C^./XKSWlUUGo.U 
 
LETTERS PATENT FOR 
 INVENTIONS. 
 
THE 
 
 LAW AND PRACTICE 
 
 RELATING TO 
 
 LETTERS PATENT FOR 
 INVENTIONS. 
 
 THOMAS TERRELL, Q.C., F.C.S., 
 
 BARRISTER- AT-LAW. 
 
 THIRD EDITION 
 
 REVISED BY 
 
 WILLIAM PETEK EYLANDS, B.A., 
 
 BARRISTER-AT-LAW. 
 
 LONDON : 
 SWEET & MAXWELL, Limited, 3, CHANCERY LANE, 
 
 1895. 
 
T 
 
 TX-T77tj 
 
 LONDON 
 BRADBURV, AGNKW, & CO. LD., PRINTERS, WHITEFRIARS. 
 
 
I 
 
 PEEFACE. 
 
 In this Edition I have endeavoured to bring 
 the subject of Letters Patent up to date. Recent 
 decisions before the Courts and the Law Officers 
 have cleared up so many important but hitherto 
 obscure points in the Law and Practice that the 
 1889 Edition of this work has become incomplete 
 and unreliable. I have had the advantao-e of the 
 assistance of the Author on many points of difficulty, 
 and I trust that it will be found that the result of 
 my labours is as reasonably free from error and 
 imperfection as a legal text book is expected 
 to be. 
 
 W. PETER RYLANDS. 
 
 New Court, Temple. 
 
^/i^-(Z, 
 
 ^:^^ b 
 
 CONTENTS. 
 
 PAGE 
 
 PREFACE V 
 
 TABLE OF CASES xiu 
 
 THE LAW OF PATENTS. 
 
 CHAPTER I. 
 Letters Patent , . 1 
 
 CHAPTER II. 
 The Patentee 7 
 
 CHAPTER III. 
 
 The Consideration 11 
 
 (True and First Inventor.) 
 
 CHAPTER IV. 
 
 The Consideration (contimf^d) 26 
 
 (A New and Useful Invention ; Subject-matter.) 
 
 CHAPTER V. 
 Novelty 48 
 
 CHAPTER VI. 
 Utility 70 
 
Vlll CONlEN-rS. 
 
 CHAPTER VIT. 
 
 I'AGK 
 
 The Consideration {contimied) ... . . 76 
 
 (The Specification.) 
 
 CHAPTER VIII. 
 
 AprLICATION AND ACCEPTANCE 126 
 
 CHAPTER IX. 
 Opposition 134 
 
 CHAPTER X. 
 The Grant 14.3 
 
 CHAPTER XL 
 Amendment of Specifications 152 
 
 CHAPTER XII. 
 
 The Devolution of a Patent 176 
 
 CHAPTER XIII. 
 Estoppel 188 
 
 CHAPTER XIV. 
 
 Extension of Term of Patent 195 
 
 CHAPTER XV. 
 
 Confirmation 214 
 
 CHAPTER XVI. 
 
 Remedies of the Patentee and of the Public . . . 215 
 (Action for Infringement ; Parties to the Action.) 
 
 CHAPTER XVII. 
 The Cause of Action 219 
 
 (Infringement.) 
 
CONTENTS. IX 
 CHAPTER XVIII. 
 
 PAGE 
 
 The Remedy 248 
 
 (Injunction ; Damages ; Account of Sales and Prutits.) 
 
 CHAPTER XIX. 
 
 Rejiedies of the Patentee and of the Public {continued.) 266 
 (Revocation.) 
 
 CHAPTER XX. 
 
 Remedies of the Patentee and of the Public {continued) 274 
 (Action to Restrain Threats.) 
 
 CHAPTER XXI. 
 
 Practice in an Action for Infringement . . . 285 
 
 Statement of Claim 285 
 
 Particulars of Breaches 286 
 
 Statement of Defence 292 
 
 Particulars of Objections 293 
 
 Interrogatories .304 
 
 Inspection 310 
 
 The Trial 314 
 
 Questions for the Court and Jury 325 
 
 Certificates 328 
 
 Practice on Appeal 338 
 
 APPENDIX A. 
 
 Statdtes 341 
 
 1. — Statute of Monopolies 341 
 
 II.— Patents, Designs and Trade Marks Acts, 1883—88, 
 
 Consolidated 345 
 
 III.— Patents, &c., Act, 1885 398 
 
 IV.— Patents, &c., Act, 1886 400 
 
 v.— Patents, &c.. Act, 1888 4U2 
 
 APPENDIX B. 
 
 International Convention . 411 
 
X CONTENTS. 
 
 APPENDIX C. 
 
 PAGE 
 
 Rules, &c 423 
 
 I. — Patents Rules, 1890 
 
 Schedule of Forms 
 
 Patents Rules, 1892 
 
 Schedule op Fees 
 
 II. — Law Officers' Rules 
 
 III. — Privy Council Rules 
 
 IV. — Register of Patent Agents' Rules . 
 V. — War Office Memorandum to Inventors 
 
 423 
 440 
 452 
 453 
 455 
 457 
 459 
 468 
 
 APPENDIX D. 
 
 I. — Forms in Proceedings in an Action for Infringement 470 
 
 1. Indorsement on Writ 470 
 
 2. Notice of Motion for Interlocutory Injunction . . 470 
 
 3. Affidavit in Sui^port of Notice of Motion . . .471 
 
 4. Interlocutory Order to Restrain Infringement of Patent 472 
 
 5. Interlocutory Injunction for Infringement refused on 
 
 Terms 473 
 
 6. Notice of Moticm for Inspection 473 
 
 7. Inspection, where for a Process and to take Samples . 474 
 
 8. Order for Inspection of Plaintiff's Patented Process by 
 
 Defendant 474 
 
 9. Order for Inspection and for Delivery by Defendant of 
 
 Samitles for Analysis 475 
 
 10. Order for Inspection of Defendant's Process by Experts 476 
 
 11. Statement of Claim 476 
 
 12. Particulars of Breaches 478 
 
 13. Order for Delivery of Further Particulars of Breaches 480 
 
 14. Statement of Defence 481 
 
 15. Particulars of Objections 481 
 
 16. Order for Delivery of Further Particulars of Objections 483 
 
 17. Order for Liberty to Amend Particulars of Objections 
 
 on Terms 483 
 
 18. Interrogatories 484 
 
 19. Order for Liberty to Apply for Leave to Amend Speci- 
 
 fication while Action Pending .... 484 
 
 20. Order for Reference under Sect. 57 of the Judicature 
 
 Act, 1873 485 
 
CONTENTS. XI 
 
 PAGE 
 
 21. Order for Trial of a Representative Case, for the pur- 
 
 pose of Determining the Question of Validity . 486 
 
 22. Final Judgment for Plaintiff 487 
 
 23. Final Judgment for Plaintiff' (anoi/ier/orm) . . 490 
 
 24. Final Judgment for Plaintiff" (anoi/icr/orm) . . . 491 
 
 25. Final Judgment for Plaintiff (anoi/i-er /orm) . .491 
 
 26. Final Judgment for Defendant 492 
 
 27. Certificate as to Particulars 493 
 
 28. Certificate of Validity 493 
 
 II. — Forms in an Action to PvEstrain Threats . . 494 
 
 29. Indorsement on Writ 494 
 
 30. Interlocutory Injunction 494 
 
 III. — Forms in a Petition for Revocation . . . . 495 
 
 31. Petition for Revocation 495 
 
 IV. — Forms used in Obtaining the Fiat of the Attorney- 
 General 496 
 
 32. The Memorial of the Petitioner 496 
 
 33. Declaration of Applicant 498 
 
 34. Declaration of Applicant that no Proceedings are 
 
 Pending 498 
 
 35. Certificate of Solicitor 499 
 
 V. — Forms in Petition for Extension .... 499 
 
 36. Advertisement of Intention to Present Petition . . 499 
 
 37. Caveat 500 
 
 38. Notice of Objections 500 
 
 39. Advertisement of Day appointed for Hearing Petition 501 
 
 40. Form of Petition for Extension 502 
 
 APPENDIX E. 
 
