dale, 1884, 25 Ch. D. 778. If the injunction be against a company, the proper remedy is by a sequestration order against the company, and committal against the directors : Spencer v. Ancoats Vale Co., 1888, 6 E. P. C. 68. ( 357 ) CHAPTER XXVIII. ACTION FOR INFRINGEMENT. (The nature of infringements is dealt with in Chapter XXIV.) ante, p. 189. 1. Courts in which actions can be brought. — Actions Ch. XXVIII. on patents must be brought in the superior Courts wher- S ECT " ' ever the " title to the franchise " comes in question. For titles to franchises cannot be tried in the County Court : see County Court Act, 1888, s. 56 ; and besides, the County Courts have not the machinery for trying a patent action properly : Reg. v. County Court of Halifax, 1891, 8 R. P. C. 338. . In Procter v. Sutton Lodge Co. 1887, 5 R. P. C. 184, Bay, J., seems to have thought that the Chancery Court of the Duchy of Lancaster was not a superior Court within the meaning of the Patents Act, 1883. But it has been decided that it is ; Beg. v. County Court of Halifax, 1891, 8 R. P. C. at p. 344 ; per Brett, M.R., and by a recent Act, 53 & 54 Vict. c. 23 (1890), it has now the full powers of a Court of Chancery. 2. Parties : Plaintiffs. — As a general rule it is de- sirable, and, where an account is claimed, necessary, that all the persons interested in a patent should be joined in a suit for its infringement — as plaintiffs, if they will ; if not, then as defendants. For the Court will then be able to assess the damages and divide them, and the account can be taken once for all. A case which illus- 358 ENGLISH PATENT PRACTICE. Ch. XXVIII. SECT. 2. Parties : Plaintiffs. trates this is Bergman v. Macmillan and Willeringham, 1881, 17 Ch. D. 423. M. appointed W. his sole licensee, and assigned to K. half of the profits of his patent, who assigned same to B. M. also assigned other portions to other persons. B. sued M. and W. for an account ; M. did not appear. It was argued that W., though liable to account to M., was not liable to account both to M. and to B. (per Fry, L.J. : He may not be liable to account, but can he not give the assignee the same account which he has given the principal ?). Held, that B. had a right to an account against M., and might have proceeded against him alone, but that if he joined W. he ought also to have joined in the action all the other owners, so that W. would only have to account once, and for this, and other reasons, his bill was dismissed with costs. See also Westhead v. Keene, 1838, 1 Beav. 289, 8 L. J. Ch. 89. If, however, the defendant does not object, one part- owner of a patent can sue alone : Davenport v. Richards, 1860, 3 L. T. B. (N.S.) 503 ; and where the plaintiff is owner of a complete and severable part of the patent, he ought to sue alone : Bunnicliffe v. Mallet, 1859, 7 C. B. (N.S.) 209, 29 L. J. C. P. 70. If the defendant desires joinder of other owners, so as to free him from liability to multiplicity of actions, he ought to come promptly to have them joined : Sheehan v. G. E. Bail. Co., 1880, 16 Ch. D. 59. Assignees have the same right to sue as the original patentee : Boulton v. Bull, 1795, 2 H. Bl. 464 ; Electric Telegraph Co. v. Brett, 1851, 10 C. B. 838; and the assignees of a bankrupt are in the same position : Blox- ham v. Elsee, 1827, 6 B. & C. 169. An assignee of a half share in a patent sued thereon in Anderson v. Patent Oxonite Co., 1886, 3 R. P. C. 279. ACTION FOR INFRINGEMENT. 359 In order to sue third parties it seems the better opinion Ch. XXVIII. SECT. 2. that the plaintiff ought to have a regular assignment to him by deed : Stewart v. Casey, 1891, 8 E. P. C. 259. p^ffe. But where the action is between assignor and assignee, an agreement to assign would no doubt be treated in equity as an assignment. There is no enactment render- ing registration necessary to enable an assignee to sue, but it is better to register before commencing the action. It was formerly necessary : see Hassall v. Wright, 1870, L. E. 10 Eq. 509 ; and Chollet v. Hoffmann, 1857, 7 Ell. 6 Bl. 6M. A mortgagor in possession of a patent should sue alone without joining the mortgagee, unless there is reason to fear that the defendant might be prejudiced by his non- joinder : Van Gelder v. Sowerhy Bridge Flour Co., 1890, 7 E. P. C. 208. In this case the important rule was laid down that where it is desirable that parties should be joined, the judge ought to join them, and not allow the action to be defeated by reason of non-joinder : per Bo wen, L.J., 215. But a licensee is not in such a position that he can sue, even though his license be exclusive : Heap v. Hartley, 1889, 6 R. P. C. 501 ; Derosne v. Fairie, 1835, 1 W. P. C. 155. But Lord Eldon thought that damages might be given him for losses he might have suffered by the infringement : Beaumont v. George, 1815, 1 C. P. C. 294. The general agent of a foreigner owning English patents is not in a position to sue for infringement of them: Adams v. N. B. Bail. Co., 1873, 29 L. T. E. 367. There is a case given in the Times, March 13, 1884, which decides that a cestui que trust of a patent may sue, 360 ENGLISH PATENT PRACTICE. Ch. XXVIII. SECT. 2. Parties : Plaintiffs. even if the patent be registered in the name of his trustee, and trustees could sue in their own name, though, if needful, the cestui que trust might be joined. This branch of the subject belongs to the general principles as to joinder of parties, as to which see K. S. C, 0. xxi. 3. Parties : Defendants. — The person who really uses the infringing machine is the true defendant, provided he be not a mere workman or servant. Thus, the con- tractor who infringed a patent for house-building should be the defendant, not the architect: Denley v. Blore, 1851, 38 Lond. Jour. 224; Washburn v. Cunard, 1889, 6 R. P. C. 398. It has been pointed out elsewhere that a foreign government cannot be made liable for an action of infringement. Directors of a company whose workmen infringe may be liable personally : Betts v. Be Vitre, 1868, L. R. 3 Ch. 441, 37 L. J. Ch. 325. But assignees who have become so after action cannot of course be joined at defendant's request against the plaintiff's consent : Briggs v. Lardeur, 1884, 2 R. P. C. 13. Third parties, who have agreed to indemnify the de- fendants even after action brought, may be allowed to appear, but if they have not been regularly made defend- ants, an injunction cannot be granted against them. If they appear, costs may be given against them : Edison v. Holland, 1886, 3 R. P. C. 395, 6 R. P. C. 243. A plaintiff sued an infringer for using his patented machine. The maker of the infringing machine, who claimed to be making it under a subsequent patent, applied to be joined as a defendant against the will of the plaintiff, and suggested that the defendant would not fight the action properly. Held, that he could not be so joined : Moser v. Marsden, 1892, 9 R. P. C. 214. ACTION FOR INFRINGEMENT. 361 4. When the action of infringement can be brought. Oh. xxviii. •11 SECT. 4. — No action of infringement can be brought until the patent is actually sealed : Patents Act, 1883, s. 15 ; and then not in respect of infringements committed prior to the publication of the complete specification : sects. 10, 13. Hence the effect of provisional protection is not to enable the patentee to proceed for infringements during its currency, but only to protect him against publication during the nine months which intervene between the sending in of his provisional specification and the sending in of his complete specification. 5. Writ in a patent action. — The service of the writ is the same as in any other action : see S. C. Rules, O. ix. As to service on a London agent of a writ against a Scotch firm, see Baillie v. Goodivin, 1886, 3 R. P. C. 285. Leave to serve the writ in Scotland out of the juris- diction has been given where the defendant has infringed by sending articles into England. For although the de- fendant had no place of business in England, yet since an injunction was sought the case came within 0. XI., r. 1 : Speckhart v. Campbell, W. N. 1884, p. 24 ; see also Wash- barn Co. v. Cunard Co., 1889, 6 R. P. C. 398. As to these points, see the new rules of the S. C. J. which have just come into force (1893-4). 6. Consolidation of actions. — The consolidation of actions was originally in its essence a temporary stay of all actions but one, made at the request of the defendant or defendants to avoid vexatious multiplicity. The pro- cedure is now under 0. xlix., r. 8, of the S. C. Rules, 1883. Where a plaintiff brought 134 actions against different defendants, they moved in groups to consolidate 362 ENGLISH PATENT PRACTICE. Ch. XXVIII. them. Kindersley, V.-C, refused the application, on the S ECT ' " ground that each defendant ought to answer on affidavit o?actions ti0n an( * interrogatories, and that they had come too soon. But on appeal Lord Westbury ordered either consolidation or else that an issue should be tried as to the validity of the patent between the plaintiffs and certain selected de- fendants, reserving to each individual defendant his right to a separate issue as to infringement by him, all the defendants to file affidavits as to their user of the ma- chines, and whence they obtained them : Foxivell v. Webster, 1863, 4 De G. J. & S. 77. In case of consolidation the stay is only temporary, so that unless the plaintiff consents to be bound by the issue of the first test action, he can pursue his actions against the other defendants after the first action has been disposed of. 7. Statement of claim. — The claim usually asks for an injunction, damages, an account, and for the delivery up or destruction of the infringing articles, or for one or more of these. The plaintiffs discontinued an action against the defendants, and paid costs in consequence of evidence given by them. Having ascertained the falsity of this evidence, the plaintiffs brought a fresh action, claiming relief and also the costs which they had paid in the first action. This was struck out as embarrassing under 0. xviii., r. 1, and 0. xix., r. 27 : 'United Telephone Co. v. TasJcer, 1889, 6 E. P. C. 38. 8. Particulars of breaches. — In an action for infringe- ment, the plaintiff must deliver with his claim (or by order at any subsequent time) particulars of breaches, and his evidence at the trial will be confined to them : post, P . 455. patentg Act> 1883j s> 29> gub . ss 1? 4 The necess ity for these particulars arose from the fact that with a compli- ACTION FOR INFRINGEMENT. 363 cated patent, it was impossible for a defendant to know Ch. XXVIII. SECT 8 what part of the patent the plaintiff alleged to have been — 1 ' infringed, and therefore the ordering of particulars was troche!! 1 " 8 ° f usual under the general powers of the Court long before it became statutory : Perry v. Mitchell, 1840, 1 W. P. C. 269 ; Electric Telegraph Co. v. Nott, 1847, 16 L. J. C. P. 174, 4 C. B. 471, and in Chancery; Curtis v. Piatt, 1861, 35 L. J. Ch. 853 ; and these particulars could be amended if needful : Bovill v. Goodier, 1867, 36 L. J. Ch. 360. For most purposes particulars of breaches may be regarded as forming part of the statement of claim : United Tele- phone Co. v. Smith and Mitchell, 1889, 38 W. K. 70. The following are the principles which appear to have guided the Courts in ordering particulars of breaches : — (a) The plaintiff must specifically point out what part of his invention has been infringed : Haslam v. Hall, 1887, 4 K. P. C. 203; Germ Milling Co. v. Rob- inson, 1884, 1 E. P. C. 219; Needham v. Oxley, 1863, 1 H. & M. 248. And, if need be, he must refer to the pages and lines of his specification : Wren v. Weild, 1869, L. R. 4 Q. B. 213, 38 L. J. Q. B. 88 ; Lamb v. Nottingham Manufacturing Co., 1874 : Seton's Decrees, ed. 4, p. 349. In the case of a simple patent it is enough if the plaintiff specifies which of the claims he says are in- fringed, without giving special references to lines and words in the specification : Cheetham v. Oldham, 1888, 5 R. P. C. 624 ; Bailey v. Kynoch, 1874, L. R. 19 Eq. 232 Church Engineering Co. v. Wilson, 1886, 3 R. P. C. 123 Moseley v. Victoria Rubber Co., 1886, 3 R. P. C. 357 Ehrlich v. IJihe, 1887, 5 R. P. C. 41. Where the plaintiffs specify the claims which they say have been infringed, they are not bound to say what it is they mean by their claims, so as to specify whether they claim a particular 364 ENGLISH PATENT PRACTICE. Ch. XXVIII. SECT. 8. (a) The plain- tiff must specifically point out what part of his invention has been infringed. described lamp having certain features, or all lamps which have these features. In short, while they are compelled to say what claims have been infringed, they are not, for the defendant's convenience, bound to put an interpretation upon those claims and explain them: Wenham Co. v. Champion Co., 1891, 8 E. P. C. 22 ; see also Cassella v. Levinstein, 1891, 8 K. P. C. 473. (b) The plaintiff must specify what portions or characteristics of the articles complained of infringe his patent : Jones v. Lees, 1856, 25 L. J. Ex. 241 ; Wren v. Weild, 1869, L. K. 4 Q. B. 213, 38 L. J. Q. B. 88. Where, however, the article complained of is simple, and the nature of the alleged infringement is obvious, this need not be done. Thus, where some cartridges had been made an exhibit, it was held enough to say that they were an infringement : Bailey v. Kijnoch, 1874, 1,. E. 19 Eq. 229; Haslam v. Hall, 1887, 4 E. P. C. 203. (c) The plaintiff must give such instances of in- fringement as he knows of, and this may be done by reference to some actual article or exhibit in the action : Batley v. Kynoch, 1874, L. E. 19 Eq. 229 ; Tilghmans Patent Sand Blast Co. v. Wright, 1884, L. E. 1 E. P. C. 103 : Maudleberg v. Morley, 1893, 10 E. P. C. 256. But when the plaintiff has indicated a type of infringing article, he may allege in general terms that the defend- ant has made or sold it without specifying each instance of sale, which will be better in the defendant's knowledge than the plaintiff's : Talbot v. La Roche, 1854, 15 C. B. 310 ; Russell v. Hatfield, 1885, 2 E. P. C. 144 ; Tilghmans Patent Sand Blast Co. v. Wright, 1884, 1 E. P. C. 103. (d) But the plaintiff is not allowed to group to- gether generally infringements which may differ in type, for this might lead to the defendant coming ACTION FOR INFRINGEMENT. 365 prepared to meet one alleged infringement but being Ch. xxyiii. required to defend another: Patent Typefounding Co. v. __L ' Richards, 1859, 2 L. T. (N.S.) 359. In this view the g^JJiffJ 6 words, "In particular, by way of illustration," are em- not allowed barrassing, and ought not to be allowed : Church Engineer- together ing Co. v. Wilson, 1886, 3 K. P. C. 123. Examples of - enerall y- particulars of breaches will be found in the Forms in the Appendix. 9. Amendment of particulars of breaches. — Amend- ments may be made with the leave of the Court or a judge at the instance of the party who has delivered them, or of his opponent : Patents Act, 1883, s. 29, post, p. 455. sub-s. 5. The rules as to the amendment of particulars of breaches are very similar to those for the amendment of particulars of objections : sect. 14. post, p. 375. 10. The defence. — The defence to an action of in- fringement is usually a formal document raising the ques- tions of infringement, novelty, that plaintiff is not the first and true inventor, utility, and that plaintiff is not the assignee, &c. See Form of Defence in the Appendix. post, p. 57G. 11. Particulars of objections — old practice. — Prior to the year 1834 the defendant, by pleading " not guilty," could raise every defence to a patent, but the rules in that year required special pleas to raise objections to the validity of the patent. The Act of 1835 (5 & 6 Win. 4, c. 83, s. 5) required particulars, but the particulars ordered were often of a very unsatisfactory kind : see Bulnois v. Mackenzie, 1837, 1 W. P. C. 260; Fisher v. Bewick, 1838, 1 W. P. C. 267 ; Losh v. Hague, 1838, 1 W. P. C. 203 n. ; Galloway v. Bleaden, 1839, 1 W. P. C. 268 n. ; Gillett v. Wilby, 1839, 1 W. P. C. 270; Carpenter v. Walker, 3G6 ENGLISH PATENT PRACTICE. Ch. xxvjii. 1 W. P. C. 268 n. ; Neilson v. Harford, 1841, 8 M. & W. sect^ii. g06) 1 w p c 331 . WaIton v< Bateman, 1842, 1 W. P. C. Particulars of 616 R y Walton, 1842, 2 Q. B. 969 ; Macnamara v. obiections — ' ' old practice. Hulse, 1842, 2 W. P. C. 128 n. ; Heath v. TJnwin, 1842, 10 M. & W. 687 ; Russell v. Ledsam, 1843, 11 M. & W. 647 ; Bentley v. Keighley, 1844, 7 M. & G. 652 ; Jones v. Berger, 1843, 1 W. P. C. 544 ; Leaf v. Topham, 1845, 14 M. & W. 146 ; E. v. M7Z, 1850, 10 C. B. 379 ; Beits v. Walker, 1850, 14 Q. B. 363. The Patents Act, 1852, s. 41, made the requirements as to particulars of objections stricter, and under this Act the following cases were decided : — Holland v. Fox, 1853, 1 C. L. K. 440, 1 W. K. 448 ; Palmer v. Cooper, 1853, 9 Ex. 231 ; Palmer v. Wagstaffe, 1853, 8 Ex. 840, 22 L. J. Ex. 295 ; Hull v. Bollard, 1856, 1 H. & N. 134 ; Chollet v. Hoffman, 1857, 7 E. & B. 686 ; Curtis v. Piatt, 1863, 8 L. T. (N.S.) 657; Renard v. Levinstein, 1864, 11 L. T. (N.S.) 505, 13 W. E. 229 ; Daw v. Eleij, 1 865, L. E. 1 Eq. 38 ; Bovill v. Goodier 1865, L. E. 1 Eq. 35 ; Morgan v. Fuller, 1866, L. E. 2 Eq. 297 ; Bovill v. Smith, 1866, L. E. 2 Eq. 459 ; Penn v. Billy, L. E. 1 Eq. 548 ; Bovill v. Goodier, 1867, 36 L. J. Ch. 360 ; Grover v. Wilson, ] 870, W. N. 1870, p. 78 ; ^wme- # PP- 170 > (2.) Disconformity by amendment. — " That the alleged invention described in the complete specification as amended is a different invention from that described in the provisional specification, and in the complete specification as originally drawn and accepted, in that ..." This objection is directed against an amendment, which alters ante, p. 225. the scope of the invention ; see Farben Fabrih v. Bowker, 1891, 8 R. P. C. 391, line 52. (3.) New not distinguished from old. — " That the 374 ENGLISH PATENT PRACTICE. Ch. XXVIII. SECT. 12. Practice as to particulars of objections under the Patents Act, 1883, s. 29. ante, p. 185. ante, p. 188. plaintiff did not by his complete specification or his claims sufficiently distinguish which of the parts he claimed to have invented from those which he admits to be old . . . (Here specify parts complained of) : Fisher v. Bewick, 1838, 1 W. P. C. 551, n. (4.) Ambiguity. — " That the complete specification of the plaintiff is vague and ambiguous in its terms, and does not sufficiently or intelligibly describe the alleged invention, and that the same is calculated to mislead, in that . . . Particulars should here be given of the points wherein the specification is ambiguous : Farben Fabrik v. Bowker, 1891, 8 K. P. C. 391. (5.) That the letters patent contain false sugges- tions. — These must be specifically set out ; most of them, however, come more properly under other titles. (6.) Insufficient description. — " That the complete specification is insufficient inasmuch as it does not contain sufficient direction to enable a workman skilled in trade to ... " (Here details should be given) : Crompton v. Anglo-American Brush Co., 1887,4 R. P. C. 197. (7.) Most beneficial method known to inventor not described. — " That the plaintiff in his complete speci- fication did not state the most beneficial method with which he was then acquainted of practising his said inven- tion ..." Held enough in Jones v. Berger, 1843, 5 M. & G. 208. This case was not followed in Bussell v. Ledsam, 1843, 11 M. & W. 651, and it is submitted that now it would be necessary to specify wherein the direc- tions were insufficient. 13. Amendment of defence and particulars. — A defence denying infringement may be amended so as to impeach the patent, after the action is set down for trial, on ACTION FOR INFRINGEMENT. 375 payment of all costs, in spite of the fact that the validity Ch. XXVIII. of the patents has been previously affirmed in a court of law: United Telephone Co. v. Bassano, 1885, 2 K. P. C. 70. of defence aU(1 Striking out pleas.— The court, under R. S. C, particulars. 0. xix., r. 27, can strike out an embarrassing plea or objection : McBougall v. Partington, 1890, 7 R. P. C. 216, but, unless the objection be really embarrassing, it need not be struck out, though it may be considered un- necessary : Hocking v. Hocking, 1886, 3 R. P. C. 291. 14. Amendment of particulars of objections before hearing. — This rests on Patents Act, 1883, s. 29, sub-s. 5, and in Holste v. Robertson it was said that the Court would at any time allow the defendant to raise a fresh issue on discovery of facts which he could not with due diligence have discovered before : 1876, L. R. 4 Ch. D. 9 ; Tildsley v. Harper, 1878, L. R. 10 Ch. D. 393. Amend- ments may be made at the instance of either party. The particulars of objection may be amended after the cause is in the list for trial, or by adding fresh instances of anticipation, on giving the plaintiff full opportunity to inspect the newly-particularized machines, and reserving plaintiff's rights at the trial, if he should be embarrassed : Otto v. Sterne, 1885, 2 R. P. C. 139 ; Baird v. Moules Earth Closet Co., 1876, 17 Ch. D. 139, and Aveling v. Maclaren, 1880, 17 Ch. D. 139. But sometimes the amendment is only allowed on terms that the plaintiffs may have an option to discontinue with their costs: Edison Telephone Co. v. India Rubber Co., 1881, 17 Ch. D. 137. In Ehrlich v. Ihlee, 1887, 4 R. P. C. 115, after the action had been set down for trial, the plaintiff was to h ave six weeks after amendment to elect to discontinue, in which case he was to have his costs from the date of 376 ENGLISH PATENT PRACTICE. Ch. XXVIII. the defendant's first delivery of particulars, but was to 1 ' pay defendant the other costs of the action (see the Amendment order p# 119 \ In p flr £ er v> Maignen's Filtre Bapide Co., or particulars r J 1 of objections 1888, 5 K. P. C. 207, after the cause had been entered hearing. for trial, an order for amendment was made on payment of costs. In Larrah v. Purser, 1889, 6 R. P. C. 365, an order for leave to amend was made on terms that the plaintiffs should have four weeks time to discontinue as in the case of the Edison Telephone Co. v. India BuVber Co. [supra) ; see also Wilson v. Gann, 23 W. R. 546 ; Morris v. Coventry Co., 1891, 8 R. P. C. 353. The application is usually made at Chambers in the Queen's Bench Division, Judicature Act, 1883, s. 39; R. S. C. 1883, 0. xix., r. 7, and to the Court on motion in Chancery. 15. Amendments at the hearing. — At the trial, either an amendment can be allowed, or else the Court, or the Court of Appeal, can permit the evidence to extend beyond the particulars: Britain v. Hirsch, 1888,5 R. P. C. 231. But where the defendant did not shew that with reasonable care he could not have discovered the new facts earlier, leave to amend at the trial was refused : Moss v. Matins, 1886, 33 Ch. D. 603, 35 W. R. 165. An amendment during the trial was reluctantly allowed in Blahey v. Latham, 1889, 6 R. P. C. 36. In Chancery a defendant was allowed to amend his particulars of objections at the hearing, even after the close of the plaintiff's case, but on payment of all costs : Benarcl v. Levinstein, 1864, 11 L. T. (N.S.) 505, 13 W. R. 382 ; and a somewhat similar leave was given in Law v. Lley, 1865, L. R. 1 Eq. 38. Amendment at the hearing is a question of discretion, and when it appeared clear that AC1I0N FOR INFRINGEMENT. 377 the defendant's amendment would not be of avail, and Ch. XXVIII. that the case was really undefended, leave to amend "" ' was refused : Edison Electric Light Co. v. Shippey, 1887, f^ 1131611 * 8 4 E. P. C. 471. In Pascall v. Toope, the defendants in hearing. their objections and interrogatories had alleged that a certain method was in common use, which had anticipated the plaintiff's patent. At the trial they gave evidence of another method which seemed an anticipation. Held, that they might amend their particulars — action to stand over — and plaintiff to have leave to discontinue: 1890, 7 E. P. C. 125. It is dangerous for a plaintiff not to insist upon the limitation and definition of the defendant's particulars of objections, for if he leave them vague, he may be sur- prised at the trial : Sugg v. Siller, 1876, L. E. 2 Q. B. D. 493 ; Neilson v. Harford, 1841, 1 W. P. C. 332 ; Hull v. Bollard, 1856, 1 H. & M. 137, 25 L. J. Ex. 304 ; Curtis v. Piatt, 1866, 35 L. J. Ch. 852. 16. Amendment of particulars of objection on appeal. — This will not often be allowed, and never except in case of discovery of new evidence, which could not with reasonable diligence have been previously obtained. In a new trial, the defendant was always considered entitled to amend : Bovill v. Goodier, 1865, 36 L. J. Ch. 360. But in Hinde v. Osborn, a motion for leave to adduce fresh evidence alleged to have been dis- covered since the trial, and raising a new issue as to novelty, was dismissed : 1885, 2 E. P. C. 45. The Court, however, said that had it been the case of a lost docu- ment suddenly discovered it might have been allowed, but not mere anticipations in books, which were sought for, but could not before the trial be found. 378 ENGLISH PATENT PRACTICE. Ch. XXVIII. SECT. 16. Amendment of particulars of objection on appeal. When an order to amend particulars of breaches or objections is not obeyed, the proper course is to apply to strike out the particulars which were ordered to be amended. The other party has (unless it is otherwise ordered) the same time to plead from the delivery of the amended particulars, as he would have had from the return day of the summons : R. S. C, 0. xix., r. 8. 17. Inspection : Old practice. — As early as the year 1815 Lord Eldon intimated that the plaintiff might be empowered by a Court of Chancery to inspect the machines of a defendant, who was alleged to be making lace which must have been made by an infringing machine: Bovill v. Moore, 1815, 2 Coo. C. C. 56 n. Similar inspection was ordered in Brown v. Moore, 1816, 3 Swan 264 ; Russell v. Cowley, 1832, 1 W. P. C. 458 ; Morgan v. Seaward, 1835, 1 W. P. C. 169 ; and in Russell v. Crichton, 1837, 1 W. P. C. 677 ; viewers were appointed to inspect, who were not to reveal what they saw, except for the purposes of the action : 1837, 15 Dec. of Court of Sessions, 1270. By the Patents Act, 1852, s. 42, this power was ex- tended to courts of law on the application of plaintiff or defendant, under which Act were decided : Amies v. Kelsey, 1852, 22 L. J. Q. B. 84 ; Shaw v. Bank of England, 1852, 22 L. J. Ex. 26 ; Harrison v. Spire, 1853, 22 L. T. 92 ; Jones v. Lees, 1856, 25 L. J. Ex. 241 ; Meadows v. Kirleman, 1860, 29 L. J. Ex. 205 ; where inspection was refused on the defendant swearing that he had no such machinery as was suggested. In Patent Type- founding Co. v. Lloyd, 1860, 5 H. & K 192, 29 L. J. Ex. 207, the Court was asked not merely to give inspection, but to ACTION FOR INFRINGEMENT. 379 allow samples to be taken. The Court doubted its Oh. xxviii power, but a Chancery Court made the order : Johns. 727. S ECT " In Davenport v. Jepson the plaintiffs were empowered to *° 8 P ectl0I f : take samples, and to work the defendant's machines ; 1862, 1 N. K. 307. In the Singer Machine Co. v. Wilson, it was treated as of course that inspection should be allowed when a prima facie case had been made out : 1865, 5 N. E. 505 ; see also Neilson v. Belts, 1871, L. E. 5 H. L. 11. In Piggott v. Anglo-American Telegraph Co., 1868, 19 L. T. (N.S.) 46, inspection was refused where it would have disclosed important secrets, and where plaintiffs could have no difficulty in otherwise proving the infringement. Where plaintiff and defendant are competitors in trade the order to inspect, it was thought, should not be given except to an expert to report to the Court : Flower v. Lloyd, 1876, 10 Ch. D. 327 ; and the Court will not necessarily allow that report to be seen : Plating Co. v. Farquharson, 1883, Griff. 187. In Morgan v. Seaward, 1835, 1 W. P. C. 169, inspection was given of paddle-wheels made, or to be made, by defendants, under a contract, which wheels were alleged by plaintiffs to be an infringement. *&' 18. Inspection : Practice under Patents Act, 1883, s. 30. — The powers under this Act are wider, and under E. S. C, 0. xxx., r. 3, not only may samples be taken, post, p. 455. observations made, and experiments conducted, but any lands or buildings in the possession of any party may be entered for the purpose : E. S. C, O. l., r. 3. Moreover, ordersmaybe made for the inspection of the alleged infring- ing articles, or the articles alleged to be anticipations, or else the articles made by the plaintiff according to the patent sued on, provided that those articles are in the Act, 1SS3, s 30. 380 ENGLISH PATENT PRACTICE. Ch. XXVIII. possession of the parties. For the inspection order would sect^ls. ^^ apply to strangers to the suit, nor to the witnesses Inspection: ( see i n f m ). Practice \ j j under Patents There is thus hardly any limit to the powers of the Court to grant inspection of machines in the possession or on the lands of any party to the action, and to examine and experiment as may be. deemed necessary. In the Germ Milling Co. v. Robinson, the plaintiffs applied for inspection of the defendant's mills. This was refused, as the plaintiffs could make out no prima facie case of infringement, The defendants then con- sented to the inspection, and then asked that they might inspect the plaintiffs' processes. The plaintiffs did not allege the possession of any trade secret. Ordered that an expert, and the defendants' solicitor, might inspect and take samples, and that the mills should be worked before them : 1884, 1 E. P. C. 217 ; 1885, 3 E. P. C. 11. In Brake v. Muntz Metal Co., 1886, 3 E. P. C. 43, Bacon, V.-C, seemed to think he had no right to order the machines to be worked for the experts appointed to inspect the defendants' processes. In Moore v. Bennett, where most conflicting evidence had been given as to whether a machine would work or not, the Court of Appeal ordered a thorough trial in the presence of an expert and both parties, and acted upon his report: Moore v. Bennett, 1884, 1 E. P. C. 134. Inspection by the defendants of the plaintiff's glass bottles was ordered, where the utility of the plaintiff's invention was denied by the defendants — the machinery to be worked if necessary : Rylancls v. Ashley's Patent Bottle Co. 1890, 7 E. P. C 175. In Cheetham v. Oldham it was held, that to entitle a party to inspection a prima facie case must be made out : 1888, 5 E. P. C. 617. Where a plaintiff ACTION FOR INFRINGEMENT. 381 applied to inspect the defendant's alleged anticipations Ch. XXVIII. • n i t f» SECT lo. of the plaintiff's patent in the possession ol the cleien- dant's witnesses; held, that there was no jurisdiction to pjJESjj^ make it, except by consent, and this ruling was up- ^f';^.;' " Go™®* v - Keene > 1835 > 1 W - R C « 501 > oneoffact 2 C. P. C. 314; Maenamara v. Hulse, 1842, C. & M. 471, 2 W. P. C. 128. On this ground, the finding as to utility, of a Court of first instance, will be very difficult to disturb : Siddell v. Victors, 1888, 5 K. P. C. 429-30. On the other hand, the finding of a Court below as to utility is not absolutely conclusive, especially if coupled with what the Court of Appeal considers as an erroneous construction of the specification : Edison v. Holland, 1889, 6 K. P. C. 284. 29. The question of the intelligibility of a specifi- cation or whether it is covered by the title, or by another specification, will in general be for the Court: Belts v. Menzies, 1862, 10 H. L. C. 134; but when it becomes necessary to take evidence as to materials or ingredients, or to make experiments to see if the methods described sufficiently explain the nature of the invention, the question will then become one of fact for the jury : Hills v. Evans, 1862, 31 L. J. Ch. 457, 8 Jur. (N.S.) '525, 6 L. T. (N.S.) 90 ; Bickford v. Skewes, 1839, 1 W. P. C. at p. 216, 218 ; Elliot v. Turner, 1845, 2 C. B. 446; Wallington v. Bale, 1852, 7 Ex. 888; Muntz v. Foster, 1844, 2 W. P. C. 107 ; Parhes v. Stevens, 1869, L. E. 8 Eq. 358, 38 L. J. Ch. 627, L. K. 5 Ch. 36, 22 L. T. (N.S.) 635. This, however, always presupposes there is sufficient evidence to go to the jury : Berosne v. Fairie, 1835, 1 W. P. C. at p. 159. The question whether from the specification a workman could perform the invention is also one of fact for the jury : Walton v. Bateman, 1842, 1 W. P. C. 621. ACTION FOR INFRINGEMENT. 397 The above questions of what for the Court, and what Ch. xxviii. for the jury, are now of less importance owing to the !_ extended powers of the Court of Appeal in reviewing J^thTTntuiii- facts, and the disuse of juries to try patents. But still gibilityof a . . specification they cannot altogether be ignored, as they are useful in or whether it determining how far the Court of Appeal will review the titks or by cases submitted to it. For errors in law are freelv ^ U1 ^ er B P?,? i_ J ncation, will reviewed and corrected ; conclusions drawn from evi- in general be dence are only reversed with great difficulty. As to questions of Infringement, see Chap. XXIV., sect. 22. ante, p. 324. 30. Judgment. — Various forms of judgments will be found given at length in the following cases : Westing- house v. Lancashire & Yorkshire Bail. Co., 1884, 1 E. P. C. post, p. 591. 252 ; Washburn Co. v. Patterson, 1884, 1 E. P. C. 191 ; Moore v. Bennett, 1884, 1 E. P. C. 133. As to the power of counsel and solicitors to agree to a compromise : see Alliance Pure Wliite Lead Syndicate v. Mclvor, 1891, 8 E. P. C. 323. Where a plaintiff sued two persons, one of whom allowed judgment to go by default, but the other made a successful defence and invalidated the patent. Held, that the judgment against the other must be reversed: Cropper v. Smith, 1884, 2 E. P. C. 23. A judgment in an action will, of course be conclusive, not only as between the parties, but as against all actions in Court of co-ordinate jurisdiction, in so far as such judgment decides questions of law : Automatic Weighing Machine Co. v. Combined Weighing Machine Co., 1889, 6 E. P. C. 120, 367. But in so far as mere ques- tions of fact are concerned, they may be raised again : Edison v. Holland, 1882, 6 E. P. C. 343 ; Slazinger v. Feltham, 1889, 6 E. P. C. 130, 232. The above cases 398 ENGLISH PATENT PMACTICE. Ch. xxvill. however shew, that where a case has been once fought SKOT 30 ' out on the merits, the judges discourage the trial of the Judgment. same questions of fact over again. 31. Judgment for an account. — A finding for the plaintiff is followed by a judgment for damages or else r. Act, 18S3, for an account — with or without a perpetual injunction, p. 455. ' ' and at the same time certificates may be given that the post, p. 406. validity of the patent came in question. On judgment for the defendant, a certificate should be demanded of post, p. 410. the sufficiency of the objections. Formerly, the granting of an account was attendant upon the granting of an injunction, but now accounts may be ordered to be taken whether the action is brought before or after the infringement of the patent ; E. S. C. 1883, 0. xv., r. 1 : York v. Stowers, 1883, W. N. 1883, 174. A plaintiff cannot take both damages and an account, he may have which he pleases, but he must elect between them : Neilson v. Betts, 1871, L. K.5H.L.1; Be Vitre v. Belts, 1873, L. E. 6 H. L. 321 ; Siddell v. Victors, 1892, 9 E. P. C. 162. The mere taking of an account of profits or the assess- ing of damages do not of themselves so purge the tort, that the articles in respect of which accounts are taken or damages paid become thereby licensed, and they may still be stopped in the hands of purchasers : Perm v. Bibby, 1866, L. E. 3 Eq. 308 — unless such account or damages is paid and accepted as a royalty : Perm v. Jack, 1867, L. E. 5 Eq. 81 ; Cropper v. Smith, 1882, 24 Ch. D. 305, 312. The amount of a royalty usually received by the plaintiff is not necessarily the measure, or the limit of the damages he may receive, though it is evidence of it : Perm v. Bibby, 1866, L. E. 3 Eq. 308. ACTION FOR INFRINGEMENT. 399 Trivial accounts would not be gone into : Bergman v. Da xxvill. Macmillan, 1881, L. R 17 Ch. D. 427 ; Sanitas Co. v. SECT ' 3L Condy, 1887, 4 K. P. C. 533; Watson v. Eolliday, 1882, Judgment for J *" ' an account. L. K. 20 Ch. D. 780, 30 W. E. 747, 31 W. E. 536. Where it is suspected that the account may turn out insignificant, it is sometimes referred to a referee with power over costs : Shaw v. Jones, 1889, 6 E. P. C. 328. It by no means follows that the money payable under an account would be the same as the money payable as damages. In damages the plaintiff receives compensa- tion for the injury he has suffered : United Horseshoe and Nail Co. v. Stewart, 1888, 5 B. P. C. 260, 13 App. Cas. 401 ; Ledgard v. Bull, 1886, 11 App. Cas. 648, 654. But in an account he treats the defendants, as it were, as his agents, and takes the profits they make. Hence, a patentee who has never attempted to put his invention into practice, would probably prefer an account, for he might have great difficulty otherwise in shewing what his profits would have been, whereas a manufacturing patentee, against a defendant who had only used the invention, might prefer damages. At the same time, however, an account does not merely extend to the profits made by the infringer, it also includes any indirect savings or collateral profits, or advantages which he may have reaped : Crossley v. Derby Gaslight Co., 1834, 3 M. & Cr. 428; Househill Co. v. Neilson, 1843, 1 W. P. C. 697 n. ; Bacon v. Spottiswoode, 1839, 1 Beav. 387. Where the plaintiff is assignee, the account or damages would only run from the date of the assignment, unless the assignment were wide enough to cover all the patentee's past rights. Acquiescence or delay is prejudicial to the demand 400 ENGLISH PATENT PRACTICE. Ch. xxviii. for an account : Crossley v. Derby Gaslight Co., 1834, SECTJ51. 1 w R c 12Q> Judgment for Q n ^ e taking of an account, the defendants must dis- au account. & ' close the profits made by them before the infringement for the purpose of comparison with those made afterwards, so that the difference may be estimated : Siddell v. Vickers, 1889, 6 E. P. C. 464, and this is the proper basis to take them upon : ibid. 1892, 9 K. P. C. 152. The account is taken down to the last article sold or used by the defendant. In the case last cited, the Court of Appeal having heard, and by consent, having assessed the amount, ordered a lump sum of £3000 and costs to be paid to satisfy all claims. 32. Damages maybe awarded, though not specifically claimed in the proceedings : Betts v. Neilson, 1868, 18 L. T. (N.S.) 159, and are measured by the loss conse- quent upon the defendant's acts : United Horseshoe Co. v. Stewart, 13 App. Cas. 413, 5 K. P. C. 260. Damages, if they cannot be assessed at the trial, are referred to an officer of the Court for inquiry : O. xxxvi, rr. 57, 58, and are taken down to the date of the assessment, and an enquiry will not be granted where the damage appears to be only trivial : Dicks v. Brooks, 1880, L. E. 15 Ch. D. 39 ; United Telephone Co. v. Sharpies, 1885, 2 E. P. C. 28 ; Cole v. Saqui, 1888, 5 E. P. C. 489. If, by oversight at the trial, the plaintiff forgets to ask for damages, a sub- sequent application for them may be made : Edison v. Holland, 1888, 5 E. P. C. 483. The royalties, usually reserved by the plaintiff, though not a conclusive measure of his damages, are evidence of it : United Telephone Co. v. Walker, 1886, 4 E. P. C. 64. ACTION FOR INFRINGEMENT. 401 In certain old cases exemplary damages were given, Ch. xxviii. but recent decisions have been entirely against the giving b T ' * of exemplary or vindictive damage. Damages. If a plaintiff has obtained judgment on admissions of infringement in the pleadings, his enquiry into damages can only go for the admitted infringements: United Telephone Co. v. Donohoe, 1886, 31 Ch. D. 399. When the defendant only partly used the plaintiff's invention the measure of damages was held only to be a portion of the defendant's profits. United Horseshoe Co. v. Stewart, 1887, 4 E. P. C. 130; but this was reversed on appeal. After an order has been made for an enquiry into damages, it is doubtful whether the plaintiff is entitled to have such an enquiry made by a jury. At all events, if he so desire it, he should apply at the trial, and not subsequently : American Braided- Wire Co. v. Thomson, 1888, 5 R. P. C. 696. Acquiescence on the part of the plaintiff is evidence against his having sustained damage : Smith v. Loud. & N. W. Rail. Co., 1853, M. P. C. 188. 33. Perpetual injunction. — An injunction will be post, p. 455. granted to restrain the sale of all articles made in in- fringement of the patent, whether they are sold after the patent has expired or not : Crossley v. Beverley, 1S29, 1 W. P. C. 119, 1 R. & M. 166 ; Crossley v. Derby Gas- light Co., 1834, 4 L. J. Ch. 25. The injunction impliedly depends on the patents con- tinuing in force. If it were determined then quoad all articles made after that date, it would cease: Daw v. Eley, 1867, 3 Eq. 496. Injunctions may be granted, "quia timet," where there 2 D 402 ENGLISH PATENT PRACTICE. Ch. XXVIII. is no actual infringement, but only a clear intention to s eut. 3 3. infringe, as, for instance, where the defendants had made Perpetual articles, similar to those patented, before the date of the injunction. . acceptance of the complete specification, and announced their intention of going on doing so: Frearson v. Loe, 1878 L. E. 9 Ch. D. 48 ; Bowling v. Billington, 1890, 7 K. P. C. 208. A defendant who has consented to an injunction by mistake or surprise may be allowed to withdraw such consent : Elsas v. Williams, 1884, 1 T. R. 144. 34. Disobedience to an injunction. — An order for an injunction is enforced by commitment, and this may be done as soon as the existence of the order for the injunction is served on the defendants or brought to their notice : United Telephone Co. v. Dale, 1884, 25 Ch. D. 778. But the evidence must be very strong and clear of the breach of the injunction : Dick v. Hadam, 1891, 8 R. P. C. 196. In order to obtain an order for commitment, the procedure must be very strictly followed, and attention paid to the special rules which exist as to the practice of obtaining commitment orders, non-observ- ance of any of which will generally be fatal. It is not proposed to go through these rules in detail as they will all be found in the "Annual Practice," but attention may be called to the necessity of personal service, the necessity of serving a copy of the affidavits with the notice of motion and other kindred regulations. Even when a defendant does not know that he has infringed, a commitment order might be made against him if in fact he has done so : Plimpton v. Spiller, 1876, 4 Ch. D. 287 ; Thomson v. Moore, 1889, 6 E. P. C. 445. Nor again need the act of infringement which is com- ACTION FOR INFRINGEMENT. 403 plained of as a breach of the injunction be the same sort Ch. XXVIII. of infringement as caused the making of the order for S ECT " * the injunction : Thomson v. Moore, 1889, 6 E. P. C. 445; Disobedience 7 to an mjunc- and Plimpton v. Spiller, 1876, 4 Ch. D. 285. tion. Mere selling of materials to perform the invention would not in general be an infringement of the injunc- tion, unless it was done in such a way as to be really a colourable evasion, as, for instance, the selling of parts which merely required to be put together: see Chap. XXIV., sect. 18. ante, p. 321. Nor again is it any breach of an injunction to publish advertisements asking for subscriptions towards the ex- pense of an appeal : Plating Co. v. Farquharson, 1883, 17 Ch. D. 49. As a matter of practice, commitments rarely, if ever, take place ; the defendant on promising not to repeat his offence, and to pay the costs of the motion, is gene- rally absolved : Edlin v. Pneumatic Tyre Agency, 1893, 10 E. P. C. 317. But such costs are usually made as between solicitor and client : Plating Co. v. Farquharson 1883, 17 Ch. D. 49 ; Steele v. Hutchinson, 1879, W. N. 18, unless the infringement was committed in the bond fide belief that the injunction was not being broken, in which case only ordinary costs would generally be given : Spencer v. Ancoats Vale Co., 1888, 6 E. P. C. 46. If the defendant be a company, an attachment may be asked against any directors who have personally given orders for the commission of the breach of the injunction, and in addition a writ of sequestration may be demanded against the goods and chattels of the company : Spencer v. Ancoats Vale Co., 1888, 6 E. P. C. 46. Public necessity will justify the breaking of an in- junction, as where a master of a ship uses a patent pump 2 d 2 404 ENGLISH PATENT PRACTICE. Ch. XXVIII. SECT. 34. Disobedience to an injunc- tion. which he has been enjoined not to use, to extinguish a fire (semble, per L.J. James) : Adair v. Young, 1879, 12 Ch. D. 21. This wise and reasonable expression of opinion seems to set at rest doubts which formerly prevailed upon such points as this. For it is narrated that a fire having broken out in the Temple, in the chambers of a barrister, his neighbours debated whether it would be a trespass to break in and enter his room to put it out. They could not resolve the point, and while they were debating it, his books were burned. 