 Examples of Specifications and Claims . . . . 504 
 
 APPENDIX F. 
 
 A FEW Precedents for the Transfer of Interests in 
 Letters Patent 517 
 
 1. Sale of Patent Rights to a Proposed Company . . 517 
 
 2. Agreement to Obtain and Assign Letters Patent . .519 
 
 3. Agreement between Joint Owners of a Patent for Par- 
 
 tition 522 
 
Xll CONTENTS. 
 
 PAGE 
 
 4. Agreement for Working and Selling an Invention in 
 
 respect of which an Application for a Patent has been 
 made 524 
 
 5. Assignment of a Patent 530 
 
 6. Non-exclusive Licence to use Patented Invention in con- 
 
 sideration of an Annual Payment and the Purchase 
 
 of the Patented Articles from the Inventor . . 540 
 
 7. Exclusive Licence for a District 544 
 
 8 Mortgage of a Patent 546 
 
TABLE OF CASES. 
 
 A. 
 
 PAGE 
 
 Adair's Patent, In re, (1881) L. R. 6 App. Cas. 176 ; 50 L. J., 
 
 P. C. 68 ; 29 W. R. 746 205, 208 
 
 V. Young, (1879) L. R. 12 Ch. D. 13 . . . . 241, 250 
 
 Adams' Patent, In re, (1853) 21 L. T. R. 38 . . . .154 
 
 V. North British Railway Co., (1873) 29 L. T., N. S. 367 . 217 
 
 Adamson's Patent, In re, (1856'i 6 De G. M. & G. 420 ; 25 L. J. 
 
 Ch. 456 ; 4 W. R. 473 . ' 57,134 
 
 Adie V. Clark, see Clark v. Adie (H. L.). 
 
 Adolph Spiel's Application, In re, (1888) 5 P. 0. R. 281 . . 137 
 
 Alcock V. Cooke, (1829) 5 Ring. 340 145 
 
 Allan's Patent, In re, (1867) L. R. 1 P. C. 507 ; 4 Moo. P. C, 
 
 N. S. 443 200 
 
 Allen's Patent, In re, (1887) Griff. L. O. C. 3 . . . 160, 161 
 
 V. Doulton, (1887) 4 P. 0. R. 377 170 
 
 V. Horton, (1893) 10 P. O. R. 412 ... . 303, 335 
 
 V. Rawson, (1845) 1 C. B. 551 .... 12,15,44 
 
 Alliance Pure White Lead Syntlicate v. Maclvor's Patents, 
 
 (1891) 8 P. O. R. 321 ; 39 W. R. 487 305 
 
 American Braided Wire Co. v. Thompson, (1887—89) (H. L.), 6 
 P. 0. R. 518 ; affirmintr C. A. 5 P. O. R. 113 ; 
 reversing 4 P. 0. R. 316 . . 34, 41, 42, 62, 68, 75 
 V. , (1890) (C. A.), L. R. 44 Ch. D. 274 ; 7 P. 0. R. 152 ; 
 
 59 L. J. Ch. 425 ; 62 L. T. 616 ; reversing 62 L. T. 64 ; 7 
 
 P. 0. R. 47 ; 38 W. R. 329 261, 262 
 
 Amies v. Kelsey, (1852) 1 B. C. C. 123 ; 16 Jur. 1047 ; 22 L. J. 
 
 Q. B. 84 ; 20 L. T. R. 115 ; 1 W. R. 54 475 
 
 Anderson & Anderson's Patent, In re, (1890) 7 P. 0. R. 323 . 130 
 Andrew & Co. v. Crossley Bros., (1892) L. R. (1892) 1 Ch. 492 ; 
 
 9 P. 0. R. 165 ; 61 L. J. Ch. 437 ; 66 L. T. 571 ; 40 W. R. 
 
 586 ; affirming 66 L. T. 105 159, 160, 161 
 
 Anglo-American Brush Electric Light Co. v. Crompton, (1886) 
 
 L. R. 34 Ch. D. 152 ; 56 L. J. Ch. 167 ; 35 W. R. 125 ; 4 
 
 P. O. R. 27 ; 55 L. T. 722 296 
 
 ArkwT'ight v. Nightingale, (1785) 1 Web. P. C. 60 ; Dav. P. C. 
 
 37 99, 100 
 
 Arnold's Patent, In re, (1887) Griff. L. O. C. 5 . . . . I(j6 
 V. Bradbury, (1871) L. R. 6 Ch. 706 ; reversing 24 L. T. 
 
 613 ; 19 W. R. 817 122 
 
 Ashworth's Patent, In re, (1886) Griff. L. O. C. 6 . 158, 161, 162 
 V. Law, (1890) 7 P. 0. R. 231 192 
 
XIV TABLE OF CASES. 
 
 PAGE 
 
 Ashwortli V. Roberts, (1890) L. E. 45 Cli. D. 623 ; 7 P. O. E. 
 451 ; 60 L. J. Ch. 27 ; 63 L. T. 160 ; 39 W. E. 170 304, 305, 306 
 
 V. , (1892), 9 P. 0. E. 309 225 
 
 Automatic Weighing ]\Iacliine Co. v. Combined Weighing 
 Machine Co., (1889) (C. A.), 6 P. 0. E. 367 ; atEiming 
 in part 6 P. O. E. 120 ... 99, 193, 334, 336 
 
 . V. Pearby, (1893) 10 P. O. E. 442 332 
 
 - V. International Hvgienic Soc, (1889) 6 P. 0. E. 475. ..331, 332 
 
 ?•. Knight, (1889) (C- A.), 6 P. 0. E. 297 ; affirming 6 
 
 P. O. E 113 . . . . . 27 29 95 223 225 
 
 r. NationalExhibitions Ass.," (1891) (C.'a.),9 P. 6. E. 41 ;' 
 
 affirming 8 P. O. E. 345 225, 231, 332 
 
 Aveling v. Maclaren, (1880) L. E. 17 Ch. D. 139, n. . . . 303 
 Avery's Patent, /'/( re, (1887) (C. A.), L. E. 36 Ch. D, 307 ; 56 
 
 L. J. Ch. 1007 ; 57 L. T. 506 ; 36 W. E. 249 ; 4 P. 0. E. 322 ; 
 
 affirming 4 P. 0. E. 152 ; 56 L. J. Ch. 586 ; 56 L. T. 324 ; 
 
 35 W. E. 541 22, 268, 269 
 
 Axmann v. Lund, (1874) 22 W. E. 789 ; L. E. 18 Eq. 330 ; 43 
 
 L. J. Ch. 655 ; 3 L. T., N. S. 119 . . . . 181, 189, 193 
 
 B. 
 
 Bacon v. Jones, (1839) 4 My. & Cr. 433 253 
 
 V. Spottiswoode, (1839) 1 Beav. 382 265 
 
 Badische Anilin und Soda Fabrik v. Levinstein, (1883) L. R. 24 
 Ch. D. 156 ; 52 L. J. Ch. 704 ; 48 L. T. 822 ; 31 W. R. 
 913 ; 2 P. 0. E. 73 27, 33, 45, 101, 223, 229, 325, 508 
 
 V. , (1884) (C.A.), L. E. 29 Ch. D. 366 ; 53 L. T. 750 ; 2 
 
 P. 0. E. 94 ; Griff. P. C. 34 . . . 102, 333, 508 
 
 V. , (1887) (H.L.), L. E. 12 App. Cas. 710 ; 57 L. T. 853 ; 
 
 4 P. O. E. 449 ... 70, 72, 73, 96, 98, 100, 103, 104, 108, 
 
 109, 114, 508 
 Bailey's Patent, In re, (1884) Griff. P. C. 253 ; 1 P. 0. E. 1 . 199 
 
 Griff. P. C. 269 138 
 
 V. Eoberton, (1878) (H. L.), L. E. 3 App. Cas. 1055 ; 38 
 
 L. T., N. S. 854 ; 27 W. E. 477 .... 87, 88, 233 
 
 Bainbridge v. Wigley, (1810) Higgins Digest, 155 ; Par. Eep. 
 Pat. 1829, p. 197 ; 18 Eep. Arts. 127 ; 1 Carp. P. C. 270 . 82, 
 
 104, 146 
 Baird v. Moule's Earth Closet Co., (1881) L. E. 17 Ch. D. 139, n. 
 
 303, 484 
 Bairstow's Patent, In re, (1888) 5 P. O. E. 286 . . 24, 142 
 
 Bakewell's Patent, In re, (1862) 15 Moo. P. C. C. 385 . . 200 
 Ball's Patent, In re, (1879) L. E. 4 Aj)p. Cas. 171 ; 48 L. J. P. C. 
 
 24 ; 27 W. E. 477 213 
 
 Bamlett v. Picksley, (1875) Griff. P. C. 40 41 
 
 Bancroft v. Warden, (1873) Eomilly's Notes to Cases, 103. . 221 
 Barber v. Grace, (1847) 1 Ex. 339 ; 17 L. J. Ex. 122 . 29, 33, 98 
 
 V. Walduck, (1823) 1 Carp. P. C. 438 ; Cit. 1 C. & P. 567 ; 
 
 reported under the name of Barher v. Shaw, Holroyd, 60 ; 1 
 Web. P. C. 126 . 15 
 
TABLE OF CASES. XV 
 
 PAGE 
 
 Barker v. Shaw, see Barber v. Walduck. 
 
 Barlow v. Bayliss, (1870) Griff. P. C. 44 . . . 53, 59, 225 
 Barnett v. Barrett's Screw Stopper Co., (1884) 1 P. 0. R. 9 ; 
 
 Grift'. P. C. 47 184 
 
 Barney v. United Telephone Co., (1885) L. E. 28 Ch. D. 394 ; 
 
 2 P. 0. R. 173 ; 52 L. T. 573 ; 33 W. R. 576 . . 278, 284 
 Barrett r. Vernon, (1876) 45 L. T. R., N. S. 755 ; 25 W. R. 343 233 
 Bartlett's Application, In re, (1892) 9 P. O. R. 511 . . . 140 
 Bate's Patent, In re, (1836) 1 Web. P. C. 739, n. . . . 202 
 Bateman & Moore's Disclaimer, In re, (1854) Macr. P. C. 116 . 164, 
 
 165, 167 
 
 Bateman v. Gray, (1853) Macr. P. C. 93 234 
 
 Bates & Redc(ate, Ex parte, (1869) L. R. 4 Ch. 577 ; 38 L. J. Ch. 
 
 501 ; 17 W. R. 900 ; 21 L. T. R., N. S. 410 . . . 18, 83 
 Batley v. Kynock, (1874) L. R. 19 Eq. 90 ; 23 W. R. 52 ; 44 
 
 L. J. Ch. 89 311, 476 
 
 V. , (1874) L. R. 19 Eq. 229 ; 31 L. T. R., N. S. 573 ; 
 
 44 L. J. Ch. 219 ; 23 W. R. 209 . . . 287, 289 
 
 V. , (1875) L. R. 20 Eq. 632 ; 33 L. T. 45 ; 44 L. J. Ch. 
 
 565 334 
 
 Baxter v. Coombe, (1850) 1 Ir. Ch. R. 284 253 
 
 Beard v. Egerton, (1846)3 C. B. 97 ; 10 Jur. 643 ; 15 L. J. C. P. 
 
 270 ; 2 Car. & K. 667 .... 23, 81 
 
 V. , (1849) 19 L. J. C. P. 36 ; M. Dis. 75 ; 8 C. B. 165 ; 
 
 13 Jnr. 1004 93, 100, 111, 122, 327 
 
 Beck & Justice's Patent, In re, Grift'. L. 0. C. 10 . . 157, 165 
 Bell's Patent, In re, (1887) Grift'. L. O. C. 10 . . . 136, 158 
 Bell & Coleman's Patent, In re, Grift'. P. C. 320 . . . . 271 
 Benno Jaft'e v. Richardson, (1893) 10 P. O. R. 136 ; 3 R. 515 ; 
 
 62 L. J. Ch. 710 ; 68 L. T. 404 ; 41 W. R. 534 . 305 
 
 V. , (1893) (C. A.), 11 P. O. R. 93, 261 . .46, 53, 62,224, 225 
 
 Bentley v. Fleming, (1844) 1 C. & K. 587 ; 1 C. B. 479 . . 57 
 
 V. Keighley, (1844) 7 M. & G. 652 ; 1 D. & L. 944 ; 8 Scott, 
 
 N. R. 372 ; 13 L. J. C. P. 167 298 
 
 Berdan's Patent, In re, (1875) L. R. 20 Eq. 346 ; 44 L. J. Ch. 
 
 544 155, 162, 166 
 
 Bergmann v. Macmillan, (1881) L. R. 17 Ch. D. 423 . . . 185 
 Berry's Patent, In re, (1850) 7 Moo. P. C. C. 187 .. . 198 
 
 Besseman v. Wright, (1858) 6 W. R. 719 190 
 
 Betts' Patent, In re, (1862) 1 Moo. P. C, N. S. 49 ; 9 Jur. N. S. 
 137 ; 11 W. R. 221 ; 7 L. T., N. S. 577 ; 1 N. R. 137 . 200, 202, 
 
 204, 2C8 
 Betts V. De Vitre, (1864) (V. C), 11 L. T. R., N. S. 533; 12 
 L. T. R.,N. S. 51 ; 5 N. R. 165 ; 11 Jur. N. S. 9 ; 
 
 34 L. J. Ch. 289 285 
 
 V. , (1868) (L. C), L. R. 3 Ch. 429 ; 37 L. J. Ch. 325 ; 18 
 
 L. T. R., N. S. 165 ; 16 W. R. 529 . . 217, 337 
 
 V. , (1873) L. R. 6 H. L. 319 ; 21 W. R. 705 . 261, 264, 285 
 
 V. Gallais,(1870) L. R. 10 Eq. 392 ; 18 W, R. 945 ; 22 L. T. R., 
 
 N. S. 841 266 
 
 V. Menzies, (1857) (V. C), 3 Jur. N. S. 357 . 58, 59, 256 
 
 V. , (1858) (Q. B.), 27 L. J. Q. B. 154 ; 8 E. & B. 923 . 52 
 
XVI TABLE OF CASES. 
 