35. Delivering up of the infringing articles. — Where a number of the infringing articles exist they may be ordered to be ascertained and given up, and if they have been removed from the country after such order they must be brought back and surrendered : Washburn Co. v. Patterson, 1884, 1 E. P. C. 191. They are sometimes ordered to be marked by the plaintiff so as to prevent them from being sold : Westing house v. Lancashire Bail. Co., 1884, 1 E. P. C. 253. It must, however, be observed that this jurisdiction to order the articles to be given up so as to be marked or destroyed, does not affect the property in them, over which the Court has no power. Therefore the plaintiffs cannot sell them and retain the proceeds. But they may be ordered to be destroyed : Vavasseur v. Krupp, 1878, L. E. 9 Ch. D. 351, and in order that such an order may be made, it is necessary (as it affects the goods) that the owner of them should be cited before the Court (ibid. 360). 36. Discovery in aid of execution is given by S. C. E., 0. xxxin. and xlii. Under the powers thus ACTION FOR INFRINGEMENT. 405 conferred a defendant may be compelled to file an Ch. XXVIII. affidavit showing what goods he has made or sold and L the names and addresses of the purchasers : Murray v. Diarovery in L J aid oi execu- Clayton, 1872, L. E. 15 Eq. 115; and he may also be tion - ordered to produce his books and documents : American Braided Wire Co. v. Thompson, 1888, 5 E. P. C. 375; Saxby v. Easterbrooh, 1S72, L. E. 7 Ex. 207. 37. Stay of execution. — This can be granted by E. S. C, 0. lviil, r. 1G, and is sometimes done pending an appeal : Hocking v. Fraser, 1886 (on terms of appeal- ing in fourteen days and keeping an account), 3 E. P. C. 7 ; Woodward v. Sansum, 1886 (on terms of appealing promptly), 3 E. P. C. 366 ; Kaye v. Chubb, 1887, 4 E. P. C. 23; Nordenfelt v. Gardner, 1884, 1 E. P. C. 63. In Humpherson v. Sayer, 1887, 4 E. P. C. 184, a stay was refused, pending an appeal, but a stay of the taking of the account was allowed. Kekewich, J., commenting on Hocking v. Fraser and Kaye v. Chubb, said he considered that the orders in those cases had been made by consent. In the case of Otto v. Steel, a motion was made subse- quently to the judgment for a stay pending an appeal, of the taking of an account, and of the injunction, on the ground of the irreparable injury that would be done to the defendant by the disclosure of the names of his customers. Pearson, J., refused the application. On appeal, and application to the Court of Appeal to advance the hearing day, the Court of Appeal refused the application, saying that if it were allowed, a stay would have to be granted in every case : 1886, 3 E. P. C 120 ; and see Edge v. Johnson, 1892, 9 E. P. C. 142. In Thomson v. Moore, 1889, 6 E. P. C. 426, a stay of an order for attachment for disobedience to an injunction 406 ENGLISH PATENT PRACTICE. Ch. XXVIII. SECT. 37. Stay of execution. post, p. 455. was ordered upon certain terms pending an appeal (see p. 464). 38. Certificate of validity of the patent. — By the Patents Act, 1835, s. 3, when a patentee in an action had obtained a certificate that the validity of his patent had been in question, he was entitled to treble costs in subsequent actions (unless the judge certified to the contrary). Treble costs are now abolished, but after such a certificate he may now get " his full costs," charges, and expenses as between solicitor and client : Patents Act, 1883, s. 31. In United Telephone Co. v. Patterson these costs were given, although in that case the defendant had not again questioned the validity of the patent, but only denied infringement : 1889, 6 E. P. C. 140 ; Daven- port v. Bijlands, 1865, L. E. 1 Eq. 302, 35 L. J. Ch. 204. In an earlier case, however, where the validity was attacked on different grounds to those on which it had been considered valid in the first action, the extra costs were refused : Otto v. Steel, 1886, 3 E. P. C. 120. The certificate may be asked for by the plaintiff whether he has or has not been successful : Haslam v. Hall, 1887, 5 E. P. C. 27 ; and see Automatic Machine Co. v. Knight, 1889, where the certificate was given, though the plaintiff lost the action by failing to prove infringe- ment : 6 E. P. C. 120 ; and see p. 129, where, in a second action on the same patent, the higher costs were refused on the ground that when the second action was tried, the first (in which the certificate had been granted) was already on the paper for trial. From the form of the statute, when a certificate has ACTION FOR INFRINGEMENT. 407 been given, the higher costs follow unless otherwise Ch. XXVIII. ordered, so that great care must be taken to ask for them S ECT ' ' to be disallowed. Certificate of validity ot the The second action must, however, be commenced after patent. the date of the certificate in the prior action, in order that the rule may apply : Automatic Weighing Machine Co. v. International Hygienic Society, 1889, 6 E. P. C. 480, and see the decision at 6 R. P. C. 120, cited supra. The certificate may be granted in an undefended action : Haydoch v. Bradbury, 1887, 4 E. P. C. 75, but secus, Peroni v. Hudson, 1884, 1 E. P. C. 263 ; and see Ball v. Behn, 1881, Times, April 14th, and Stocker v. Bodgers, 1843, 1 C. & K. 99. The certificate may be granted where the action has been compromised and judgment given by consent : Delta Metal Co. v. Maxim Nordenfelt, 1891, 8 E. P. C. 248. The certificate is not granted more than once : Edison v. Holland, 1889, 6 E. P. C. 287, except when the attack on the validity of the patent proceeds on different grounds from those on which it was made in the first, in which case a certificate of validity may be given as regards some particular claim : Otto v. Steel, 1886, 3 E. P. C. 120. Where there has been a previous action, and a certifi- cate of the question of validity given, it is more prudent to put a claim founded on it into the statement of claim in the second action, so as to give the defendant warning that such costs will be demanded if he proceeds. On the other hand, in Neivall v. WiUcius, 1851, 17 L. T. 20, in a jury case, it was considered that such prior trial ought not to be put in evidence so as to prejudice the defendant's case, but ought to be proved after the verdict. It is hence no flaw in pleading not to plead it, 408 ENGLISH PATENT PRACTICE. Ch. XXVIII. but not to have done so might be considered unfair, if SKPT" ^?S !_ ' thereby the defendant had been kept in ignorance of the Certificate of f Qr> + validity of the ld,ou patent. No appeal lies from the grant or refusal of a- certificate of validity: Easlam v. Hall, 1888, 20 Q. B. D. 491; 5 R. P. C. 144. 39. Costs. — In general only two counsel are allowed, and it will be very exceptional that the costs of three counsel are allowed on taxation : Betts v. Clifford, 1860, 1 J. & H. 74 ; Betts v. Cleaver, 1872, L. E. 7 Ch. 513 ; Smith v. Buller, 1875, L. R. 19 Eq. 473. The fee allowed is from £5 5s. to £7 7s. a day (ibid). Charges " for luxuries " are not allowed, as for instance, drawings on margin of counsel's briefs ; or a solicitor's clerk in addition to a solicitor (ibid). Costs of scientific witnesses will be allowed in modera- tion, and also costs of models in proper cases : Bailey v. Kynoch, 1875, L. R. 20 Eq. 632. The ignorance of a defendant as to the existence of a patent, and his offer to submit will affect costs : Nunn v. _D' Albuquerque, 1865, 34 Beav. 595. Where a retail dealer had sold articles which unwittingly infringed the plaintiff's patent, and on being informed, gave every infor- mation, and promised not to do so again, it was held that plaintiff was not entitled to the costs of the action : Betts v. Willmot, 1870, 18 W. R. 946, L. R. 6 Ch. 239 ; Nunn v. D Albuquerque, 1865, 34 Beav. 595 ; Upnan v. Elhan, L. R. 7 Ch. App. 130. In a case where a defendant had infringed, but dis- continued his infringement before action, and offered to pay reasonable damages, but the plaintiff persisted in his action, the Court considered his action vexatious, and ACTION FOR INFRINGEMENT. 409 made him pay the defendant's costs : Fletcher v. Glasgoiv Ch. XXVIII. Gas Co., 1887, 4 E. P. C. 386. SE f!l 39 - As a rule, however, a successful plaintiff who has Co6ts - conducted his action fairly, and not been guilty of any misconduct, is entitled to his costs : Cooper v. Witting- ham, L. E. 15, Ch. D. 501 ; Upman v. Forrister, 1883, 24 Ch. D. 231 ; Burgess v. Hateley, 1858, 26 Beav. 249 ; Fradella v. Weller, 1828, 2 Euss. & M. 247 ; Colburn v. Sims, 1843,2 Hare, 543. In Upman v. Forrister (a trade-mark case), Chitty, J., held that a plaintiff was not always bound to give notice to the defendant before commencing his action, if there were a fear of his making away with the spurious articles, and that hence the want of such notice was by no means fatal to costs ; 1883, 24 Ch. I). 231. 40. Costs of separate issues as a rule follow the event : E. S. C. 1883, 0. lxv. r. 2. This apportionment may be made in patent actions in either of two ways, by dividing the issues, and ordering the costs of each to be separately dealt with, or else by giving a certificate of particulars, under the Patents Act, 1883, s. 29, sub-s. 6. If no order about costs is made, the successful party will l MSt > P- 455- get the costs of the action, but, as will be seen below, neither would get the costs of proving his particulars. The result of this is, that in patent actions the duty of considering the issues and deciding who is to bear the cost of them, will in every case fall on the Court, and that a successful party may either ask to have a certifi- cate of particulars, or else for an apportionment of costs, under 0. lxv. r. 2. 41. Certificate of particulars of breaches and 410 ENGLISH PATENT PRACTICE. Ch. XXVIII. objections. — In the Patents Act, 1835, provisions were SECT 41 L ' made for the costs of issues, on which the plaintiff had PS" not succeeded. breaches and The Patents Act, 1852, went further, and required a objections. . ._ successful plaintiff or defendant to obtain a certificate of the particulars from the judge. post, p. 455. By the Patents Act, 1883, s. 29, sub-s. 6, it is provided that no plaintiff or defendant shall be allowed costs in respect of any particulars, unless the same are certified by the Court or a judge, to have been proven, or else to have been reasonable and proper. It was at one time doubted whether these words, " the Court or a judge," included the judge of the Court of the Duchy of Lancaster ( per Day, J.) : Proctor v. Sutton Lodge Co., 1888, 5 E. P. C. 181 ; but see Heyes v. Hall- mark, 1892, 9 E. P. C. 27; Ashworfh v. Laiv, 1892, 9 E. P. C. 194 : and the opinion of Brett, L.J., in B. v. C. C. of Halifax, 1891, 8 E. P. C. 344 ; and see 53 & 54 Vict., c. 23, 1890, which now gives it the full powers of a Court of Chancery. The Court of Appeal can also give a certificate, and will do so, where it reverses the decision of the Court below : Cole v. Saqui, 1889, 6 B, P. C. 41 ; but it will not on appeal re-try an issue which is not material to its judgment, merely in order to decide whether or no to grant the certificate : Boyd v. Horrochs, 1886, 6 E. P. C. 162. Approved in Longbottom v. Shaw, 1888, 6 E. P. C. 147, 510 : Kaye v. Chubb (post, p. 298). A certificate of objections cannot be given unless a trial has taken place ( per Bristowe, V.-C. of Lancaster) : Bothwell v. King, 1887, 4 E. P. C. 399. If, however, by mistake omission was made to ask it at the trial, it may be asked for subsequently, but no costs of the motion ACTION FOR INFRINGEMENT. 411 will be granted (per Bristowe, V.-C.) : Rowcliffe v. Ch. XXVIII. Morris, 1886, 3 E. P. C. 145. As a general rule, certifi- L cates are not given in respect of particulars which, have ^rt^fuiare of not been proved : Billington v. Hill, 1891, 8 E. P. C. breaches and . objections. 332 j- and see next section. 42. Apportionment of costs. — The apportionment of costs depends upon the facts of each case, and the conduct of the parties, but as a general rule, the costs of the issues are severed, and made, so far as is possible, to follow the event. The Court sometimes certifies for particulars, under Patents Act, 1883. s. 29, sub-s. 6 ; sometimes gives 1M st, p. 455. directions as to the costs of issues : under 0. lxv. r. 2. The following cases are examples : Wegmcm v. Corcoran, 1878, 27 W. E. 357, 362 ; Simmonds v. Hitchman, 1881, 29 Ch. D. 417 n ; United Telephone Co. v. Harrison, 1882, 21 Ch. D. 747 ; — where a certificate for particulars of breaches was refused, because, though the infringement was proved, the patent was held bad. Young v. Rosenthal, 1884, 1 E. P. C. 29, 41.— Plaintiffs proved infringement, but failed as to novelty and utility. Certificate of breaches for plaintiff, but only as to cost of delivering them, and subpoenaing witnesses, defendants entitled to certificate for part of their par- ticulars of objections. Needham v. Johnson, 1884, 1 E. P. C. 49, 59.— The Court below had found for the plaintiffs with costs. On appeal the Court of Appeal found no infringement, they gave the defendants the general costs of the action, with no costs on either side on the issues of novelty. Nordenfelt v. Gardner, 1884, 1 E. P. C. 61.— Judg- ment for plaintiff; on appeal held no infringement. 412 ENGLISH PATENT PRACTICE. Apportion- ment of costs. Examples of cases. Ch. XXVIII. Costs to be defendant's, but plaintiff to have costs on SECT. 42. o l, issue ot novelty. Westinghouse v. Lancashire Bail. Co., 1884, 1 R. P. C. 229, 253. — Where a trial had been by jury, the Court of Appeal directed the costs to be according to the findings. Badische Anilin Fabrik v. Levinstein, 1885, 29 Ch. D. 366. — A patentee proved infringement, but his patent was proved invalid. Held that the plaintiff must pay the general costs of the action, but that the defendant must pay costs on the issue of infringement. (A collection of cases will be found in the argument.) Pooley v. Pointon, 1885, 2 R. P. C. 167.— Plaintiff to have costs of Nos. 1 and 2, particulars of objections ; defendant, of Nos. 3, 5, 6. No order as to 4. Lawrence v. Berry, 1885, 2 R. P. C. 179.— Certificate refused as to all the alleged anticipating specifications which had not been actually put in, and out of these, certificate given for 8. Laurie v. Baker, 1885, 2 R. P. C. 213.— Defendant held not to have infringed, but to be liable for nominal damages, for passing off his goods as the plaintiff's, plaintiff to have general costs of action, but costs on issue of infringement to be defendant's. Sugg v. Bray, 1885, 2 R. P. C. 248.— Each party ordered to pay his own costs. Hocking v. Fraser, 1885,3 R. P. C. 7. — Costs apportioned where plaintiff succeeded on one patent, but offered no evidence on the other. Edison v. Woodhouse, 1886, 3 R. P. C. 167.— Plaintiff sued on three patents ; as to two of them there was no evidence of infringement. Defendant held entitled to costs occasioned by plaintiff's including them. Guilbert-Martin v. Kerr, 1886, 4 R. P. C. 23.- -Where ACTION FOR INFRINGEMENT. 413 a patent was held invalid ; Kekewich, J., gave defen- Ch. xxyiii. dants who had pleaded invalidity, want of utility, and no '_ ' infringement, all the costs, on the ground that the issues A PP ort i° n - . . racnt of costs. could not be distinguished sufficiently to apportion Examples of them. cases. Kaye v. Chubb, 1887, 4 R P. C. 300, 302.— Defendant's appeal allowed, and certificate of objections given by Court of Appeal. American Braided Wire Co. v. Thompson, 1887, 4 E. P. C. 322. — Defendants, though successful in action, ordered to pay costs of particulars of objections which they had not raised. (Judgment reversed on appeal.) Blakeij v. Latham, 1888, W. N. p. 126, 6 K. P. C. 38, 18(3, 190. — The Court found infringement, but that patent was invalid. They refused to apportion the costs of the issue of infringement in plaintiff's favour. Badham v. Bird, 1888, 5 K. P. C. 238.— Defendants put to plaintiff an anticipation which at once broke down his case. Their certificate of objections was limited to what was put to plaintiff on cross-examination. Blanh v. Footman, 1888, 5 K. P. C. GG1.— " As a rule costs of issues ought to follow the event." General costs of action ought to follow the event in spite of some of the issues being found against the successful party (^er Kekewich, J.). Edison v. Holland, 1888, 5 E. P. C. 483.— Certificate that objections were reasonable and proper. (Judgment reversed on appeal.) 43. Costs on the higher scale are sometimes allowed in cases of special difficulty : E. S. C, 0. lxv. r. 9. Thus in Ellington v. Clarh, the Court of Appeal con- sidered that inasmuch as the plaintiffs had brought 414 ENGLISH PATENT PRACTICE. Ch. XXVIII. scientific witnesses, and thus forced the defendants also '— ' to bring scientific witnesses, the successful defendants Wgher scale. should have COsts 0n the bi g her SCale : 1888 > 5 R P ' C " 328 ; see also Moseley v. Victoria Rubber Co., 1887, 4 K. P. C. 241, 57 L. T. (N.S.) 148; Wenham v. May, 1887, 4 R. P. C. 310 ; Kaije v. Chubb, 1887, 4 R. P. C. 303 ; Kurtz v. Spence, 1887, 5 R. P. C. 184 ; Westinghouse v. Lancashire Rail Co., 1884, 1 R. P. C. 103 ; Easterbrook v. G. W. R. Co., 1885. 2 R. P. C. 212 ; Wailing v. SWercs, 1886, 3 R. P. C. 43; Otto v. Steel, 1886, 3 R. P. C. 120 ; Dames v. Dames, 1887, 56 L. J. Ch. 481 ; Farben Fabrik v. Bowler, 1891, 8 R. P. C. 397. The special grounds must rest not merely on the importance of the case, but on the necessity for special expense : Grafton v. Watson, 1884, 51 L. T. (KS.) 141 ; American Braided Wire Co. v. Thompson, 1890, 7 R. P. C. 163. In Crampton v. Patent Investments Co., 1888, 5 R. P .0. 382, the consideration of an application for costs on the higher scale was postponed till after taxation on the lower scale had been made. In Fraser v. Brescia Tram. Co., 1887, 56 L. T. (N.S.) 771, 3 Times' Rep. 587, permission was given to the master to give all or any part of the costs which he thought fit, on the higher scale. Where, however, the necessity for specially expert evidence arose from the dubious wording of the plaintiffs' specification, costs on the higher scale were refused to him : Wenham Gas Co. v. Champion Gas Co., 1891, 8 R. P. C. 315. In Siemens v. Taylor, 1892, 9 R. P. C. 401, costs on the higher scale were refused. ( 415 ) CHAPTER XXIX. ACTIONS FOR THREATS. 1. Old practice. — Actions for damages and injunction to Ch. xxix. restrain threats were not unknown before the Patents Act SE f^J- of 1883 : see Wren v. Wield, 1869, L. R. 4 Q. B. 730 ; Dalziel v. Railway Carriage Co., cited, L. E. 13 Eq. 358 ; Rollins v. Einks, 1872, L. R. 13 Eq. 355, 41 L. J. Ch. 358 ; Axman v. Lund, 1874, L. R. 18 Eq. 330 ; Ealsey v. Brotherhood, 1881, 19 Ch. D. 386 ; Burnet v. Tah, 1882, 45 L. T. 743 ; Sugg v. Brag, 1886, 1 R. P. C. 45, 2 R. P. C. 223: Societe Anonyms des Glaces v. Tilghman's Sand Blast Co., 1883, 25 Ch. D. 1, 53 L. J. Ch. 1 ; Sharp v. Brauer, 1884, 3 R. P. C. 193. Actions founded upon threats made before the Act of 1883 proceeded under the old practice. The principles of the old law were, that in order to succeed in the action, the plaintiff must show (1) that the threats were uttered in bad faith, and (2) that he had not infringed. The validity of the patent was assumed, and not allowed to be questioned in such an action. 2. Modern practice. — The law relating to threats is now governed by the Patents Act, 1883, s. 32, and pro- post, p. 456. vides that an action for damages or an injunction may be brought by any one aggrieved by the threats, pro- vided (1) that the alleged manufacture or use to which SECT. 2. Modern practice. 416 ENGLISH PATENT PRACTICE. Ch. XXIX. such threat refers is not an infringement of any legal right of the person making the threat, and (2) that the said person making the threat does not with due dili- gence commence and prosecute an action for infringe- ment. To say of a person that his patent has been proved to be an infringement is libellous, and an action of libel will lie for it : Crampton v. Swete, 1886, 58 L. T. 516. 3. What constitutes a threat. — A threat may be directed not only against something which is going to be done, but against something which has been done, and either will give rise to an action : Challender v. Boyle, 1887, 36 Ch. D. 427, 4 E. P. C. 363, or it may be directed against the continuance of something which has been done : Kurtz v. Spence, 1887, 5 E. P. C. 171. The words " otherwise " in section 32 cover any sort of threat, whether by circulars or by letters directed to the in- fringer : Crampton v. Patent Investments Co., 1888, 5 E. P. C. 393 ; Walker v. Clarke, 1887, 4 E. P. C. 113 ; Driffield v. Waterloo, 1886, 3 E. P. C. 46, 31 Ch. D. 638 ; Automatic Weighing Machine Co. v. Combined. Weighing Machine Co., 1889, 6 E. P. C. 367 ; Burt v. Morgan, 1887, 4 E. P. C. 278 ; Colley v. Bart, 1888, 6 E. P. C. 18. If the threats are addressed to the customers of the plaintiff, he is a person aggrieved, or if the threats are addressed to the customers of his licensees he is aggrieved and can sue: Burt v. Morgan, 1887, 4 E. P. C. 278; Kensington Co. v. Lane Fox Co., 1891, 8 E. P. C. 277. General threats may give rise to an action on the part of the person aggrieved by them : Johnson v. Edge, 1892, 9 E.P. C. 142 ; Challender v. Boyle, 1887, 4 E. P. C. 363, explained in Bay v. Foster, 1890, 7 E. P. C. 54. In Skinner & Co. v. Perry, a letter by a patentee saying in ACTIONS FOR THREATS. 417 answer to enquiries, that he considered a certain machine Ch. xxix. an infringement of his patent, and would stop it, was !_ ' held to be a threat : 1892, 9 E. P. C. 406, 10 E. P. C. 1. ™ hat T sti ; ' tutea a threat. Any person who by his threats " claims " to be entitled to a patent, may be proceeded against, whether he is really so entitled or not ; and as a person who has claimed, but really has no patent rights, cannot protect himself by bringing a patent action, nor by shewing that the article complained of is an infringement, such person is in a very awkward position : see Kensington Co. v. Lane Fox Co., 1891, 8 E. P. C. 277. 4. What issues may be raised in an action for threats. — In an action of threats the plaintiff may deny that he has infringed, and may deny the validity of the patent : Cliallencler v. Boyle, 1887, 4 E. P. C. 363 ; Kurtz v. Spence, 1888, 5 E. P. C. 161, in which the plaintiff maintained that the defendant was not the first and true inventor. The plaintiff will have to give par- ticulars of objections exactly as the defendant would be obliged to do in an infringement action : Union Electrical Poiver Co. v. Electrical Power Storage Co., 1888, 5 E. P. C. 329 ; Law v. Ashworth, 1890, 7 E. P. C. 86 (Duchy of Lancaster Court case). The defendant will have to give particulars of the patents on which he relied in issuing his threats : Union Electrical Power Co. v. Electrical Power Storage Co. (supra). A certificate that the validity of the patent came in question may be granted : Crampton v. Patents Investments Co., 1888, 5 E. P. C. 382. The burden of proof of infringement is on the defendant : Ungar v. Sugg, 1889, 6 E. P. C. 337. 5. Interim injunction to restrain threats. — The 2 E 418 ENGLISH PATENT PRACTICE. Ch. xxix. applicant must show a prima facie case of non-infringe- seci\5. ment . ChaUender v. Roijle (per Bo wen, L.J.), 1887, Interim 4 £ p g 37(3 . Barney v. Urated Telephone Co., 1885, Sb " t0 2 11. P. C. 173, 28 Ch. D. 394 ; <7o% v. Hart, 1889, threats. g R p Q 2Q . ^^ y> ^^ jgg^ 4 R p q m? must now be considered doubtful law as to part of the dicta contained in it. The application should not be made ex parte ; Wilson v. Church Engineering Co., 1885, 2 E. P. C. 175. Plaintiff commenced an action to restrain threats, and defendant commenced an action for infringe- ment. Plaintiff moved to restrain the threats, but no order was made, defendant to proceed with diligence and not threaten in the meantime : Mackie v. Solvo Laundry Co., 1892, 9 E. P. C. 465. The bringing of an infringement action as a justifica- tion of the threats. — The action which, if brought promptly, will protect the utterer of the threats from an action against him, need not necessarily be against the person threatened, but against any one who may have infringed the patent : ChaUender v. Boyle, 1887, 4 K. P. C. 375 ; Day v. Foster, 1890, 7 E. P. C. GO ; nor need such action, if brought bona fide, necessarily be successful, to protect the person making the threats : Colley v. Hart, 1890, 7 E. P. C. 101, 44 Ch. I). 179 ; Brauer v. Sharpe, 1886, 3 E. P. C. 193. It must be commenced and prosecuted bond fide, and with due diligence. Thus, where it was only begun a year after the threat, this was held not enough: Herburger v. Squire, 1889, 5 E. P. C. 589 ; but see Edlin v. Pneu- matic Tyre Agency, 1893, 10 E. P. C. 311. The action must be I nought substantially for the same infringement as that in respect of which the threats were made: Automatic Weighing Machine Co. v. Combined Weighing Machine Co., ACTIONS FOR THREATS. 419 1889, 6 E. P. C. 367. Sometimes the hearing of the motion Ch. XXIX. for an injunction for threats is postponed till the trial of SECT " 5 ' the action for infringement : Barnett v. Barretts Co., 1884, In . teriin . t> t-» n injunction to 1 E. 1 . C. 10. restrain threats. 6. Damages for threats were not given where no real stoppage of works occurred in consequence : Driffield Go. v. Waterloo Co., 1886, 3 E. P. C. 46. In Kurtz v. Spence, 1887, 5 E. P. C. 161, forty shillings damages were given. The question of damages for threats ought to be tried by the Court on hearing of the action, and not referred : Ungar v. Sugg, 1892, 9 E. P. C. 115, and . Herrburger v. Squire, 1888, 5 E. P. C. 596, 6 E. P. C. 194 (in which also an injunction was granted). 7. Issuing warning circulars. — Even, however, where a plaintiff is suing for infringement, and thus protected from the consequences of uttering threats, under the Patents Act, he is still not at liberty to issue circulars warning the public against using the defendant's goods, for there is a general jurisdiction in the Court to protect the fair trial of the action, and to keep all rights intact till it can be decided. Each case must be considered on its own footing, for it is one thing to warn against the commission of infringements, but another thing to assert that infringements have taken place: Goulard v. Lindsay, 18S7, 4 E. T. C. 189; Fusee Vesta Co. v. Bryant & May, 1887, 4 E. V. C. 191. But where there is no mala fides the defendants to an action for threats may, if they continue to prosecute their proceed- ings for infringement with vigour, go on issuing their circulars — for in this case there is really, no statutory case against them — and the only remedy would be by an 2 e 2 420 ENGLISH PATENT PRACTICE. Ch. XXIX. SECT. 7. Issuing warning circulars. interlocutory application by the defendant in the patent suit, on the ground that the action against him was being prejudiced : Household v. Fairbum, 1884, 2 K. P. C. 140 ; and injunctions on this ground ought not to be lightly granted: Fenner v. Wilson, 1893, 10 E. P. C. 287. ( 12] ) CHAPTER XXX. PROCEDURE FOR REVOCATION OF THE PATENT. 1. Old method.— The old method of revoking a patent CuAP - xxx - ° r SECT. 1. was by scire facias, on suggestion that the Queen had been deceived. This made the patent utterly void : Chap. XVII., sect. 1. ante, p. 258. The writ of scire facias issued out of the Petty Bag Office of the Court of Chancery directed to the sheriff of the county where the defendant dwelt, commanding him to " give notice " (scire facias) to the patentee that the Queen had been informed that his patent was invalid, and requiring him to come into Court to shew why it should not be cancelled. As soon as the writ had been served, and the patentee was " in Court," the Attorney- General on behalf of the Queen filed a declaration against him, to which he pleaded, and when all the issues where joined, a writ of venire facias was issued to summon a jury returnable in the Queen's Bench. The trial having taken place the verdicts were returned into the Chancery, and if the verdict was against the patentee, the patent was ordered to be brought in to be cancelled, which could be enforced by attachment. As the proceedings on scire facias were between the Crown and the subject, no costs could be given on either side, the patentee could not plead double ; in fact, the pro- ceedings all bore the stamp of a suit iu which the 422 ENGLISH PATENT PRACTICE. Chap. XXX. Crown was prosecutor. The party who set the pro- '— ' ceedings on foot, had to give a bond to secure the Old method. p a y men t f cos t s to the patentee, if the patent Were upheld, but if the patent were cancelled the petitioner got no costs. The Patent Act, 1883, substituted proceedings by way of petitions for revocation. In them, interrogations can be administered and discovery had ; in fact the petition resembles an action, though perhaps it is a moot point whether on such proceedings estoppel arising from a previous trial between the same parties could be set up. 2. New procedure. — The proceedings by scire facias are now- abolished and proceedings for revocation are substituted, which may be presented in all cases in which post, p. 452. scire facias would have lain : Patents Act, 1883, sect. 26, 109 (Scotland) ; except where the patent is assigned to the Secretary of State for War : sect. 44, sub-s. 3, 9. A petition may be presented by the Attorney-General or by any one authorized by him, or by any one alleging that the patent was obtained in fraud of his rights, or that he was the true inventor, or that he had previously publicly used the invention. 3. Attorney-General's fiat. — This is obtained by sending to Koom No. 519, Poyal Courts of Justice, the following documents : — (1.) Memorial to the A.-G. 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 HE VOCATION OF PATENTS. 423 particulars proposed to be delivered with it Chap. XXX. under sect. 26 (5). (4.) Certificate of a barrister that the petition is proper Ge J22£ tiat to be authorized by the A.-< J. (5.) Certificate by a solicitor that the proposed peti- tioner 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 unsuccessful. The Attorney-General may grant leave ex parte, or else may direct the patentee to appear before him. The fiat has been granted without notice to the patentees : Goulard & Gibbs' Patent, 1887, Griff. 320. The grounds of such an application to the Attorney- General may be, that the person who desires to petition has made an invention which the respondent has claimed as embraced in his patent : Ferrantis Application (Goulard &- Gibbs' Patent), Griff. 320, 5 R. P. C. 529, 6 R. P. C. 215. A fiat was granted on a similar ground to King's Trustees, against whom Bothwell had commenced an action which was abandoned: 188G, Griff. 320, 3 11. P. C. 379, 4 R. P. C. 76, 397. The fiat was refused where an action was pending in Scotland: Bell & Coleman's Patent, Griff. 320. The fiat was refused in SiddtlVs Case upon the patentee undertaking to bring an action : Griff. 320. Where the application is abandoned, there is no power to give costs : Martin's Patent, Griff. 320. No costs can be given on such application, though by consent they may be made costs in the cause : Griff. 1520. 4. Locus of petitioner who has not obtained the Attorney-General's fiat. — This is regulated by Patents Act, 1883, sect. 26, sub-s. 4. post, P . 153. 424. ENGLISH PATENT PRACTICE. Chap. xxx. (a.) Patent obtained in fraud of another : Edge v. sEcrjt. H arr j sorb} 1891j 8 E _ P> c# 74 A cer tain Mrs. Edge, who Locus of happened to be in the employ of a patentee of the same pel . i._mer l L r j z who has not name, took out, in conjunction with the patentee's fore- obtained tlio . ., Attorney- man, Harrison, a patent for a wrapper for blue aye, ana then with Harrison proceeded to sell dye wrapped up in post, p. 456. the wrapper under the name of " Edge's Blue." A peti- tion was lodged for revocation of the patent, and an action of fraud brought against Harrison. The action and peti- tion came on for hearing before a jury who found a verdict for £500 damages, and the patent was revoked. See also Gales Patent, 1891, 8 R, P. C. 438. (b.) First and true inventor. — A person to whom a patent had been granted petitioned for the revocation of a patent subsequently granted to another, on the ground that he was the first and true inventor. This was held to give him a good locus, but the inventions were con- sidered different ; so his petition failed : Walker v. Hydro-Carbon Syndicate, 1884, 2 R. P. C. 3 ; Gale's Patent, 1891, 8 R. P. C. 439. (c.) Any one who has publicly used the invention prior to the date of the patent may present a petition for its revocation : Haddans Patent, 1885, 2 R. P. C. 218 ; Morgans Patent, 1888, 5 R. P. C. 186 ; Edmond's Patent, 1889, 6 R. P. C. 355. 5. When once a petitioner has a locus, he may impeach the patent on any ground : Morgan's Patent, 1888, 5 R. P. 0. 186. A petition for revocation may be ordered to be tried at the same time as an action for infringement : Edges Patent, 1890, W. N. 149. 6. A petition for revocation is in reality precisely analogous to a defence to an action for infringement : REVOCATION OF PATENTS. 425 Goulard & Gibbs patent, 1887, 34 Ch. D. 396. Hence Chap. XXX. interrogatories may be allowed : Haddans Patent, 1885, — 1 ' 54 L. J. Ch. 126; and query whether the writ may be ^oSS* 1 served out of the jurisdiction on a Scotchman resident in in reality •' precisely Scotland : Drummond's Patent, 1889, 6 E. P. C. 576, 43 analogous to ~, _ a delence to Ch. 1). 80. an action for infringement. 7. Particulars of objections must be delivered with the petition : Patents Act, 1883, sect. 26, sub-s. 5 ; which 1>0 st, p. 453. may by leave be amended : ss. 6. For forms of such particulars, see 2 E. P. C. 219, 3 E. P. C. 356. No cer- tificate of particulars under sect. 29, ss. 6, can be given on a petition for revocation : Goulard & Gibbs' Patent, 1888, 5 E. P. C. 526 ; hence it is to be presumed that a successful party would get his costs without such certifi- cate. But costs of issues might no doubt be apportioned under the Supreme Court rules, which would come to the same thing as a certificate. 8. The defendant begins on a petition for revoca- tion : Patents Act, 1883, sect. 26, sub-s. 7. post, p. 453. 9. On the order for revocation being made, a copy of it must be left at the Patents Office : 1*. 11., 1890, post, p. 497. r. 74. 10. On revocation for fraud, the comptroller may, on the application of the true inventor, grant a patent to him of co-ordinate date and term with that revoked. — Patents Act, 1883, sect. 26, sub-s. 8. All parties interested in the patent should be joined as defendants. Be Avery's Patent, 1887, 4 E. P. C. 159. 426 ENGLISH PATENT PBACT1CE. CH AFTER XXX J. APPEALS. Chap. xxxi. i. Appeals are now by way of re-hearing : R. S. C, — - ' 1883, 0. lviii., r. 1. If the respondent is also dissatisfied with the judgment or order, he should give notice of a cross appeal : ibid. r. 6. Security for costs of appeal is ordered in case of bankruptcy : United Telephone Co. v. Bassano, 1886, 31 Ch. D. 630 ; and if such security is not given, the appeal may, after a reasonable period (say three months), be dismissed : Washbu/rn Co. v. Patterson, 1885, 2 R. P. C. 27, 29 Ch. D. 48. The Court of Appeal may either order a new trial or re-try the case themselves : R. S. C, 0. lviii., po»<', p. 454. rr. 4, 5 ; and may call in an assessor. 2. The Court of Appeal may receive further evi- dence, but only by special leave, and on special grounds : R. S. C, 0. lviii., r. 4 ; and they may do so upon appeals from interlocutory orders and inter aha on motions for interim injunctions, sequestrations, and attach- ments: Spencer v. Ancoats Yale Co., 1888, 6 R. P. C. 54. The usual test which applies in such a case is whether the party asking to adduce fresh evidence could, with reasonable diligence, have obtained it at the trial ; it so. APPEALS. 427 he will in general not be allowed to bring it forward on Chap. xxxi. appeal : Hinde v. Osborne, 1885, 2 E. P. C. 47. ' Walker v. Hydro-Carbon Syndicate, 1886, 3 E. P. C. Jppe^maf 253 : — A petition was presented for revocation on the receive „ . . . further ground of a prior patent granted to the petitioner for the evidence, but same invention. At the trial the respondents produced gpcciaf leave. a patent to one Wise, which they contended rendered the petitioner's patent invalid. The petitioner, being de- feated, appealed, and on the appeal applied to adduce further evidence on the ground that he was surprised by the production of Wise's patent. But this was refused, as it was shewn that before the hearing he had been cross- examined as to Wise's patent on an examination before an examiner, and therefore he knew of it, and ought to have come prepared with his evidence. BJahey v. Latham, 1889, 6 E, P. C. 186 : Where it was alleged that two witnesses had sworn falsely in the court below, the C.-A. allowed them to be re-summoned. American Braided Wire Co. v. Thomson, 1888, 5 E. P. C. 113 : Further evidence was admitted on the ground that defendants had been misled by the opening of the plain- tiffs' case. In Nordenfeldt v. Gardner, where a plaintiff had made one omission in a chain of assignments, this would in the Court of Appeal have been allowed to be corrected had the objection been insisted on : 1884, 1 E. P. C. 61. The application to hear further evidence should be made in time, and where an appellant only produced od the second day of the appeal an affidavit that the facts had not been previously known to him, it was held that his application was too Lite: Watling v. Stevens, 1886, 3 E. P. C. 150. Where the judge below is believed to have deterred 428 ENGLISH PATENT PRACTICE. Chap. XXXI. SECT. 2. The Court of Appeal may receive further evi- dence, but only by special leave. a party from adducing evidence, the C. A. will allow his recall : Britain v. Hirsch, 1888, 5 R. P. C. 226. 3. The judge's notes in the Court below must be ready, and it is the duty of the appellants to get a copy of them and lodge it. The notes of counsel may be referred to, and also the notes of a regular professional shorthand writer, if verified ; but notes even in shorthand made by a solicitor's clerk would not be permitted to be referred to : Ellington v. Clark, 1888, 5 E. P. C. 322. The Court of Appeal as a rule requires that reports cited before it should have been taken by barristers as a guarantee that the legal questions are properly stated. If the judge's notes are not ready, the case may be ordered to stand over at the appellant's expense. 4. Costs on appeals. — On appeal, costs generally follow success; but an appellant who appeals on two grounds, and only succeeds on one, and has the other decided against him, may lose his costs: Moore v. Bennett, 1884, 1 R. P. C. 129. Costs paid below may be ordered to be refunded on appeal : Kaye v. Chubb, 1888, 5 R. P. C. 653. In granting costs the conduct of the parties is looked to. Thus where, after judgment given in the Court below, the Appeal Court in another case decided the same point differently : — the appellants wrote to the respondents desiring that they would consent to a modi- fication of the judgment in accordance with the law just laid down, but otherwise offering to withdraw the appeal which they had lodged. The respondents insisted on their going on with the appeal. Held, that this conduct was unreasonable, and defendants ordered to pay APPEALS. 429 all the costs from the date of their unreasonable refusal : ' Chap. xxxi. Be Vitre v. Betts, 1873, L. E. 6 H. L. C. 319. SECT ' 4 " (N.B. — It will be understood that the above notes on ^ osts °, n v Appeals. practice only embrace such points as are peculiar to, or have been decided in, patent cases. The practice in patent actions, in general, of course follows the usual rules of the H. C. J.) In jury cases, of course, a new trial may be ordered : K. S. C, 0. xxxix. 430 ENGLISH PATENT PRACTICE. CHAPTER XXXII. OFFENCES. Ch xxxii. 1- Selling unpatented articles as patented. — By the - SECT - L Common Law it was actionable to pass off goods as those of another person, either by putting them in wrappers or by marking them so as to deceive. This Common Law right existed quite independently of the Trade Marks Act or of other Statutes : Sykes v. Sijkes, 1824, 3 B. & C. 541 ; Blofield v. Payne, 1833, 4 B. & Ad. 410 ; and was also enforced by injunction : Bansome v. Bentall, 1834, 3 L. J. (N.S.) Ch. 161 ; Knott v. Morgan, 1839, 2 Keen. 213. By the Patents Act, 1835, a penalty was imposed for doing so, but this Act is repealed by the Patents Act, post, p. 470. 1883, which provides that " any person who represents that any article sold hj him ... is a patented article when no patent has been granted for the same shall be liable to a fine not exceeding £5 on summary conviction." Under this section, in order to justify the sale of the alleged patented article, it is necessary that the patent should have been granted, not merely applied for : Beg. v. Crampton, 1886, 3 R. P. C. 367 ; nor provisionally pro- tected : Beg. v. Wallis, 1886, 3 R. P. C. 1. The section is somewhat obscure. If a man sold an article marked " patent," would it be competent for him to shew that it once was patented though the patent had expired? Or again, would he be liable if he sold an OFFENCES. 431 article marked patent, when in truth it was an infringe- Ch. XXXII. ment of someone else's patent ? The words, " has been b ECT " ' granted for the same" seem to shew that the patent must Selll °s . . ° J l unpatented have been granted for the article sold, and. that therefore, articles as an infringer would be liable if he sold an unauthorized infringement of someone else's patent. The point arose in Heg. v. Walliss, but was not decided. 2. Falsification of registers is a misdemeanour : Patents Act, 1883, s. 93. This includes " causing falsi- post, p. 465. fication." Falsely assuming the name of a patent agent is also punishable : see Chap. XIV., sect. 1 ; Patents Act, post, p. 479. 1888, s. 1. 3. To assume the Royal Arms, or a colourable imitation of them is also punishable on summary- conviction by a fine not exceeding £20 : Patents Act, post, p. 471. 1883, s. 106. 432 ENGLISH PATENT PRACTICE. CHAPTEE XXXIII. INTEENATIONAL AND COLONIAL AKRANGEMENTS. (As to practice, see P. 0. Circular, post, p. 555.) Ch. XXXIII. The growth of trade and increase of intercourse among nations, made the want of international patent arrange- ments felt, and on March 20th, 1883, a convention was signed at Paris by several Powers to which a number of others have now adhered. post, p. 458. This convention is given in the appendix. By Patents post, p. 469. Act, 1883, ss. 103, 104, powers were given to the Crown to join in this convention. The effect of the convention is to give any one who applies for a patent in one of the post, p. 472. countries or colonies seven months within which to apply in any of the other countries. During the seven months he is protected from the effects of publication of his invention by other persons, and he has a prior right to have the patent granted to him over other persons. In fact, by applying for a patent in one country, he obtains what is very analogous to a seven months' provisional protection in all the others. An application in Great Britain for a patent for an invention which has been previously patented in one of the countries of the Union must be made on Form A2, post, P . 488. and see Patent Kules, 1890, rr. 24-29 ; several cases have been decided under this branch of the Act of 1883, viz., Be Everett, 1888, Griff. App. 29. INTERNA TIONAL ARRA NGEMENTS. 433 Main's Patent, 1890, 7 R. P. C. 13, which decided that Ch. xxxiii. when a country adopts the convention, patents in that country prior to the date of the convention acquire the advantages of it. The rights granted by the convention are personal rights, and hence the contemporaneous patents can only be granted to the same persons as those who took out the foreign patent : Be Shallenberger, 1889, 6 K. P. C. 550 ; Re Van de Poele, 1889, 7 E. P. C. 69. A corporation can apply : Be Carez, 1889, 6 R. P. C. 552. It is necessary for the person who wishes to avail himself of the privileges of sects. 103, 104, to apply pogtj p . 4G9- properly, for if he applies in the ordinary way, and has his patent dated as of the date of the application and not antedated back to his first patent in the other country, he will be taken to have elected to take out simply an English patent, and not to be entitled to the protection against publication given by sect. 103 : British Tanning Co. v. Groth, 1891, 8 R. P. C. 113. This disposes of the doubts raised in L'Oiseau & Pierraud's Patent, 1887, Griff. App. 36. A copy of a translation of the Convention of Paris will be found in the Appendix. The following countries and colonies have adopted it : — Belgium. New Zealand. Brazil. Norway. Curacao. Portugal. Surinam. Queeuslaud. East Indian Colonies of the San Domingo. Netherlands. Servia. France. Spain. Great Britain. Sweden. Guatemala. Switzerland. Italy. Tunis. Netherlands. United States 2 F 434 ENGLISH PATENT PRACTICE. Ch. XXXIII. and similar arrangements have also been made with Mexico, Paraguay, Eoumania (Designs and Trade Marks only), Hungary : (see Circular of Information, para. 22, Appendix). post, P . 