 Betts V. Menzies, (1860) (Exch. Ch.), 1 E. & E. 1020 ; 30 L. J. 
 Q. B. 81 ; 6 Jiir. N. S. 1290 ; 3 L. T. R., N. S. 
 237 ; affirming? 1 E. & E. 990 ; 28 L. J. Q. B. 
 
 361 ; 5 Jnr. N. S. 1164 58 
 
 V. , (1862) (H. L.), 10 H. L. Cas. 117 ; 31 L. J. Q. B. 
 
 233 ; 9 Jur. N. S. 29 ; 11 W. R. 1 ; 7 L. T. R., N. S. 
 
 110 58, 59, 96, 99 
 
 V. Neilson, (1865— 8) (L. C), L. R. 3 Ch. 429 ; 37 L. J. Ch. 
 
 321 ; 18 L. T. R., N. S. 159 ; 16 W. R. 524 ; 
 affirming 3 De G. J. & S. 82 ; 12 L. T. R., N. S. 
 719 ; 11 Jur. N. S. 679 ; 34 L. J. Ch. 537 ; 13 
 W. R. 1028 (L. J.); and 6 N. R. 221 ; 12 L. T. R., 
 N. S. 489 ; 13 W. R. 804 (V.-C. W.) . 51, 52, 55, 60, 
 
 110 
 
 V. , (1871) L. R. 5 H. L. 1 ; 40 L. J. Ch. 317 ; 19 W, R. 
 
 1121 ... 59, 60, 62, 123, 239, 245, 261, 285 
 
 V. Willmott, (1871) L. R. 6 Ch. 239 ; 19 W. R. 369 ; 25 
 
 L. T. R., N. S. 188 ; affirming 18 W. R. 946 . 183, 246, 247, 250, 
 
 259, 320 
 Bewley v. Hancock, (1856) 6 De G. M. & G. 391 ; 2 Jur. N. S. 
 
 289 ; 4 W. R. 334 32 
 
 Bickford v. Skewes, (1837) (L. C), ] Web. P. C. 211 . . 256, 257 
 
 V. , (1841) 1 Q. B. 938 ; 1 G. & D. 736 ; 6 Jur. 167 ; 
 
 10 L. J. Q. B. 302 ; 1 Web. P. C. 214 . . . 93,116,327 
 
 Binney v. Feldtman, Griff. P. C. 49 95, 122 
 
 Bimiington v. Hill, (1891) 8 P. 0. R. 326 333 
 
 Birch V. Mather, (1883) L. R. 22 Ch. D. 629 ; 52 L. J. Ch. 292 
 
 305, 484 
 Bircot's case, (15 Eliz.) 3 Inst. 184 ; 1 Web. P. C. 31, n. . .34 
 Blake's Patent, In re, (1873) L. R. 4 P. C. 535 ; 9 Moo. P. C, 
 
 N. S. 373 208 
 
 Blakey v. Latham, (1888) 6 P. O. R. 29, 184 . 38, 42, 333, 338 
 Bloxam v. Elsee, (1825) (N. P.), 1 C. & P. 558 ; Ry. & Moo. 187 ; 
 
 1 Carp. P. C. 434. . . 8, 13, 71, 79, 125, 327 
 
 V. , (1827) (K. B.), 1 Web. P. C. 132, n. ; 6 B. & C. 169 ; 
 
 9 Dow. & Ry. 215 ; 1 Cari?. P. C. 440 . 13, 67, 74, 79, 176, 177, 
 
 217 
 Bodmer's Patent, hire, (1849) 6 Moo. P. C. C. 468 . . . 209 
 
 , (1853) 8 Moo. P. C. C. 282 ; 6 M. D. 114 . . 200, 208 
 
 Booth V. Kennard, (1856) (Exch. Ch.), 1 H. & N. 527 ; 26 L. J. 
 Ex. 23 ; 3 Jur. N. S. 21 ; 28 L. T. R. 160 ; 5 
 
 W. R. 85 31, 34, 44 
 
 V. (1857) (Exch.), 2 H. & N. 84 ; 26 L. J. Ex. 305 ; 
 
 5 W. R. 607 ; 29 L. T. R. 163 . . . . 29, 44, 96 
 
 Boulton V. Bull, (1795) 2 H. Bl. 463 ; Dav. P. C. 162 ; 1 Carp. 
 
 P. C. 117 . . . 20, 26, 29, 32, 46, 55, 70, 108, 124 
 
 V. Watt, see Boulton v. B%ill. 
 
 Bovill V. Crate, (1865) L. R. 1 Eq. 388 ... . 253, 257 
 
 V. Goodier, (1865) L. R. 1 Eq. 35 ; 35 Beav. 264 ; 35 L. J. 
 
 Ch. 174 ; 13 L. T. R., N. S. 489 ; 14 W. R. 91 . 302 
 
 V. , (1866) L. R. 2 Eq. 195 ; 35 Beav. 427 ; 35 L. J. 
 
 Ch. 432 193 
 
 V. Hadley, (1864) 17 C. B., N. S. 435 ; 10 L. T. R., N. S. 
 
 650 ; 4 N. R. 464 329 
 
TABLE OF CASES. XVli 
 
 PAGE 
 
 Bovill V. Key^'ortli,(1857) 7 E. & B. 725 ; 3 Jur. N. S. 817 ; 5 
 
 W. R. 686 ; 29 L. T. R. 194 44 
 
 v. Moore, (1815) 2 Coop. 56, n 310,311 
 
 V. , (1816) Dav. P. C. 361 ; 2 Marsh. 211 . 34, 114, 116, 
 
 233 
 
 1'. Pimm, (1856) 11 Ex. 718 29,33 
 
 V. Smith, (1866) L. R. 2 Eq. 459 307 
 
 Bower v. Hodges, (1853) 22 L. J. C. P. 194 ; 13 C. B. 765 ; 17 
 
 Jur. 1057 ; 1 Ch. R. 807 183 
 
 Bowman v. Taylor, (1834) 2 A. & E. 278 ; 4 N. & M. 264 . . 189 
 Boyd V. Farrar, (1887) 5 P. 0. R. 33 ; 57 L. T. 866 . . 298, 301 
 
 r. Horrocks, (1886) (V. C), 3 P. O. R. 285 ... 298 
 
 V. (1888) (C. A.), 6 P. 0. R. 152 ; reversing 5 P. 0. R. 
 
 557 335 
 
 V. (189])(H. L.), 9 P. O. R. 77 ; reversingC. A. . 43 
 
 V. Tootal Broadhurst Co., (1894) IIP O. R. 175 . 262, 332 
 
 Bracher v. Bracher, (1890) 7 P. 0. R. 420 257 
 
 Bramah v. Hardcastle, (1789) Holroyd, 81 ; 1 Carp. P. C. 168 ; 
 
 1 Web. P. C. 44, n 52, 57, 67 
 
 Brandon's Patent, hire, (1884) L. R. 9 App. Cas. 589 ; 53 L. J. 
 
 P. C. 84 ; 1 P. 0. R. 154 195 
 
 Bray v. Gardner, (1887) (C. A.), 4 P. O. R. 40 ; 56 L. J. Ch. 497 ; 
 56 L. T. 292 ; 35 W. R. 341 ; L. R. 34 Ch. D. 
 
 668 170, 171, 172 
 
 V. , (1887) 4 P. 0. R. 400 62, 100 
 
 Brereton v. Richardson, (1884) 1 P. 0. R. 165 . . . . 57 
 Bridson's Patent, In re, (1852) 7 Moo. P. C. C. 499 , . .212 
 
 V. Benecke, (1849) 12 Beav. 1 ; 34 Bond. Jour. 295 . . 253 
 
 V. McAlpine, (1845) 8 Beav. 229 257 
 
 Briggs V. Lardeur, (1885) 2 P. 0. R. 13 218 
 
 Britain v. Hirsch, (1888) 5 P. 0. R. 74, 226 . . 38, 302, 338 
 British Dynamite Co. v. Krebs, (1875—9) Goodeve P. C. 88 . 96, 
 
 98, 109, 123, 124 
 British Tanning Co. v. Groth, (1889) 7 P. O. R. 1 . . . 256 
 V. , (1891) 8 P. 0. Pv. 113 ; 60 L. J. Ch. 2.35 ; 64 
 
 L. T. 21 69 
 
 Brook V. Aston, (1857) 8 El. & Bl. 478 ; 4 Jur. N. S. 279 ; 27 
 
 L. .J. Q. B. 145 ; 6 W. R. 42 . . . . 37 
 V. (1859) (Ex. Ch.), 5 Jur. N. S. 1025 ; 28 L. J. Q. B. 
 
 175 38 
 
 Brooks V. Ripley, (1831) 2 Lond. Jour. C. S. 35 ; Web. P. L. 102 321 
 Brown's Application, In re, (1887) Gritf. L. 0. C. 1 . . . 154 
 Brunton v. Hawkes, (1821) 4 B. & Aid. 541 ; 1 Carp. P. C. 405 
 
 37, 44, 67, 79, 145 
 Bull V. Petman, see Ledgard v. Bull. 
 Bulnois V. ]\rackenzie, (1837) 4 Bing. N. C. 127 ; 6 Dowl. 215 ; 
 
 1 Web. P. C. 260 ; 5 Scott, 419 ' 296 
 
 Burt V. Morgan, (1887) 4 P. 0. R. 278 277 
 
 Bush V. Fox, (1852) Macr. P. C. 152 ; 23 L. J. Ex. 257 ; 9 Ex. 
 
 651 38 
 
 V. (1856) (H. L.), 5 H. L. Cas. 707 ; 2 Jur. N. S. 1029 ; 
 
 25 L. J. Ex. 251 ; Macr. P. C. 178 38, 96 
 
 Butler's case, (about 1680) Vent. 344 267 
 
 T. b 
 
XVlll TABLE OF CASES. 
 
 C. 
 
 PAGE 
 
 C.'s Application, In re, (1890) 7 P. 0. K. 250 . . 129, 130, 154 
 Cahvell v. Van Vlissengen, (1851) 9 Hare, 415 ; 16 Jur. 115; 
 
 21 L. J. Ch. 97 218, 225, 240, 246, 256 
 
 Campion v. Benyon, (1821) 6 B. Mo. 71 ; 3 B. & B. 5 . . 78 
 
 Canham v. Jones, (1813) 2 Ves. & B. 218 147 
 
 Cannington v. Nuttall, (1871) (H. L.), L. R. 5 H. L. 205 ; 40 
 
 L. J. Ch. 739 29, 46, 49, 157, 229, 242 
 
 Cardwell's Patent, In re, (1856) 10 Moo. P. C. C. 488 . 198, 206 
 
 Carez's Application, In re, (1889) 6 P. O. R. 552 ... 25 
 Carpenter v. Smith, (1841) (N. P.), 1 Web. P. C. 530 . 21, 44, 52, 
 
 56, 61, 107 
 
 V. (1842) (Exch.), 9 M. & W. 300 ; 1 Web. P. C. 540 ; 
 
 11 L. J. Ex. 213 51 
 
 V. Walker, (1842) 1 Web. P. C. 268, n. . . . 297, 301 
 
 Carr's Patent, In re, (1873) L. R. 4 P. C. 539 ; 9 Moo. P. C. N. S. 
 
 379 203 
 
 Cartsburn Sugar Refining Co. v. Sharp, (1884) 1 P. 0, R. 181 . 244, 
 
 245 
 Cartwriglit v. Eamer, (1800) cited 14 Ves. 131, 136 . . . 92 
 Cas.^el Gold Extracting Co. v. The Cyanide Gold Recovery 
 
 Syndicate, (1894) 11 P. O. R. 638 333 
 
 Cassella v. Levinstein, (1891) 8 P. 0. R. 473 . . . . 479 
 
 Catton «. Wyld, 32 Beav. 266 316 
 
 Cera Light Co. v. Dobbie & Son, (1892) 11 P. 0. R. 10 . . 89 
 Challender v. Royle, (1887) (C. A.), L. R. 36 Ch. D. 425 ; 4 
 
 P. 0. R. 363 ; 56 L. J. Ch. 995 ; 57 L. T. 734 ; 36 W. R. 357 
 
 257, 275, 276, 277, 278, 279, 282, 283, 494 
 Chambers?'. Crichley, (1864)33 Beav. 374 . , .188,189 
 
 Chandler's Patent, In re, Griff. P. C. 270 130 
 
 Chanter v. Dewhurst, (1844) 12 M. & W. 823 ; 13 L. J. Ex. 198 
 
 182, 183, 184 
 
 V. Johnson, (1845) 14 M. & W. 408 ; 14 L. J. Ex. 289 . 182 
 
 V. Leese, (1838) 1 Web. P. C. 295 ; 4 M. & W. 295 ; 
 
 1 H. & H. 224 ; 8 L. J. Ex. 58 ; affirmed 5 M. & W. 698 ; 
 
 9 L. J. Ex. 327 (Exch. Ch.) 178, 183 
 
 Chappell V. Purday, (1845) 14 M. & W. 303 . . .8, 21, 23 
 Chartered Institute of Patent Agents v. Lockwood, 11 P. 0. R. 
 
 374 ; 6 R. 219 ; L. R. 1894, App. Cas. 347 ; 63 L. J. P. C. 74 ; 
 
 71 L. T. 205 463 
 
 Cheavin v. Walker, (1876) (C. A.), L. R. 5 Ch. D. 850 ; 46 L. J. 
 
 Ch. 686 ; 36 L. T. 938 ; reversing 46 L. J. Ch. 265 ; 35 L. T. 
 
 757 
 
 Cheesebrough's Patent, In re, Griff. P. C. 303 . 
 Cheetham v. Nutliall, (1893) 10 P. 0. R. 321 . 
 
 V. Oldham, (1888) 5 P. 0. R. 617 
 
 V. 5 P. O.'R. 624 
 
 Chollet V. Hoffman, (1857) 7 El. & Bl. 686 ; 26 L. J. Q. B. 
 
 3 Jur. N. S. 935 ; 5 W. R. 573 ; 29 L. T. Rep. 158 
 Church's Patent, In re, (1886) Griff. P. C. 256 ; 3 P. 0. R. 
 
 209, 212, 217 
 Church Engineering Co. v. Wilson, (1886) 3 P. O. R. 123 . 288, 289 
 
 
 133 
 
 160, 
 
 161 
 
 184, 
 
 185 
 
 
 313 
 
 287, 
 
 288 
 
 249; 
 
 
 
 187 
 
 95 . 
 
 200, 
 
TABLE OF CASES. XIX 
 
 VAQK 
 
 Clark's Patent, In re, (1870) 7 Moo. P. C, N. S. 255 ; L. E. 
 
 3 P. C. 421 204, 212 
 
 Clark V. Adie, first appeal (1875) (L. J.), L, R. 10 Cli. 667 ; 45 
 L. J. Ch. 228 ; 33 L. T., N. S. 295 ; 23 W. E. 
 