474. Note that by Patents Act, 1883, s. 117, the Channel ante, p. 263. Islands are not included in the words, "British Pos- sessions." On the other hand, the Patents Acts do not apply to it. It is not the purpose of the present work to deal with foreign patents. The patent laws of the world have been collected in a most useful work by Mr. Carpmael, which has been continued and brought up to date by a Committee of the Institute of Patent Agents. Mr. Lloyd Wise has also a book in the press upon the same subject, portions of which have been published in the weekly journal, Worh. ( 435 ) APPENDIX OF STATUTES. The only Statutes in force as to Patents are the Statute of Monopolies, 21 James I. c. 3, and the Patent Acts of 1883, 1885, 1886, and 1888. 21 Jac. 1, C. 3. [A.D. 1623 (£).] 21 Jac. I, c. 3. An Act concerning Monopolies and Dispensations with Penal Laws, and the Forfeitures thereof. " Forasmuch as your most excellent Majesty, in your All monopo- royal judgment, and of your blessed disposition to the weal ! ies ' &c, » sha11 and quiet ot your subjects, did, m the year of our Lord God one thousand six hundred and ten, publish in print to the whole realm, and to all posterity, 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 fundamental laws of this realm : And whereas your Majesty was further graciously pleased expressly to command that no suitor should presume to move your Majesty for matters of that nature; yet nevertheless upon misinformations and untrue pretences of public good, many such grants have been unduly obtained, and unlawfully put in execution, to the great grievance and inconvenience of your Majesty's subjects, contrary to the laws of this your realm, and contrary to your Majesty's most royal and blessed intention so published as aforesaid." For avoiding whereof, and preventing the like in time to come, may it please your excellent Majesty, at the humble suit of the Lords spiritual 436 APPENDIX OF STATUTES. Monopolies, &c, shall be tried by the common law; of this realm, All persons disabled to use monopo- lies, &c. and temporal, and the Commons, in this present parliament assembled, that it may be declared and enacted, and be it declared and enacted, by authority of this present parlia- ment, that all monopolies and all commissions, grants, licenses, charters, and letters patent heretofore made or granted, or hereafter to be made or granted, to any person or persons, bodies politic or corporate whatsoever, of or for the sole buying, selling, making, working, or using of any thing within this realm or the dominion of Wales, or of any other monopolies, or of power, liberty, or faculty to dispense with any others, or to give license or toleration to do, use, or exercise any thing against the tenor or purport of any law or statute, or to give or make any warrant for any such dispensation, license, or toleration to be had or made ; or to agree or compound with any others for any penalty or forfeitures limited by any statute ; or of any grant or promise of the benefit, profit, or commodity of any forfeiture, penalty, or sum of money, that is or shall be due by any statute, before judgment thereupon had ; and all proclama- tions, inhibitions, restraints, warrants of assistance, and all other matters and things whatsoever any way tending to the instituting, erecting, strengthening, furthering, or coun- tenancing of the same, or any of them, are altogether contrary to the laws of this realm, and so are and shall be utterly void and of none effect, and in nowise to be put in ure or execution. 2. And be it further declared and enacted by the authority aforesaid, that .all monopolies, and all such commissions, grants, licenses, charters, letters patent, proclamations, inhibitions, restraints, warrants of assistance, and all other matters and things tending as aforesaid, and the force and validity of them and of every of them, ought to be and shall be for ever hereafter examined, heard, tried and determined, by and according to the common laws of this realm, and not otherwise. 3. And be it further enacted by the authority aforesaid, that all person and persons, bodies politic and corporate whatsoever, which now are or hereafter shall be, shall stand STATUTE OF MONOPOLIES. 437 and be disabled and incapable to have, use, exercise, or put in use any monopoly, or any such commission, grant, license, charter, letters patent, proclamation, inhibition, restraint, warrant of assistance, or other matter or thing tending as aforesaid, or any liberty, power or faculty, grounded or pretended to be grounded upon them or any of them. 4. And be it further enacted by the authority aforesaid, The party that if any person or persons, at any time after the end of pretext of a forty days next after the end of this present session of monopoly, parliament, shall be hindered, grieved, disturbed, or dis- recover* treble quieted, or his or their goods or chattels any way seized, damages and attached, distrained, taken, carried away, or detained, by ou e coa • occasion or pretext of any monopoly, or of any such commission, grant, license, power, liberty, faculty, letters patent, proclamation, inhibition, restraint, warrant of assist- ance or other matter or thing tending as aforesaid, and will sue to be relieved in or for any of the premises ; that then, and in every such case, the same person or persons shall and may have his and their remedy for the same at the common law, by any action or actions, to be grounded upon this statute ; the same action or actions to be heard and determined in the Courts of King's Bench, Common Pleas, and Exchequer, or in any of them, against him or them, by whom he or they shall be so hindered, grieved, disturbed, or disquieted, or against him or them by whom his or their goods or chattels shall be so seized, attached, or distrained, taken, carried away, or detained ; wherein all and every such person and persons, which shall be so hindered, grieved, disturbed, or disquieted, or whose goods or chattels shall bo so seized, attached, distrained, taken, carried away, or detained, shall recover three times so much as the damages which he or they sustained by means or occasion of being so hindered, grieved, disturbed, or dis- quieted, or by means of having his or their goods or chattels seized, attached, distrained, taken, carried away, or detained, and double costs ; and in such suits, or for the staying or delaying thereof, no essoin, protection, waj>;er of law, aid- prayer, privilege, injunction, or order of restraint, shall bo 2 U 438 APPENDIX OF STATUTES. He that delayeth an action grounded upon this statute incurs a praemunire. Letters patent hereafter to be granted for fourteen years, for new manufactures, saved. ante, p. 19. This Act not to extend to grants sanc- tioned hy Parliament. in any wise prayed, granted, admitted, or allowed, nor any more than one imparlance : And if any person or persons shall, after notice given, that the action depending is grounded upon this statute, cause or procure any action at the common law, grounded upon this statute, to be stayed or delayed before judgment, by colour or means of any order, warrant, power or authority, save only of the Court wherein such actions as aforesaid shall be brought and depending, or after judgment had upon such action, shall cause or procure the execution of or upon any such judgment to be stayed or delayed by colour or means of any such order, warrant, power, or authority, save only by writ of error or attaint ; that then the said person and persons so offending, shall incur and sustain the pains, penalties, and forfeitures ordained and provided by the statute of provision and praemunire made in the sixteenth year of the reign of King Kichard the Second. TSec. 5 is repealed, Stat. Law Eev. Act, 1883.] 6. Provided also, and be it declared and enacted, that any declaration before-mentioned shall not extend to any letters patent and grants of privilege for the term of fourteen years or under, hereafter to be made, of the sole working or making of any manner of new manufactures within this realm to the true and first inventor and inventors of such manufactures, which others at the time of making such letters patent and grant shall not use, so as also they be not contrary to the law nor mischievous to the state by raising prices of com- modities at home, or hurt of trade, or generally inconvenient : The said fourteen years to be accomplished from the date of the first letters patent or grants 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. 7. Provided also, and it is hereby further intended, declared, and enacted by authority aforesaid, that this Act, or any thing therein contained, shall not in any wise extend or be prejudicial to any grant, or privilege, power, or authority whatsoever, heretofore made, granted, allowed STATUTE OF MONOPOLIES. 439 and confirmed by any Act of Parliament now in force, so long as the same shall continue in force. 8. Provided also, that this Act shall not extend to any Warrants warrant or privv seal, made or directed or to be made or g rante ' 1 10 " . . . justices, saved. directed by his Majesty, his heirs or successors, to the justices of the Courts of the King's Bench or Common Pleas, and barons of the Exchequer, justices of assize, justices of oyer and terminer and gaol-delivery, justices of the peace, and other justices for the time being, having power to hear and determine offences done against any penal statute depending in suit and question before them, or any of them respectively, after plea pleaded by the party defendant. 9. Provided also, and it is hereby further intended, Charters declared, and enacted, that this Act, or any thing therein corporations contained, shall not in any wise extend or be prejudicial saved, unto the city of London, or to any city, borough, or town corporate within this realm, for or concerning any grants, charters, or letters patent, to them or any of them ; or unto any corporations, companies, or fellowships of any art, trade, occupation, or mystery, or to any companies or societies of merchants within this realm, erected for the maintenance, enlargement, or ordering of any trade of merchandise ; b'it that the same charters, customs, corporations, companies, fellowships and societies, and their liberties, privileges, powers, and immunities, shall be and continue of such force and effect as they were before the making of this Act, and of none other; any thing before in this Act contained to the contrary in any wise notwithstanding. [The rest of the Statute is repealed by Stat. Law Rev. Act, 1863, and P. Act, 1883.) 2 G 2 ( 440 ) THE PATENTS, DESIGNS, AND TEADE MAEKS ACT, 1883. 46 & 47 Yict. c. 57. — An Act to amend and consolidate the Law relating to Patents for Inventions, Registration of Designs, and of Trade Marks. [25th August, 1883.] post, p. 475. 48 & 49 Vict. c. 63. — An Act to amend the Patents, Designs, and Trade Marks Act, 1883. [14th August, 1885.] post, p. 477. 49 & 50 Vict. c. 37. — An Act to remove certain doubts respecting the construction of the Patents, Designs, and Trade Marks Act, 1883, so far as respects the drawings by which specifications are required to be accompanied, and as respects exhibitions. [25th June, 1886.] post, p. 479. 51 & 52 Vict. c. 50. — An Act to amend the Patents, Designs, and Trade Marks Act, 1883. [24th December, 1888.] (The repealed parts are printed in italics, and the additions in heavier type.) 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 the authority of the same, as follows : PAET I. Preliminary. Short title. 1. This Act may be cited as the Patents, Designs, and Trade Marks Act, 1883. PATENT ACTS, 1883-88, CONSOLIDATED. 441 2. This Act is divided into parts, as follows : — Division o» -r, . T T, Act into parts. Part I. — Preliminary. II. — Patents. III. — Designs. IV. — Trade Marks. V. — General. 3. This Act, except where it is otherwise expressed, shall Commence- commence from and immediately after the thirty-fir.>t day ment of Act> of December one thousand eight hundred and eighty-three. PAET II. Patents. Application for and Grant of Patent. 4. (1.) Any person, whether a British subject or not, may Persons en- make an application for a patent. fcitled t0 a rr'y (2.) I wo or more persons may make a joint application for a patent, and a patent may be granted to them jointly. ante, p. 228. Whereas doubts have arisen whether under the principal Act 1885 Act a patent may lawfully be granted to several persons s - 5 - jointly, some or one of whom only are or is the true and first Power t0 , . , , , . grant patents inventors or inventor ; be it therefore enacted and declared to several that it has been and is lawful under the principal Act to p ersous > grant such a patent. J0in y ' 5. (1.) An application for a patent must be made in the Application form set forth in the First Schedule to this Act, or in such f."' 1 speciiiea- other form as may be from time to time prescribed ; and must be left at, or sent by post to, the Patent Office in the prescribed manner. (2.) An application must contain a declaration to the post, p. 510. effect that the applicant is in possession of an invention, whereof he, or in the case of a joint application, one or more of the 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. tion. ante, p. 337. 442 APPENDIX OF STATUTES. Act 1885, s 2. (5 & 6 Will. 4, c. 62.) ante, pp. 201, 177. The same drawings may accompany both specifica- tions. Act 1886, s. 2. ante, p. 201. ante, p. 108. ante p. 195. Reference of application to examiner. ante, p. 240. Power for comptroller to refuse appli- cation or require amendment. Repealed by Act 1888, s. 2 The declaration may be either a statutory declaration under the Statutory Declarations Act, 1835, or not, as may be from time to time prescribed. (3.) A provisional specification must describe the nature of the invention, and be accompanied by drawings, if required. (4.) A complete specification, whether left on application or subsequently, must particularly describe and ascertain the nature of the invention, and in what manner it is to be performed, and must be accompanied by drawings, if required. The requirement of this sub-section as to drawings shall not be deemed to be insufficiently complied with by reason only that instead of being accompanied by drawings the complete specification refers to the drawings which accom- panied the provisional specification. And no patent hereto- fore sealed shall be invalid by reason only that the complete specification was not accompanied by drawings, but referred to those which accompanied the provisional specification. (5.) A specification, whether provisional or complete, must commence with the title, and in the case of a complete specification must end with a distinct statement of the invention claimed. 6. The comptroller shall refer every application to an examiner, who shall ascertain and report to the comptroller whether the nature of the invention has been fairly described, and the application, specification, and drawings (if any) have been prepared in the prescribed manner, and the title sufficiently indicates the subject-matter of the invention. [7. (1.) If the examiner reports that the nature of the inven- tion 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 invention, the comptroller may require that the application, specification, or drawings be amended before he proceeds with the application. (2.) Where the comptroller requires an amendment, the appli- cant may appeal from his decision to the law officer. PATENT ACTS, 1883-88, CONSOLIDATED. 443 (3.) Tlie law officer shall, if required, hear the applicant and the comptroller, and may make an order determining whether and subject to what conditions, (ifany^), the application shall be accepted. (4.) The comptroller shall, when an application has been accepted, give notice thereof to the applicant. (5.) If after an application has been made, but before a patent has been sealed, an application is made, accompanied by a specifi- cation bearing the same or a similar title, it shall be the duty of tlie examiner to report to the comptroller whether the specification appears to him to comprise the same invention; and, if he reports in tlie affirmative, the comptroller shall give notice to the applicants that he has so reported. (6.) Where tlie examiner reports in the affirmative, the comp- troller 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 refuse to seal a patent on the application of the second applicant.^ " 7. (1.) If the examiner reports that the nature of the Act 1888 invention is not fairly described, or that the application, s> 2l specification, or drawings has not, or have not, been comptroller to prepared in the prescribed manner, or that the title does 1- ef"se appli- not sufficiently indicate the subject-matter of the invention, ^.'"j"^ 1 " the comptroller may refuse to accept the application, or amendment, require that the application, specification, or drawings be anie * P- 241 - amended before he proceeds with the application; and in the latter case the application shall, if the comptroller so directs, bear date as from the time when the requirement is complied with. "(2.) Where the comptroller refuses to accept an applica- tion or requires an amendment, the applicant may appeal from his decision to the law officer. " (3.) The law officer shall, if required, hear the applicant and the comptroller, and may make an order determining whether, and subject to what conditions (if any), the application shall be accepted. " (4.) The comptroller shall, when an application has been accepted, give notice thereof to the applicant. " (5.) If, after an application for a patent has been made, 444 APPENDIX OF STATUTES. Time for leaving com- plete specifi- cation. Act 1885, s. 3. ante, p. 242. Comparison of provisional and complete specification. ante, p. 243. ante, ]>. 244. but before the patent thereon has been sealed, another application for a patent is made, accompanied by a specifica- tion 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." 8. (1.) If the applicant does not leave a complete speci- fication with his application, he may leave it at any subsequent time within nine months from the date of application. A complete specification may be left within such extended time, not exceeding one month after the said nine months, as the comptroller may on payment of the prescribed fee allow. (2.) Unless a complete specification is left within that time the application shall be deemed to be abandoned. 9. (1). Where a complete specification is left after a provisional specification, the comptroller shall refer both specifications to an examiner for the purpose of ascertaining whether the complete specification has been prepared in the prescribed manner, and whether the invention particulai ly described in the complete specification is substantially the same as that which is described in the provisional specification. (2.) If the examiner reports that the conditions herein- before contained have not been complied with, the comp- troller may refuse to accept the complete specification unless and until the same shall have been amended to his satisfaction ; but any such refusal shall be subject to appeal to the law officer. (3.) The law officer shall, if required, hear the applicant and the comptroller, and may make an order determining whether and subject to what conditions, if any, the complete specification shall be accepted. (4.) Unless a complete specification is accepted within twelve months from the date of application, then (save in PATENT ACTS, 1883-88, CONSOLIDATED. 445 the case of an appeal having been lodged against the refusal to accept) the application shall, at the expiration of those twelve months, become void. A complete specification may be accepted within such Act 1885, extended time, not exceeding three months after the said twelve months, as the comptroller may on payment of the prescribed fee allow. (5.) Reports of examiners shall not in any case be published ante, p. 241. or be open to public inspection, and shall not be liable to production or inspection in any legal proceeding [other than an appeal to the law officer under this Act], unless the Court or Repealed, officer having power to oider discovery in such legal pro- Act 1888, ceeding shall certify that such production or inspection is desirable in the interests of justice, and ought to be allowed. 10. On the acceptance of the complete specification the Advertisement comptroller shall advertise the acceptance ; and the appli- °" acce l ltalue , _ . ot complete cation and specification or specifications with the drawings specification. (if any) shall be open to public inspection. ante, p. 244. 11. (1.) Any person may at any time within two months Opposition to from the date of the advertisement of the acceptance of a ?a*e nt ° complete specification give notice at the Patent Office of ante p> 246. opposition to the grant of the patent on the ground of the applicant having obtained the invention from him, or from a person of whom he is the legal representative, or on the ground that the invention has been patented in this country on an application of prior date [or on the ground of an examiner Repealed. having reported to the comptroller that the specification appears to Act 1888 ' It i m to comprise the same invention as is comprised in a specification bearing the same or a similar title, and accompanying a jrrcvious application], or on the ground that the complete specifi- Act 1888, cation describes or claims an invention other than that Sl 4l described in the provisional specification, and that such other invention forms the subject of an application made by the opponent in the interval between the leaving of the provisional specification and the. leaving of the complete specification, but on no other ground. (2.) Where such notice is given the comptroller shall give notice of the opposition to the applicant, and shall on the 446 APPENDIX OF STATUTES. expiration of those two months, after hearing the appli- cant and the person so giving notice, if desirous of being heard, decide on the case, but subject to appeal to the law officer. (3.) The law officer shall, if required, hear the applicant and any person so giving notice and being, in the opinion of the law officer, entitled to be heard in opposition to the grant, and shall determine whether the grant ought or ought not to be made. (4.) The law officer may, if he thinks fit, obtain the assistance of an expert, who shall be paid such remuneration as the law officer, with the consent of the Treasury, shall appoint. Foaling of 12. (1.) If there is no opposition, or, in case of opposition, pa ent " _ 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. (2.) A patent so sealed shall have the same effect as if it were sealed with the Great Seal of the United Kingdom. (3.) A patent shall be sealed as soon as may be, and not after the expiration of fifteen months from the date of application, except in the cases hereinafter mentioned, that is to say — (a) Where the sealing is delayed by an appeal to the law officer, or by opposition to the grant of the patent, the patent may be sealed at such time as the law officer may direct. (6) 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. Act 18S5, A complete specification may be left and accepted within s ' 3l such extended times, not exceeding one month and three months respectively after the sad nine and twelve months respectively as the comptroller may on payment of the prescribed fee allow, and where such extension of time has been allowed, a further extension of four months after the patent. ante, p. 315. PATENT ACTS, 1883-88, CONSOLIDATED. 447 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. 13. Every patent shall be dated and sealed as of the day Date of of the application : Provided that no proceedings shall be taken in respect of an infringement committed before the publication of the complete specification : Provided also, that in case of more than one application for a patent for the same invention, the sealing of a patent on one of those applications shall not prevent the sealing of a patent on an ante, p. 266. earlier application. Where an application for a patent has been abandoned, or Specifications, become void, the specification or specifications and drawings 'jfrjjjj be (if any) accompanying or left in connexion with such appli- unless applica- cation, shall not at any time be open to public inspection or tlun acce P ted - be published by the comptroller. c s 4 ' aide, p. 176. Provisional Protection. 14. Where an application for a patent in respect of an nrovisio Provisional protection. ante, p. 176. 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 without prejudice to the patent to be granted for the same ; and such protection from the consequences of use and publication is in this Act referred to as provisional protection. Protection by Complete Specification. 15. After the acceptance of a complete specification and Effect of until the date of sealing a patent in respect thereof, or the * om pi ete ' expiration of the time for sealing, the applicant shall have specification. the like privileges and rights as if a patent for the invention had been sealed on the date of the acceptance of the com- plete specification : Provided that an applicant shall not be entitled to institute any proceedings for infringement unless and until a patent for the invention has been granted to him. 448 APPENDIX OF STATUTES. Patent. 16. Every patent when sealed shall have effect throughout the United Kingdom and the Isle of Man : (post, p. 472). 17. (1.) The term limited in every patent for the duration thereof shall be fourteen years from its date. (2.) But every patent shall, notwithstanding anything therein or in this Act, cease if the patentee fails to make the prescribed payments within the prescribed times. (3.) If, nevertheless, in any case, by accident, mistake or inadvertence, a patentee fails to make any prescribed payment within the prescribed time, he may apply to the comptroller for an enlargement of the time for making that payment. (4.) Thereupon the comptroller shall, if satisfied that the failure has arisen from any of the above-mentioned causes, on receipt of the prescribed fee for enlargement, not exceeding ten pounds, enlarge the time accordingly, subject to the following conditions : (a) The time for making any payment shall not in any case be enlarged for more than three months. (h) If any proceeding shall be taken in respect of an infringement of the patent committed after a failure to make any payment within the prescribed time, and before the enlargement thereof, the Court before which the proceeding is proposed to be taken may, if he shall think fit, refuse to award or give any damages in respect of such infringement. Amendment of Specification. Amendment 18. (1.) An applicant or a patentee may from time to ofspecifica- time, by request in writing left at the Patent Office, seek 1 1 ( 1 1 ) . n1K leave to amend his specification, including drawings forming ante, p. 215. L _ ' & _ & ° pud, p. 4 l J4. part thereof, by way of disclaimer, correction, or explanation, stating the nature of such amendment and his reasons for the same. (2. ) The request and the nature of sufch proposed amend- PATENT ACTS, 1883-88, CONSOLIDATED. 449 ment shall be advertised in the prescribed manner, and at any time within one month from its first advertisement any person may give notice at the Patent Office of opposition to the amendment. (3.) Where such notice is given the comptroller shall give notice of the opposition to the person making the request, and shall hear and decide the case subject to an appeal to the law officer. (4.) The law officer shall, if required, hear the person making the request and the person so giving notice, and being in the opinion of the law officer entitled to be heard in opposition to the request, and shall determine whether and subject to what conditions, if any, the amendment ought to be allowed. (5.) Where no notice of opposition is given, or the person so giving notice does not appear, the comptroller shall deter- mine whether and subject to what conditions, if any, the amendment ought to be allowed. (6.) When leave to amend is refused by the comptroller, the person making the request may appeal from his decision to the law officer. (7.) The law officer shall, if required, hear the person making the request and the comptroller, and may make an order determining whether, and subject to what conditions, if any, the amendment ought to be allowed. (8.) No amendment shall be allowed that would make ante, p. 225. the specification, as amended, claim an invention sub- stantially larger than or substantially different from the invention claimed by the specification as it stood before amendment. (9.) Leave to amend shall be conclusive as to the right of the party to make the amendment allowed, except in case of fraud; and the amendment shall in all courts and for all purposes be deemed to form part of the specification. (10.) [The foregoing provisions of this section do not apply Repealed. when and so long as any action for infringement or other legal Act 1888 » proceeding in relation to a patent is pending.'] s " (10.) The foregoing provisions of this section do not apply Act 1888, s. 5. 450 APPENDIX OF STATUTES. Power to disclaim part of invention during action, &c. ante, p. 215. Restriction on recovery of damages. ante, p. 225. Advertise- ment of amendment. when and so long as any action for infringement or proceeding for revocation of a patent is pending. 19. In an action for infringement of a patent, and in a proceeding for revocation of a patent, the Court or a judge may at any time order that the patentee shall, subject to such terms as to costs and otherwise as the Court or a judge may impose, be at liberty to apply at the Patent, Office for leave to amend his specification by way of disclaimer, and may direct that in the meantime the trial or hearing of the action shall be postponed. 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 tbe disclaimer, correction, or explanation, unless the patentee establishes to the satisfaction of the Court that his original claim was framed in good faith and with reasonable iskill and knowledge. 21. Every amendment of a specification shall be advertised in the prescribed manner. licenses ante, p. 290 Compulsory Licenses. Power for 22. If on the petition of any person interested it is proved Board to _ , , „ . _ order grant of to the Board of Trade that by reason ot trie detault ot a patentee to grant licenses on reasonable terms — (a) The patent is not being worked in the United Kingdom ; or (b) The reasonable requirements of the public with respect to the invention cannot be supplied ; or (c) Any person is prevented from working or using to the best advantage an invention of which he is possessed, the Board may order the patentee to grant licenses on such terms as to the amount of royalties, security for payment or otherwise, as the Board, having regard to the nature of the invention and the circumstances of the case, may deem just, and any such order may be enfoiced by mandamus. PATENT ACTS, 1.883-88, CONSOLIDATED. 451 Register of Patents. 23. (1.) There shall be kept at the Patent Office a book Register of called the Register of Patents, wherein shall be entered the P atent8, names and addresses of grantees of patents, notifications of 87 g 8 go 90 assignments and of transmissions of patents, of licenses 91, 93, lt>l, under patents, and of amendments, extensions, and revo ,' , cations of patents, and such other matters affecting the 267. validity or piopiietorship of patents as may from time to time be prescribed. (2.) The register of patents shall be prima, facie evidence of any matters by this Act directed or authorized to be inserted therein. (3.) Copies of deeds, licenses, and any other documents affecting the proprietorship in any letters patent or in any license thereunder, 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 Fees in instruments described in the Second Schedule to this Act, scnet,llle - the foes in that schedule mentioned, and there shall likewise ante * p- 2 '°" 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 hoi- Majesty's Exchequer in such manner as the Treasury may from time to time direct. (2.) The Board of Tiade may from time to time, if they « os $ pp. 493 think fit, witli the consent of the Treasury, reduce any of b &c > order for an injunction, inspection or account, and impose such terms and give such directions respecting the same and an t Cf pp . 2,1% the proceedings thereon as the Court or a judge may see fit. 397 > 401 - 31. In an action for infringement of a patent, the Court Certificate of or a iudsre may certify that the validity of the patent came validity ques- ./.1/-1 ., ..~ . tioned aud in question ; and if the Court or a judge so certifies, then in costs thereon. any subsequent action for infringement, the plaintiff in that ante, p. 406. action on obtaining a final order or judgment in his favour shall have his full costs, charges and expenses, as between solicitor and client, unless the Court or judge trying the action certifies that he ought not to have the same. 2 h 2 456 APPENDIX OF STATUTES. Remedy in case of groundless threats of legal proceed- ings. ante, p. 415. 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 manufacture, use, sale or purchase of the invention, any person or persons aggrieved thereby may bring an action against him, and may obtain an injunction against the continuance of such threats, and may recover such damage (if any) as may have been sustained thereby, if the alleged manufacture, use, sale, or purchase to which the threats related was not in fact an infringement of any legal rights of the person making such threats : 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. Patent for cne invention only. sect. 102 (2), post, p. 467. Patent on application of representative of deceased inventor. ante, p. 229. Patent to first inventor not invalidated by application in fraud of him. ante, p. 256. Assignment for particular places. Miscellaneous. 33. Every patent may be in the form in the First Schedule to this 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 com- prises more than one invention. 34. (1.) If a person possessed of an invention dies with- out making application for a patent for the invention, appli- cation may be made by, and a patent for the invention granted to, his legal representative. (2.) Every such application must be made within six months of the decease of such person, and must contain a declaration by the legal representative that he believes such person to be the true and first inventor of the invention. 35. A patent granted to the true and first inventor shall not be invalidated by an application in fraud of him, or by provisional protection obtained thereon, or by any use or publication of the invention subsequent to that fraudulent application during the period of provisional protection. 36. A patentee may assign his patent for any place in or part of the United Kingdom, or Isle of Man, as effectually as PATENT ACTS, 1883-88, CONSOLIDATED. 457 if the patent were originally granted to extend to that place ante, p. 275. or part only. 37. If a patent is lost or destroyed, or its non -production is Loss or accounted for to the satisfaction of the comptroller, the comp- deduction of troller may at any time cause a duplicate thereof to be sealed. ante ^ p . K34. 38. The law officers may examine witnesses on oath and Prcceodings administer oaths for that purpose under this part of this ^g^p^y Act, and may from time to time make, alter, and rescind officer, rules regulating references and appeals to the law officers post, p. 500. and the practice and procedure before them under this part an ' p * i of this Act ; and in any proceeding before either of the law officers under this part of this Act, the law officer may order costs to be paid by either party, and any such order may be made a rule of the Court. 39. The exhibition of an invention at an industrial or Exhibition at international exhibition, certified as such by the Board of industrial or . . , . . international Trade, or the publication of any description of the invention exhibition not during; the period of the holding of the exhibition, or the to prejudice . - ,.,..., patent rights. use of the invention for the purpose of the exhibition m the place where the exhibition is held, or the use of the inven- ante, p. 149. tion during the period of the holding of the exhibition by any person elsewhere, without the privity or consent of the inventor, shall not prejudice the right of the inventor or his legal personal representative to apply for and obtain provi- sional protection and a patent in respect of the invention or the validity of any patent granted on the application, provided that both the following conditions are complied with, namely, — (a) The exhibitor must, before exhibiting the invention, give the comptroller the prescribed notice of his intention to do so ; and (6) The application for a patent must be made before or within six months from the date of the opening of the exhibition. Whereas it is expedient to provide for the extension of this section to industrial and international exhibitions held out of the United Kingdom, be it therefore enacted as follows : 458 APPENDIX OF STATUTES. Protection of patents and designs ex- hibited at international exhibitions. Act 1886, s. 3. Publication of illustrated journal, in- dexes, &c. Patent Museum. Power to re- quire models on payment. Foreign vessels in British ■waters. 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 exhibi- tion 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 relieved from the conditions, specified in the said sections, of giving notice to the comptroller 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. 40. (1.) The comptroller shall cause to be used periodi- cally an illustrated journal of patented inventions, as well as reports of patent cases decided by courts of law, and any other information that the comptroller may deem generally useful or important. (2.) Provision shall be made by the comptroller for keep- ing on sale copies of such journal, and also of all complete specifications of patents for the time being in force, with their accompanying drawings, if any. (3.) The comptroller shall continue, in such form as he niay deem expedient, the indexes and abridgments of specifications hitherto published, and shall from time to time prepare and publish such other indexes, abridgments of specifications, catalogues and other works relating to inven- tions, as he may see fit. 41. The control and management of the existing Patent Museum and its contents shall from and after the commence- ment of this Act, be transferred to and vested in the Department of Science and Art, subject to such directions as her Majesty in Council may seem fit to give. 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 tbe 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 jorevent the use of an inven- tion for the purposes of the navigation of a foreign vessel PATENT ACTS, 1883-88, CONSOLIDATED. 459 within the jurisdiction of any of her Majesty's Courts in the ante, p. 323. United Kingdom, or Isle of Man, or the use of an invention in a foreign vessel within that jurisdiction, provided it is not used therein for or in connection with the manufacture or preparation of anything intended to be sold in or ex- ported 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 with the use of such inventions in British vessels while in the ports of such foreign state, or in the waters within the jurisdiction of its Courts, where such inventions are not so used for the manufacture or preparation of anything intended to be sold in or exported from the territories of such foreign state. 44. (1.) The inventor of any improvement in instruments Assignment to or munitions of war, his executors, administrators, or assigns Secretary tor . . . . i " ar °' certain (who are in this beet ion comprised in the expression the inventions. inventor) may (either for or without valuable consideration) ante, p. 283, 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 inven- tion and of any patent obtained or 'to be obtained for the same ; and the Secretary of State may be a party to the assignment. (2.) The assignment shall effectually vest the benefit of the invention and patent in the Secretary of State for the time being on behalf of her Majesty, and all covenants and agreements therein contained for keeping the invention secret and otherwise shall be valid and effectual (notwith- standing any want of valuable consideration), and may be enforced accordingly by the Secretary of State for the time being. (3.) Where any such assignment has been made to the Secretary of State, he may at any time before the application for a patent for the invention, or before publication of the specification or specifications, certify to the comptroller hie 460 APPENDIX OF STATUTES. opinion that, in the interest of the public service, the par- ticulars of the invention and of the manner in which it is to be performed should be kept secret. (4.) If the Secretary of State so certifies, the application and specification or specifications with the drawings (if any), and any amendment of the specification or specifications, and any copies of such documents and drawings, shall, instead of being left in the ordinary manner at the patent office, be delivered to the comptroller in a packet sealed by authority of the Secretary of State. (5.) Such packet shall until the expiration of the term or extended term during which a patent for the invention may be in force, be kept sealed by the comptroller, and shall not be opened save under the authority of an order of the Secre- tary of State, or of the law officers. (6.) Such sealed packet shall be delivered at any time during the continuance of the patent to any person authorised by writing under the hand of the Secretary of State to receive the same, and shall if returned to the comptroller be again kept sealed by him. (7.) On the expiration of the term or extended term of the patent, such sealed packet shall be delivered to any person authorized by writing under the hand of the Secretary of State to receive it. (8.) Where the Secretary of State certifies as aforesaid, after an application for a patent has been left at the patent office, but before the publication of the specification or specifications, the application, specification or specifications, with the drawings (if any), shall be forthwith placed in a packet sealed by authority of the comptroller, and such packet shall be subject to the foregoirjg provisions respecting a packet sealed by authority of the Secretary of State. (9.) No proceeding by petition or otherwise shall lie for revocation of a patent granted for an invention in relation to which the Secretary of State has certified as aforesaid. (10.) No copy of any specification or other document or drawing, by this section required to be placed in a sealed packet, shall in any manner whatever be published or open PATENT ACTS, 1883-88, CONSOLIDATED. 461 to the inspection of the public, but save as in this section otherwise directed, the provisions of this part of this Act shall apply in respect of any such invention and patent as aforesaid. (11.) The Secretary of State may, at any time by writing under his hand, waive the benefit of this section with respect to any particular invention, and the specifications, documents and drawings shall be thenceforth kept and dealt with in the ordinary way. (12.) The communication of any invention for any im- provement in instruments or munitions of war to the Secretary of State, or to any person or persons authorized by him to investigate the same or the merits thereof, shall not, nor shall anything done for the purposes of the in- vestigation, be deemed use or publication of such invention so 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 Provisions for patents aud proceedings thereon shall have effect in re ^P e . c ting respect only of application made afier the commencement of patents. 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. (3.) In all other respects (including the amount and time of payment of fees) this Act shall extend to all patents granted before the commencement of this Act, or on appli- cations then pending, in substitution for such enactments as would have applied thereto if this Act had not been passed. (4.) All instruments relating to patents granted before the commencement of this Act required to be left or filed in the Great Seal Patent Office shall be deemed to be so left or filed if left or filed before or after the commencement of this Act in the patent office. 462 APPENDIX OF STATUTES. Definitions ot' patent, patentee, and invention. 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 : " Invention " means any manner of new manufacture the subject of letters patent and grant of privilege within section six of the Statute of Monopolies (that is, the Act of the twenty -first year of the reign of King James the First, chapter three, intituled " An Act concerning monopolies and dispensations with penal laws and the forfeiture thereof" ), and includes an alleged invention. In Scotland "injunction." means "interdict." (Parts III. and IV., sees. 47-81, relate to designs and trade marks.) PAET V. General. Patent Office and Proceedings thereat. Tatent Office. 