 898 227 
 
 V. (1877) (H. L.), L. R. 2 App. Cas. 315 ; 46 L. J. Ch. 
 
 585 ; 36 L. T., N. S. 923 ; 26 W. E. 45 . 121, 122, 125, 
 
 224 230 322 
 
 V. , second appeal (1876) (C. A.), L. E. 3 Ch. D.'l34 '; 
 
 24 W. R. 1007 ; 35 L. T. 349 . . . . 190 
 
 V. (1877) (H. L.), L. E. 2 App. Cas. 423; 46 L. J. 
 
 Ch. 598 ; 37 L. T., N. S. 1 ; 25 W. E. 47 . 95, 97, 190, 192 
 
 Clarke v. Ferguson, (1859) 1 Gift'. 184 256 
 
 Clothworkers of Ipswich case, (1615') GodLolt, E. 252 ; 1 EoU. 
 
 E. 4 ; 1 Web. P. C. 6. . . '. 19 
 
 Cochrane's Patent, In re, Griff. P. C. 304 .... 159, 165 
 
 V. Smethurst, (1816) Dav. P. C. 354 ; 1 Stark. 205 . . 78 
 
 Cooking's Patent, In re, (1885) 2 P. 0. E. 151 . . . . 195 
 
 Codd's Patent, In re, Griff. P. C. 305 159, 170 
 
 V. Bratbv, (1884) 1 P. O. E. 209 ; Griff. P. C. 56 . 169, 171 
 
 Cole V. Saqui,"(lS88) (C. A.), L. R. 40 Ch. D. 132 ; 58 L. J. Ch. 
 237 ; 59 L. T. 877 ; 37 W. E. 109 ; 6 P. 0. E. 41 ; reversing 
 
 5 P. 0. E. 489 75 
 
 Coles V. Baylis, (1886) 3 P. 0. E. 178 ; Griff. P. C. 57 . 91, 114, 257 
 
 Colleyy. Hart, (1888) 6P. O. E. 17 284,494 
 
 V. , (1890) L. E. 44 Ch. D. 179 ; 59 L. J. Ch. .308 ; 62 
 
 L. T, 424 ; 38 W. E. 501 ; 7 P. 0. E. 101 . 279, 280, 281, 282 
 Combined Weighing & Advertising Machine Co. v. Automatic 
 
 Weighing Machine Co., (1889) L. E. 42 Ch. D. 665 ; 58 L. J. Ch. 
 
 709 ; 61 L. T. 474 ; 38 W. E. 233 ; 6 P. 0. E. 502 . 275, 278, 
 
 279, 281, 282 
 Compagnie Generale d'Eaux Minerales Trade Marks, In re, 
 
 (1891) L. E. 1891, 3 Ch. 451 ; 8 P. 0. E. 446 ; 60 L. J. Ch. 
 
 728 ; 40 W. E. 89 272 
 
 Cook V. Pearce, (1844) (Ex. Ch.), 8 Q. B. 1054 ; 8 Jur. 499 ; 13 
 
 L. J. Q. B. 189 ; reversing 12 L. J. Q. B. 187 ; 8 Q. B. 1044 ; 
 
 7 Jur. 764 80 
 
 Cornish v. Keene, (1835) 1 Web. P. C. 501 ; 2 Carp. P. C. 314 . 12, 
 
 51 53 57 71 72 327 
 1'. , (1837) 3 Bing. N. C. 570 ; 4 Scott, 337 '; 2 Hodges' 
 
 281 ; 6 L. J. C. P. 225 ; 1 Web. P. C. 513 ; 2 Carp. P. C. 371 ; 
 
 6 Eep. Arts. 4th series, 102 327 
 
 Cory V. Thames Iron Co., (1862) 11 W. E. 589 . . . . 316 
 Crampton v. Patents Investments Co., (1888) (C. A.), 6 P. O. E. 
 
 287 ; affirming 5 P. 0. E. 382 . . 87, 88, 275, 281, 329 
 
 Crane v. Price, (1842) 1 Web. P. C. 393 ; 4 M. k G. 580 ; 5 
 Scott, N. E. 338 ; 12 L. J. C. P. 81 ; 2 Carp. P. C. 669 ; 18 
 
 Eep. Arts. 4th series, 102 43, 44, 46, 71 
 
 Croll V. Edge, (1850) 9 C. B. 479 ; 14 Jur. 553 ; 19 L. J. C. P. 
 
 261 79, 82, 222 
 
 Crompton v. Anglo-American Brush Electric Light Co., (1887) 
 (C. A.), L. E. 35 Ch. D. 283 ; 4 P. O. R. 197; .56 
 L. J. Ch. 802 ; 57 L. T. 291 ; 35 W. R. 789 . . 296 
 
 h 2 
 
XX TABLE OF CASES. 
 
 PAGE 
 
 Crompton u Ibbotson, (1828; Dan, & L. 33 ; 1 Web. P. C. 83 ; 1 
 Carp. P. C. 460 109, 116 
 
 Cropper v. Smith, (1884) (C. A.), 1 P. 0. R. 81 ; L. R. 26 Ch. D. 
 700; 53 L. J. Ch. 891 ; 51L.T. 729 ; 33 W. R. 
 60 ; Griff. P. C. 60 . 67, 95, 97, 122, 124, 188, 339 
 
 • V. , (1885) (H. L.), 2 P. 0. R. 17 ; L. R. 10 App. Cas. 
 
 249 ; 55 L. J. Ch. 12 ; 53 L. T. 330 ; 33 W. R. 
 
 753 ; Griff. P. C. 68 188, 294 
 
 V. CNo. 2), (1884) L. R. 28 Ch. D. 148 ; 54 L. J. Ch. 
 
 287 ; 52 L.T. 94 ; 33 W. R. 338 ; 1 P. 0. R. 254 . . 169, 170 
 Crossley v. Beverley, (1829) (N. P.), 3 C. & P. 513 ; Mo. & Mai. 
 
 283 ; 1 Web. P. C. 106 103 
 
 V. (1829) (K. B.), 1 Web. P. C. 112 ; 9 B. & C. 63 . 88, 
 
 114 
 
 V. (1829) (Ch.), 1 Web. P. C. 119; 1 Russ. & My. 
 
 166 260 
 
 V. Derby Gas Co., (1834) (L. C), 4 L. J. Ch. 25 ; 1 Web. 
 
 P. C. 119 260, 264 
 
 V. Dixon, (1863) (H. L.), 10 H. L. Cas. 293 ; 9 Jur. N. S. 
 
 607 ; 11 W. R. 716 ; 8 L. T. R., N. S. 260; 1 N. R. 
 
 540 ; 32 L. J. Ch. 617 184, 191 
 
 V. Potter, (1853) Macr. P. C. 240 . . .26, 81, 111 
 
 v. Stewart, (1863)1 N. R. 426 304 
 
 V. Tomey, (1876) L. R. 2 Ch. D. 533 ; 34 L. T. R., N. S. 476 . 305, 
 
 306 
 Crosthwaite v. Steel, (1889) 6 P. 0. R. 190 .... 192 
 
 Croysdale v. Fisher, (1884) 1 P. 0. R. 17 51 
 
 Cumming's Patent, In re, (1884) Griff. P. C. 277 . 130, 137, 138 
 Curtis V. Cutts, (1839) 2 Coop. C. C. 60, n. ; 8 L. J. Ch. 184 . 256 
 
 V. Piatt, (1863) L. R. 3 Ch. D. 135, n. ; 19 Newt. Lond. 
 
 Jour. N. S. 44 ; 8 L. T. R., N. S. 657 . 29, 33, 244, 
 
 225 
 
 V. (1864) (L. C), 11 L. T. R., N. S. 245 . . . 221 
 
 V. (1866) (H. L.), 35 L. J. Ch. 852 ; L. R. 1 H. L. 337 . 33, 
 
 220 231 328 
 Cutler V. Bower, (1848) 11 Q. B. 973 : 12 Jur. 721 ; 17 L. J.'q. b! 
 217 191 
 
 D. 
 
 Dangerfield v. Jones, (1865) 13 L. T. R. N. S. 142. . 29, 41, 44 
 Darby's Patent, In re, (1891) 8 P. 0. R. 380 . . .198, 204, 206 
 Darcy v. Allin, (1602) 1 Web. P. C. 1 ; Noy, E. 173 ; 11 Rep. 84 
 
 2, 20 49 70 
 Dart's Patent, In re. Griff. P. C. 307 . . . . '. ' . 157 
 Davenport v. Goldberg, (1865) 2 H. & M. 282 ; 5 N. R. 484 . 256 
 
 1). Jepson, (1862) 1 N. R. 173, 307 313 
 
 V. Rylands, (1865) L. R. 1 Eq. 302 ; 35 L. J. Ch. 204 ; 14 
 
 L. T. N. S. 53 ; 14 W. R. 243 316 
 
 David & Wodley's Patent, In re, Griff. L. O. C. 26 . . 15, 136 
 Davies v. Black, see Frvdon Vavies v. Black. 
 
TABLE OF CASES. XXI 
 
 PAGE 
 
 Daw V. Eley, (1865) L. E. 1 £(£. 38 ; 13 L. T., N. S. 399 ; 14 
 
 W. E. 48 302 
 
 V. , (1865) 2 H. & M. 725 307, 309 
 
 V. , (1867) L. E. 3 Eq. 496 ; 36 L. J. Ch. 482 ; 15 
 
 L. T., N. S. 559 260 
 
 Day V. Foster, (1890) 7 P. 0. E. 54 ; L. E. 43 Ch. D. 435 ; 59 
 
 L. J. Ch. 464 ; 62 L. T. 597 ; 38 W. E. 362 . 275, 278, 279, 281 
 Deacon's Patent's, /» re, (1887)4 P. 0. E. 119 . . . .204 
 Deeley's Patent, In re, (1894) 11 P. 0. E. 72 . . . 169, 271 
 
 V. (1894) (C. A.), 12 P. 0. E. 65, 192 . . . 193, 271 
 
 De la Eue v. Dickenson, (1857) 7 E. & B. 738 ; 3 Jur. N. S. 841 ; 
 
 5 W. E. 704 ; 29 L. T. E. 194 219, 328 
 
 Delta Metal Co. v. Maxim Nordenfelt Co., (1891) 8 P. 0. E. 169 . 305 
 
 V. , (1891) 8 P. O. E. 247 330, 331 
 
 Denley v. Blore, (1851) 38 Lond. Jour. 224 .. . 217, 218 
 Dent V. Turpin, (1861) 2 J. & H. 139 ; 30 L. J. Ch. 495 . 180, 216 
 Dering's Patent, In re, (1880) L. E. 13 Ch. D. 393 . . 18, 132 
 Derosne's Patent, In re, (1844) 2 Web. P. C. 1 ; 4 Moo. P. C. C. 
 
 416 198,201,211 
 
 V. Fairie, (1835) (N. P.), 1 Web. P. C. 154 ; 1 Mo. & Eob. 
 
 457 7, 216 
 
 V. (1835) (Exch.), 5 Tyr. 393 ; 2 Cr. M. & E. 476 ; 1 
 
 Web. P. C. 158 ; 1 Gale, 109 81 
 
 Deutsche Nahmaschinen Fabrik voim Wertheim v. PfaflF, (1890) 
 
 (C. A.), 7 P. O. E. 251 38 
 
 De Vitre v. Betts, (1873) see Belts v. De Vitre (H.L.). 
 
 Dick V. Haslam, (1891) 8 P. 0. E. 196 260 
 
 Dircks v. Mellor, (1845) 26 Lond. Jour. 268 .... 256 
 Dismore's Patent, In re, (1853) 18 Beav. 538 ... . 154 
 Dixon V. London Small Arms Co., (1875) (Q.B.), L. E. 10 Q. B. 
 
 130 ; 44 L. J. Q. B. 63 ; 31 L. T. 830 . 150, 151, 239 
 V. (1876) (H. L.), L. E. 1 App. Cas. 632 ; 46 L. J. 
 
 Q. B. 617 ; 35 L. T. 559 ; 25 W. E. 142 ; reversing C. A., 
 
 L. E. 1 Q. B. D. 384 ; 46 L. J. Q. B. 617 ; 35 L. T. 138 ; 
 
 24 W. E. 766 ; and restoring decision of Crt. of Q. B . . 150, 
 
 151 239 
 Dollond's Patent, (1758) 1 Web. P. C. 43 ; 2 H. BL 469, 470,' 
 
 487 ; Dav. P. C. 170, 171, 172, 199 ; 1 Carp. P. C. 28 . 16, 50, 54 
 Dowling V. Billington, (1889) (C. A. I.), 7 P. 0. E. 191 43, 62, 249 
 Downton's Patent, In re, (1839) 1 Web. P. C. 565 . . .212 
 Drake v. Muntz Metal Co., 3 P. 0. E. 43 . . . . 312, 313 
 Driffield, &c. Pure Linseed Cake Co. v. Waterloo Mills, &c. Co., 
 
 (1886) L. E. 31 Ch. D. 638 ; 3 P. 0. E. 46 ; 55 L. J. Ch. 391 ; 
 
 54 L. T. 210 ; 34 W. E. 360 275 
 
 Drummond's Patent, In re, (1889) L. E. 43 Ch. D. 80 ; 6 P. O. E. 
 
 576 ; 59 L. J. Ch. 102 272 
 
 Dudgeon v. Thomson, (1874) 30 L. T., N. S. 244 ; 22 W. E. 464 
 
 255, 256, 472 
 
 — - V. (1874) (H. L.), L. E. 3 App. Cas. 34 . . 95, 166, 
 
 167, 169, 174, 232 
 Duncan & Wilson's Patent, In re, (1884) 1 P. 0. E. 257 . . 202 
 Dundan's Patent, Grifif. P. C. 278 138 
 
XXU TABLE OF CASES. 
 
 PAGE 
 
 Dunniclitf v. Mallett, (1859) 7 C. B., N. S. 209 ; 1 L. T., N. S.514 ; 
 6 Jur. N. S. 252 ; 29 L. J. C. P. 70 ; 8 W. R. 260 . 178, 180, 215 
 
 E. 
 
 Eadie's Patent, In re, Griff. P. C. 279 136 
 
 Easterbrook v. Great Western Railway Co., (1885) 2 P. O. R. 
 
 201 ; Griff. P. C. 81 26, 73, 118 
 
 East India Co. v. Sandys, (1728) Skin. 225 144 
 
 Ed^eberry v. Stevens, (1691) 1 Web. P. C. 35 ; 2 Salk. 447 ; 
 
 Comb. 84 ; Dav. P. C. 36 ; 1 Carp. P. C. 35 . . . 20, 70 
 Edison & Swan L'nited Electric Light Co. v. Holland, (1886) 
 L. R. 33 Ch. D. 497 ; 3 P. 0. R. 395 ; 55 L. T. 
 