82. (1.) The Treasury may provide for the purposes of this Act an office with all requisite buildings and con- veniences, 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 comptruller general of patents, designs, and trade marks, who shall act under the superintendence and direction of the Board of Trade. (4.) Any act or thing directed to be done by or to the comp- troller may, in his absence, be done by or to any officer for the time being in that behalf authorized by the Board of Trade. PATENT ACTS, 1883-88, CONSOLIDATED. 463 83. (1.) The Board of Trade may at any time after the Officers and passing of this Act, and from time to time, subject to the approval of the Treasury, appoint the comptroller-general of patents, designs, and trade marks, and so many examiners and other officers and clerks with such designations and duties as the Board of Trade think fit, and may from time to time remove any of those officers and clerks. (2.) The salaries of those officers and clerks shall be appointed by the Board of Trade, with the concurrence of the Treasury, and the same and the other 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 Seal of patent impressions thereof shall be judicially noticed and admitted in evidence. • 85. There shall not be entered in any register kept under Trust not to this Act, or be receivable by the comptroller, any notice of J* ;"£"' m ' any trust expressed, implied or constructive. 86. The comptroller may refuse to grant a patent for an JJ^iatent, invention, or to register a design or trade mark, of which the &c., in certain use would, in his opinion, be contrary to law or morality. ^nte'v 241 87. Where a person becomes entitled by assignment, El , tr ' y of transmission, or other operation of law to a patent, or to the assignments ... • i i • • i i i j anc * trans- COpynght in a registered design, or to a registered trade m , ss i ons m mark, the comptroller shall on request, and on proof of title registers. to his satisfaction, cause the name of such person to be ante, p. 267. entered as proprietor of the patent, copyright in the design, or trade mark, in the register of patents, 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 to the provisions of Act 1888, this Act and to any rights appearing from such register s> 21 - 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, licence, or dealing. Provided that any equities in respect of such patent, design, or trade mark may 464 APPENDIX OF STATUTES. Inspection of and extracts from registers. Act 1888, s. 22. Sealed copies to be received in evidence. post, p. 498. Rectification of registers by Court. ' Act 1888, s. 23. ante, p. 268. Power for comptroller to correct clerical errors. be enforced in like manner as in respect of any other personal property. 88. Every register kept under this Act shall at all convenient times be open to the inspection of the public, subject to the provisions of this Act and to such regulations 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 written copies or extracts, purporting to be certified by the comptroller and sealed with the seal of the patent office, of or from patents, specifications, dis- claimers, and other documents in the patent office, and of or from registers and other books kept there, shall be admitted in evidence in all Courts in her Majesty's dominions, and in all proceedings, without further proof or production of the originals. 90. (1.) The Court may on the application of any person aggrieved by the omission without sufficient cause of the name of any person or of any other particulars from any register kept under this Act, or by any entry made without sufficient cause in any such register, make such order for making, expunging, or varying the entry, as the Court thinks fit ; or the Court may refuse the application ; and in either case may make such order with respect to the costs of the proceedings as the Court thinks fit. (2.) The Court may in any proceeding under this section decide any question that it may be necessary or expedient to decide for the rectification of a register, and may direct an issue to be tried for the decision of any question of fact, and may awai d damages to the party aggrieved. (3.) Any order of the Court rectifying a register shall direct that due notice of the rectification be given to the comptroller. 91. The comptroller may, on request in writing accom- panied by the prescribed fee, — (a) Correct any clerical error in or in connexion with an application for a patent, or for registration of a design or trade mark : or PATENT ACTS, 1883-88, CONSOLIDATED. 465 (b) Correct any clerical error in the name, style, or address of the registered proprietor of a patent, design, or trade mark ; (c) and (d) relate to trade marks. 92. Eelates to trade marks. Alteration of 93. If any person makes or causes to be made a false entry "j^ er in any register kept under this Act, or a writing falsely Falsification purporting to he a copy of an entry in any such register, or of entries in produces or tenders or causes to be produced or tendered in evidence any such writing, knowing the entry or writing to be false, he shall be guilty of a misdemeanor. 94. Where any discretionary power is by this Act given Exercise of to the comptroller, he shall not exercise tbat power adversely lscret |° nal 7 to the applicant for a patent, or for amendment of a specifi- comptroller, cation, or for registration of a trade mark or design, without (if so required within the prescribed time by the applicant) giving the applicant an opportunity of being heard personally or by his agent. 95. The comptroller may, in any case of doubt or Power of difficulty arising in the administration of any of the comptroller to •> ° .«ii take direc- provisions of this Act, apply to either of the law officers for tions of law directions in the matter. officers. 96. A certificate purporting to be under the hand Certificate of of the comptroller as to any entry, matter, or thing which ^"evidence! he is authorized by this Act, or any general rules made thereunder, to make or, do, shall be prima facie evidence of the entry having been made, and of the contents thereof, and of the matter or thing having been done or left undone. 97. (1.) Any application, notice, or other document Applications authorized or required to be left, made, or given at the jL-post! Patent Office or to the comptroller, or to any other person under this Act, may be sent by a prepaid letter through the post ; and if so sent shall be deemed to have been left, made or given respectively at the time when the letter containing the same would be delivered in the ordinary course of post. (2."» In proving such service or sending, it shall be 466 APPENDIX OF STATUTES. Provision as to days for leaving docu- ments at office. Declaration by infant, lunatic, &c. ante, p. 228. Transmission of certified printed copies of specifica- tions, &c. sufficient to 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 time being in force, for leaving any document or paying any fee at the Patent Office shall fall on Christmas Day, Good Friday, or on a Saturday or Sunday, or any day observed as a holiday at the Bank of England, or any day observed as a day of public fast or thanksgiving, herein referred to as excluded clays, 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 inability, incapable of making any declaration or doing any- thing 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 circum- stances permit, and do such thing in the name and on behalf of such incapable person, and all acts done by such substitute shall for the purposes of this Act be as effectual as if done by the person for whom he is substituted. 100. Copies of all specifications, drawibgs, and amend- ments left at the Patent Office after the commencement of this Act, printed for and sealed with the seal of the Patent Office, shall be transmitted to the Edinburgh Museum of Science and Art, and to the Enrolments Office of the Chancery Division in Ireland, and to the Eolls Office in the Isle of Man, within twenty-one days after the same shall respectively have been accepted or allowed at the Patent Office; and certified copies of or extracts from any such documents shall be given to any person n quiring the same on payment of the prescribed fee; and any such copy or PATENT ACTS, 1883-88, CONSOLIDATED. 407 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 Power for such general rules and do such things as they think expedient, j^ e l subject to the provisions of this Act — make general (a) For regulating the practice of registration under classify hi 189 3 . . . pout, p. *83. (c?) For securing and regulating the publishing and selling of copies, at such prices and in such manner as the gee also sect. Board of Trade think fit, of specifications, drawings, 102a > P ost i P- 468. amendments and other documents : (e) For securing and regulating the making, printing, publishing, and selling of indexes to, and abridgments of, specifications and other documents in the Patent Office : and providing for the inspection of indexes and abridgments and other documents : (/) For regulating (with the approval of the Treasury) the presentation of copies of Patent Office publications to patentees and to public authorities, bodies and insti- tutions at home and abroad : (<7) 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 as aforesaid. (3.) General rules may be made under this section at any time after the passing of this Act, but not so as to take effect before the commencement of this Act, and shall (subject as hereinafter mentioned) bo of the same effect as if they were contained in this Act, and shall be judicially noticed. 468 APPENDIX OF STATUTES. Annual reports of comptroller. Proceedings ol Board of Trade. Act 1888, s. 25. (4.) Any rules made in pursuance 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 by the comptroller. (5.) If either House of Parliament, within the next forty days after any rules have been so laid before such House, resolve that such rules or any of them ought to be annulled, the same shall after the date of such resolution be of no effect, without prejudice to the validity of anything done in the meantime under such rules or rule 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 before 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. " 102a. (1.) All things required or authorized 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 Board, or to be signed by a secretary or assistant secretary of the Board, or by any person authorized 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 Board of Trade, that any order made or act done is the order or act of the Board, shall be conclusive evidence of the fact so certified. PATENT ACTS, 1883-88, CONSOLIDATED. 469 International and Colonial Arrangements. 103. (1.) If her Majesty is pleased to make any arrange- international ment with the government or governments of any foreign arrangements ° . . . , . for protection state or states for mutual protection of inventions, designs, ot - inventions, and trade marks, or any of them, then any person who has designs, and ... , trade marks. applied for protection for any invention, design, or trade mark in any such state, shall be entitled to a patent for his ante, p. 310. invention or to registration of his design or trade mark (as the case may be) under this Act, in priority to other applicants ; and such patent or registration shall have the same date as the [date of the protection obtained] date of the Act( 1885( application in such foreign state. s - 6 - Provided that his application is made, in the case of a patent within seven months, and in the case of a design or trade mark within four months, from his applying for pro- tection in the foreign state with which the arrangement is in force. Provided that nothing in this section contained thall entitle the patentee or proprietor of the design or trade mark to recover damages for infringements happening prior to the date of the actual acceptance of his complete specification, or the actual registration of his design or trade mark in this country, as the case may be. (2.) The publication in the United Kingdom, or the Isle of Man, during the respective periods aforesaid, of any description of the invention, or the use therein duiing such periods of the invention, or the exhibition or use therein during such periods of the design, or 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 be 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 of a design, or the registration of a trade mark under this section, must be made in the same manner as an ordinary application under this Act : provided that, in the 2 i 470 APPENDIX OF STATUTES. Provision for colonies and India. post, p. 474. Penalty on falsely representing articles to be patented. case of trade marks, any trade mark, the registration of which has been duly applied for in the country of origin, may be registered under this Act : (4.) The provisions of this section shall apply only in the case of those foreign states with respect to which her Majesty shall from time 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 f >rce with respect to that state. 104. (1.) Where it is made to appear to her Majesty that the legislature of any British possesion has mady satis- factory provision for the protection of inventions, designs, and trade marks, patented or registered in this c untry, 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. (2.) An Order in Council under this Act shall, from a date to be mentioned for the purpose in the order, take effect as if its provisions had been contained in this Act ; but it shall be lawful for her Majesty in Council to revoke any Order in Council made under this Act. Offences. 105. (1.) Any person who represents that any article sold by him is a patented article, when no patent has been granted for the same, or describes any design or trade mark applied to any articde sold by 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, to represent that an article is patented or a design or a trade mark is registered, if he 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. PATENT ACTS, 1883-88, CONSOLIDATED. 471 106. Any person who, without the authority of her Penalty on -«.-. „, i,.-, n j_ unauthorized Majesty, or any of the royal family, or of any government assumption of department, assumes or uses in connexion with any trade, Royal arms. business, calling, or profession, the royal arms, or arms so nearly resembling the same as to be calculated to deceive, in such a manner as to be calculated to lead other persons to believe that he is carrying on his trade, business, calling, or profession by or under such authority as aforesaid, shall be liable on summary conviction to a fine not exceeding twenty pounds. Scotland, Ireland, &c. 107. In any action for infringement of a patent in Scotland the provisions of this Act, with respect to calling in the aid of an assessor, shall apply, and the action shall be tried without a jury, unless the Court shall otherwise direct, but otherwise nothing shall affect the jurisdiction and forms of process of the Courts in Scotland in such an action or in any action or proceeding respecting a patent hitherto com- petent 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 punishable 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 concurrence, which concurrence may be given on just cause shewn only. (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. 110. All parties shall, notwithstanding anything in this Act, have in Ireland their remedies under or in respect of a patent as if the same had been granted to extend to Ireland only. 111. (1.) The provisions of this Act conferring a special •1 1 2 Saving for Courts in Scotland. Summary proceedings in Scotland. Proceedings for revocation of patent in Scotland. Reservation of remedies in Ireland. General saving for 472 APPENDIX OF STATUTES. jurisdiction jurisdiction on the Court as denned by this Act, shall not, except so far as the jurisdiction extends, affect the juris- diction of any Court in Scotland or Ireland in any pro- ceedings relating to patents or to designs or to trade marks ; and with reference to any such proceedings in Scotland, the term " the Court " shall mean any Lord Ordinary of the Court of Session, and the term " Court of Appeal " shall mean either division of the said Couit; and with reference to any such proceedings in Ireland, the terms "the Court" and "the Court of Appeal" respectively mean the High Court of Justice in Ireland, and her Majesty's Court of Appeal in Ireland. (2.) If any rectification of a register under this Act is required in pursuance of any proceeding in a Court in Scotland or Ireland, a copy of the order, decree, or other authority for the rectification, shall be served on the comp- troller, and he shall rectify the register accordingly. Isle of Man. 112. This Act shall extend to the Isle of Man, and — See ante, P. Ad, (1*) Nothing in this Act shall affect the jurisdiction of the 1883, sect. 16. Courts in the Isle of Man, in proceedings for in- p. 448. . . ... fringement or in any action or proceeding respecting a patent, design, or trade mark competent to those Courts ; (2.) The punishment for a misdemeanour under this Act in the Isle of Man shall be imprisonment for any term not exceeding two years, with or without hard labour, and with or without a fine not exceeding one hundred pounds, at the discretion of the Court ; (3.) Any offence under this Act committed in the Isle of Man which would in England be punishable on summary conviction may be prosecuted, and any fine in respect thereof recovered at the instance of any person aggrieved, in the manner in which offences punishable on summary conviction may for the time being be prosecuted. PATENT ACTS, 1883-88, CONSOLIDATED. 473 Repeal, Transitional Provisions, Savings. 113. The enactments described in the Third Schedule to Repeal and this Act are hereby repealed. But this repeal of enactments JUJopmation Shall IlOt— of repealed (a) Affect the past operation of any of those enactments, ^ c or any patent or copyright or right to use a trade mark granted or acquired, or application pending, or appointment made, or compensation granted, or order or direction made or given, or right, privilege, obliga- tion, or liability acquired, accrued, or incurred, or anything duly done or suffered under or by any of those enactments before or at the commencement 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. The principal Act shall, as from the commencement of this Construction Act [i.e., Act of 1888], take effect subject to the additions, 2j s £ mc,pal omissions, and substitutions required by this Act ; but Act, 1888, nothing in this Act shall affect the validity of any act done, right acquired, or liability incurred before the commencement of this Act. 114. (1.) The registers of patents and of proprietors kept Former under any enactment repealed by this Act shall respectively £e S deemed° be deemed parts of the same book as the register of patents continued, kept under this Act. (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 Saving for any other authority under any enactment repealed by this existm S ru es - Act, and in force at the commencement of this Act, may at any time after the passing of this Act be repealed, altered, 474 APPENDIX OF STATUTES. or amended by the Board of Trade, as if they had been made by the Board under this Act, but so that no such repeal, alteration, or amendment shall take effect before the commencement of this Act ; and, subject as aforesaid, such general rules shall, so far as they are consistent with and are not superseded by this Act, continue in force as if they had been made by the Board of Trade under this Act. Saving for 116. Nothing in this Act shall take away, abridge, or prerogative. 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.) In and for the purposes of this Act, unless the definitions. context otherwise requires, — ante, p. 228. " Person " includes a body corporate : " The Court " means (subject to the provisions for Scotland, Ireland, and the Isle of Man) her Majesty's High Court of Justice in England : "Law officer" means her Majesty's Attorney-General or Solicitor-General for England. " The Treasury " means the Commi.-sioners of her Majesty's Treasury : "Comptroller" means the Comptroller General of Patents, Designs, and Tiade Marks : " Prescribed " means prescribed by any of the Schedules to this Act, or by general rules under or within the meaning of this Act : "British possession " means any territory or place situate within her Majesty's dominions, and not being or forming part of the United Kingdom, or of the Channel Wands, or of the Isle of Man, and all territories and places under one legislatuie, as hereinafter denned, are deemed to be one British possession for the purposes of this Act : " Legislature " includes any person or persons who exer- cise legislative authority in the British possession ; and where there are local legislatures as well as a central legisla- ture, means the central legislature only. PATENTS ACT, 1885. 475 In the application of this Act to Ireland, " summary- conviction " means a conviction under the Summary Juris- diction Acts, that is to say, with reference to the Dublin Metropolitan Police District, the Acts regulating the duties of justices of the peace and of the police for such district, and elsewhere in Ireland the Petty Se&sions (Ireland) Act, 1851, and any Act amending it. Here follow tlie schedules to the Act of 1883. Schedule I. contains forms of applications and specifications A. B. C, which are now replaced by others under the Patent Rules, 1890. Thenfolloics D.,form of the grant, which has now been modified, see p. 159 of this booh. Schedule II. contains fees, which are now altered by the Rules post, p. 505. of 1892. Schedule III. contains the enactments repealed. PATENTS, DESIGNS, AND TRADE MARKS (AMEND- MENT) ACT, 1885. (48 & 49 Vict. c. 63.) An Act to amend the Patents, Designs, and Trade lilarhs Act, 1883. [14th August, 1885.] 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 as- sembled, and by the authority of the same, as follows : 1. This Act shall be construed as one with the Patents, Construction Designs, and Trade Marks Act, 1883 (in this Act referred to and short as the principal Act). tltle * This Act may be cited as the Patents, Designs, and Trade Marks (Amendment) Act, 1885, and this Act and the princi- pal Act may be cited together as the Patents, Designs, and Trade Marks Acts, 1883 and 1885. 476 APPENDIX OF STATUTES. Amendment of sect. 5 of 46 & 47 Vict c. 57. 5 & 6 Will. 4, c. 62. Amendment of sects. 8, 9, and 12 of 46 & 47 Vict, c. 57. Specifications, &c, not to be published unless application "accepted. Power to grant patents to several persons jointly. 2. Whereas sub-section two of section five of the principal Act requires a declaration to be made by an applicant for a patent to the effect in that sub-section mentioned, and doubts have arisen as to the nature of that declaration, and it is ex- pedient to remove such doubts : Be it therefore enacted that: The declaration mentioned in sub-section two of section five of the principal Act may be either a statutory declara- tion under the Statutory Declarations Act, 1835, or not, as may be from time to time pi escribed. 3. Whereas under the principal Act, a complete specifica- tion is required (by s -ction eight) tu be left within nine months, and (by section nine) to be accepted within twelve months, from the date of application, and a patent is required by section twelve to be sealed within fifteen 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, not exceeding one month and three months respectively after the said nine and twelve months respectively as the comptroller may on payment of the prescribed tee 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. 4. Where an application for a patent has been abandoned, or become void, the specification or specifications and draw- ings (if any) accompanying or left in connexion with such application, shall not at any time be open to public inspec- tion or be published by the comptroller. 5. Whereas doubts have arisen whether under the princi- pal Act a 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. PATENTS ACT, 1886. 477 6. In sub-section one of section one hundred and three of Amendment the principal Act, the words " date of the application " shall \ { {*£ ^ y icti be substituted fur the words " date of the protection c. 57. obtained." PATENTS ACT, 1886. 49 & 50 Vict. c. 37. An Act to remove certain doubts respecting the construction of the Patents, Designs, and Trade Maries Act, 1883, so far as respects the drawings by which specifications are required to be accompanied, and as respects exhibitions. [25th June, 1886.] Whereas by section five of the Patents, Designs, and Trade 45 & 47 v~i ct . Marks Act, 1883, specifications, whether provisional or c - 57 - complete, must be accompanied by drawings if required, and doubts have arisen as to whether it is sufficient that a com- plete specification refers to the drawings by which the pro- visional siiecificaiion was accompanied, 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, 1886, and Short title shall be construed as one with the Patents, Designs, and ^ cons 1UC " Trade Marks Acts, 1883 and 1885, and, together with those 46 & 47 Vict. Acts, may be cited as the Patents, Designs, and Trade Marks ^o'&^a y-j c t Acts, 1883 to 1886. c 63. 2. The requirement of sub-section four of section five of The same the Patents, Designs, and Trade Marks Act, 1883, as to drawings may i i „, . ,, t t accompany drawings shall not be deemed to be insufficiently complied both specifica- with by reason only that instead of being accompanied by tions » drawings the complete specification refers to the drawings which accompanied the provisional specification. And no 478 APPENDIX OF STATUTES. Protection of patents and designs exhibited at international exhibitions. ante, pp. 467, 149. patent heretofore sealed shall he invalid by reason only that the complete specification was not accompanied by drawings but referred to those which accompanied the provisional specification. 3. Whereas by section thirty-nine of the Patents, Designs, and Trade Marks Act, 1883, as respects patents, and by t-ection fifty-seven of the same Act as respects designs, pro- vision is made that the exhibition of an invention or design at an industrial or international exhibition, certified as such by the Board of Trade, shall not prejudice the rights of the inventor or proprietor thereof, subject to the conditions therein mentioned, one of which is that the exhibitor must, before exhibiting the invention, design, or article, or publishing a description of the design, give the controller the pre-cribed 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 ex- hibition 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 relieved 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. ( 479 ) PATENTS, DESIGNS, AND TKADE MAKES ACT, 1888. 51 & 52 Vict. c. 50. An Act to amend the Patents, Designs, and Trade Marks Act, 1883. [24th December, 1888.] Whereas it is expedient to amend the Patents, Designs, and 46 & 47 Vict Trade Marks Act, 1883, hereinafter referred to as the princi- c - 57 ' pal Act : 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. — (1.) After the first day of July, one thousand eight Register of hundred and eighty-nine, a person shall not be entitled to describe himself as a patent agent, whether by advertise- ante, p. 235. ment, by description on his place of business, by any document issued by him, or otherwise, unless he is registered as a patent agent in pursuance of this Act. (2.) The Board of Trade shall, as soon as may be after the passing of this Act, and may from time to time, make such general rules as are, in the opinion of the Board, required P ost > P- 533 « for giving effect to this section, and the provisions of section one hundred and one of the principal Act shall apply to all rules so made as if they were made in pursuance of that section. (3.) Piovided that every person who proves to the satisfaction of the Board of Trade that prior to the passing of this Act he bad been bona, fide practising as a patent agent shall be entitled to be registered as a patent agent in pursuance of this Act. (4.) If any person knowingly describes himself as a patent agent in contravention of this section he shall bo liable, on summary conviction, to a fine not exceeding twenty pounds. 480 APPENDIX OF STATUTES. Amendments of 46 & 47 Vict. c. 57. Sect. 7, as to applications. ante, p. 443. Sect. 9, as to disclosure of reports of examiners. Sect. 11, as to opposition to tjraut of patent. (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 he substituted, namely : — " 7. — (1.) If the examiner reports that the nature of the invention is not fairly described, or that the application, specification, or drawing has not, or have not, been prepared in the prescribed manner, or that the title does not sufficiently indicate the subject-matter of the invention, the comptroller may refuse to accept the application, or require that the application, specification, or drawings be amended before he proceeds with the application ; and in the latter case the application shall, if the comptroller so directs, bear date as from the time when the requirement is complied with. " (2.) Where the comptroller refuses to accept an applica- tion 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 applica- tion shall be accepted. " (4.) The comptroller shall, when an application has been accepted, give notice thereof to the applicant. " (5.) If, after an applicatiou for a patent has been made, but before the patent thereon has been sealed, another application for a patent is made, accompanied by a specifica- tion 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-seciion five of section nine of the principal Act the words " other than an appeal to the law officer under this Act " shall be omitted. 4. In sub-section one of section eleven of the principal Act the words from " or on the ground of an examiner " to " a previous application," both inclusive, shall be omitted, PATENTS ACT, 1888. 481 and there shall be 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 specifica- tion and the leaving of the complete specification." 5. For sub-section ten of section eighteen of the principal Sect. 18, as to Act the following sub-section shall be substituted, namely : — specifications " (10.) The foregoing provisions of this section do not apply when, and so long as any action for infringement or proceeding for revocation of a patent is pending." (Sections 6-20 relate to traie marks.) 21. In section eighty-seven of the principal Act, after the Sect - 87 > as t0 words " subject to," shall be added the words " the provisions assignments of this Act and to." &c. 22. In section eighty-eight of the principal Act, after the Sect. 88, as to words " subject to," shall be added the words " the provisions ins P ectlon - of this Act and to." 23. In section ninety of the principal Act, after the Sect. 90, as to words " of the name of any person," shall be added the rectification / l of register. words " or of any other particulars." 24. To section ninety-one of the principal Act the follow- Sect. 91, as to in£ sub-section shall be added ; namely, correction of errors. " (tZ) Permit an applicant for registration of a design or trade mark to amend his application by omitting any . particular goods or classes of goods in connexion with which he has desired the design or trade mark to be registered." 25. After section one hundred and two of the principal Proceedings Act the following section shall be added and numbered 102a : ° l Koard of ° ' 1 rade. namely, "(l) All things required or authorized 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 482 APPENDIX OF STATUTES. Jurisdiction of Lancashire Palatine Court. The Court of the County Palatine has now by 52 & 53 Vict. c. 47, the full powers of a Court of Chancery. Construction of principal Act. Commence- ment of Act. Short title. the Board, or to be signed by a secretary or assistant secretary of the Board, or by any person authorized 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 shewn. " (3) A certificate, signed by the President of the Board of Trade, that any order made or act done is the order or act of tbe Board, shall be conclusive evidence of the fact so certified." 26. 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 pro- ceeding in relation to trade marks the registration whereof is applied for in the Manchester Office, have the like juris- diction 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 effect accordingly. "Provided that every decision of the Court of Chancery 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." 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 affect 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 other- wise specially provided, commence and come into operation on the first day of January one thousand eight hundred and eighty-nine. 29. This Act may be cited as the Patents, Designs, and Trade Marks Act, 1888, and this Act and the Patents, Designs, and Trade Marks Acts, 1883 to 1886, may be cited collectively as the Patents, Designs, and Trade Marks Acts, 1883 to 1888. ( 483 ) PATENTS EULES, 1890. By virtue of the provisions of the Patents, Designs, and sect 101. Trade Marks Acts, 1883 to 1888, the Board of Trade do ante, V .4R7. hereby make the following Rules : — Short Title. 1. These Rules may be cited as the Patents Rules, 1890. short title. Commencement. 2. These Rules shall come into operation from and Commence- immediately after the 31st day of March, 1890. ™ ent - Interpretation. 3. In the construction of these Rules, any words herein Interpretation, used defined by the said Acts shall have the rneamngs there- by assigned to them respectively. Fees. 4. The fees to be paid under the above-mentioned Acts Fees, shall be those specified in the list of fees in the First ante, p. 27<\ Schedule to these Rules. P ost > P- 505 - Forms. g£ pp- 508 " 5. The Forms A, B, and C in the First Schedule to the Forms. Act of 1883 shall be altered or amended by the substitution Alterations - therefor of the Forms A, Al, A2, B, and C in the Second Schedule to these Rules. 6. (1.) An application for a patent containing the declara- Application. tion mentioned in sub-section 2 of section 5 of the Act of 1883 and section 2 of the Act of 1885 shall be made either in the Form A or the Form Al, or the Form A2, set forth in the Second Schedule to these Rules as the case may be. (2.) The Form B in such Schedule of provisional specifica- Specification, tion and the Form C of complete specification shall re- spectively be used. (3.) The remaining forms other than A, Al, A2, B, and C, other form-. 484 APPENDIX OF STATUTES. Hours of business. Agency. Statement of address. Size, &c, of documents. set forth in the Second Schedule to these Kules, may, as far as they are applicable, be used in any proceedings under these Eules. General. 7. The Patent Office shall be open to the public every weekday between 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 thanks- giving, 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 by or through an agent duly authorised to the satisfaction of the Comp- troller, 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 communica- tions 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 add i ess 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, except Statutory Declarations and Affidavits, sent to or left at the Patent Office or otherwise furnished to the Comptroller or to the Board of Trade shall be written or printed in large and legible characters, and unless otherwise directed, in the English language, upon strong wide ruled paper (on one side only), of a size of 13 inches by 8 inches, leaving a margin of 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. PATENTS RULES, 1890. 485 11. Before exercising any discretionary power given to Exercise of the Comptroller by the said Acts adversely to the applicant discretionary for a patent or for amendment of a specification, the Comp- Comptroller. troller shall give ten days' notice, or such longer notice as Notice of he may think fit, to the applicant of the time when he may heann g- be heard personally or by his agent before the Comptroller. Statutory Declarations and Affidavits shall be in the form for the time being in use in the High Court of Justice. 12. Within five days from the date when such notice Nonce by would be delivered in the ordinary course of post, or such apphcant. longer time as the Comptroller may appoint in such notice, the applicant shall notify in writing to the Comptroller whether or not he intends to be heard upon the matter. 13. Whether the applicant desires to be heard or not, the Comptroller Comptroller may at any time require him to submit a state- ^tement^&c ment in writing within a time to be notified by the Comptroller, or to attend before him and make oral explana- tions with respect to such matters as the Comptroller may require. 14. The decision or determination of the Comptroller in Decision to be the exercise of any such discretionary power as aforesaid no *i^ ed t0 shall be notified by him to the applicant, and any other person affected thereby. 15. Any person desirous of exhibiting an invention at an industri.il or industrial or international exhibition, or of publishing any international exhibitions. description of the invention during the period of the holding of the exhibition, or of using the invention for the purpose of the exhibition in the place where the exhibition is held, shall, after the Board of Trade have issued a certificate that the exhibition is an industrial or international one, give to the Comptroller notice, in writing, of his intention to exhibit, publish, or use the invention, as the case may be. For the purpose of identifying the invention in the event of an application for a patent being subsequently made the applicant shall furnish to the Comptroller a brief description of his invention, accompanied, if necessary, by drawings, and such other information as the Comptroller may in each case require. 2 E ante, p. 149. 486 APPENDIX OF STATUTES. Power of amendment, &c. Manner in which, and persons before 16. Any document for the amending of which no special provision is made by the said Acts may be amended, and any irregularity in procedure, which in the opinion of the Comp- troller may he obviated without detriment to the interests of any person, may be corrected, if and on such terms as the Comptroller may think fit. 16a. Any application, notice, or other document authorised or required to be left, made, or given at the Patent Office, or to the Comptroller, or to any other person under these 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 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 sufficient to prove that the letter was properly addressed and put into the post. 17. The statutory declarations required by the said Acts and these Eules, or used in any proceedings thereunder, shall whom, declara- be made and subscribed as fullows : — tion is to be ^ fl ^ j n t ^ e Tjnited Kingdom, before any justice of the peace, or any commissioner or other officer authorised by law in any part of the United Kingdom to administer an oath for the purpose of any legal proceeding; (6.) In any other part of Her Majesty's dominions, before any court, judge, justice of the peace, or any officer authorised by law to administer an oath there for the purpose of a legal proceeding ; and (c ) If made out of Her Majesty's dominions, before a British Minister, or person exercising the functions of a British Minister, or a Consul, Vice-Consul, or other person exercising the functions of a British Consul, or a notary public, or before a judge or magistrate. 17a. Statutory declarations and affidavits shall be headed in the matter or matters to which they relate. They shall be divided into paragraphs consecutively numbered, and each paragraph shall so far as possible be confined to one subject. amendment. PATENTS RULES, 1890. 487 Application with Provisional or Complete Specification. 18. Applications for patents sent through the post shall, Order of as far as may be practicable, be op-ned and numbered in the "pHcations. order in which the letters containing the same have been respectively delivered in the ordinary course of post. Applications left at the Patent Office otherwise than through the post shall be in like manner numbered in the order of their receipt at the Patent Office. 19. Where a person making application for a patent Application includes therein by mistake, inadvertence, or otherwise, paten [ s by more than one invention, he may, after the refusal of the way of Comptroller to accept such application, amend the same so as to apply to one invention only, and may make application ante, p. 506. for separate patents for each such invention accordingly. Every such application shall, if the applicant notify his desire to that effect to the Comptroller, bear the date of the first application, and shall, together therewith, be proceeded with in the manner preserved by the said Acts and by these Eules, as if every such application had been originally made on that date. 20. An application for a patent by the legal representative Application by of a person who has died possessed of an invention shall be f deceased™ accompanied by an official copy of or extract fmni his will, or inventor, the letters of administration granted of his estate and effects in proof of the applicant's title as such legal representative, and must be supported by such further evidence as the Comptroller may require. 21. On the acceptance of a provisional or complete speci- Notice and fication the Comptroller shall give notice thereof to the of acceptance. applicant, and shall advertise such acceptance in the official journal of the Patent Office. 22. Upon the publication of such advertisement of accept- Inspection on . .„ . ., ,. . acceptance of ance in the case of a complete specification, the application complete and specification or specifications with the drawings (if any) specification. may be inspected at the Patent Office upon payment of the prescribed fee. 2 K 2 488 APPENDIX OF STATUTES. Application on Communication from Abroad. ante, p. 232. Commumca- 23. An application for a patent for an invention coinmuni- tion from cated from abroad shall be made in the form A 1 set forth in the Second Schedule to these Eules. post, p. 510. ante, p. 432. International and Colonial Arrangements. 24. The term " foreign application " shall mean an appli- cation by any person for protection of his invention in a Foreign State or British Possession to which by any Order of Her Majesty in Council for the time being in force the provisions of section 103 of the Patents, Designs, and Trade Marks Act, 1883, have been declared applicable. 25. An application in the United Kingdom for a patent for any invention in respect of which a foreign application has been made shall contain a declaration that such foreign application has been made and shall specify all the Foreign States or British Possessions in which foreign applications have been made and the official date or dates thereof respectively. The application must be made within 7 months from the date of the first foreign application, and must be signed by the person or persons by whom such first foreign application was made. If such person, or any of such persons, be dead, the application must be signed by the legal pei sonal representative of such dead person, as well as by the other applicants, if any. 26. The application in the United Kingdom shall be made in the Form A 2 in the Second Schedule to these Eules, and in addition to the specification, provisional or complete, left with such application must be accompanied by (1.) A copy or copies of the specification, and drawings or documents corresponding thereto, filed or deposited by the applicant in the Patent Office of the Foreign State or British Possession in respect of the first foreign application duly certified by the official chief or head of the Patent Office of such Foreign State or British Possessions as aforesaid, or other- wise verified to the satisfaction of the Comptroller ; PATENTS RULES, 1890. 489 (2.) A statutory declaration as to the identity of the in- vention in respect of which the application is made with the invention in respect of which the said first foreign application was made, and if the specification or document corresponding thereto be in a foreign language, a translation thereof shall he annexed to and verified b} T such statutory declaration. 27. On leceipt of such application, together with the pre- scribed specification and the other document or documents accompanying the same, required by the last preceding rule, and with such other proof (if any) as the ( 'oinptroller may require of or relating to such foreign application or of the official date thereof, the Comptroller shall make an entry of the applications in both countries and of the official dates of such applications respectively. 28. All further proceedings in connection with such appli- cation shall be taken within the times and in the manner prescribed by the Acts or Rules for ordinary applications. 29. The patent shall be entered in the Register of Patents as dated of the date on which the first foreign application was made, and tho payment of renewal fees, and the ex- piration of the patent, shall be reckoned as from the date of the first foreign application. Sizes and methods of preparing Drawings accompanying ante, p. 201. Provisional or Complete Specifications. 30. The provisional or complete specification need not be Drawings for accompanied by drawings if the specification sufficiently &pecl ca lons * describes the invention without them, bat if drawings are „ m furnished, they should accompany the provisional or com- plete specification to which they refer, except in the case provided for by Rule 33. No drawing or sketch such as requires a special engraving for letter-press should appear in the specification itself. 31. Drawings (if any) must be delivered at the Patent Office either in a flat state or on rollers, so as to be free from folds, breaks, or creases. p. 544. 490 APPENDIX OF STATUTES. Requirements as to paper, &c, Size of drawings. Quality of ink. Scale of drawings. Drawings to bear name of applicant, &c. They must loe made on pure white, hot-pressed, rolled, or calendered drawing paper of smooth surface and good quality, and where possible without colour or Indian-ink washes. They must be on sheets of. one of the two following sizes (the smaller being preferable), 13 inches at the sides by 8 inches at the top and bottom, or 13 inches at the sides by 16 inches at the top and bottom, including margin, which must be \ an inch wide. If there are more figures than can be shewn on one of the smaller-sized sheets two or more of these sheets should be used in preference to employing the larger size. "When an exceptionally large drawing is required, it should be continued on subsequent sheets. There is no limit to the number of sheets that may be sent in. To ensure their satisfactory reproduction, the drawings must be executed with absolutely black Indian ink; the same strength and colour of fine and shade lines to be maintained throughout. Section lines, and lines for effect, or shading lines, must not be closely drawn. A specimen drawing is inserted in illustration of this requirement. Eeference figures and letters must be bold, distinct, not less than |- of an inch in height ; and the same letters should be used in different views' of the same parts. In cases of complicated drawings, the reference letters must be shewn outside the figure, and connected with the part referred to by a fine line. The scale adopted should be large enough to shew clearly wherein the invention consists, and only so much of the apparatus, machine, &c. need be shewn as effects this purpose. "When the scale-is shewn 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 specification, the number and year of the appli- cation) in the left-hand top corner ; the number of sheets of drawings sent, and the number of each sheet in the right-hand top corner ; and the signature of the applicant or his agent in the right-hand botto)u corner. PATENTS RULES, 1S90. 491 No written description of the invention should appear on the drawings. Wood engravings, or representations of the invention, Restrictions other than the drawings prepared as above described, will as to wood , . » engravings. not be received, unless of such a character as to be suitable for reproduction by the process of photo-lithography. 32. A facsimile of the original drawings, but without colour Copies of or Indian-ink washes, and prepare 1 strictly in accordance rawin S s ' with the regulations prescribed in Eule 31, must accoinpany the originals, and be marked " true copy." 33. If an applicant desires to aHopt the drawings lodged Provisional with his provisional specification as the drawings for his f or con n,lete complete specification, he should refer to them as those " left specification, with the provisional specification." (A specimen draioing can be obtained from the Patent Office together with a copy of these rules, price sixpence?) Opposition to Grants of Patents. ante, p. 246. 34. A notice of opposition to the grant of a patent shall Notice of be on Form D, and shall state the ground or grounds on °PP 0i ' 1 lon * which the person giving such notice (nereinafter in Rules 37, 38, 41 and 43 called the opponent) intends to oppose the grant, and must be signed by him. Such notice shall state his address for service in the United Kingdom, and shall be accompanied by an unstamped copy. 35. On receipt of such notice the copy thereof shall be Copv for transmitted by the Comptroller to the applicant. applicant. 36. Where the ground or one of the grounds of opposition Particulars of is that the invention has been patented in this country on an puo1 ' ia en " application of prior date, the number and date of such prior application shall be specified in the notice. 37. Within 14 days after the expiration of two months Opponent's from the date of the advertisement of the acceptance of a evidence « complete specification, the opponent may leave at the Patent Office statutory declarations in support of his opposi- tion, and on so leaving shall deliver to the applicant a list thereof. 492 APPENDIX OF STATUTES. Applicant's evidence. Evidence in reply. Closing of evidence. Notice of hearing. Disallowance of opposition in certain cases. 38. Within 14 days from the delivery of such list the applicant may leave at the Patent Office statutory declara- tions in answer, and on so leaving shall deliver to the opponent a list thereof, and within 14 days from such delivery the opponent may leave at the Patent Office his statutory declarations in reply, and on so leaving shall deliver to the applicant a list thereof. Such last-mentioned declarations shall be confined to matters strictly in reply. Copies of the declarations mentioned in this and the last preceding Eule may be obtained either from the Patent Office or from the opposite party. 39. No further evidence shall be left on either side except by leave of the Comptroller upon the written consent of the parties duly notified to him, or by special leave of the Comptroller on application in writing made to him for that purpose. 40. Either party making such application shall give notice thereof to the opposite party, who shall be entitled to oppose the application. 41. On completion of the evidence, or at such other time as he may see fit, the Comptroller shall appoint a time for the hearing of the case, and shall give the parties 10 days' notice at the least of such appointment. If the applicant or opponent desires to be heard he must forthwith send the Comptroller an application on Form E. The Comptroller may refuse to hear either party who has not sent such appli- cation for hearing. If neither party applies to be heard the Comptroller shall decide the case and notify his decision to the parties. 42. On the hearing of the case no opposition shall be allowed in respect of any ground not stated in the notice of opposition, and where the ground 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 number and date of such prior application shall have been duly specified in the notice of opposition. 43. Where the ground of an opposition is that the appli- PATENTS RULES, 1890. 493 cant has obtained the invention from the opponent, or from a person of whom such opponent is the legal representative, unless evidence in support of such allegation be left at the Patent Office within the time prescribed by these rules, the opposition shall be deemed to be abandoned, and a patent shall be sealed forthwith. 44. The decision of the Comptroller, after hearing any Decision to be party who applies under Kule 41, shall be notified by him to the parties. notified to parties. Certificates of Payment or Eenewal. Bules 45, 46 and 47 are repealed by the Patent Bules, 1892. Patent Kule 4, 1892. Payment of Annual Fees for continuance of Patent. ante, p. 270. 4. If a Patentee intends, at the expiration of the fourth year from the date of his Patent, to keep the same in force, he shall," before the expiration of the fourth and each succeeding year during the term of the Patent, pay the prescribed fee. post, p. 505. The Patentee may pay the whole or any portion of the aggregate of such prescribed annual fees in advance. The form J in the Second Schedule, duly stamped, should be used for the purpose of this payment. 48. On due compliance with these Eules, and as soon as Certificate of may be after such respective periods as aforesaid, or any P ;l )' llieut - enlargement thereof respectively duly granted, the Comp- troller shall issue a certificate that the prescribed payment has been duly made. Enlargement of Time. 49. An application for an enlargement of the time for Enlargement making a prescribed payment shall state in detail the cir- ^^J^" cumstances in which the patentee by accident, mistake or inadvertence has failed to make such payment, and the Comptroller may require the patentee to substantiate by such proof as he may think necessary the allegations con- tained in the application for enlargement. 494 APPENDIX OF STATUTES. Extension of time for leaving and accepting complete specification. In other cases. 50. An application for enlargement of time for leaving or accepting a complete specification shall state in detail in what circumstances and upon what grounds such extension is applied for, and the Comptroller may require the applicant to substantiate such allegations by such proof as the Comp- troller may think necessary. 51. The time prescribed by these Eules for doing any act, or taking any proceeding thereunder, may be enlarged by the Comptroller if he think fit, and upon such notice to other parties, and proceedings thereon, and upon such terms, as he may direct. ante, pp. 215, 448. Request for leave to amend. Advertise- ment. Notice of opposition. Copv for the applicant. Opponent's evidence. Further proceedings. Amendment of Specification. 52. A request for leave to amend a specification must be signed by the applicant or patentee (hereinafter in Eules 54, 55 and 58 called the applicant) and accompanied by a duly certified printed copy of the original specification and drawings, shewing in red ink the proposed amendment, and shall be advertised by publication of the request and 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. 53. A notice of opposition to the amendment shall state the ground or grounds on which the person giving such notice (hereinafter called the opponent) intends to oppose the amendment, and must be signed by him. Such notice shall state his address for service in the United Kingdom, and shall be accompanied by an unstamped copy. 54. On receipt of such notice the copy thereof shall be transmitted by the Comptroller to the applicant. 55. Within 14 days after the expiration of one month from the first advertisement of the application for leave to amend, the opponent may leave at the Patent Office statutory declarations in support of his opposition, and on so leaving shall deliver to the applicant a list thereof. 5G. Upon such declarations being left, and such list being delivered, the provisions of Pules 38, 39, 40, 41, and 44 shall PATENTS RULES, 1890. 495 apply to the case, and the further proceedings therein shall be regulated in accordance with such provisions as if they were here repeated. 57. Where leave to amend is given the applicant shall, if Requirements 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 Eules 10, 30, and 31. 58. Where a request for leave to amend is made by or in Leave by Order pursuance 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. 59. Every amendment of a specification shall be forthwith Advertisement advertised by the Comptroller in the official journal of the Patent Office, and in such other manner (if any) as the Comptroller may direct. Compulsory Licenses. ante, p. 290. GO. A petition to the Board of Trade for an order upon a Petition for patentee to grant a license shall shew clearly the nature of com P a ^«ry the petitioner's interest, and the ground or grounds upon licenses, which he claims to be entitled to relief, and shall state in detail the circumstances of the case, the terms upon which he asks that an order may be made, and the purport of such order. 61. The petition and an examined copy thereof shall be To be left left at the Patent Office, accompanied by the affidavits, or ^ y> ate ^ t statutory declarations, and other documentary evidence (if Office, any) tendered by the petitioner in proof of the alleged default of the patentee. 62. Upon perusing the petition and evidence, unless the Directions as Board of Trade shall be of opinion that the order should be Drocee d me8 at once lefused, they may require the petitioner to attend unless before the Comptroller, or other person or persons appointed jg^gj" by them, to receive his or their directions as to further pro- ceedings upon the petition. 63. If and when a prima fade case for relief has been Procedure. 496 APPENDIX OF STATUTES. Petitioner's evidence. Patentee's evidence. Evidence in reply. Further proceedings. ante, p. 267. Entry of grant. Request for entry of sub- sequent pro- prietorship. Signature of request. made out to the satisfaction of the Board of Trade, the petitioner shall, upon their requisition, and on or before a day to be named by them, deliver to the patentee copies of the petition and of the affidavits or statutory declarations and other documentary evidence (if any) tendered in support thereof. 64. Within 14 days after the day of such delivery the patentee shall leave at the Patent Office his affidavits or statutory declarations in opposition to the petition, and deliver copies thereof to the petitioner. 65. The petitioner within 14 days from such delivery shall leave at the Patent Office his affidavits, or statutory declarations in reply, and deliver copies thereof to the patentee ; such last-mentioned affidavits or declarations shall be confined to matters strictly in reply. 66. Subject to any further directions which the Board of Trade may give the parties shall then be heard at such time, before such person or persons, in such manner, and in accordance with such procedure as the Buard of Trade may, in the circumstances of the case, direct, but so that full opportunity shall be given to the patentee to shew cause against the petition. Kegister of Patents. 67. Upon the sealing of a patent the Comptroller shall cause to be entered in the Eegister of Patents the name, address, and description of the patentee as the grantee thereof, and the title of the invention. 68. Where a person becomes entitled to a patent or to any share or interest therein, by assignment either throughout the United Kingdom and the Isle of Man, or for any place or places therein, or by transmission or other operation of law, a request for the entry of his name in the register as such complete or partial proprietor of the patent, or of such share or interest therein, as the case may be, shall be addressed to the Comptroller, and left at the Patent Office. 69. Such request shall in the case of individuals be made and signed by the person requiring to be registered as pro- PATENTS RULES, 1890. 497 prietor, or by 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. 70. Every such request shall state the name, address, and Particulars to description of the person claiming to be entitled to the be stated m 1 . . request. patent, or to any share or interest therein, as the case may be (hereinafter called the claimant), and the particulars of the assignment, transmission, or other operation of law, by virtue of which he requires to be entered in the register as proprietor, so as to shew 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 trans- mitted. 71. Every assignment and every other document contain- Production of ing, giving effect to, or being evidence of, the transmission documents of of a patent or affecting the proprietorship thereof as claimed proof. by such request, except such documents as are matters of record, shall be produced to the Comptroller, together with the request above prescribed, and such other proof of title as he may require for his satisfaction. As to a document which is a matter of record, an official or certified copy thereof shall in like manner be produced to the Comptroller. 72. There shall also be left with the request an attested Copies for copy of the assignment or other document above required to patent Office, 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 attested copy. 73. A body corporate may be registered as proprietor by Body • , j^ ' corporate. its corporate name. r i • ante > P- 228 - 74. Where an order has been made by Her Majesty in Entry f Council for the extension of a patent for a further term or Orders of the for the grant of a new patent, or where an order has been or f tne made by the Court for the revocation of a patent or the rec- Court. tification of the register under section 90 of the Act of 1883, ante > P- 348 - or otherwise affecting the validity or proprietorship of the patent, the person in whose favour such order has been made 498 APPENDIX OF STATUTES. Entry of payment of fees on issue of certificate. Entry of failure to pay fees. Entry of licenses. Hours of inspection of register. Certified copies of documents. ante, p. 464-. 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. 75. Upon the issue of a certificate of payment under Eule 48, the Comptroller shall cause to be entered in the Register of Patents a record of the amount and date of payment of the fee on such certificate. 76. If a patentee fails to make any prescribed payment within the prescribed time or any enlargement thereof duly granted, such failure shall be duly entered in the register. 77. An attested copy of every license granted under a patent shall be left at the Patent 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 Comptroller may direct, and the original license shall at the same time be produced and left at the Patent Office if required for further verification. 78. 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 obseived as days of public fast or thanksgiving, and days observed as holidays at the Bank of England ; or (&) 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 purj)ose of official use. 79. Certified copies of any entry in the register, or certified copies of, or extracts from, patents, specifications, disclaimers, affidavits, statutory declarations, and other public documents in the Patent Office, or of or from registers and other books kept there, may be furnished by the Comptroller on payment of the prescribed fee. PATENTS RULES, 1890. 499 Power to Dispense with Evidence, &c. 80. 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 shewn to the satisfaction of the Comptroller that from any reasonable cause such person is unable to do such act or thing, or to sign such document, or make such declaration, or that such document or evidence cannot be produced or left as aforesaid, it shall be lawful for the Comptroller, with the sanction of the Board of Trade, and upon the production of such other evidence, and subject to such terms as they may think fit, to dispense with any such act or thing, document, declaration, or evidence. Pepeal. 81. All general rules heretofore made by the Board of Repeal. Trade under the Patents, Designs, and Trade Marks Acts, 1883 to 1888, and in force on the 31st day of March, 1890, shall be and they are hereby repealed as from that date, without prejudice, nevertheless, to anything done under such rules, or to any application then pending. Dated the 31st day of March, 1890. M. E. HICKS-BEACH, President of the Board of Trade. The First Schedule of fees is now repealed and a new scale is provided by the rules of 1892. The Second Schedule contains the official forms hereinafter set out. ( 500 ) ante, p. 255. RULES REGULATING THE PRACTICE AND PRO- CEDURE ON APPEALS TO THE LAW OFFICERS. ., a (Made by Virtue of sect. 38 Patents Act, 1883.) ante, p. 456. V ' J I. When any person intends to appeal to the law officer from a decision of the Comptroller in any case in which such appeal is given by the Acts, he shall within 14 days from the date of the decision appealed against file in the Patent Office a notice of such his intention. II. Such notice shall state the nature of the decision appealed against, and whether the appeal is from the whole, or part only, and if so, what part of such decision. III. A copy of such notice of intention to appeal shall be sent by the party so intending to appeal to the law officers' clerk, at room 549, Royal Courts of Justice, London ; and when there has been an opposition before the Comp- troller, to the opponent or opponents ; and when the Comptroller has refused to seal a patent on the ground that a previous application for a patent for the same invention is pending, to the prior applicant. IV. Upon notice of appeal being filed, the Comptroller shall forthwith transmit to the law 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 leave 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. LAW OFFICERS' RULES. 501 VII. Such notice shall in all cases be given to the Comp- troller and the appellant; and, when there has been an opposition before the Comptroller, to the opponent or opponents ; and, when the Comptroller has refused to seal a patent on the ground that an application for a patent for the same invention is pending, to the prior applicant. VIII. The evidence used on appeal to the law officer shall be the same as that used at the hearing before the Comp- troller ; 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: Be Thwaite, 1892, 9 R. P. C. 515. IX. The law officer shall, at the request of either party, order the attendance at the hearing on appeal, for the purpose of being cross-examined, of any person, who has made a declaration, in the matter to which the appeal relates, unless in the opinion of the law officer there is good ground for not making such order. X. Any person requiring the attendance of a witness for cross-examination shall tender to the witness whose atten- dance is required a reasonable sum for conduct money. XI. Where the law officer orders that costs shall be paid by any party to another, he may fix the amount of such costs, and if he shall not think fit to fix the amount thereof, he shall direct by whom and in what manner the amount of such costs shall be ascertained. XII. If any costs so ordered to be paid be not paid within four- teen days after the amount thereof has been so fixed or ascer- tained, or such shorter period as shall be directed by the law officer, the party to whom such costs are to be paid may apply to the law officer for an order for payment under the provisions of Section 38 of the Act. XIII. All documentary evidence required, or allowed by the law officer to be filed, shall be subject to the same regulations, in all respects, as apply to the procedure before the Comptroller, and shall bo filed in the Patent Office, unless the law officer shall order to the contrary. 2 r, 502 APPENDIX. XIV. Any notice or other document required to be given to the law officers' clerk, under these rules, maybe sent by a prepaid letter through the post. HENEY JAMES, A.G. FAEEEE HEESCHELL, S.G. ( 503 ) THE PATENTS RULES, 1892 (First Set). By virtue of the Patents, Designs, and Trade Marks As to powers to Acts, 1883 to 1888, the Board of Trade do hereby make the ™66. ve '' following Rules : — 1. These Rules may be cited as the Patents Rules, 1892. 2. These Rules shall come into operation from and im- mediately after the 1st of March, 1892. Fees. 3. To the Fees specified in the First Schedule to the Patents Rules, 1890, shall be added the Feo specified in the First Schedule hereto. Forms. 4. To the Forms specified in the Second Schedule to the Patents Rules, 1890, shall be added the Form specified in the Second Schedule hereto. (Signed) M. E. HICKS-BEACH, President of the Board of Trade. 19th day of February, 1892. FIRST SCHEDULE. Pee. 33a On Postal Request for printed copy Specification . £0 (Signed) M. E. Hicks-Beach, Approved — President of the Board of Trade. (Signed) W. H. Walrond, Herbert Eustace Maxwell, Lords Commissioners of Her Majesty's Treasury. lQth February, 1892. 2 L 2 504 APPENDIX. SECOND SCHEDULE. Form. to PATENTS FORM C 1 . To the Comptroller-General. Please send one copy of Specification, No Year. {Name in full) ( A ddress) Patents, lid. n* The Comptroller- General, Patent Office, 25, Southampton Buildings, London, W.C. (Signed) M. E. Hicks-Beach, President of the Board of Trade. PATENTS EULES, 1892 {Second Set). By virtue of the provisions of the Patents, Designs, and Trade Marks Acts, 1883 to 1888, the Board of Trade do hereby make the following Bules : — Short Title. 1. These Bules may he cited as the Patents Enles, 1892, (Second Set). PATENTS RULES, 1892. 505 Commencement. 2. These Eules shall come into operation from and im- mediately after the 30th day of September, 1892. Certificates of Payment or Renewal. 3. Eules 45, 46, and 47 of the Patents Eules, 1890, are hereby repealed. Payment of Annual Fees for Continuance of Patent. T^'w™' 2 "°' 4. If a patentee intends at the expiration of the fourth year from the date of his patent to keep the same in force, he shall, before the expiration of the fourth and each succeeding year during the term of the patent, pay the prescribed fee. The patentee may pay the whole or any portion of the aggregate of such prescribed annual fees in advance. The form J in the Second Schedule, duly stamped, should be used for the purpose of this payment. Fees. 5. For the Fees specified in the First Schedule to the Patents Eules, 1890, shall be substituted the Fees specified in the Schedule hereto. SCHEDULE. List of fees payable on and in connexion with Letters Patent. n.r— a fuller - J list i if fees is t, . c< t given in tin- 1'. O. Up to Sealing. Circular, post, p. £ s. d. £ s. d. 1. On application for provisional protection .10 2. On filing complete specification. . .300 4 or 3. On filing complete specification with first application . 4 4. On appeal from Comptroller to Law Officer. By appellant. . . . . . . .300 5. On notice of opposition to grant of patent. By opponent. . . . . . . . 10 54G. £ s. d. 1 1 10 3 10 506 APPENDIX 6. On hearing by Comptroller. By applicant and by opponent respectively ..... On application to amend specification : — 7. Up to sealing. By applicant ..... 8. After sealing. By patentee ..... 9. On notice of opposition to amendment. By opponent 10. On hearing by Comptroller. By applicant and by opponent respectively . . . . .10 11. On application to amend specification during action or proceeding. By patentee . . . .300 12. On application to the Board of Trade for a compulsory license. By person applying . . . .500 13. On opposition to grant of compulsory license. By patentee . . . . . . . .500 On Ctrtificate of Renewal. 11. Before the expiration of the 4th year from the date of the patent, and in respect of the 5th year . .500 15. Before the expiration of the 5th year from the date of the patent, and in respect of the 6th year . .600 16. Before the expiration of the 6th year from the date of the patent, and in respect of the 7th year . .700 17. Before the expiration of the 7th year from the date of the patent, and in respect of the 8th year . .800 18. Before the expiration of the 8th year from the date of the patent, and in respect of the 9th year . .900 19. Before the expiration of the 9th year from the date of the patent, and in respect of the 10th year . 10 20. Before the expiration of the 10th y r ear from the date of the patent, and in respect of the 11th year . .110 21. Before the expiration of the 11th year from the date of the patent, and in respect of the 12th year . 12 22. Before the expiration of the 12th year from the date of the patent, and in respect of the 13th year . 13 23. Before the expiration of the 13th year from the date of the patent, and in respect of the 14th year . . 14 On Enlargement of Time for Payment of Renewal Fees. 24. Not exceeding 1 month ...... 1 25. „ „ 2 months ..... 3 26. „ „ 3 months ..... 5 27. Fur every entry of an assignment, transmission, agree- ment, license, or extension of patent 10 28. For duplicate of Letters Patent . . . each 2 £ s. d. 10 1 4 1 5 1 5 5 2 4 6 SCHEDULE OF FEES. 507 29. On notice to Comptroller of intended exhibition of a patent under Section 39 30. Search or inspection fee . . . . . each 31. For office copies .... every 100 words (but never less than one shilling.) 32. For office copies of drawings. Cost according to agreement ....... 33. For certifying office copies, MSS. or printed* each 34. On request to Comptroller to correct a ( up to sealing clerical error .... (after sealing 35. For certificate of Comptroller under Section 96 . 36. For altering address in Register .... 37. For enlargement of time for filing complete specifica- tion. Not exceeding one month. . . .200 38. For enlargement of time for acceptance of complete specification : — .Not exceeding 1 month .... „ 2 months. „ > 3 months. M. E. Hicks-Beach, President of the Board of Trade, teh July, 1892. (Approved) Sidney Herbert, Herbert Eustace Maxwell, Lords Commissioners of Her Majesty's Treasury. * Notice inserted in Patents Journal, Feb. 24, 1892. NOTICE. Certified copies of Registers kept in the Patent Office and of Statu- tory Declarations, Assignments, and other stamped legal documents filed in the Patent Office will in future be required to bear a Stamp Duty of One Shilling under the Stamp Act, in addition to the Office Fee of One Shilling under the Patents, &c, Act. Stamped forms for this purpose will be obtainable at the Patent Office. H. Reader Lack, ComjArvlhr. ( 508 ) PATENT £1. OFFICIAL FOEMS UNDER THE PATENTS RULES, 1890. (For index to Forms see Table of Contents. As tc purchase of them, see post p. 546.) SECOND SCHEDULE. PATENTS, DESIGNS, AND TRADE MARKS ACTS, 1883 to 1888. ante, p. 239. Form A. (Rule 5.) To be accompanied by two copies of Form B or of Form C. APPLICATION FOR PATENT. (a) Here insert name and full address and call- ing of applicant or applicants. (a). declare that. (6) Here insert w hich is (b) title of invention. x do hereby .in possession of an invention the tide of (c) In the case that (c) of more than one applicant, state _the true and first inventor. thereof; and that ■whether all, or if , . •■ ,, ., n not, who is or are tne same is not in use by any other person or persons to the best of —knowledge and belief; and humbly pray that a the inventor or inventors Patent may be granted to_ Dated— -for the said invention. day of .18, (d) To be signed by applicant or applicants. In the case of a Firm, each member of the Firm must feign. 00- OFFICIAL FORMS. 509 Note. — Whore application is made through an Agent (Rule 8), the authorization on the back (if used) should be signed by the applicant or applicants. To the Comptroller, Patent Office, 25, Southampton Buildings, Chancery Lane, London, W.C. For the convenience of applicants, suggested forms of authoriza- tion to an Agent and statement of address respectively are printed below. (1.) Where application is made through an Agent (Rule 8). __ hereby appoint . oL * To be signed by applicant or applicants. to act as Agent in res] ect of the within application for a Patent, and recpuest that all notices, requisitions, and communica- tions relating thereto may be sent to such agent at the above address. day of 18 (2.) II 'Acre application is made without an Agent {Fade 9). hereby request that all notices, requisitions, and communications in respect of the within application may be sent to a t day of — 18 + To be signed by applicant or applicants. TATENT £1. 510 APPENDIX. PATENTS, DESIGNS, AND TRADE MARKS ACTS, 1883 to 1888. Form A 1. (Rule 5.) To be accompanied by two copies of Form B or of Form C. a»fe, pp. 232, APPLICATION FOR PATENT FOR INVENTIONS 488 - COMMUNICATED FROM ABROAD. (a) Here insert I (fl) name and full - j n ^] ie address and call- 01 — ing of applicant. county f do hereby declare that I (5) Here insert am in possession of an invention the title of which is (b) . title of invention. (c) Here insert which invention has been communicated to me by (c). name, addres and calling of communicant. (d) To be signed by applicant or applicants. that I claim to be the true and first inventor thereof ; and that the same is not in use within the United Kingdom of Great Britain and Ireland and the Isle of Man by any other persou or persons to the best of my knowledge and belief; and I humbly pray that a Patent may be granted to me for the said invention. Dated day of 18 (cQ ante, p. 484. Note. — Where application is made through an Agent (Rule 8) the authorization on the back (if used) should be signed by the applicant or applicants. To the Comptroller, Patent Office, 25, Southampton Buildings, (JhawxYtj Lane, Loudon, W.C. OFFICIAL FOB MS. 511 For the convenience of applicants, suggested forms of authoriza- tion to an agent and statement of addrebS respectively are printed below. (1.) Where application is made through an Agent {Rule 8). hereby appoint — of ■ to act as Agent in respect of the within application for a Patent, and request that all notices, requisitions, and communica- tions relating thereto may be sent to such Agent at the above address. day of — 18- * To be signed by applicant or applicants. (2.) Where application is mxdc without an Agent (Rule 9). hereby request tliat all notices, requisitions, and communications in respect of the within application may be sent to at _day of 18. f To be EiEned by applicant or applicants. 512 APPENDIX. PATENT £1. ante, pp. 432, 469, 488. PATENTS, DESIGNS, AND TRADE MARKS ACTS, 1883 to 1888. Form A 2. (Rule 26.) APPLICATION FOR PATENT UNDER INTERNATIONAL AND COLONIAL ARRANGEMENTS. (a) Here insert name ami lull address and tail- ing of applicant, or of each of the applicants. (a) do hereby declare tbat I (or we) have made foreign applications for (6) Here insert protection of my (or our) invention of (b) title of invention. (c) Here insert the names of each Foreign State followed by the official date of the application in each respec- tively. in the following Foreign States and on the following official dates, viz : (c) and in the following British Possessions and on the following official (a!) Here insert dates, VIZ : (d) tlie names of each British Posses- sion followed by the official date of the application in each respec- tively. That the said invention was not in use within the United Kingdom of Great Britain and Ireland and the Isle of Man by any other person (e) Here insert or persons before the (e) the official date pf the earliest foreign applica- OFFICIAL FORMS. 513 to the best of knowledge, information, and belief, and _ humbly pray that a Patent may be granted to p or the said inven- tion in priority to other applicants, and that such Patent shall have (/) Here insert the date (/) the official date of the earliest foreign applica- tion. (flO Signature of applicant or of cadi of appli- cants. (9)- To the Comptroller, Patent Office, 25, Southampton Buildimjs, Chancery Lane, London, W.C. [No stamp needed.] To be issued with Form A, Al or A2. PATENTS, DESIGNS, AND TEADE MARKS ACTS, 1883 to 1888. Form B. (Rule 5.) ante, pp. 1G8- 177. PROVISIONAL SPECIFICATION. (To be furnished in Duplicate.) (a) Hero insert (a). title as in declara- tion. (f<) Here insert name ami full address and call- ing (il applicant or applicants as in declaration. 0) 514 APPENDIX. (c-) Here insert do hereby declare the nature of this invention to be as follows : — (c) short description of invention. _ — Note. — No stamp is required on this document, which must form the commencement of the Provisional Specification ; the continuation to be upon wide-ruled foolscap paper (but on one side only) with a margin of two inches on left hand of paper. The Provisional Specifica- tion and the "Duplicate" thereof must be signed by the applicant, or his agent, on the last sheet, the date being first inserted as follows : " Dated this day of 18—." To the Comptroller, Patent Office, 25, Southampton Buildings, Chancery Lane, London, W.C. OFFICIAL FORMS. 515 PATENT £3. PATENTS, DESIGNS, AND TEADE MARKS ACTS, 1883 to 1888. Where Provisional Specifi- cation has been left, quote No. and date. No - Date- Form C. (Rule 5.) ante, pp. 178-194. (o) Here insert , ,. title as in declara- {&) COMPLETE SPECIFICATION. (To be furnished in Duplicate — one unstamped.) (b) Here insert name and lull address and call- ing of applicant or applicants as in declaration. (&)- (c) Here insert i hereby declare the nature of this invention and in what manner full description "J of invention, the same is to be performed, to be particularly described and ascer- Zith (Tdiitfoct tained in and by the following statement : statement of claim or claims, in the following form : — "Having now particularly de- scribed and ascertained the nature of my said invention, and in what manner the same is to be per- formed, I declare that what I claim is Here 1. state 2. distinctly 3. the features of novelty claimed. (•)- ante, pp. 2J6-257 516 APPENDIX. Note. — This document must form the commencement of the Com- plete Specification ; the continuation to he upon wide-ruled foolscap paper (but on one side only) with a margin of two inches on left hand of paper. The Complete Specification and the " Duplicate " thereof must he signed by the applicant, or his agent, on the last sheet, the date being; first inserted as follows : Dated this. _day oL _18- To the Comptroller, Patent Office, 25, South •irn-pton Buildings, Chancery Lane, London, W.C. PATENTS, DESIGNS, AND TEADE MARKS ACTS, 1883 to 1888. Form D. FORM OF OPPOSITION TO GRANT OF PATENT. (Rule 34, et seq.) (To be accompanied by an unstamped copy.) * Here state I- name ami full address. hereby give notice of my intention to oppose the grant of Letters Patent upon application No of , applied for by_ OFFICIAL FORMS. 517 t Here state upon the ground f- upon which of the grounds of opposiiion per- mitted by section 11 of the Act the grant is opposed. J Here insert signature of op- ponent. (Signed) % To the Comptroller, Patent Office, 25, Southampton Buildings, Chancery Lane, London, W.C. PATENT £1. ante, p. 465. PATENTS, DESIGNS, AND TRADE MARKS ACTS, 1883 to 1888. Form E. (Rule 12.) FORM OF APPLICATION FOR HEARING BY THE COMPTROLLER. In Cases of Refusal to Accept, Opposition, or Applications for Amendments, &c. (a) Here insert address. Sir, -" 1 (") 2 M 518 APPENDIX. hereby apply to be heard in reference to and request that I may receive d'ie notice of the day fixed for the hearins. Sir, Your obedient Servant, To the Comptroller, Patent Office, 25, Southampton Buildings, Chancery Lane, London, W.C. PATENT £1 10s. £3. The fee stamp is £1 10s. by an applicant and £3 by a patentee. ante, p. 215. * Here state name and full address of appli- cant or patentee. PATENTS, DESIGNS, AND TRADE MAKES ACTS, 1883 to 1888. Form F. (Rule 52, et seq.) FORM OF APPLICATION FOR AMENDMENT OF SPECIFICATION OR DRAWINGS. OFFICIAL FORMS. 519 seek leave to amend the specification of Letters Patent No. _ of 188 , as shown in red ink in the copy of the original specification hereunto annexed . + Here state reasons tor seek- ing anieiiilm> at ; and where the applicant is not the patentee, state what in- terest he pos- sesses in the letters patent. X To be signed by applicant. My reasons for making this amendment are as followsf„ (Signed) %. To the Comptroller, Patent Office, 25, Southampton Buildings, Chancery Lane, London, W.C. PATENT 10s. ante, p. 216. * Here Btate name and full address if oppo- nent. PATENTS, DESIGNS, AND TRADE MARKS ACTS, 1883 to 1888. Form G. (Rule 53.) FORM OF OPPOSITION TO AMENDMENT OF SPECIFICATION OE DBAWINGS. (To be accompanied by an unstamped copy.) 2 m 2 520 APPENDIX. hereby give notice of objection to the proposed amendment of the specification or drawings of Letters Patent No of 188 for + Here state the following reason :f. reason of opposi- tion. (Signed), PATENT £5. ante, p. 290. To the Comptroller, Patent Office, 25, Southampton Buildings, Chancery Lane, London, W.C. PATENTS, DESIGNS, AND TEADE MAEKS ACTS, 1883 to 1888. Form H. (Rule 60.) FORM OF APPLICATION FOR COMPULSORY GRANT OF LICENSE. (To be accompanied by an unstamped copy.) * * Here state name and full address of nppli- cant. hereby request you to bring to the notice of the Board of Trade f Here state the accompanying petition for the grant of a license to me byt name and address of patentee, and ___^_ number and date of his patent. (Signed) OFFICIAL FORMS. 521 Note. — The petition must clearly set forth tlie facts of the case and be accompanied by an examined copy thereof. See form below. To the Comptroller, Patent Office, 25, Southampton Buildings, Chancery Lane, London, W.C. ante, p. 290. (a) Here insert name, full ad- dress, and de- scription. (b) Here insert title of invention. (c) Here state fully the nature of petitioner's interest. (d) Here state in detail the cir- cumstances 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 rea- sonable. The paragraphs should be num bered consecu- tively. (e) Here state the ground or grounds on which relief is claimed in • the language of section 22 sub- sections (a), ('>), (c), as the case may he. PATENTS, DESIGNS, AND TEADE MAKES ACTS, 1883 to 1888. Form H 1. (Rule 60.) FORM OF PETITION FOR COMPULSORY GRANT OF LICENSES. To the Lords of the Committee of Privy Council for Trade. The petition of (a) of in the county of > being a person interested in the matter of this petition as hereinafter described : — Sheweth as follows : — 1. A patent dated No. was 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) 522 APPENDIX. (/") Here state the purport and effect ol the pro- [i ised order and the terms as to the amount of royalties security for payment, or otherwise, upon which the peti- tioner claims to be entitled to the relief in question. 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. PATENT £5. PATENTS, DESIGNS, AND TEADE MAEKS ACTS, 1883 to 1888. Form I. (Rule 64.) ante, p. 290 * Here state * name and full address. FORM OF OPPOSITION TO COMPULSORY GRANT OF LICENSE. hereby give notice of objection to the application of- fer the compulsory grant of a License under Patent No. oi 188 . (Signed) To the Comptroller, Patent Office, 25, Southampton Buildings, Chancery Lane, London, W.C. OFFICIAL FORMS. 523 PATENTS, DESIGNS, AND TRADE MARKS &CTS, 1883 to 1888. Form J. (Rule 48.) ante, pp. 451,493, 505. APPLICATION FOR CERTIFICATE OF PAYMENT OR RENEWAL. hereby transmit the fee prescribed for the continuation in * Here insert force of * Patent No. , of 18 — for a name of patentee. ,, , . , - further period oi . f Here insert name and full address. Name f_ Address. To the Comptroller, Patent Office, 25, Southampton Buildings, Chancery Lane London, W.C. PATENT. (This part of the Form to be filled in at the Patent Office.) CERTIFICATE OF PAYMENT OR RENEWAL. Letters Patent No of 188 .18. _did this. This is to certify that day of 18 , make the prescribed payment of £- in respect of a period of_ _from_ and that by virtue of such payment the rights of the patentee remain in * See section 1 1 force. * of the Patents, Designs, and Trade Marks Act, 1883. Patent Office, London. 524 APPENDIX. PATENT. PATENTS, DESIGNS, AND TEADE MAEKS ACTS, 1883 to 1888. Form K. (Rule 50.) FORM OF APPLICATION FOR ENLARGEMENT OF TIME FOR PAYMENT OF RENEWAL FEE. The stamp here js dependent on the length of enlargement asked fur o„„ blR, ante, p. 270 . j hereby apply for an enlargement of time for_ in which to make the '. payment of £ my Patent, No of 188 . The circumstances in which the payment was omitted are as (a) See Rule 49. follows (a) I— .month upon which receipt is to be sent. I am, Sir, Your obedient Servant, (6) Here insert (bY full address to To the Comptroller, Patent Office, 25, Southampton Buildings, Chancery Lane, London, W.C. PATENT 10s. ante, p. 262. (a) Or We. Here insert name, full ad- dress, and de- scription. PATENTS, DESIGNS, AND TEADE MAEKS ACTS, 1883 to 1888. Form L. (Rule 68.) FORM OF REQUEST TO ENTER NAME UPON THE REGISTER OF PATENTS. 1(a). OFFICIAL FORMS. 525 (M My or our. hereby request that you will enter (6) name (c) in the Register (C) or names. - _ v/ v/ ° ,« , ol Patents : — ((<) J or we. (d) claim to be entitled (e) . ( N 2 536 APPENDIX. Eegister any alteration which may come to his knowledge in the name or address of any person registered. 11. The Eegistrar shall erase from the Eegister the name of any registered person who is dead. 12. The Eegistrar may erase from the Eegister the name of any registered person who has ceased to practise as a patent agent, hut not (save as hereinafter provided) without the consent of that person. For the purposes of this Eule the Eegistrar may send by post to a registered person to his registered address a notice inquiring whether or not he has ceased to practise or has changed his residence, and if the Eegistrar does not within three months after sending the notice receive an answer thereto from the said person, he may, within fourteen days after the expiration of the three months, send him by post to his registered address another notice referring to the first notice, and stating that no answer has been received by the Eegistrar; and if the Eegistrar either before the second notice is sent receives the first notice back from the Dead Letter Office of the Postmaster- General, or receives the second notice back from that office, or does not within three months after sending the second notice receive any answer thereto from the said person, that person shall, for the purposes of this Eule, be deemed to have ceased to practise, and his name may be erased accordingly. 1 3. If any registered person shall not, within one month from the day on which his annual registration fee becomes payable, pay such fee, the Eegistrar may send to such registered person to his registered address a notice requiring him, on or before a day to be named in the notice, to pay his ante p 236 annual registration fee ; and if such registered patent agent shall not within one month from the day named in such notice pay the registration fee so due from him, the Eegistrar may erase his name from the Eegister: Provided that the name of a person erased from the Eegister under this Eule may be restored to the Eegister by direction of the Institute or the Board of Trade on payment by such person of the fee or fees duo from him, together with such further sum of money, not exceeding in amount the annual registration fee, PATENT AGENTS' RULES, 1889. 537 as the Institute or the Board of Trade (as the case may be) may in each particular case direct. 14. In the execution of his duties the Registrar shall, subject to these Rules, in each case act on such evidence as appears to him sufficient. 15. The Board of Trade may order the Registrar to erase from the Register any entry therein which is proved to their satisfaction to have been incorrectly or fraudulently inserted. 16. If any registered person shall be convicted in Her Majesty's dominions or elsewhere of an offence which, if committed in England, would be a felony or misdemeanour, or after due inquiry is proved to the satisfaction of the Board of Trade to have been guilty of disgraceful professional conduct, or having been entitled to practise as a solicitor or law agent shall have ceased to be so entitled, the Board of Trade may order the Registrar to erase from the Register the name of such person. Provided that no person shall be adjudged by the Board of Trade to have been guilty of disgraceful professional conduct unless such person has received notice of, and had an opportunity of defending himself from, any charge brought against him. 17. (1.) Where the Board of Trade direct the erasure from the Register of a name of any person, or of any other entry, the name of the person or the entry shall not be again entered in the Register, except by order of the Board of Trade. (2.) The Board of Trade may in any case in which they think fit restore to the Register any name or entry erased therefrom either without fee, or on payment of such fee, not exceeding the registration fee, as the Board of Trade may from time to time fix, and the Registrar shall restore the name accordingly. (3.) The name of any person erased from the Register at the request or with the consent of such person shall, unless it might, if not so erased, have been erased by order of the Board of Trade, be restored to the Register by the Registrar on his application and on payment of such fee, not exceeding the registration feo, as the Institute shall froin time to time fix. 538 APPENDIX. 18. For the purpose of exercising in any case the powers of erasing from and of restoring to the Eegister the name of a person, or an entry, the Board of Trade may appoint a committee consisting of such persons as they shall think fit. Every application to the Board of Trade for the erasure from, or restoration to, Ithe Eegister of the name of any patent agent shall he referred for hearing and inquiry to the committee, who shall report thereon to the Board of Trade, and a report of the committee shall be conclusive as to the facts for the purpose of the exercise of the said powers by the Board of Trade. 19. Any person aggrieved by any order, direction, or refusal of the Institute or Kegistrar may appeal to the Board of Trade. 20. A person who intends to appeal to the Board of Trade under these Kules (in these Eules referred to as the appellant) shall, within fourteen days from the date of the making or giving of the order, direction, or refusal complained of, leave at the office of the Institute a notice in writing signed by him of such his intention. 21. The notice of intention to appeal shall be accompanied by a statement in writing of the grounds of the appeal, and of the case of the appellant in support thereof. 22. The appellant shall also immediately after leaving his notice of appeal at the Institute send by post a copy thereof with a copy of the appellant's case in support thereof addressed to the Secretary of the Board of Trade, 7, Whitehall Gardens, London. 23. The Board of Trade may thereupon give such directions (if any) as they may think fit for the purpose of the hearing of the appeal. 24. Seven days' notice, or such shorter notice as the Board of Trade may in any particular case direct, of the time and place appointed for the hearing of the appeal shall be given to the appellant and the Institute and the Eegistrar. 25. The appeal may be heard by the President, a Secretary, or an Assistant Secretary of the Board of Trade, and the PATENT AGENTS' RULES, 1889. 531) decision and order thereon of the President, Secretary, or Assistant Secretary, as the case may be, shall be the de- cision of the Board of Trade on such appeal. On the appeal such decision may be given or order made in reference to the subject-matter of the appeal as the case may require. 26. The fees set forth in Appendix G to these Rules shall be paid in respect of the several matters, and at the times and in the manner therein mentioned. The Board of Trade may from time to time, by orders signed by the Secretary of the Board of Trade, alter any of, or add to, the fees payable under these Rules. 27. Any regulation made by the Institute under these Rules may be altered or revoked by a subsequent regulation. Copies of all regulations made by the Institute under these Rules shall, within twenty-eight days of the date of their being made, be transmitted to the Board of Trade, and if within twenty- eight days after a copy of any regulation has been so transmitted, the Board of Trade by an order signify their disapproval thereof, such regulation shall be of no force or effect; and if, after any regulation under these Rules has come into force, the Board of Trade signify in manner aforesaid their disapproval thereof, such regulation shall immediately cease to be of any force or effect. 28. The Institute shall once every year in the month of December transmit to the Board of Trade a report stating the number of applications for registration which have been made in the preceding year, the nature and results of the final examinations which have been held, and the amount of fees received by the Institute under these Rules, and such other matters in relation to the provisions of these Rules, as the Board of Trade may from time to time, by notice signed by the Secretary of the Board of Trade and addressed to the Institute, require. 29. In these Rules, unless the context otherwise requires — - " The Act " means the Patents, Designs, and Trade Marks Act, 1888. " The Institute" means the Institute of Patent Agents, acting through the Council for the time being. 540 APPENDIX. " The Registrar " means the Registrar appointed under these Rules. " Registered patent agent " means any agent for obtaining patents in the United Kingdom whose name is regis- tered tinder the Act and these Rules. 30. These Rules shall commence and come into operation on the 12th day of June, 1889, but at any time after the making thereof any appointment or regulations may be made and things done for the purpose of bringing these Rules into operation on the said day. 31. These Rules may be cited as the Register of Patent Agents' Rules, 1889. By the Board of Trade, COURTENAY BOYLE, Assistant Secretary, Railway Department. The 11th day of June, 1889. Institute of Patent Agents. Notice is hereby given that, in accordance with Rule 3 of the above-named Rules, the Register of Patent Agents for the year 1889 has been printed under the direction of the Institute of Patent Agents, and published and placed on sale at the Offices of the Institute, 19, Southampton Buildings, London, W.C. Price One Shilling. H. Howgrave Graham, Secretary. December 13ih, 1889. Chartered Institute of Patent Agents. Her Majesty has been graciously pleased to cause Letters Patent to be issued, granting a Charter for the incorporation of the Institute of Patent Agents, under the style of " The Chartered Institute of Patent Agents." The objects of the Chartered Institute are similar to those for which the Institute of Patent Agents was formed in 1882, namely, the promotion of the education, status, and training PATENT OFFICE CIRCULAR, 1892. 541 of Patent Agents, and the maintenance of a high standard of professional conduct on the part of the Members of the Institute. The said Charter provides that Fellows of the Institute may use, after their names, the designation " Chartered Patent Agent," or the initials " C. P. A.," being an abbre- viation of the same. H. Eeader Lack, Comptroller. August 26th, 1891. CIRCULAR OF INFORMATION OF THE PATENT OFFICE. The following circular is kept in print at the Patent Office and supplied to those about to take out patents. It has not the force of the Patent Office Rules, and is only used for the information of those about to take out patents : — Circular. 1. Mode of proceeding to obtain Patents for Inventions in the ante, p. 237. United Kingdom. — (i.) All applications and com- munications must be made in English. No models are required. (ii.) Any person, whether a British subject or not, may make an application for a patent, either by direct communication with the office or through the intervention of an agent. (See page 553, para- graph 16.) Two or more persons may make a joint application for a patent, and a patent may be granted to them jointly. In every case the true and first inventor (or inventors) must be a party (or parties) to the application. A company may apply for a patent as joint applicant with the inventor, but not as solo applicant, unless the application is made in respect of an invention communicated from abroad (Form A 1 ), or under the International and 542 APPENDIX. Colonial arrangements (Form A 2 ). The application should be signed by the secretary or other principal officer, who should add after his signature the words " For the Com- pany." A firm as such cannot apply for a patent, but a joint application may be made by all the individual members of the firm,. The declaration on Form A (or A 1 or A 2 ) must be signed by the applicant or applicants ; but all other communications may be made by or through agents duly authorised to the satisfaction of the Comptroller. For applications under the International and Colonial arrangement (see page 555, para- graph 22). (iii.) Applications may be left at the Patent Office by hand, or sent by post, addressed to the Comptroller, Patent Office, 25, Southampton Buildings, Chancery Lane, London, W.C. (iv.) Every application must be accompanied by a state- ment of an address to which all communications from the Patent Office may be sent. (v.) Application for a patent may be made in one of two ways : — (a) The applicant may apply in the first instance for provisional protection, and at any later period within nine months may leave his complete specification, or (b) the applicant may leave his complete specification at the time of making his application, in which case a provisional specifica- tion will be unnecessary. Application accompanied by Provisional Specification. (vi.) An application for provisional protection consists of— (a.) The Application Form A or (for inventions communicated from abroad) A 1 , or (for applica- tions under the International and Colonial arrangements) A 2 , stamped 11., duly filled in as directed by the marginal notes on the form, and signed by the applicant or applicants. PATENT OFFICE CIRCULAR, 1892. 543 (b.) The provisional specification, Form B, in dupli- cate. Form B does not require to be stamped. (vii.) The provisional specification must fairly describe the nature of the invention and be accompanied by drawings if required. See (xii.) below for regula- tions as to drawings. The applicant should in this document give a clear description of the inven- tion, but he need not enter into all the minute details as to the manner in which the invention is to be carried out. (viii.) Unless a complete specification is left within nine months from the date of application (or with ex- tension fee (Form U), ten months), the application is deemed to be abandoned. The complete specifica- tion should be prepared as stated at (x.) below. It should refer to the number and date of the provisional specification, and should contain a full and detailed description of the invention, indepen- dent of the description given in the provisional specification. Drawings which may have been filed with the provisional specification may be used again with the complete specification, if they are considered suitable. Where this is done the drawings should be referred to in the complete specification as those "filed with my provisional specification." Application accompanied by Complete Specification. (ix.) An application accompanied by complete specifica- tion consists of — (a.) The Application Form A or (for inventions communicated from abroad) A 1 , or (for applica- tions under the International and Colonial arrangements) A' 2 , stamped \l, duly filled in, as directed by the marginal notes on the form, and signed by the applicant or applicants. (b.) The complete specification, Form C, stamped oL, and unstamped duplicate. 544 APPENDIX. (x.) The complete specification must be begun upon Form C (bearing a 31. stamp) and continued, if necessary, on foolscap paper. The duplicate must be an exact copy, but unstamped. The specifica- tion should contain a full and detailed description of the invention, of such a nature that the invention could be carried into practical effect by a competent workman from the directions of the document alone. ante, p. 195. Jt is necessary to make a distinct and proper statement of claims in the complete specification, and inventors should be careful that their claims include neither more nor less than they desire to protect by their patent. Claims are not intended to be made for the efficiency or advantages of the invention. In the statement of claims only the actual processes or apparatus (or improvements therein) should be stated which are considered by the inventor to be new. See (xii.) below for regulations as to drawings. Specifications and other Documents. (xi.) The specifications and all other documents must be written or printed in large and legible characters upon strong wide-ruled foolscap paper measuring 13 by 8 inches (on one side only), leaving a margin of two inches on the left-hand ; and the signatures of the applicants or agents thereto must be written in a large and legible hand, and the several sheets should be fastened together at the top left-hand corner. Drawings. ante, p. 201. ( x ii-) The provisional or complete specification need not be accompanied by drawings if the specification sufficiently describes the invention without them, but if furnished, they should accompany the pro- visional or complete specification to which they refer. No drawing or sketch such as requires a PATEN1 OFFICE CIRCULAR, 1892. 545 special engraving for letterpress should appear in. the specification itself. Where drawings accompany the specification, they must be delivered at the Patent Office either in a flat state or on rollers so as to be free from folds, breaks, or creases. They must be made on pure white, hot-pressed, rolled, or calendered drawing-paper of smooth surface and good quality, and where possible without colour or Indian-ink washes. They must be on sheets of one of the two following sizes (the smaller being preferable), 13 inches at the sides by 8 inches at the top and bottom, or 13 inches at the sides by 16 inches at the top and bottom, including margin, which must be half an inch wide. If there are more figures than can be shown on one of the smaller-sized sheets two or more of these sheets should be used in preference to employing the larger size. When an exceptionally large drawing is required, it should be continued on subsequent sheets. There is no limit to the number of sheets that may be sent in. To ensure their satisfactory reproduction, the drawings must be executed with absolutely blade Indian ink ; the same strength and colour of fine and shade lines to be maintained throughout. Section lines and lines for effect, or shading lines, must not be closely drawn. Eeference figures and letters must be bold, distinct, and not less than one-eighth of an inch in height; and the same letters should be used in different views of the same parts. In cases of complicated drawings, the reference letters must be shown outside the figure, and connected with the part referred to by a fine line. The scale adopted should be large enough to show clearly 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. Drawings must bear the name of the applicant (and in the case of drawings left with a complete specification after a provisional specification, the number and year of the applica- tion) in the left-hand top corner; the number of sheets of 546 APPENDIX. 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. A facsimile of the original drawings, but without colour or Indian-ink washes, and prepared strictly in accordance with the regulations prescribed above, must accompany the originals, and be marked " true copy." If an applicant desires to adopt the drawings lodged with his provisional specification as the drawings for his complete specification, he should refer to them as those " left with the provisional specification." ante, p. 508. 2. Forms of Application and other Patent Forms. — (i.) Forms are not supplied by the Patent Office, but can be purchased at the Inland Eevenue Office, Eoyal Courts of Justice (Eoom No. 6), or they can be obtained at a few days' notice through any Money Order Office in the United Kingdom upon prepayment of the value of the stamp. Neither the Inland Eevenue Department nor the Post Office being authorised to furnish Patent Forms upon written application, persons resident abroad should order such forms as they require through a correspondent in England. £ s. d. Form A. Application for patent . . . . .10 M A 1 . „ „ for invention communi- cated from abroad . . . . .10 „ A 2 . Application for patent under International and Colonial arrangements . . . .10 „ B. Provisional specification .... No fee. „ C. Complete specification . . . . .300 „ C 1 . On postal request for printed copy of specifi- cation 8 „ D. On notice of opposition to grant of patent. By opponent. . . . . . 10 PATENT OFFICE CIRCULAR, 1892. 547 Form E. On hearing by Comptroller. By applicant and by opponent respectively .... „ F. On application to amend specification. Up to sealing ....... On application to amend specification. After sealing ....... „ G. On notice of opposition to amendment. By opponent. ...... „ H. On application to the Board of Trade for a com- pulsory license. ..... „ I. On opposition to grant of compulsory license * „ J. On certificate of payment of renewal fee : — Before the expiration of the 4th year from date of patent, and in respect of the 5th year. .... Before the expiration of the 5th year from date of patent, and in respect of the 6th year. .... Before the expiration of the 6th year from date of patent, and in respect of the 7th year ..... Before the expiration of the 7th year from date of patent, and in respect of the 8th year. .... Before the expiration of the 8th year from date of patent, and in respect of the 9th year ..... Before the expiration of the 9th year from date of patent, and in respect of the 10th year .... Before the expiration of the 10th year from date of patent, and in respect of the 11th year .... Before the expiration of the 11th year from date of patent, and in respect of the 12th year .... Before the expiration of the 12th year from date of patent, and in respect of the 13th year .... Before the expiration of the 13th year from date of patent, and in respect of the 14th year .... * Form K. On enlargement of time for payment of renewal fees. Not exceeding 1 month On enlargement of time for payment of renewal fees. Not exceeding 2 months On enlargement of time for payment of renewal fees. Not exceeding 3 months „ L. For every entry of an assignment, transmission, or agreement ...... „ M. For every entry of a license .... „• S. For every entry of an extension of patent £ s. d. 10 I 10 3 10 • 5 5 5 6 7 8 9 10 II 12 13 14 10 3 5 10 10 10 * The scale of fees given above applies only in those eases where payment falls due on or after October 1st, 1892. 1 5 5 3 548 APPENDIX. £ s. . Form N. For duplicate of Letters Patent . . .200 „ O. On notice to Comptroller of intended exhibition of unpatented invention . . . 10 „ P. On request to Comptroller to correct a clerical error. Up to sealing . . . .060 On request to Comptroller to correct a clerical error. After sealing .... „ Q/ For certificate of Comptroller „ R. For altering address in register „ T. On appeal from Comptroller to Law Officer „ U. On enlargement of time for filing complete specification. Not exceeding 1 month . 2 „ V. On enlargement of time for acceptance of com- plete specification after 12 months. Not exceeding 1 month . . . . .200 On enlargement of time for acceptance of complete specification after 12 months. Not exceeding 2 months . . . .400 On enlargement of time for acceptance of complete specification after 12 months. Not exceeding 3 months. . . . .600 (ii.) Forms A, B, C, and C 1 are, however, usually kept on sale at the undermentioned places : — The Inland Revenue Office, Eoyal Courts of Justice (Room No. 6). The following Post Offices : — London General Post Office, E.C. Post Office, 226, Commercial Road, E. „ 9, Blackman Street, Borough, S.E. „ Charing Cross, W.C. „ Lombard Street, E.C. „ 28, Eversholt Street, Camden Town, N.W. „ 12, Parliament Street, S.W., and at the follow- ing Chief Post Offices : — _ Barnsley. In England and Barrow . in Wales. Bath< Accrington. Bedford. Altrincham. Beverley. Ash ton -under- Birkenhead, Lyne. Birmingham Blackburn. Burslem. -Fur- Bolton. Burton-on- Trent [ness. Bradford. Bury. Brighton. Cambridge. Bristol. Cardiff. Bromsgrove. Carlisle. i. Burnley. Chatham. PATENT OFFICE CIRCULAR, 1892. 549 Chester. Clitheroe. Congleton. Coventry. Crewe. Croydon. Darlaston. Derby. Dewsbury. Doncaster. Dorchester. Driffield. Droitwich. Dudley. Durham. Exeter. Gateshead. Goole. Greenwich. Guildford. Halifax. Hartlepool. Huddersfield. Hull. Ipswich. Keitdiley. Kendal. Kidderminster. Knaresbro'. Knutsford. Lancaster. Leamington. Leeds. Leicester. Lichfield. Lincoln. Liverpool. Macclesfield. Mancbester. Middlesborough. Nantwich. Newcastle. Newport (Mon.) Northallerton. Northampton. Nottingham. Nuneaton. Oldburv. Oldham. Patrington. Plymouth. Pontefract. Portsmouth. Prescot. Preston. Beading. Redditch. Richmond (Yorks.). Ripon. Rochdale. Rotherham. Rugby. Salford. St. Helens. Scarborough. Sedgeley. Sheffield. Southampton. Stafford. Stalybridge. Stockport. Stoke-on-Trent. Stourbridge. Stourport. Sunderland. Swansea. Tarn worth. Truro. Tunstall. Wakefield. Walsall. Warrington. Wednesbury. West Bromwich. Whitby. Widnes. Wigan. Wolverhampton. Wolverton. Woolwich. Worcester. York. In Scotland Aberdeen. Dumbarton. Dundee. Edinburgh. Glasgow. Greenock. Inverness. Lanark. Leith. Paisley. Perth. Renfrew. In Ireland. Belfast. Cork. Dublin. Dundalk. Gal way. Limerick. Londonderry. Waterford. Wexford. 3. Opposition to the Grant of a Patent. — Under Section 11 of ante, p 246. the Act of 1883, opposition may be made to the grant of a patent at any time within two months from the advertisement in the Illustrated Official Journal of the acceptance of the complete specification, by any person ; on the ground of the applicant having obtained the invention from him, or from a person of whom he is the legal representative ; or on the ground that the invention has been patented in this country on an application of prior date ; or on the ground that the complete specification describes or claims an invention other than that described in the provisional specification and that such other invention forms the subject of an application made by the opponent in the interval between the leaving of the provisional specification and the leaving of the complete specification ; but on no other ground. (See Par. 2, Form D.) 4. Amendment of Specification. — Under Section 18 of tho ante, p. 215. 9 ,, 550 APPENDIX. ante p. 216. Act, a complete specification may be amended by way of dis- claimer, correction, or explanation, bnt no amendment will be allowed that would make the specification as amended claim an invention substantially larger than or substantially different from the invention claimed by the specification as it stood before amendment. A request for leave to amend must be made, and signed, by the applicant, or the registered proprietor of the patent, and must be accompanied by a certified printed copy of the specification shewing clearly in red ink the proposed amendments. A printed copy of any published specification may be obtained from the Patent Office Sale Office, 38, Cursitor Street, Chancery Lane, price 8cL, including inland postage. (See Par. 25.) The fee for certifying the printed copy is Is. Care should be taken to indicate clearly what part of the printed description it is proposed to omit, and at what point interlineations are to be inserted. Additional description which cannot be written upon the printed copy should be written upon a separate sheet and attached to the print. (See Par. 2, Forms F and P.) Note. — Persons proposing to amend their specifications should remember that the proposed amendments are made public and advertised whether the same are allowable or not. This publication might be a bar to the valid patenting of matter disallowed by way of amendment. No amendment of a provisional specification, after acceptance of the same, is allowed under Section 18; but clerical errors therein may be corrected. 5. Payment of Renewal Fees for Continuance of Patent. — Every patent is granted for the term of fourteen years from the date of application, subject to the payment, before the expiration of the fourth and each succeeding year during the term of the patent, of the prescribed fee. The patentee may pay the whole or any portion of the aggregate of such pre- scribed annual fees in advance. Payment must be made by way of Form J duly stamped, which must bo sent to the Patent Office for entry of the payment in the Kegister. The production of Letters Patent PATENT OFFICE CIRCULAR, 1892. 551 at the Patent Office on payment of these fees is not required. (See Par. 2, Form J.) As the payment of these renewal fees is regulated by Act of Parliament, a fee cannot be received a single day after it is due ; but if by accident, mistake, or inadvertence the pay- ment has been omitted, application may be made to the Comptroller, on Patent Form " K," for an extension of time to make such payment, specifying the reason for such omission, but no extension can be allowed beyond three months. (See Par. 2, Form K.) Note. — The scale of fees given above applies only in those cases where payment falls due on or after October 1st, 1892. 6. Enlargement of Time, — Applications for enlargement of time must state in what circumstances and upon what grounds the enlargement is applied for. (See Par. 2, Forms K, U, and V.) 7. Assignments, Licenses, &c— Deeds of assignment of patents, and other documents affecting the proprietorship of patents, licenses to manufacture or use patented inventions, are required by Section 23 of the Act to be entered in the Eegister at the Patent Office. No document can, however, be ante, p. 267. recorded until the patent affected has been actually sealed. Every deed sent for registration must be duly stamped in accordance with the provisions of the Stamp Act, 1891, and must be acompanied by an attested copy written upon fools- cap paper (on one side only) and bearing a Is. impressed stamp, and by the stamped Form of Request. (See Par. 2, Form L and Form M.) 8. Exhibitions of Unpatented Inventions. — Any person may exhibit an unpatented invention at an exhibition certified by the Board of Trade as industrial or international, without prejudice to his subsequent patent rights, provided (a) that he gives the prescribed notice to the Comptroller of his intention so to exhibit it, and (b) that the application for a patent be made within six months from the date of the opening of the exhibition. (See Par. 2, Form 0.) In the case of exhibitions held out of the United Kingdom (Sec. 3 of 2 o 2 552 APPENDIX. Fatents, &c, Act, 1886) no notice of intention to exhibit is required to be given to the Comptroller. 9. Comptroller s Certificate. — Any one wishing to be in- formed as soon as a complete specification is accepted, or an application for amendment is entered, should forward a copy of Form Q with a request for such information. (See Par. 2, Form Q.) 10. Provisional Protection. — Provisional protection entitles an applicant to use and publish his invention without there- by prejudicing his patent rights, but it does not protect him from infringement. The right to sue for infringement does not arise until a patent is sealed, and then only in respect of such infringements as have been committed after the accept- ance and publication of the complete specification. 11. Searches, Office Copies, &c. — Searches cannot be under- taken by the Patent Office, but must be made by the person requiring information, or by his solicitor or agent. (See Par. 25.) The following fees are charged : — „ , For inspection of original documents . . each 10 For office copies, every 100 words (but never less than Is.) 4 For certifying office copies, MS. or printed . each 10 An adilitional stamp duty of one shilling is also charged under the Stamp Act upon certified copies of Registers, or of stamped Itgal documents. For office copies of drawings, cost according to size and character of drawings. 12. Information by Post. — Any person wishing to know whether a particular patent is still in force, or any similar details, may obtain a copy of, or an extract from, the Eegister of Patents, upon stating the number and year of the patent, and forwarding the fee of Is. 13. Date of Printing Specification and Sealing Patent. — Specifications are printed three weeks after the complete specification has been accepted. The patent is usually sealed about ten weeks after the acceptance of the complete specification. 14. Documents not open to Inspection. — The provisional PATENT OFFICE CIRCULAR, 1892. 553 specification (if any) and the complete specification are not open, to public inspection, for searches or for copying, until after the acceptance of the complete specification. The specifications of abandoned or void applications are not printed or open to inspection. 15. Use of the word " Patent." — Any person who represents ante, p. 430. that any article sold by him is a patented article when no patent has been granted for the same shall be liable for every offence on summary conviction to a fine not exceeding five pounds. 16. Advice on Patent Matters, Opinions as to the Merit or Novelty of Inventions, the Infringement or Fraudulent Appropria- tion of Inventions, &c. — The Patent Office does not undertake to give legal advice or opinions on any subject connected with Patent Law, which, like other laws, is left to the interpretation of professional men ; nor does the Patent Office examine specifications or other documents before they are filed. Any solicitor will be able to point out to his client an agent qualified to give advice in patent matters, to make searches for patents or examinations, to determine questions of novelty, to draw up specifications, and to con- duct other business relating to grants of patents. It is left to every person to protect his rights by opposi- tion or otherwise. (See Par. 3.) A patent is granted upon an application, whether the invention be novel or not, which passes the prescribed stages and is unopposed. The Patent Office cannot recommend any particular patent agent for employment by applicants, but a list of Registered Patent Agents may be obtained from Messrs. Eyre and Spottiswoode, East Harding Street, Fleet Street, E.C., and 32, Abingdon Street, Westminster, S.W., or through any bookseller. Price (including postage) Is. Id. 17. Application for Assistance, Reduction of Fees, &c. — It is not within the power of the Comptroller to comply with any of the following requests : — For pecuniary assistance to obtain Patents. „ roduction or remission of any of the fees required by tho Patent Law. 554 APPENDIX. For purchase or acquirement of any interest in patented or other inventions. „ recommendation of any invention for purchase or use by a Government Department or by the public. 18. Mechanical Inventions not protected by Begistration. — As many inventors imagine that mechanical inventions can be protected by registration as designs, it may be stated that improvements in the construction, arrangement, or applica- tion of machinery can only be protected by a patent. 19. Patent Medicines. — Communications with respect to the preparation and supply of Medicine Stamps appropriated to a particular medicine, or as to the liability to Stamp Duty of so-called " Patent Medicines," should be addressed to the Secretary (Stamps and Taxes), Inland Eevenue, Somerset House, W.C. The use of Medicine Stamps does not have the effect of Letters Patent. 20. Full-size Copies of Drawings. — Full size copies of drawings printed by photo-lithography may be obtained at the undermentioned rates : — No. of Copies. Whole sheets Imperial. Half sheets Imperial. Foolscap Size. Half-fools- cap Size. Single Copies .... Not exceeding 6 copies . 12 „ . 95 ^5 » s. d. 25 28 30 32 s. d. 15 18 20 22 8. d. 15 17 18 6 20 8. d. 10 12 13 6 15 If a satisfactory photograph cannot be obtained from the original drawing, an extra charge will be made to cover the expense of taking a tracing. When the original drawings are coloured there will also be an extra charge for colouring the copies. 21. Patents in the British Colonies and Foreign States. — Applications for Colonial or Foreign patents must be made to the Government of the Colony or Foreign State in which protection is desired. Most of the Colonial and Foreign patent laws may be seen in the Free Library of the Patent Office. PATENT OFFICE CIRCULAR, 1892. 555 22. International and Colonial Arrangements. — An Inter- ante, p. 432. national Convention f>»r the protection of industrial property- exists between the following States : — Belgium. Guatemala. Santo Domingo. Brazil. Italy. Servia. Curacoa and Surinam. Netherlands. Spain. East Indian Colonies New Zealand. Sweden. of the Netherlands. Norway. Switzerland. France. Portugal. Tunis. Great Britain. Queensland. United States. A copy of the Text of the Convention may be purchased for 2d. through any bookseller. P oit > P- 558 - Under this Convention, an applicant for a patent in any one of the contracting States may obtain six or seven months priority in any of the other States. Similar arrangements, for the mutual protection of inven- tions, designs, and trade marks, have been made between Great Britain on the one side, and each of the following States on the other : — Mexico. Paraguay. Koumania (Designs and Trade Marks only). Uruguay. An application in the United Kingdom for a patent having priority of date under the International and Colonial arrangements must be made within seven months from the date of the first foreign application, and must be signed by the person or persons by whom such first foreign application was made. It must be made upon Form A 2 (stamped \l. and obtainable, upon prepayment of the value of the stamp, through any Money Order Office), and in addition to the specification, provisional or complete, must be accompanied by- (1.) A copy or copies of the specification and drawings as filed in the Patent Office of the Foreign State or British Possession in respect of the first foreign application duly certified by the official chief of such Patent Office, or otherwise verified to the satis- faction of the Comptroller ; (2.) A statutory declaration as to the identity of the in- vention in respect of which the application is made 556 APPENDIX. with the invention in respect of which the said first foreign application was made, and if the specifica- tion he iu a foreign language, a translation thereof shall he annexed to and verified by such statutory declaration. An International Office, in connection with the Convention, has heen established at Berne, Switzerland, which publishes a monthly periodical, entitled " La Propriete Industrielle." The yearly subscription (including postage) for all countries within the Postal Union is 5 francs GO centimes, and should be forwarded by money order to MM. Jent & Reinert, Imprimeurs, Berne. 23. Patent Museum, South Kensington. — This musuem was in 1883 placed under the management of the Department of Science and Art. It no longer forms a separate section, but has been incorporated with the general Science Collections of the South Kensington Museum. All communications relating thereto should be addressed to the Secretary, Science and Art Department, South Kensington, London, S.W. The Science Collections are open to the public free daily, from 10 a.m. to 4, 5, or 6 p.m., according to the season. Entrance — Exhibition Road. 24. Patent Office Library. — The Reading Rooms of the Free Public Library, in the Patent Office, are open daily* from 10 a.m. till 10 p.m., except on Sundays, Good Friday, and Christmas Day. In addition to the Printed Specifications, Indexes, and other publications of the Patent Office, the Library contains a collection of the leading British and Foreign Scientific Journals, Transactions of Learned Societies, and text-books of Science and Art. 25. Patent Office Publications. — These may be consulted daily at the Free Public Library in the Patent Office ; at the Science and Art Department, South Kensington ; and at the Free Libraries, &o. (a list is given in the original Document). They are also on sale at the Patent Office Sale Branch, 38, Cursitor Street, Chancery Line, E.C. Specifications and other publications will be forwarded by PATENT OFFICE CIRCULAR, 1892. 557 post on receipt of the price and of the postage when such is charged. Sums amounting to Is. or more must be remitted by Postal or Post Office Order payable to Sir Reader Lack. Postage stamps sent in payment of any amount exceeding lid. will be returned. Cheques will not be accepted. In ordering specifications the name of the patentee, the number of patent, and year in which applied for must be given. These particulars can be obtained by searching the Indexes of Patents and (for recent specifications) the Illustrated Official Journal. The Indexes (see page 13) and the Journals can be referred to at the places named in the List "A" following, and at the Patent Office Library. (See Par. 24.) The price of each specification is Sd., which includes postage in the United Kingdom. Printed specifications or other publications cannot be returned by the purchasers, unless a wrong number has been supplied through an error on the part of the Patent Office. 26. Specifications of Foreign Patents. — Specifications of foreign patents are not sold by the Patent Office. Applica- tions for these should be made to the Patent Office of the country in which the patent was granted. Lists of Places Keceiving Donations of Patent Office Works. A. — Places in the United Kingdom receiving a complete set of the publications of the Patent Office, including the Specifi- cations, on condition that they shall be daily accessible to the •public, for reference or for copying, free of all charge. Here follows a list of towns. The document concludes with a list of Patent Office publications, including reprints of scarce pamphlets, and 103 volumes of abridgments of specifications from the earliest times up to recent years, all of which are on sale. The Eeading Booms at Chancery Lane are open from 10 a.m. till 10 p.m. every day except Sundays, Good Friday, and Christmas Lay. ( 558 ) ante, P . 432. L— INTERNATIONAL CONVENTION FOR THE PROTECTION OF INDUSTRIAL PROPERTY. Signed at Paris, March 20th, 1883. (Translation.^) Article I. The Governments of Belgium, Brazil, Spain, France, Guatemala, Italy, Holland, Portugal, Salvador, Servia, and Switzerland constitute themselves into a Union for the Protection of Industrial Property. Article II. The subjects or citizens or each of the Contracting States shall, in all the other States of the Union, as regards patents, industrial designs or models, trade-marks and trade names, enjoy the advantages that their respective laws now grant, or shall hereafter grant, to their own subjects or citizens. Consequently, they shall have the same protection as the latter, and the same legal remedy against any infringement of their rights, provided they observe the formalities and conditions imposed on subjects or citizens by the internal legislation of each State. Article III. Subjects or citizens of States not forming part of the Union, who are domiciled or have industrial or commercial establishments in the territory of any of the States of the Union, shall be assimilated to the subjects or citizens of the Contracting States. Article IV. Any person who has duly applied for a patent, industrial design or model, or trade-mark in one of the Contracting States, shall enjoy, as regards registration in the other States, and reserving the rights of third parties, a right of priority during the periods hereinafter stated. INTERNATIONAL CONVENTION, 1883. 559 Consequently, subsequent registration in any of the other States of the Union before expiry of these periods shall not be invalidated through any acts accomplished in the interval, either, for instance, by another registration, by publication of the invention, or by the working of it by a third party, by the sale of copies of the design or model, or by use of the trade-mark. The above-mentioned terms of priority shall be six months for patents, and three months for industrial designs and models and trade-marks. A month longer is allowed for countries beyond sea. Article V. The introduction by the patentee into the country where the patent has been granted of objects manufactured in any of the States of the Union shall not entail forfeiture. Nevertheless, the patentee shall remain bound to work his patent in conformity with the laws of the country into which he introduces the patented objects. Article VI. Every trade-mark duly registered in the country of origin shall be admitted for registration, and protected in the form originally registered in all the other countries of the Union. That country shall be deemed the country of origin where the applicant has his chief seat of business. If this chief seat of business is not situated in one of the countries of the Union, the country to which the applicant belongs shall be deemed the country of origin. Eegistration may be refused if the object for which it is solicited is considered contrary to morality or public order. Article VII. The nature of the goods on which the trade-mark is to be used can, in no case, be an obstacle to the registration of the trade-mark. 560 APPENDIX. Article VIII. A trade name shall be protected in all the countries of the Union, without necessity of registration, whether it form part or not of a trade-mark. Article IX. All goods illegally hearing a trade-mark or trade name may he seized on importation into those States of the L nion where this mark or name has a right to legal protection. The seizure shall he effected at the request of either the proper Public Department or of the interested party, pursuant to the internal legislation of each country. Article X. The provisions of the preceding Article shall apply to all goods falsely bearing the name of any locality as indication of the place of origin, when such indication is associated with a trade name of a fictitious character or assumed with a fraudulent intention. Any manufacturer of, or trader, in such goods, established in the locality falsely designated as the place of origin, shall be deemed an interested party. Article XI. The High Contracting Parties agree to grant temporary protection to patentable inventions, to industrial designs or models, and trade-marks, for articles exhibited at official or officially recognized International Exhibitions. Article XII. Each of the High Contracting Parties agrees to establish a special Government Department for industrial property, and a central office for communication to the public of patents, industrial designs or models, and trade-marks. Article XIII. An international office shall be organized under the name of " Bureau International de l'Union pour la Protection de la INTERNATIONAL CONVENTION, 1883. 561 Propriety Industrielle " (International Office of the Union for the Protection of Industrial Property). This office, the expense of which shall be defrayed by the Governments of all the Contracting States, shall be placed under the high authority of the Central Administration of the Swiss Confederation, and shall work under its super- vision. Its functions shall be determined by agreement between the States of the Union. Article XIV. The present Convention shall be submitted to periodical revisions, with a view to introducing improvements calcu- lated to perfect the system of the Union. To this end Conferences shall be successively held in one of the Contracting States by Delegates of the said States. The next meeting shall take place in 1885 at Rome. Article XV. It is agreed that the High Contracting Parties respectively reserve to themselves the right to make separately, as between themselves, special arrangements for the protection of industrial property, in so far as such arrangements do not contravene the provisions of the present Convention. Articlio XVI. States which have not taken part in the present Conven- tion shall be permitted to adhere to it at their request. Such adhesion shall be notified officially through the diplomatic channel to the Government of the Swiss Con- federation, and by the latter to all the others. It shall imply complete accession to all the clauses, and admission to all the advantages stipulated by the present Convention. Article XVII. The execution of the reciprocal engagements contained in the present Convention is subordinated, in so fir as necessary, to the observance of the formalities and rules established by the Constitutional laws of those of the High 562 APPENDIX. Contracting Parties who are bound to procure the applica- tion of the same, which they engage to do with as little delay as possible. Article XVIII. The present Convention shall come into operation one month after the exchange of ratifications, and shall remain in force for an unlimited time, till the expiry of one year from the date of its denunciation. This denunciation shall be addressed to the Government commissioned to receive adhesions. It shall ouly affect the denouncing State, the Convention remaining in operation as regards the other Contracting Parties. Article XIX. The present Convention shall be ratified, and the ratifi- cations exchanged in Paris, within one year at the latest. In witness whereof the respective Plenipotentiaries have signed the same, and have affixed thereto their seals. Done at Paris the 20th March, 1883. II.— FINAL PROTOCOL. (Translation?) On proceeding to the signature of the Convention con- cluded this day between the Governments of Belgium, Brazil, Spain, France, Guatemala, Italy, the Netherlands, Portugal, Salvador, Servia, and Switzerland, for the protection of industrial property, the undersigned Plenipotentiaries have agreed as follows : — 1. The words "Industrial Property" are to be understood in their broadest sense ; they are not to apply simply to industrial products, properly so called, but also to agricultural products (wines, corn, fruits, cattle, &c), and to mineral pro- ducts employed in commerce (mineral waters, &c). 2. Under the word " patents " are comprised the various kinds of industrial patents recognised by the legislation of each of the Contracting States, such as importation patents, improvement patents, &c. 3. The last paragraph of Article II. does not affect the INTERNATIONAL CONVENTION, 1883. 563 legislation of each of the Contracting States as regards the procedure to be followed before the Tribunals, and the competence of those Tribunals. 4. Paragraph 1 of Article VI. is to be understood as meaning that no trade-mark shall be excluded from pro- tection in any State of the Union, from the fact alone that it does not satisfy, in regard to the signs composing it, the conditions of the legislation of that State ; provided that on this point it comply with the legislation of the country of origin, and that it had been properly registered in said country of origin. With this exception, which relates only to the form of the mark, and under reserve of the provisions of the other Articles of the Convention, the internal legislation of each State remains in force. To avoid misconstruction, it is agreed that the use of public armorial bearings and decorations may be considered as being contrary to public order in the sense of the last paragraph of Article VI. 5. The organization of the special Department for In- dustrial Property mentioned in Article XII. shall comprise, so far as possible, the publication in each State of a periodical official paper. G. The common expenses of the International Office, in- stituted by virtue of Article XIII., are in no case to exceed for a single year a total sum representing an average of 2,000 francs for each Contracting State. To determine the part which each State should contribute to this total of expenses, the Contracting States, and those which may afterwards join the Union, shall be divided into six classes, each contributing in the proportion of a certain number of units, namely : — 25 units. 20 „ 15 „ 10 „ 5 „ 3 „ These co-efficients will be multiplied by the number of 1st class 2nd »> 3rd >> 4th >> 5th » Gth >> 564 APPENDIX. States in each class, and the sum of the result thus obtained will supply the number of units by which tbe total expense has to be divided. The quotient will give the amount of the unit of expense. The Contracting States are classed as follows, with regard to the division of expense : — 1st class .... France, Italy. 2nd „ .... Spain. 3rd „ .... Belgium, Brazil, Portugal, Switzerland. 4th „ .... Holland. 5th „ .... Servia. 6th „ .... Guatemala, Salvador. The Swiss Government will superintend the expenses of the International Office, advance the necessary funds, and render an annual account, which will be communicated to all the other Administrations. The International Office will centralize information of every kind relating to the protection of industrial property and will bring it together in the form of a general statistical statement which will be distributed to all the Adminis- trations. It will interest itself in all matters of common utility to the Union, and will edit, with the help of the documents supplied to it by the various Administrations, a periodical paper in the French language dealing with questions regarding the object of the Union. The numbers of this paper, as well as all the documents published by the International Office, will be circulated among the Administrations of the States of the Union in the proportion of the number of contributing units as mentioned above. Such further copies as may be desired either by the said Administrations, or by societies or private persons will be paid for separately. The International Office shall at all times hold itself at the service of members of the Union, in order to supply them with any special information they may need on questions relating to the international system of industrial property. INTERNATIONAL CONVENTION, 1883. 5G5 The Ad ministration of the country in which the next Conference is to be held will make preparations for the transactions of that Conference, with the assistance of the International Office. The Director of the International Office will be present at the meetings of the Conferences, and will take part in the discussions, but without the privilege of voting. He will furnish an annual report upon his administration of the office, which shall be communicated to all the members of the Union. The official language of the International Office will be French. 7. The present Final Protocol, which shall be ratified together with the Convention concluded this day, shall be considered as forming an integral part of, and shall have the same force, validity, and duration as the said Convention. In witness whereof the undersigned Plenipotentiaries have drawn up the present Protocol. ( Then follow the signatures.') PRIVY COUNCIL RULES IN PATENT CASES BEFORE THE JUDICIAL COMMITTEE. Rules to be observed in Proceedings before the Right ante, pp. 32G, Honourable the Lords of the Judicial Committee of 329 - the Privy Council under the Act of the 5th and 6th William IV., intituled " An Act to amend the Law touching letters patent for inventions," cap. 83. No rules have yet been made under sect. 25, sub-s. 6 of the Act of 1SS3, and these Rules, which were made to regulate procedure under the statute 5 & G Will. IV. c. 83, are still in force. Rule I. — A party intending to apply by petition, under Petition for sect. 2 of the said Act, shall give public notice by advertising confirmation. 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 manu- facture of anything made according to his specification, or 2 p 566 APPENDIX. Petition for prolongation. Petitions. When peti- tion must be presented. Affidavits of advertise- ments. 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 heaving 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 effect 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. Rule II. — A party intending to apply by petition, under sect. 4 of the said Act, shall in the advertisements directed to be published by the said section, give notice of the day on which he intends to apply for a time to be fixed for hearing the matter of his petition (which day shall not be less than four weeks from the date of the publication of the last of the advertisements to be inserted in the London Gazette), and that on or before such day caveats must be entered ; and any person intending to enter a caveat shall enter the same at the council office, on or before such day so named in the said advertisements ; and having entered such caveat, shall be entitled to have from the petitioner four weeks' notice of the time appointed for the hearing. Rule III. — Petitions under sects. 2 and 4 of the said Act must be presented within one week from the insertion of the last of the advertisements required to be published in the London Gazette. Rule IV. — All petitions must be accompanied with affidavits of advertisements having been inserted according PRIVY COUNCIL RULES. 567 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 he disputed by the parties opposing upon the hearing of the petitions. Rule V. — All persons entering caveats under sect. 4 of Create, 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 Grounds or at the council office, within a fortnight after such service, ° ectlou - notice of the grounds of their objections to the granting of the prayers of such petitions. Rule VII. — Parties may have copies of all papers lodged Copies, in respect of any application under the said Act, at their own expense. Rule VIII. — The registrar of the privy council, or other Costs. 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, Document to under sect. 4 of the said Act, must lodge at the council /,' '" ^," ;U ° Council office six printed copies of the specification, and also four Office, 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 2 p 2 The Crown. 568 APPENDIX. 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. Council Office Fees. On Petitions to the Queen in Council. £ s. d. Setting down Petition ..... . 10 Committee Report ..... . 1 10 Order of Her Majesty in Council . 3 2 6 Committee Order. ..... . 1 12 6 Lodging Affidavit ..... . 1 1 „ Petition. ..... . 1 1 Searching Books for Information for Parties . 10 Committee References ..... . 2 2 Subpoena to Witnesses ..... . 10 Feo for Taxation (Petitions) . . . . . 1 1 ( 569 ) FORMS. Form of Notice of Opposition to Grant of a Patent. See ante, pp. 246-257. See PitCs patent, 1888, 5 E. P. C. 344. Hill's application, 1888, 5 K. P. C. 599. Anderson's patent, 1890, 7 K. P. C. 323. Form of Indorsement on Writ in an Action for Infringement. 1. The plaintiff's claim is for an injunction restraining the defendant, his servants, workmen and agents from manu- facturing, selling, exposing for sale, or using articles made according to, or in colourable imitation of, the articles described in the plaintiff's patent, dated 18 — , No. — , or from otherwise infringing the said patent. 2. Damages ; or, at the option of the plaintiff, an account of the proceeds of sale of all such articles manufactured or sold as aforesaid by the defendant in infringement of the plaintiff's said patent. 3. Delivery up to the plaintiff, or destruction of all articles in the defendant's possession made in infringement of the plaintiff's patent. 4. Costs. Notice of Motion for Interlocutory Injunction. Take notice that this Honourable Court will be moved before his lordship, Mr. Justice , on the day of , 18 — , or so soon thereafter as counsel can be heard, by 570 APPENDIX. Mr. of counsel on behalf of the above-named plaintiff, that the defendant, his servants and agents, may be restrained until the trial of this action or until further order during the continuance of the letters patent bearing date the day of , 18—, and numbered , from making, selling, supplying, using or putting in practice any [here describe articles, &c, which are the subject of the patent] made according to or in the manner described in the specification of the invention for which the said letters patent were granted, or according to or in any manner only colourably differing from the same and from in any manner infringing the said letters patent, and that such further order may be made as to this Honourable Court shall seem meet. Order for an Interlocutory Injunction. Upon motion this day made unto this Court, and upon hearing counsel for the plaintiff and for the defendant, and upon reading the plaintiff's statement of claim and particulars of breaches, and the following affidavits .... it is ordered that the defendants be restrained until the trial of this action or until further order during the continuance of the said letters patent to , dated the day of , 18 — , No. , from making, selling, using or supplying any ( ) made according to or in the manner described in the specification filed in pursuance of the same, or according to or in any manner only colourably differing therefrom, and from in any manner infringing the said letters patent, No. , dated the day of , 18 — . Interlocutory Injunction Refused upon the Defen- dants Undertaking to Keep an Account. Upon motion this day made unto this Court by counsel for the plaintiffs that the defendants might be restrained, etc. [here set out the terms of the notice of motion], and upon reading the plaintiff's statement of claim and particulars of FORMS. 57 L breaches, and the following affidavits .... and the defen- dants undertaking by their counsel until the trial of this action, or until the further order of this Court (not to buy, make, use, or sell any ( ) such as those complained of and) to keep an account of all ( ) alleged to be an infringement of the plaintiff's patent. This Court doth not think fit to make any order on the said motion other than that the costs thereof bo costs in the action. Statement of Claim. In the High Court of Justice. Division. x8— . B. No. Writ issued, Between A. B. Plaintiff. and C. D. Defendant. Statement of Claim. 1. The plaintiff is the owner of certain letters patent granted to him, and dated the day of 18—, and numbered , for [here set out the title]. (The said letters patent were amended the day of 18 — , pursuant to the order of , dated .) la. The plaintiff is the registered legal owner of certain letters patent granted to X. Y., and dated the day of 18 — , and numbered , for [here set out the title]. The said letters patent were duly assigned to the plaintiff by an assignment dated the day of 18 — , which said assignment was on the day of 18 — duly registered in the Patent Office on the day of 18 — , since which time the plaintiff has remained the sole registered owner of the said letters patent. [The above form must of course bo varied in the case of actions by administrators or executors to suit the nature of the case.] 2. Since the said day of 18—, and prior to the issue of the writ herein, the defendants have infringed the 072 APPENDIX. Injunction. Infringing articles. Account. Damages. Costs. Costs as between solicitor and client. said letters patent, and have made, sold, supplied, let on Lire and used ( ) manufactured according to the invention in respect of which the said letters patent were granted, and they have since continued and threaten and intend to continue so to do, unless restrained by the order of this Honourable Court. The plaintiffs claim : — 1. That the defendants, their servants, agents, and workmen, may be restrained by injunction during the continuance of the said letters patent from manufacturing, selling, letting on hire, supplying, or using any ( ) manufactured according to or in the manner described in the specifications filed in pursuance of such letters patent, or according to or in any manner only colourably differing from the same, and generally from infringing the rights of the plaintiffs in respect of such letters patent. 2. That the defendants may be ordered to deliver up to the plaintiffs all such ( ) as aforesaid as are in the possession or power of the defendants. 3. That an account may be taken of all gains and profits made by the defendants by the manufacture, sale, letting on hire, supply, or user of such ( ) manu- factured, sold, let on hire, supplied, or used by the defendants, or by any person or persons by the order or for the use of the defendants, and that the defendants may be ordered to pay the amount of such gains and profits to the plaintiffs. 4. That the defendants may be ordered to pay damages to the plaintiffs for the infringement of their said patent rights. 5. That the defendants may be ordered to pay the costs of this action. 6. The plaintiffs claim their full costs, charges, and expenses as between solicitor and client. In an action brought by the plaintiffs (and others) against — 18 — , B. No. , for infringements of the said letters patent, Mr. Justice certified that the FORMS. 573 validity of the said respective letters patent came in question. 7. Such further or other relief as the nature of the case may require. (Signed) Delivered the day of 18— by of in the , solicitors for the plaintiffs. See Useful Patents Co. v. Bylands, 1885, 2 K. P. C. 257 ; Hocking v. Fraser, 1885, 3 E. P. C. 5. Particulars of Breaches. " In the High Court of Justice. Division. 1 8—. B. No. . Writ issued, Between A. B. Plaintiff. and C. D. Defendant. The following are particulars of the breaches complained of in this action. Delivered the day of 18 — by defendant's solicitor. The object of particulars of breaches is to inform the defendant, first, of what ho is alleged to have done ; secondly, what parts of the plaintiff's patent he is alleged to have infringed, and also, when necessary, how his acts constitute infringement. See ante, p. 362, and cases there cited. In the case of a very simple patent the following form has been held sufficient. " That the defendants have at divers times during the years 1887 and 1888 infringed the patent of the plaintiff in the statement of claim mentioned by the manufacture and sale at the defendant's works at Hyde, in the county of Chester, or elsewhere in Great Britain, of felt hats, caps, and other head coverings made or manufactered in accordance, or substantially 574 APPENDIX. in accordance, with the invention forming the suhject of the plaintiff's patent and described in the specifi- cation filed under the said letters patent and claimed in the first five claims therein : Such felt hats, caps, and other head coverings having a veneering material consisting of wool or fur cut, ground, or otherwise reduced to a short staple, applied to the forms or bodies thereof: (Clieetham v. Oldham, 1888, 5 E. P. C. 625). But, as a general rule, more particulars of the dates and places of sale would be required, thus : " In particular the plaintiffs complain of the sale [here set out time, place, and articles of the sales or manufactures complained of. There may also be added] Save as aforesaid the precise date and number of the defen- dant's infringements are not at present known to the plaintiffs ; but the plaintiffs will seek to recover from the defendants full compensation in respect of the same. When the infringement amounts only to a colourable imitation, it is sometimes essential to describe more in detail what the defendant has done. See for example : Haslam v. Ball, 1887, 4 E. P. C. 204, in which case an order was made that the claims alleged to have been infringed should be particularised. If an article complained of has been made an exhibit in some affidavit, the simplest way in describing the infringing article is to refer to it. In addition to the cases cited, ante, p. 363, see Fairburn v. Household, 1886, 3 E. P. C. 265 ; Ehrlich v. Ihlee, 1888, 5 E. P. C. 200 ; Miller v. Scarle, Barker & Co., 1893, 10 E. P. C. 109; Casella v. Levinstein, 1891, 8 E. P. C. 474. Form of Application for Further and Better Particulars of Breaches. This will be in the usual form of a summons, specifying what further particulars are required, asking that the further particulars shall be delivered within a named time, FORMS. 575 and that the defendant have a certain number of days after their delivery to deliver his defence ; and for costs, see Walter Church Engineering Co. v. Wilson, 1886, 3 R. P. C. 12G, and Tilghmans Patent Sand Blast Co. v. Wright, 1884, 1 E. P. C. 104 Form of Order for Further and Better Particulars of Breaches. "(Upon the application of the defendants for directions, under Order 30, Eule 1 of the Pules of the Supreme Court, 1883, which, upon hearing the solicitors for the applicants and for the plaintiffs, and upon reading the writ of summons issued the ■ the statement of claim and particulars here- inafter mentioned delivered the and an affirmation of was adjourned to he heard accordingly) upon hearing counsel for the applicants and for the plaintiffs, and upon reading the said affirmation, an order dated made in an action entitled an affidavit of in the last-mentioned action, and the particulars in writing of the breaches alleged to have been committed by the defendants delivered by the plaintiffs on the with their statement of claim ; this Court being of opinion that such particulars are insufficient doth order that the plaintiffs do within days deliver to the defendant further and better particulars in writing of the breaches alleged to have been committed by the defendant on which the plaintiff intends to rely at the time of the trial of this action, specifying by reference to the pages and lines the parts of the plaintiff's specification in respect of which such alleged breaches have been committed, and the names of the persons to whom infringing goods have been sold as alleged m the particulars of breaches, together with the dates of the breaches alleged. And it is ordered that the defendant do have days after the delivery of such particulars to amend (deliver) his statement of defence. And it is ordered that the costs of the said application (in chambers, and occasioned by the adjournment thereof into Court) be costs in the action. 576 APPENDIX. Form of Statement of Defence. {Heading as usual.) 1. The defendant has not infringed the said letters patent. 2. The plaintiff is not the registered legal owner of the said letters patent, nor were the same assigned to him as alleged or at all. Other pleas are usually added, as, that the patent is had for want of novelty or utility. They should be in the most general form, the details being supplied in the particulars of objections. Form of particulars of Objections. General remarks upon particulars of objections will be found ante> p. 267. They sometimes include what might be more properly given under the defence, e.g. denial of infringement. This perhaps is due to the somewhat vague form of the statute, ante, p. 455. The sufficiency of particulars is a matter for the discretion of the court. The use of them is to prevent surprises, and each case must naturally stand on its own merits. When fraud is alleged, particulars of it should always be given. For general examples of forms of particulars the following cases may bo consulted : Germ Milling Co. v. Bobinson, 1886, 3 E. P. C. 256 ; American Braided Wire Co. v. Thompson, 1887, 4 E. P. C. 318 ; Goulard & abbs' Patent, 1888, 5 E. P. C. 530, 6 E. P. C. 218 ; Morgan v. Windover, 1890, 7 E. P. C. 446 ; Baiter v. Kinnell, 1893, 10 E. P. C. 443. The general form of particulars of objections will be as follows : — " In the High Court of Justice. Division. 18—. B. No. . Between A. B. Plaintiff. and C. D. Defendant. The following are the particulars of objections to the said letters patent in the statement of claim set forth FORMS. 577 upon which the defendant intends to rely at the trial of this action. Declared the day of 18 — , by de- fendant's solicitor. Particulars of objections may be grouped under the fol- lowing heads : — 1. That the plaintiff is not the true and first inventor. 2. That the patent is bad as being (a) For a bare principle ; (6) Contra bonos mores. 3. That the patent is bad for want of utility. 4. That the patent is bad for want of novelty, being for a matter of public general knowledge at the time it was applied for. 5. That the patent had been anticipated by prior pub- lications, e.g., prior specifications, books, articles, exhibitions, etc. 6. That the patent had been anticipated by prior public user. 7. That the specification is bad on the ground (a) of disconformity ; (&) the new not sufficiently distinguished from the old; (c) that the specifications are ambiguous and unin- telligible ; (d) that the specifications are misleading ; (e) that the specifications contain false suggestions ; (/) that the specification does not contain sufficient information to enable the invention to be used ; (g) that the invention did not disclose the most bene- ficial method with which he was acquainted. 8. That the plaintiffs patent is bad as being in derogation of a prior grant. This objection is dealt with on p. 369. These objections are treated in order. 1. — The plaintiff not the first and true inventor. That the plaintiff was not the true and first inventor of the alleged invention in respect of which the letters ante, p. 368. 578 APPENDIX. patent in the statement of claim mentioned are alleged to have heen granted. This objection is commonly used, but is somewhat vague : see ante, p. 368. If it is meant that the plaintiff fraudulently got the invention from some one else, then greater detail ought to be given, e.g. " That the plaintiff obtained his patent by misrepresenta- tion, in falsely alleging that he was the first and true inventor. [Details should here be given.] (In Oddy v. Smith, 1888, 5 R. P. C. 506, no further details were given, but the objection was not insisted on at the trial. The necessity for further detail appears from the following cases : Haddans Patent, 1885, 2 R. P. C. 219 ; Thomson v. Macdonald & Co., 1890, 8E.RC.8; Siddel v. Vichers, 1887, 5 R. P. C. 85.) 3Gi>. 2. — Patent bad as being for a principle or contra bonos mores. " That the said alleged invention was not the proper subject-matter for a patent, in that [Here should be set out the reason, as that such and sucn parts, or ante, p. 45. all of the invention were for a principle and not for a ante, p. G3. manufacture, or that the subject-matter was against the law, or public morality.] 3. — That the patent is bad for want of iifility. " That the said alleged invention [or some specific part thereof] was not useful at the date of the said alleged ante, pp. 65, letters patent for the same. (No details are required.) 4. — Want of novelty in regard to general public knowledge at the time. " That the said alleged invention, in so far as it consists [Here describe the jjarts objected to, Baker v. KinneU 1893, 10 R. P. C. 443], was not new or the proper FORMS. 579 subject of letters patent, having regard to the common and public knowledge at the date thereof. a « P- 42L See Avery's Patent, 1887, 4 R. P. C. 157, 323. The follow- ing form was used in the petition of Ferranti for revocation of the patent granted to Messrs. Goulard and Gibbs, 1887, 5 R. P. C. 189, 525. 594 APPENDIX. In the Matter of Goulard and Gibbs's Patent, No. 4362, a.d. 18S2 and In the Matter of the Patents, Designs and Trade Marks Act, 1883. To her Majesty's High Court of Justice. The humble petition of Sebastien Ziani de Ferranti, Sheweth as follows : — 1. Your petitioner is an electrician, and the patentee of many inventions in connection with the production, distri- bution, and utilisation of electric currents, which inventions are now in extensive practical use. 2. Among other methods of distribution, for some time past your petitioner has especially occupied himself with methods of effecting the same by means of secondary o-enerators, by which electrical action is obtained at different points of an electrical circuit by means of electric induction only, without interrupting such circuit or making any con- nection with the conductor conveying the current. 3. In or about the month of your petitioner invented an improved form of secondary generator for the purpose of effecting economically and conveniently the above-mentioned object, and on the day of your petitioner ap- plied for and obtained a provisional protection No. a.d. 1885, for such invention, and has since filed a complete specification for the said invention. 4. Since obtaining the said provisional protection your petitioner has manufactured and used secondary generators constructed according to your petitioner's said invention, and the same have been shewn to possess great advantages over other forms, and to be of great practical utility. 5. The sale and user of the said secondary generators made according to your petitioner's invention has recently been interfered with by a limited company named Sir Coutts Lindsay and Co. The same company claim to be entitled to restrain any person using any mode of electrical distribution by means of secondary generators of whatever form or con- struction such generators may be. FORMS. 595 6. The said claim of tho aforesaid company purports to be based upon letters patent granted to Lucien Goulard and John Dixon Gibbs, and numbered 4362, a.v. 1882. The invention in respect of which the said letters patent were granted was in nowise novel at the date of the same, and the said letters patent are and always have been of no force and validity by reason thereof, and of the other matters set forth in the particulars of objections delivered herewith in pursuance of section 26 of the above-named Act. 7. The existence of the above-named letters patent, claiming a wide and general monopoly of the system of distribution by means of secondary generators, which was known to, and the property of, the public at the date of tho said letters patent, has been and is the cause of great injury to the public by preventing the sale of machines made according to your petitioner's invention, as well as those made by other inventors who likewise have made improve- ments in secondary generators and in the distribution of electricity thereby. 8. That the public are prejudiced by the above-mentioned general claim in the said letters patent because consumers of electricity are not in general acquainted with the science of electricity and the technical application thereof, and are therefore unable to form an opinion as to the invalidity of the said letters patent, whereby the sale and use of improved secondary generators are wholly prevented. 9. The office of is the place where tho petitioner may be served with any petition, or summons, or notice of any proceedings or order of this Court relating to tho matters herein referred to. Your petitioner therefore humbly prays for tho revoca- tion of letters patent No. 4362, a.d. 1882, or that such order may be made in the premises as to this honour- able Court may seem meet. And your jtetitioner will ever pray, A;c. (Signature of Petitioner.) The particulars of objections which accompanied the above petition will be found, 5 R. P. C. p. 529. 596 APPENDIX. Order for Revocation of Patent. In the Matter of Goulard and Gibbs's Patent, No. 4362, a.d. 1882. and In the Matter of the Patents, Designs, and Trade Marks Act, 1883. Kekewich, J. 9th July, 1888. Upon the petition of Sebastien Ziani de Ferranti of i n the on December 11th, 1886, preferred unto this Court, and upon hearing cuunsel for the petitioner, and for the respondents, G., G., and the N. Co. for the Distribution of Electricity by Secondary Generators, Ltd., on July 29th and on June 3rd, 4th, 5th, 6th, and 9th, and upon reading the petition, the amended particulars of objections delivered by the petitioner, the exhibits produced to the witnesses named in the schedule hereto, and set opposite to their names in the third column of such schedule, and upon hearing the evidence of the witnesses named in the first column of such schedule, upon their examination taken orally before this Court on the days mentioned in such schedule : This Court did order that the petition should stand for judgment ; and the same standing for judgment this day in the paper in the presence of counsel for the petitioner and the respondents, This Court doth order that the Letters Patent No. 4362, a.d. 1882, in the petition mentioned granted to G. and G. be revoked. And it is ordered that the respondents, Goulard and Gibbs, and the N. Co. for the Distribution of Electricity by Secondary Generators, Ltd., pay to the petitioner, F., his costs of the said petition (to be taxed by the taxing master on the higher scale). FORMS. 597 Form of Petition to the Privy Council for Extension. anie * P- 33 °- Extension was refused to this patent, on the ground of want of merit in the invention, hut the accounts afford a good example of the manner of preparing them. In the Privy Council. Presented the 2Ath day of December, 1891. To the Queen's Most Excellent Majesty in Council. In the matter of Letters Patent granted to Fountain Livet, formerly of 11 Western Eoad, Ealing, in the County of Middlesex, but now of 67 Finsbury Pavement, in the City of London, Civil Engineer, for his Invention of Improvements in Internal Fire Steam Boilers, also in Furnace Bars and Flues for the same and other like purposes for effecting combustion of any sort of fuel and utilising heat with greater economy than hitherto, bearing date the 29th day of March, 1878, No. 1242. The Humble Petition of the above-named Fountain Li ret Sheweth — 1. That for several years prior to 1878 your petitioner devoted considerable time and attention to the scientific study of heat, and its practical application to steam boilers which are internally fired. 2. Your petitioner had in view the following objects : — (a) Economy of coal. (6) The utilisation of any kind of fuel. (c) No smoke. (d) Quickly getting up steam, and keeping the steam pressure constant. (e) Steam dry, and consequently no priming. (/) Reduction of chimney stacks in height. 3. That your petitioner, after numerous practical experi- ments and great personal application and expense, succeeded in perfecting his invention, which attained each of the objects he had in view, and his invention was and is of great benefit to manufacturers and also to the public. 2 R 598 APPENDIX. 4. That your Majesty was graciously pleased by your Majesty's Eoyal Letters Patent under the Great Seal of the United Kingdom of Great Britain and Ireland, bearing date the 29ih day of March, 1878, No. 1242, to grant unto your petitioner, his executors, administrators, and assigns, the sole privilege and authority to use his said invention within the United Kingdom, the Channel Islands, and the Isle of Man for the term of fourteen years from the date of the said letters patent. 5. That your petitioner, in compliance with a proviso in the said letters patent contained, duly made and caused to be filed in the Great Seal Patent Office, within six calendar months from the date of the said letters patent, an instru- ment in writing under his hand and seal, which together with the drawings particularly describe and ascertain the nature of the said invention, and the manner in which the same was to be performed. ante p. 33S 6. That your petitioner also obtained patent privileges or protection for the said invention in Hong Kong. The boilers set according to your petitioner's invention in Hong Kong were converted from ordinary brickwork set boilers, and the profits arising therefrom will be found in the accounts to be filed. The effect of this conversion was that over 25 per cent, of fuel was saved with an additional increase of steaming power of the boilers of 50 per cent. Your petitioner also obtained patent privileges for the said invention in France and Belgium on the 18th and 24th June, 1879, and numbered 131, 273 and 48,574 respectively. The foreign patents aforesaid lapsed shortly after they were obtained, in consequence of non-payment of fees and their not being worked as required by the laws of France and Belgium. Your petitioner not having been in a position to meet the expenses of keeping up the said patents, or of working the said invention, no licenses have been granted in respect of the aforesaid foreign patents. The Hong Kong patent is now in force and expires with the British patent. Except as before mentioned, your petitioner has never obtained any foreign, Indian, or Colonial patents for his said invention. FORMS. 599 7. The advantages attained by the invention of your petitioner can be briefly summarised as follows : — (a) Saving in fuel. On an average over 20 per cent, of fuel is saved by the adoption of the petitioner's invention over any of the methods then in use. (6) Any kind of fuel can be used, whereas manufacturers who require constant high pressure of steam are, as a rule, confined to particular classes of quickly- burning coal. (c) Total absence of smoke, even when bituminous coals are used. Amongst the earlier years of this patent, namely in 1882, pour petitioner received the highest medal awarded at the Smoke Abate- ment Exhibition in London for his invention. (d) Manufacturers are obliged to have larger boilers than necessary, in order to have the requisite amount of steam for their manufactures. In sugar refineries abundance of steam and constant pressures are absolutely essential. The invention of your petitioner allows the use of less number of boilers under like conditions. (e) Steam very often carries off with it water not thoroughly converted into vapour ; innumerable particles of water being in suspension with the steam, and this results in accidents in engines. The disadvantages of " priming " are too well known to need description. Your petitioner's in- vention causes the steam to be dry, and there has been no instance of priming when the said inven- tion has been used. (/) The object of the high chimney stacks in general use is to obtain a draught, which in turn is to effect the combustion of the coal. The initial expense of building these high chimneys is great. A very usual height is 150 feet to 200 feet, costing about £200 to £300 per boiler on an installation of (say) twelve boilers. Where your petitioner's in- vention is adopted the chimney should be of such 2 K 2 600 APPENDIX. a height as to be just above the level of the sur- rounding buildings, which would make the height usually between 50 to 70 feet. The cost of such a chimney averages from £50 to £60 per boiler on an installation of a similar number of boilers. A chimney stack of such moderate dimensions, in combination with your petitioner's invention, creates a natural and powerful draught and effects perfect combustion of any carbonaceous substances. Another advantage of your petitioner's invention, which is directly due to the successive expanding section of the flues, is the fact that workmen are enabled to clean them with great ease, and inspection is rendered much more easy. On account of the con- fined areas of the ordinary system inspection is often difficult. 8. The most important parts of the invention of your petitioner may be divided as follows, viz. : — The compound fire-bar claimed in Claim 3 of his specification. The semi-circular form of side return flues, the sectional area of each flue increasing at each bend it makes around the boiler on its passage to the chimney (Claim 5). and your petitioner only asks for a prolongation of the term of the said patent so far as concerns the said two parts of his invention referred to in Claims 3 and 5 of his said specifi- cation. ante p. 331. 9. About two months after the date of the patent your petitioner, by an indenture dated 15th May, 1878, granted an exclusive license to Messrs. Eennie of Blackfriars, during the term of the letters patent, to manufacture and sell land and marine steam boilers, with the improvements described in the said letters patent, and also the exclusive right of converting existing boilers within the following seven counties of England, viz. : — Sussex, Essex, Herts, Kent, Middlesex, Hants, and Surrey ; but owing to the novelty of the invention and to manufacturers not caring for untried systems, they were unable to introduce the same and never FORMS. 601 made use of their license, and your petitioner never received any royalty or other consideration under or for the same. 10. By indenture of mortgage of 10th March, 1879, your petitioner assigned the said letters patent to Harry Seymour Foster and Charles Hight by way of mortgage to secure £20 and further advances, and by an agreement of even date Messrs. Foster and Hight were to form a company for the purpose of working the said letters patent in consideration of £500 to be paid to them in cash and £500 in fully paid up shares of such company. 11. By an agreement dated also the 10th day of March, 1879, and made between your petitioner of the one part and the said Harry Foster as a trustee for a company therein proposed, being the company next hereinafter mentioned, your petitioner agreed to sell the said invention and patents to the said company for the sum of £7000, payable as to £2000, subject as in the said agreement mentioned, in cash, and as to the remaining £5000 in fully paid-up shares of the said company, the aforesaid sum of cash to be paid as to £500 within one calendar month after the allotment of shares and £500 within three calendar months after such allotment, and the remaining £1 000 within four calendar months after such allotment, with power for the company in certain events therein mentioned to pay or discharge such two last- mentioned sums by the allotment of paid-up shares. 12. By an indenture of mortgage dated 22nd April, 1879, and made between the said Harry Seymour Foster and Charles Hight of the first part, your petitioner of the second part, and Thomas Edward Kershaw of the third part, the said letters patent were assigned by the said Harry Seymour Foster and Charles Hight and your petitioner to Thomas Edward Kershaw by way of mortgage to secure £400 and interest at 5 per cent., the aforesaid security of the said Harry Seymour Foster and Charles Hight being thereby postponed to the security made by the indenture now in statement. Your petitioner subsequently transferred to the said 602 APPENDIX. Thomas Edward Kershaw shares to the value of £400 in the company next mentioned in satisfaction of the last-mentioned debt. On the winding up of the company your petitioner paid off the aforesaid shares at par together with interest. Your petitioner has also paid and satisfied all claims of the said Harry Seymour Foster and Charles Hight under their said security. 13. That on the 15th day of July, 1879, a company was incorporated under the Companies Acts, 1862, under the name of " Livet's Improved Boilers and Furnace Company," as a limited company, with a capital of £10,000 divided into 1000 shares of £10, and by deed of assignment bearing date the 14th November, 1879, and made between your petitioner of the one part and Livet's Patent Improved Boilers and Furnace Company, Limited, of the other part, after reciting the above-mentioned agreement of the 10th March, 1879, between your petitioner and the said Harry Seymour Foster as trustee, and that by the memorandum of the 6th August, 1879, indorsed on the said agreement, it was agreed that the 500 fully paid-up shares agreed to be allotted to your petitioner should not be entitled to dividend in any year on which the ordinary shares had not previously received a dividend of ten per cent, on their subscribed capital ; and after reciting the incorporation of the company, and that the company had paid to your petitioner the sum of £500 as provided by the said recited agreement, and had delivered to your petitioner the shares therein mentioned, your petitioner assigned to the said company the said invention and letters patent. That your petitioner received shares in the said company to the nominal value, and received no cash except a sum of £500, which went to Messrs. Harry Seymour Foster and Charles Hight by virtue of clause 2 of the agreement of the 10th March, 1879, hereinbefore recited. 14. That your petitioner is a foreigner, and in 1879 spoke English imperfectly, and was but little acquainted with the English law relating to limited liability companies, and it came to his knowledge that he was liable in respect of the FORMS. G03 shares allotted to him to the nominal amount of the shares held by him. 15. Under an agreement dated 10th May, 1880, your petitioner bound himself to serve the last-mentioned company for a term of three years, at a salary of £200 a year, with a further percentage on royalties received by the company as therein mentioned, the aggregate sum received by your petitioner not to exceed £2000 a year, and your petitioner was to devote all his time to the service of the company. 16. That your petitioner paid off each shareholder in the said company, which was wound up voluntarily, and with the assistance of friends interested in his invention formed a new company under the name of Livet & Co., Limited, which was incorporated on the 11th day of May, 1882, as a limited company under the Companies Acts 1862 to 1880 ; and by an indenture dated the 11th day of May, 1882, and made between Livet's Improved Boilers and Furnace Company, Limited, of the first part, Edward Gibbon Swann and Joseph Milligan, the liquidators of the last-mentioned compan}-, of the second part, your petitioner of the third part, and Livet & Co., Limited, of the fourth part, the said letters patent were assigned to Livet & Co., Limited. On the assignment to Livet & Co., Limited, your petitioner was paid partly in cash and partly in shares. The shares were not subscribed by the general public. 17. That Livet & Co., Limited, in order to raise money to carry on business, borrowed £1800 from Messrs. Williams, Deacon & Co., of Birchin Lane. John Mucmeikan became responsible for this overdraft of £1800, and he also advanced a sum of £100 to the company. To secure this liability, the property of the company and the said letters patent were by indenture of 9th May, 1884, charged in favour of the said John Macmoikan with the moneys aforesaid and also with a further sum of £250 payable by way of bonus to the said John Macmeikan, and powers of sale to enforce the same were by the said indenture given to the said John Macmeikan. 18. In the year 1886 an arrangement was made by which your petitioner worked the said invention on a royalty. 604 APPENDIX. By virtue of this arrangement your petitioner practically resumed tlie ownership of his invention, and has done much towards introducing the same to the favourable attention of manufacturers. 19. The said Livet & Co., Limited, was by an order of the Chancery Division of Her Majesty's High Court of Justice, dated the 22nd May, 1886, ordered to be wound up, and by an indenture dated the 20th March, 1888, John Joseph Steer, the liquidator of the last-named company, in consider- ation of £20, assigned to your petitioner the said invention and letters patent absolutely. And by indenture of re- assignment dated the 23rd day of September, 1891, and made between the said John Macmeikan and John Alexander Macmeikan of the one part and your petitioner of the other part, the said letters patent were released to your petitioner. And your petitioner was also released from the obligations of a certain agreement dated the 16th day of August, 1886, being an exclusive liceose granted to your petitioner by Messrs. John and John Alexander Macmeikan. 20. That your petitioner has used his best endeavours to introduce his invention to users of steam, but from the fact of his not being a boiler-maker he has had considerable difficulty in Laving his invention adopted, the boiler-makers having done all they could to stop the introduction of the invention. Moreover, the invention being an improvement upon the ordinary wheel draft setting it was not obvious at first sight that by the principle of successive expanding flues better results would be obtained therefrom, consequently engineers and manufacturers having formed their own ante, p. 336. opinion on such, refrained from investigating the practical results of the invention, to enable them to judge from facts the advantages to be derived from its use. 21. That amongst the firms and others who have adopted and who either have used or are using the said invention are Messrs. Henry Tate & Sons, of Mincing Lane and Silver- town ; Messrs. Bass, Batcliff & Gretton, Limited, Burton-on- Trent; Messrs. Samuel Walker & Co., Engineers, Wolver- hampton ; the London Tramway Company, Limited ; Messrs. FORMS. 605 Hawks, Crawshay & Sons, Engineers, Gateshead-on-Tyne ; Messrs. Fawcett, Preston & Co., Liverpool; Messrs. J. Muspratt & Sons, Widnes, Lancashire; Messrs. Brown, Stewart & Co., Greenock ; Messrs. Hawthorn, Leslie & Co., Limited, Engineers, Newcastle-on-Tyne ; Messrs. Laird & Co., Douglas, Isle of Man; Messrs. Hick, Hargreaves & Co., Engineers, Bolton ; Messrs. J. Gamble & Sons, St. Helens, Lancashire ; Messrs. Sir Joseph Causton & Sons, London ; Messrs. Allen & Hanbury, Bethnal Green ; the City Electric Bail way, Stockwell Depot ; the Savoy Hotel, Limited ; Messrs. B. Verity & Son, London ; Messrs. D. Martineau & Son, Limited, London ; Messrs. William Eastman & Son, London ; Woodhouse & Bawson United, Limited, London ; the London Boad Car Company, London; Brice's Batent Candle Company, London ; and many others. 22. That during the past few years the invention has become much better known, but the result to your petitioner has been that until the last six years the patent has been unproductive, and he finds that just as the patent is about to expire the real value of the invention is becoming well understood and its use well established and extending. 23. That your petitioner's said invention has been shewn to be of great public value and importance, but, as will appear by the accounts, your petitioner has not received any return adequate to the merits of the invention, to its acknow- ledged importance, and to the years of labour and attention given to it by your petitioner, and to the considerable outlay made upon it. Under the circumstances aforesaid, the letters patent of 29th March, 1871, have not been pro- ductive of a sufficient reward. 24. That your petitioner has no doubt that if the said term of letteis patent should be extended, he will be enabled to obtain some remuneration commensurate with the great public value and importance of his said invention. 25. That your petitioner humbly submits that under the circumstances of the case an exclusive right of using and vending the invention for the further period of seven years will not sufficiently reimburse and remunerate your petitioner. COG APPENDIX. ante, p. 330. 26. That your petitioner bas given public notice by advertisements caused to be inserted in the " London Gazette " and in the metropolitan newspapers, pursuant to the statute in that case made and provided, of his inten- tion to present a petition to your Majesty in Council praying that his said letters patent may be extended for a further term. Your Petitioner therefore humbly prays : — That your Majesty will be graciously pleased to take the case of your petitioner into your Royal con- sideration, and to refer the same to the Judicial Committee of your Majesty's Most Honourable Privy Council, and that your petitioner may be heard before such Committee by his counsel and witnesses, and that your petitioner's said letters patent may be extended for the further and addi- tional term of fourteen years, or for such other term as to your Majesty shall seem fit. And your Petitioner will ever pray, &c. J. H. Johnsox, Son, & Ellis, Agents and Solicitors for the Petitioners. See Fountain Livet's Patent, 1892, 9 E. P. C. 327, ante, p. 342. The petition was refused on the ground of want of merit in the invention. The petition will be accompanied by statements of account, shewing, first the patentee's profits, called the "general account of expenditure and receipts," and second, the " manu- facturing account of expenditure and receipts." In addition to these a summary of the general account is usually given. These accounts are generally printed on large paper. ante, p. 338. In the following pages is a specimen of the commencement of the accounts sent in on the above petition. The succeed- ing years were very similar. FORMS. 607 £ 569 798 959 249 500 d. 8 11 4 3 SUMMARY OF GENERAL ACCOUNT. From July, 1879, to March, 1882, while the patent was in the possession of Livet's Improved Boilers and Furnace Company, Limited. Expenditure. A. Part of Second Year, July to December, 1879 Third Year, 1880 Fourth Year, 1881 .-.-.•. Part of Fifth Year, January to March 1882 Ditto ditto ditto Receipts. Part of Second Year, July to Dec. 1879 Ditto ditto ditto Third Year, 1880 Fourth Year, 1881 Part of Fifth Year, Jan, to Mar. 1882 From May, 1882, to May, 1886, while the Patent was in the possession of Livet & Co., Limited. Expenditure. B. Further Part of Fifth Year, May to Dec. 1882 Ditto ditto ditto Sixth Year, 1883 .... Seventh Year, 1884. Eighth Year, 1885 .... Part of Niuth Year, Jauuary to May, 1886. £3,076 11 2 £ s. d. . 30 . 420 . 85 . 250 12 . 14 14 6 £800 6 6 Receipts. Further Part of Fifth Year, May to Dec, 1882 Ditto ditto ditto . Sixth Year, 1883 Seventh Year, 1884 Eighth Year, 1885 Part of Ninth Year, January to May, 188C . £ s. d. . 1,249 19 1 . 1,000 . 2,160 13 6 . 1,378 17 1 731 1 7 213 14 4 £6,734 5 7 £ s. d. . 1,686 9 . 2,800 516 10 . 1,230 4 227 12 67 £6,527 15 608 APPENDIX. From August, 1886, to December, 1891, while the Patent was in the possession of Petitioner. Expenditure. C. Further Part of Ninth Year, August to Dec. 1886 Tenth Year, 1887 Eleventh Year, 1888 . Ditto ditto Twelfth Year, 1889 . Thirteenth Year, 1890 Fourteenth Year, 1891 Receipts. Further Part of Ninth Year, August to Dec. 1886 Tenth Year, 1887 . Eleventh Year, 1888 Twelfth Year, 1889 . Thirteenth Year, 1890 Fourteenth Year, 1891 £ s. d. . 188 . 794 9 4 . 519 5 9 . 20 . 649 12 3 . 767 1 8 . 744 1 7 £3,682 10 7 £ s. d. 213 8 506 16 449 10 1,666 4 1,097 462 £4,394 18 Total Expenditure and Eeceipts. Expenditure. £ s. Summary A . . 3,076 11 Summary B . . 6,734 5 Summary C . . 3,682 10 d. 2 7 7 Receipts. £ s. Summary A . . 800 6 Summary B . . 6,527 15 Summary C . . 4,394 18 d. 6 £13,493 7 4 £11,722 19 6 Total Expenditure Total Receipts . T< £ s. d. . 13,493 7 4 . 11,722 19 6 rial Loss £1,770 7 10 TJie details of this summary of course appear in the succeeding detailed accounts. FORMS. 609 In the Privy Council. Fountain Livet's Patent (1878, March 29), No. 1242, Improvements in Internal Fire Steam Boilers, Fur- nace Bars and Flues, &c. Petition for Prolongation. General Accounts of Expenditure and Beceipts. N.B. — The whole of these accounts are in relation to claims 3 and 5 of the Specification to Petitioner's Patent, nothing ever having been done in the way of working the rest of the claims after the first year of the Patent, by which time Petitioner found it useless to endeavour to persuade Manufacturers to take up the part of the invention claimed in the other claims. First Year. 29 March, 1878, to July, 1879. On the 15th July, 1879, Livet's Improved Boilers and Furnace Company, Limited, was formed, and prior to this date Petitioner had expended various sums for patenting the invention, for models, travelling and hotel expenses, salaries to draughtsmen, printing, stationery, &c, of which he kept no account, and is unable to specify them. He only received during that period a sum of £40 from Messrs. Bennie by way of royalty on two boiler settings, under the License dated 15th May, 1878, mentioned in the Petition. On the formation of the Company the License was cancelled. Note. — The practice of the Petitioner and of the Com- panies who acquired the Letters Patent was to supply drawings and superintend the erection of the boilers, and the amounts appearing on the Eeceipt sido of these accounts are the amounts received by way of royalty for supplying drawings and superintending erection as above. The differ- ence in the amounts paid is according to the sizo of the boilers. G10 APPENDIX. Second Year (Part of). Account of Live? s Improved Boilers and Furnace Company, Limited. Expenditure. 1879. July to December. To Office Expenses Travelling Expenses to the North of England . Advertising in Engineer. .... Printing, Stationery, &c, for Prospectus, Circulars, &c, in relation to the formation of the Company Rent of Offices ...... Office Furniture (as per valuation) . Law Costs for formation and registration of Company ....... Directors' Fees ...... Salaries to Secretary and Draughtsman Salary to Engineer (Fountain Livet). £ s. d. 32 9 2 17 5 2 21 6 76 17 4 21 15 134 92 5 28 7 69 5 76 £569 9 8 Receipts. By Royalty on one Boiler Setting— London Tramway Company ....... „ Cash, per T. E. Kershaw,* under an Indenture of Mortgage dated 22nd April, 1879 . „ Cash to Petitioner of Messrs. Foster & Hight f by virtue of deed of mortgage, 10th March, 1879 30 400 20 Note. — 10th March. There was due to Petitioner £500 in part payment of purchase money under agreement of 10th March, 1879. This amount was never actually received, however, but kept by Messrs. Foster & Hight * N.B. — Petitioner transferred shares to the amount of £400 to T. E. Kershaw in Li vet's Improved Boiler and Furnace Company, Limited, in satisfaction of this amount, and subsequently, on the winding up of the Company, paid the shares at par, together with interest. f This was subsequently paid off by the Petitioner, as is acknowledged by Messrs. Foster & Hight iu their letters dated 1st day of January, 1892. Petitioner did not receive any further advances. FORMS. Gil under the agreement of 10th March, 1879, mentioned in the Petition. Petitioner received £5000 in shares of the Company, upon which no dividend has ever been declared. (Tlie accounts for the succeeding years were in similar form.) In the Privy Council. Fountain Livet's Patent (1878, March 29), No. 1242, Improvements in Internal Fire Steam Boilers, Fur- nace Bars and Flues, &c. Petition for Prolongation. Manufacturing Accounts of Expenditure and Receipts. Note. — The amounts appearing on the Eeceipt side of this Account are amounts received by Petitioner and the various Companies who acquired the Letters Patent from clients for supplying ironwork and brickwork. As neither tho Peti- tioner nor tho Companies manufactured, they gave the work to Contractors to execute, and the amounts appearing on the Expenditure side are amounts paid to the Contractors. Expenditure. 1881. January to December. To Messrs. Kilby & Gay ford „ Williams & Sons, and J. Brooks Receipts. 1881. January to December. By St. Luke's Hospital — Brick and Iron Work „ Qity Press — Iron ..... Note. — Prior to this year no business was done except as mentioned in the General Account. £ s. d. 171 13 e Matriculation examination at any University in England, Scotland, or Ireland. 2. The Oxford or Cambridge Middle Class Senior Local Examina- tions. 3. The first public examination before Moderators at Oxford. 4. The previous examination at Cambridge. 5. The examination in Arts for the second year at Durham. 6. The examination for tirst-class certificate of the College of Pre- ceptors (40 & 41 Vict. c. '-'5, s. 10). 7. The examination resulting in the obtaining of a Whitworth Scholarship. INDEX. PAGE Abandonment of prior invention when not an anticipation . 149 Abandonment of invention ...... 444 Abridgements of specifications published by comptroller . 458 Acceptance of specifications .... 241, 244, 443 Account (interim) ........ 355 Final judgment for an account ..... 397 Acquiescence (see Injunction) ...... 353 Action (see Practice) ....... 357 Addition (patent for) ....... 60 Address of applicant ...... 239, 484 Administrator of patentee, patent granted to . . 229 Advertisement of acceptance of application . . . 241 „ of acceptance of complete specification 244 „ of amendments . . . 216, 448, 494 „ of petition for extension. . . . 329 Agents (Patent) 235, 479, 484, 533 Alien (see Foreign). Ambit of an invention, its character. .... 299 Its variation in case of different patents .... 300 Amendment of specifications. Old practice ........ 215 Practice under Act of 1883 ...... 215 When no action is pending ...... 216 When an action is pending . . . . . .216 Opposition to amendment ...... 218 Hearing of application ....... 219 Nature of amendments allowed, may correct an error, but not substantially alter the invention .... 221 The amendment dates back to the original specification . 224 The complete, provisional, title and drawings may all be amended. ........ 224 An amendment which improperly widens the patent, vitiates it ........ 225 2 T G18 INDEX. 87 : for the Amendment of specifications — continued. No damages (except by leave) given for infringements prior to amendment. . . . May be made out of caution ..... Amendment of clerical errors ..... Costs of amendments ...... Amendment of particulars of breaches (see Practice) Amendment of defence and particulars of objections „ „ at hearing „ „ on appeal Amendment of petition for extension Analogous use (see Invention, Infringement) . Analysis ordered by Court in a patent action Annual fees (see Fees) ..... Annual report of comptroller. Anticipation (see Novelty). By prior publication (see Prior Publication) . Question of anticipation where evidence is given, is jury Invalidates a patent . . . By prior user in public . Prior user must be in United Kingdom . Experimental prior user does not invalidate a patent By sale or offering for sale .... Exposure at public exhibition when no anticipation No anticipation by an abandoned trial But patent may be anticipated by a worthless or abandoned description or trial ..... Appeals are now by re-hearing .... The Court may receive further evidence on Judge's notes in the court below must be produced Costs on appeals . Stay of proceedings pending Appeals to law officer He may employ an expert Application for a patent . Acceptance of the application Rival applications — interference Under international and intercolonial arrangements (see also Opposition). Assessors may assist judge. .... Or Privy Council. ..... Assignments ....... Must be by deed ...... 225 225 226 226 365 375 376 377 331 303 380 270 468 151 395 138 140 148 144 148 149 149 150 426 426 428 428 405 245, 255 256 239 241 244 432 385 333 274 274 INDEX. 619 Assignments — continued. Agreements to assign need not be in writing . . . 277 May be enforced in equity ...... 275 Division of a patent, (a) of its parts, (b) geographically, (c) by giving concurrent rights to various persons . . 275 Warranties in assignments ...... 278 An assignee with notice of prior covenants . . . 280 Assistance in perfecting invention (see Servant) . . 230 Attachment (see Contempt) ...... 401 Attorney-General (see Law Officer ..... 474 Is heard on a petition for extension ..... 332 Bankruptcy of patentee . . . . . . .281 Board of Trade, power to make and vary rules, etc. . . 467 Rules of 1892 (first set) 503 „ „ (second set) ...... 504 „ 1890 483 May order compulsory licenses ..... 290 Book (see Prior Publication) ...... 157 Book in foreign language when an anticipation . . .157 Books, Inspection of (see Inspection and Discovery) . . 378 Breaches, Particulars of (see Practice) .... 362 Caveat against extension of patent . . . 329, 332 Certificate of comptroller ...... 465 Certificate of particulars of breaches and objections . 410 Certificates of payment and renewal . . 451, 493, 505 Certificate of Secretary for War as to secrecy of inven- tion 459 Certificate of validity of patent ..... 406 Certified copies of patents, specifications and other documents ........ 464, 498 Channel Islands not subject to patent law. . 263, 434, 474 Circular of Information of Patent Office . . . 541 Circulars — warning ........ 409 Claims (see also Complete Specification). Nature, object and functions of claims .... 195 Everything not claimed is considered as disclaimed . . 196 Claims must be unambiguous and clear .... 196 Must be conformable to the specification .... 196 A claim of "every method " would be bad . . . 197 When a claim is clear and distinct, the patentee will be held to it 197 2 t 2 G20 INDEX. Claims — continued. When a claim can be read as subordinate, it will be done if possible to save the patent . . . . . .198 Claim (statement of) (see Practice) ..... 362 Colonies (see International and Colonial Arrangements) 432, 474 Prior user in a colony does not invalidate patent for Great Britain 148 Combination patents . . . . . . .53 it is rhe combination which is patentable, not the parts . 58 Infringement of a combination ..... 305 Commercial success. Its influence on a patent ...... 134 As evidence of utility . . . . . . 134 Not essential at the date of the patent .... 136 As evidence of novelty ...... 136 As evidence of ingenuity ...... 136 Communications from abroad may be patented 232, 488, 510 The communicator is the patentee, and it is his best know- ledge that must be given in the specification . . 192 In a petition for extension the fact should be stated . . 331 Company may take out a patent (see also' Corporation). . 228 Complete specification. When it amounts to an anticipation .... 156 General remarks ........ 178 Must point out whether the invention be a thing, a process or a combination . . . . . . . .178 Claim for a new machine . . . . . .179 Claim for an improvement . . . . . .179 Claim for a combination ...... 180 Must describe and ascertain the invention . . . 184 Must if needful have drawings ..... 184 Must conform to the provisional . . . 170, 185 If a material part fails the whole patent fails . . . 185 Must be clear and ambiguous ...... 185 Must distinguish the new from the old .... 186 Must distinguish the useful from the useless . . . 186 A claim for an improvement need not state why it is an improvement ........ 187 Not necessary to disclaim formally things which are old . 187 A claim of some non-material part does not necessarily avoid a patent ......... 187 Not necessary to describe every known method. . . 188 INDEX. 621 442 Complete specification — cm/tin ued. Not necessary to describe the best method, if the best is given which the inventor knows . Must be intelligible to an ordinary workman No further experiments must be needful . Must disclose best method known to inventor Must not contain any misleading or false suggestion . An obvious error in specification will not vitiate a patent Sending in complete specification . Comptroller. Definition of .... Powers of . Must hear parties. .... May be heard on appeal against his decision Shall refer application to examiner . May refer doubtful questions to law officer Compulsory licenses . . . . « Concurrent applications (see Application). Conditions of grant. .... „ of extension .... Confirmation of patents. Old practice .....••• No new patents are now confirmed under the Act of 1883, but with regard to patents under the former Acts the old procedure still exists ....... Consideration. Failure in part of, avoids a crown grant .... And hence avoids a patent ...... Qualification of this doctrine ..... Consolidation of actions (.see Practice) .... Construction of specifications. The beneficial construction ...... The specification, claims and title may all be looked at to explain one another. ...... Construction with reference to public knowledge at the time ......... Lapse of time may affect the construction of a patent . Construction of particular words in patent, foreign words, manufacture as above described, illustrated, set forth, other substances, mechanical equivalent, analogous, more or less, effect, and, etc., or, s. . Construction of title to patent ..... Construction of documents is in general for the Court. Contempt ....••••• 188 188 190 191 192 193 242 474 245 465 444 444 445 290 244 258 345 349 349 11 GO 63 3G2 1206 209 210 211 211 161 395 401 622 INDEX. Convention (see International Arrangements) Co-ownership in patents .... Copies of documents . .... Corporation may be a patentee . Application, how to be signed Costs. Costs of separate issues .... Apportionment of costs. Costs on the higher scale Comptroller-General as a rule never asks or gives except a remission of the stamp on the appeal County court, patent action cannot be brought in Crown now subject to rights of patentee But may use invention .... May demand models .... May have patent assigned by Secretary of War PAGE . 432 . 281 464, 498 . 228 . 497 . 409 . 411 . 414 costs, . 226 . 357 272, 454 272, 459 272, 458 . 459 Damages. Not to be given (except by leave) for infringements com- mitted prior to an amendment .... 265, 447 In an action for infringement ...... 400 „ „ ,, threats. ...... 419 Date of patent is date of application .... 447, 487 On extension ........ 347 Under international and colonial arrangements . . . 469 Death, devolution of patent on ...... 281 Death of inventor, personal representatives may complete patent, or within limited time apply for patent (see Patentees). Declaration of applicant If incapacitated person . Dedication of invention to public, none by filing provisional .... Defence (see Practice) Amendment of defence . Striking out defence Delivery up and destruction of infringing articles Directions, comptroller may ask from law officer , Directors who have infringed, order against . 324, 356, 404 Disclaimer (see Amendment) ...... 124 Disconformity between provisional and complete specifica- tions 170, 185 Between specifications and title ..... 161 Discovery and inspection (see Practice) . . . 381 . 441 466 of 177 . 365 . 374 . 375 404 245 ,465 INDEX. 623 rAGE . 404 245, 465 395, 396 . 484 465, 498 . 158 Discovery in aid of execution Discretion of comptroller (see Comptroller) Documents (construction of) . . . To be legible and on proper paper . Copies of lost documents .... Drawings, when an anticipation. . . Where required ........ 201 To be taken as part of the specification .... 201 The invention should be described in the specification, not only in a mere drawing ...... 202 Drawings need not be well executed .... 202 If the provisional specification has a drawing, it may be referred to in the complete ...... 202 Board of Trade Eules as to the character of the drawings required 201, 489 Enlargement of time for paying fees .... 270 Enlargement of time by Act of Parliament . . . 271 Equivalents. Infringement may be by the use of an equivalent . . 302 Errors, amendment of clerical ...... 226 In drawings may be amended ..... 224 Obvious error does not avoid specification. . . . 193 (.See also Amendment) . . . . . 215-227 Essence of the inventions, must be infringed to constitute infringement . ........ 292 Estoppels in assignments ....... 278 In licenses ......... 288 Evidence ......... 387 Of secret process may be heard in camera. . . . 389 See Practice ...... 387 et passim Before law officer may be given on oath .... 457 Examiner, report of . ....... 240 Keport is private ........ 241 Exclusive license (see License) ..... 284 Executor of inventor may have a patent .... 228 May petition for extension ...... 327 Exhibitions, public user at, no anticipation under proper conditions . . . . . . . . .149 Existing patents to be subject to new statutes except in certain cases ......... 461 Experiments by experts, sometimes directed . . . 389 Not infringements ....... 317 624 INDEX. Experiments — con t in ued. Abandoned, not anticipation ..... Specification ought to be clear without experiments . Experts, evidence of . May be employed to assist law officer Explanation, amendment by way of . Extension of letters patent. Old practice ....... Present practice ....... Persons who may petition — assignees — equitable assignees All persons interested ought to join Procedure, opposition ...... Inspection by an opponent of the petitioner's accounts The petition Time for presenting the petition Caveats .... Notice of objections Attorney-General's locus Lodging of documents at Privy Council The hearing ; assessor . Grounds on which the petition is granted, public interest, public advantage, merit of invention, utility of the invention, position, circumstances, and conduct of the petitioners .... Accounts must be complete and full Examples of accounts, and items allowed Specimen accounts The period of extension No second extension can be given Conditions of extension . Costs ..... Extension and new grant Order for extension when not acted on may be revoked Failure of consideration for patent . . . . 11, 60 Fees of Patent Office . ... . . 270, 451, 493 Table of fees ........ 505 Of Privy Council 270, 568 Enlargement of time for paying fees .... 270 Time for paying patent fees excludes day of date of application ........ 265 First and true inventor ....... 229 Foreign invention (see also International Arrange- ments) . 232 149 190 389 256 221 326 326 327 328 329 330 330 331 332 332 332 332 332 333 338 340 343 344 345 345 346 347 348 INDEX. 625 Foreign governments. Cannot be made amenable to British patent law . . 273 Foreign language ......•• 157 Foreign vessels, use of inventions upon . . . 322, 459 Foreigner may apply for patent ..... 228, 441 Patent in trust for ...... 232 „ „ „ „ may be extended. .... 327 Forfeiture of patent for non-payment of fees . . . 448 Forms (see Table of Contents). Form of letters patent ....... 258 Fraud, patent obtained by, may be revoked . . . .424 Opposition to grant on ground of . . . . 256 Grant of tbe patent (see Patent) 258 Grantee of letters patent, who may be ... . 228 Great seal 448 Ground of patent. Is by Crown prerogative at common law .... 2 Hearing (the) ......... 387 Illegal subject matter ....... 63 Illustrated journal of patents ..... 458 Importation of infringing article . . . . .321 Improvement. A patent may be procured for an improvement on an exist- ing patent ........ 59 Even though such patent is subsequently itself improved . CO Index of patents ........ 458 Infant may be patentee ....... 228 Infringement in general . . . . . . .291 Essence of invention must be infringed .... 292 The ambit of an invention . . . . . .299 Infringement by substitution of mechanical equivalents or analogues. ........ 302 Infringement of a combination ..... 305 A patent is not infringed by the use of the same means for a different object ........ 313 No answer to an infringement to say that the means used are an improvement ....... 313 Co-extension of anticipations and infringements. . . 314 Time when an infringement may be committed. . . 315 The intention to infringe is not material .... 316 626 INDEX. PAGB Infringement — continued. Infringement by manufacture. . . . . .317 The infringement must be one calculated to injure patentee's profits 316 Experimental user is not an infringement. . . . 318 Infringement by user ....... 318 A patent may restrain the use by others in public of what they have previously used experimentally in private ......... 319 Infringement by sale ....... 320 Infringement by sale in England of articles made abroad . 321 No infringement to sell materials only .... 321 To repair a machine may constitute an infringement . . 322 Use on board ships ....... 322 Manufacture, use, and sale by agents .... 323 The question of infringement is one of fact . . . 324 Opinions of experts inadmissible as to fact of infringement, but not as to circumstances from which infringement may be concluded ....... 325 Action for infringement (see Practice) .... 357 Denial of infringement ....... 368 Ingenuity (see Invention). Injunctions (Interim). Interim injunctions, general principles .... 351 Long enjoyment of patent ground of application . . 351 Prior judicial establishment of patent is also ground . . 353 Inability of defendants if defeated to pay costs . . . 353 Delay prejudices the application ..... 353 Interim injunctions are sometimes granted ex parte . . 354 The infringement must be plain and clear . . . 354 Affidavits in support of application .... 354 In deciding an application for an interim injunction the Court avoids any expression of opinion on the case . . 355 Undertaking to keep an account ..... 355 Application ordered to stand over ..... 355 Terms on which injunctions are granted .... 355 Hearing sometimes treated as finally disposing of the case 356 Injunction may be dissolved ...... 356 Breach of the interim injunction ..... 356 Injunctions perpetual ....... 401 Contempt 402 Inspection (see Practice), old practice .... 378 New practice ........ 379 INDEX. 627 Institute of Patent Agents Intelligibility necessary in a specification . . • 185, Is generally a question for the Court • Intention to infringe not material . Interference ....••••• Interim injunctions (see Injunctions). Interim injunction to restrain threats .... International and Colonial patent arrangements 432, 469, Interrogatories .....••• Invention (ingenuity). Necessary to a patent ....••• Mere analogous use is not invention .... Unless at the time of the invention it is not known to he analogous ...••••• Use of an old thing in a merely analogous way, no invention The degree of invention is not material .... Example of cases in which the invention was held sufficient J? M in which the invention was held insuffi- cient ....••••• Quantum of invention, how determined .... Inventor. First and true inventor must be one of patentees First and true inventor may petition for revocation . Inventor may petition for extension, his locus . Ireland ......•••• Isle of Man ......••• PAGE 236 188 396 316 244 417 488 382 74 87 87 87 94 97 118 395 229 424 328 365 448 Joint inventors, patent to Joint owners of a patent Judgment Judgment for an account Jury .... . 228 . 282 . 397 . 398 385, 395 Lancaster, Chancery court of, can try patent action . . 357 Law officer, appeals to 245, 255, 257 Who is May make rules . Kules of law officers Prohibition will not lie to Appears on petitions for extension He or his substitute may petition for revocation Libel, an action will lie for libel of patent License ...... 474 457 500 224 332 452 416 284 G28 INDEX. Lost patent may be replaced ..... Lunatic may be a patentee ..... Manufacture. Meaning of words in the statute of James Includes a process as well as an article Materials, no infringement to sell materials for infringing Merit of invention, reason for extension Mode of trial ........ Models may be an anticipation ..... Are sometimes used at hearing to explain argument . Sometimes deposited in rooms in Royal Courts of Justice To be furnished to South Kensington if required Monopolies. Statute of ....... . In time of Queen Elizabeth at common law Morality, no patent granted contrary to Mortgage of a patent ...... PAGE 266 228 38 44 322 333 385 158 390 391 272, 458 . 19 . 16 63, 241 . 280 New trial (see Appeal) ..... Novelty. Sometimes used to mean ingenuity . Sometimes used to mean absence of anticipation (See Invention aud Anticipation). 426 77 77 Objections, particulars of (old practice) . „ „ (new practice) . Objections to extension .... Offences, selling unpatented articles as patented Falsification of registers Assuming the royal arms Falsely assuming the title of " patent agent " Officials, patent ..... Old material. Use of, for an analogous purpose not patentable, but good for a new purpose ...... Old methods. More efficient use of will not support a patent Opposition to grant of patent Old procedure ..... Procedure under Act of 1883 . Grounds of opposition .... 366 367 332 430 431 431 235 463 88 89 246 246 246 247 INDEX. 629 Opposition — continued. Opposition on ground that invention was obtained from opponent. .....••• Opposition on ground that invention was previously- patented ....••••• Opposition on ground that applicant is putting into his complete specification the invention of the opponent Hearing before the comptroller, appeals .... Costs 255 Opposition on the ground of fraud ..... 256 247 249 253 254 Particulars of breaches (see Practice) Particulars of objections (see Practice) Parties plaintiffs (see Practice) . Defendants (see Practice) Partnership in patents . Patent agents, their character, functions, and qualifications Patent, procedure to obtain. Whether to send in complete specification at once Procedure in sending in application . Grant of the patent ..... Form of patent (set out) .... Eecital in patent — Effect of, as against Crown . Area of patent ...... Effect of the grant ..... Lost patent may be replaced .... Patentees Who may be a patentee .... Infancy, lunacy, married women, aliens, intestacy representatives ..... The first and true inventor Servants and workmen. Communications from abroad. Meaning of the word " patentee " Corporation may be a patentee Patent office open, what days officials of . Penalty (see Offences). Perpetual Injunction (see Injunctions). Personal representatives may have patent may petition for extension Pleading (see Defence) Post office, documents may be sent by . lesral 362 365 357 360 281 235 237 239 258 259 261 263 265 266 228 . 228 . 229 . 230 . 232 . 234 . 228 270, 484 . 463 229 327 365 465 630 INDEX. Pleas (see Defence) ... striking out pleas ..... Amendment of defence and particulars of objections before hearing ....... Amendment of defence and particulars of objections at the hearing ...... Practice. Action for infringement. Courts in which actions can be brought . Cannot be brought in county court . Parties, plaintiffs . . . ' All interested should join if account asked for Assignees may sue .... Mortgagors ...... Licensees cannot sue .... Cestuis que trustent .... Defendants, agents and servants . . The writ in a patent action Consolidation of actions Statement of claim .... Particulars of breaches. (a). The parts of the patent infringed must be speci- fically pointed out ...... (b). The characteristics of the articles complained of be described ....... (c). The instances of infringement must be given Amendment of particulars of breaches .... The defence ........ Particulars of objections (old practice) .... „ „ (new practice) .... (a). Denial of plaintiffs title ..... (b). Denial of infringement ..... (c). Plaintiff not true inventor ..... (d). Invention not proper subject of a patent (e). Invention a derogation from former grant . (/). Want of utility (g). Want of novelty ...... (1). Through common public knowledge . . (2). That the invention has been previously pub- lished ..... (a). By a prior specification . (0). In a book or other publication (•y). By prior user (h). The specification defective PAOB 365 375 375 376 357 357 357 357 357 358 359 359 359 360 361 361 362 363 364 364 365 365 365 367 368 368 368 368 369 369 370 370 371 371 372 372 373 INDEX. 631 Practice — continued. (1). From disconformity (2). From disconformity by amendment (3). New not distinguished from the old (4). From ambiguity .... (5). False suggestions. (6). Insufficient description . (7). Most beneficial method known to inventor not described ..... Amendment of defence and particulars of objections Striking out pleas ..... Amendment of particulars of objections before hearing ii ii ,, at hearing ii ii i, on appeal Inspection (old practice) „ (new practice) Discovery and inspection of documents Interrogatories .... Mode of trial .... Postponement of trial . Change of venue .... The hearing, evidence, assessors Quantum of invention may be for the jury Question of anticipation, if evidence is given is for the jury. ii utili ty i, i, „ „ . „ intelligibility „ in general is for the Court Judgment . Judgment for an account Damages Perpetual injunction Disobedience to an injunction. Delivery up of infringing articles Discovery in aid of execution Stay of execution . Certificate of validity of patent. Costs ..... Costs of separate issues . Certificate of particulars of breaches and objections Apportionment of costs. Costs on the higher scale (See also Appeals). Principle. A patent cannot be granted for a principle unless coupled with a mode of carrying it out ..... 373 373 373 374 374 374 374 374 375 375 376 377 378 379 382 382 385 387 387 387 395 395 395 396 397 398 400 401 402 404 404 405 406 408 409 409 411 413 45 632 INDEX. Prior publication. By a provisional specification By a complete specification In a book . By drawings By models . In general . Must have been accessible to the public Prior user (see Anticipation). Privy Council (see Extension). Kules of . • •" Process. A process may be patented as well as a result . A process omitting a step in a previous process is patentable Profits (see Account), ..... Prohibition will not lie to law officer . Property. Inventor has none in invention apart from grant Provisional specification. General remarks ...... May amount to an anticipation Object of, to describe nature of the invention . Must be conformable to title (see Title) . May be looked at to explain, but not to supplement the complete ...••• Must have drawings attached to it if needful Abandonment of . Effect of filing a provisional specification . Public policy. No patent can be granted contrary to Public user, when an anticipation 155 156 157 158 158 138 158 567 44 52 398 224 168 155 169 170 176 177 177 177 63 140 Publication (see Pkior Publication) 151-156 Recital in patent does not bind Crown . Rectification of register Register of patents. How kept ...•••• Trusts not entered on . Rectification of . . • • • False entries in, punished .... Registration necessary to give notice to third parties Registration whether necessary before commencing action Registration of assignment dates back to assignment . . 261 . 267 267 267 . 267 267, 431 . 268 268 268 INDEX. 633 Register of patents — continued. Registration not necessarily notice to all persons of terms of assignment ..... Register is prima facie evidence Register in Scotland and Ireland . Renewal of patents (see Fees). Repair of patented articles is an infringement Revocation of patent : old practice . New practice ..... Attorney-General's fiat .... Locus of petitioner .... Patent obtained in fraud of another A petitioner who has a locus may petition on any ground . A petition for revocation is analogous to an action for in- fringement ........ Particulars of objections on a petition for revocation . The defendant begins ....... A copy of an order for revocation must be left at the Patent Office On revocation for fraud, the comptroller may grant a patent to the true inventor ....... Rival applications ........ Royal arms may not be assumed without authority Royalties (see Licenses) . Rules of 1890 . of 1892, first set . of 1892, second set of Law Officer of Privy Council. 2G9 . 456 . 466 505, 506 . 322 . 421 . 422 . 422 . 423 . 424 424 424 425 425 425 425 244 431 284 483 503 504 500 Sale, anticipation by . infringement by . Scientific evidence . Scire facias, proceedings by, abolished . Scotland. ...... Seal of Patent ( )flice to be judicially noticed . Sealing of patent ..... „ „ ,, non obstante a prior patent Secret process, evidence of, may be heard in camera Secretary of State for War may acquire patents Servant, assistance by .... Slander of a patent ..... Statement of claim (see Pr a en ck) . Form of. . 148 . 320 . 389 . 452 . 471 269, 463 . 258 256, 447 . 389 . 283 . 230 . IIS . 362 634 INDEX. Specifications (see Provisional and Complete Specifica- tions, Claims, Title, etc.). Specifications, construction of (see Construction of Speci- fications) . 203-214 Stamps, fees are charged by means of . . . . . 271 Stay of execution ........ 405 Subject-matter of letters patent .... .37-64: General remarks . . ■ . . . . .37 Must not derogate from a former grant .... 37 Must be a manufacture ....... 38 And not a principle . . - . . . . .45 May be for a process or a result ..... 44 Or a process which only omits a step in a known process . 52 Or an improvement or combination .... 53 Partial failure of subject matter is fatal . . . .60 Must not be illegal or immoral ..... 63 Threats, action for, old practice .... Modern practice ...... What constitutes a threat .... What issues may be raised in an action for threats Interim injunction to restrain threats Issuing warning circulars .... Title of a patent. General principles regulating the choice of a title Must correctly describe the invention Must be framed in good faith . Must not be ambiguous . Must not be too wide or too narrow Construction of . Example of cases upon title . Trade secrets protected in discovery . True and first inventor (see Patentees). Trial, mode of . Postponement of . Trusts not entered on register - Trustee for alien amy (see Foreigner) . 415 . 415 . 416 . 417 . 417 . 419 . 162 . 162 . 162 . 162 . 162 . 162 162-167 . 380 . 385 . 387 . 267 232, 327 User (see Anticipation, Infringement). Utility. The invention must be useful at the date of the patent . 65 Meanings of the word utility, viz. commercial utility or mechanical utility ....... 65 INDEX. 635 Utility — continued. The invention must be useful, not merely the things made according to it . Degree of utility is not material Partial failure of utility is fatal Where evidence is given is a question for the jury Validity, certificate that it came in question. Variance (see Disconformity). Venue, change of . ... Warranties in assignments .... In licenses. . Workman. Specification must be intelligible to. . . Writ (see Practice) 09 70 70 306 406 387 278 288 188 361 ko - C_X ,^ Wv- (^U> . «^ 'fcwowwu^ - ^° "/W^U^c^- ^ftAcwi' (^ P'WrUvCt" ^ V-eU!^*C «- / C^ v * <>Cv~v • ^>0*-~' . ' ' l 1 ^ M il ' ■ ,. -(• | l i „ J „. L_ !F^'ok for the compensation lawyer." — Law Journal. Demy 8vo, cloth, 12s. 6d. THE LAW OF LIFE INSURANCE, with a Chapter on Accident Insurance. By Charlbs Crawlkv, M.A., of Li Esq., Barrister-at-Law, and Fellow of Downing College, Cambridge. "The in. st important English work on the law of life insurance which has appeared since the publication in 1S68 of the second edition of Mr. Bunyon's work on the same subject. . . . Mr. Crawley's book will be a welcome addition to the library of the lawyer, and will lie found of use by that part of tne public which is interested in the subject of life insurance." — Athena-um. 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