 587; 35W.R. 17S 218, 293 
 
 V. (1889) (C.A.), 6 P. 0. R. 243 ; L. R. 41 Ch. D. 28 ; 
 
 58 L. J. Ch. 524 ; 61 L. T. 32 ; 37 W. R. 699 ; 
 reversing 5 P. 0. R. 459 . 72, 96, 99, 100, 109, 193, 
 
 218, 242, 329 
 
 0. Woodhouse (1st action) (1886), 3 P. O. R. 167 ; L. R. 32 
 
 Ch. I). 520 ; 55 L. J. Ch. 943 ; 55 L. T. 263 ; 34 
 W. R. 626 ; Grift'. P. C. 86 . . . 88, 91, 334 
 
 V. (1886) (C. A.), 4 P. 0. R. 79 ; Grift'. P. C. 89 . 45, 100 
 
 V. (2nd action) (1886), 3 P. 0. R. 183 ; Grift. P. C. 90. 57 
 
 V. (1886) (C. A.), 4 P. 0. R. 99 ; Griff. P. C. 92 . . 67, 
 
 96, 98, 104, 109, 122 
 Edison Bell Phonograph Co. v. Smith & Young, (1894) (C.A.), 11 
 
 P. O. R. 389 ; affirming 11 P. 0. R. 148 . 28, 95, 122, 
 
 337 
 
 V. (1894) (C. A.), 11 P. O. R. 389 .... 46 
 
 Edison Telephone Co. v. India Rubber Co., (1881) L. R. 17 
 
 Ch. D. 137 303 
 
 Edison United Phonograph Co. v. Young, (1894) 11 P. 0. R. 489 
 
 330, 331 
 EdUn V. Pneumatic Tyre Cycle Agency, (1893) 10 P. 0. R. 311 . 279 
 Edmund's Patent, Griff. P. C. 281 . . 21, 24, 130, 135, 137, 176 
 Edwards' Patent, III re, (1894)11 P. 0. R. 461 . . . .141 
 
 Egleton V. Nichols, (1890) 7 P. O. R. 423 288 
 
 Ehrlich v. Ihlee, (1888) (C.A.), 5 P. 0. R. 437 ; affirming 5 
 
 P. 0. R. 198 41, 59, 68, 72, 73, 75, 225, 513 
 
 Electric Telegraph Co. v. Brett, (1851) 10 C. B. 838 ; 20 L. J. 
 
 C. P. 123 ; 15 Jur. 579 29, 81, 82, 215, 234 
 
 V. Nott, (1847) (L. C), 4 C. B. 462 ; 11 Jur. 590 ; 16 L. J. 
 
 C. P. 174 ; 2 Coop. 41 250, 288 
 
 Elias V. Gravesend Tinplate Co., (1890) 7 P. 0. R. 455 . 14, 15, 
 
 38, 57, 122 
 Ellington v. Clark, (1888) (C. A.), 5 P. O. R. 319 ; 58 L. T. 818 ; 
 
 reversing 5 P. O. R. 135 ; 58 L. T. 40 . . . 98, 334, 336 
 Elliott V. Aston, (1840) 1 Web. P. C. 222 . . ." . . 327 
 
 V. Turner, (1845) (Ex. Ch.), 2 C. B. 446 ; 15 L. J. C. P. 49. 96 
 
 EUwood V. Cliristy, (1864) 10 Jur. N. S. 1079 ; 17 C. B. N. S. 
 754 ; 34 L. J. C. P. 130 ; 13 W. R. 54 ; 11 L. T., N. S. 342 ; 5 
 N. R. 12 177 
 
TABLE OF CASES. XXlll 
 
 PAGE 
 
 Elmslie v. Boiirsier, (1869) L. R 9 Eq. 217 ; 39 L. J. Ch. 328 ; 
 
 18 W. E. 665 243 
 
 Elsey V. Butler, (1884) Griff. P. C. 96 ; 1 P. 0. E. 189 . . 289 
 Embossed Metal Plate Co. v. Saupe, (1891) 8 P. 0. E. 
 
 355 38 
 
 English and American Machinery Co. v. Union Boot Co., (1894) 
 
 (C. A.), 11 P. 0. E. 137, 367 .... 59, .301 
 
 V. The Gare Machine Co., (1894) 11 P. 0. E. 627 . . 280 
 
 Erard's Patent, In re, (1835) 1 Web. P. C. 557 ; 5 Eep. Arts. 
 
 N. S. 58 197, 199, 213 
 
 Evans & Otway's Patent, In re, Griff. P. C. 279 . . . .1 36 
 
 Evans v. Eees, (1842) 2 Q. B. 334 217 
 
 Everitt's Patent, Griff. L. 0. C. 27 86, 140 
 
 Fairburn 1). Household, (1886) 3 P. O. E. 128, 263 . . . 125 
 Fairclough v. Marshall, (1878) (C.A.), L. E. 4 Ex. D 37 ; 48 
 
 L. J. Ex. 146 ; 39 L. T. 389 ; 27 W. E. 145 . . . . 181 
 Farbenfabriken vorm. F. Bayer & Co. v. Bowker, (1891) 8 P. O. 
 
 E. 389 168, 336 
 
 V. Dawson, (1891) 8 P. 0. E. 397 257 
 
 Feather v. E., (1865) 6 B. & S. 257 ; 35 L. J. Q. B. 200 ; 12 
 
 L. T., N. S. 114 . . . . • . . . 150, 239 
 Felton V. Greaves, (1829) 3 C. & P. 611 . . . 79, 81, 146 
 Fernie v. Young, see Young v. Fernie (H. L.) 
 
 Fietchter's Patent, In re, Griff. P. C. 284 135 
 
 Finnigan v. James, (1875) L. E. 19 Eq. 72 305 
 
 Fisher v. Dewick, (1838) (N. P.) cited 8 Q. B. 1056 . . . 81 
 
 V. , (1838) (C. P.) 1 Web. P. C. 264 ; 4 Bing. N. C. 706 ; 
 
 7 L. J. C. P. 279 ; 1 Arn. 282 ; 6 Dowl. 739 ; 
 
 6 Scott, 587 297 
 
 V. , (1838) (C P.) 1 Web. P. C. 551, n. . . 298, 301 
 
 Fletcher's Patent, In re, (1893) 10 P. 0. E. 252 ; 62 L.J. Ch. 
 
 938 ; 69 L. T. 129 ; 3 E. 626 186 
 
 V. Arden, (1887) 5 P. 0. E. 46 45 
 
 V. Glasgow Gas Commissioners, (1887) 4 P. 0. E. 386 . 29, 242 
 
 Flower v. Lloyd, (1876) (C. A.) W. N. 1876, pp. 169,230 . 311, 474, 
 
 476 
 
 V. , (1876) 20 Sol. Jour. 1876, p, 860 . . . 298, 299 
 
 V. , (1876) (C. A.) 45 L. J. Ch. 746 ; 25 W. E. 17 ; 35 
 
 L. T., N. S. 454 483 
 
 V. , (1877) (C. A.) W. N. 1877, p. 132 ; Johnson's P. M. 
 
 245 ... • 2.33 
 
 Forsyth v. Eiviere, (1819) 1 Web. P. C. 97 ; Chit. Prerog. Ca. 
 
 182; 1 Carp. P. C. 401 233 
 
 Fountain Livet's Patent, see Livet's Patent. 
 
 Fowler v. Gaul, (1886) 3 P. O. E. 247 ; Griff. P. C. 99 . . 299 
 Fox's Patent, In re, (1812) 1 V. & B. 67 ; 1 Web. P. C. 431, n. . ,34, 
 
 124 
 V. Dellestable, (1866) 15 W. E. 194 34 
 
XXIV TABLE OF OASES. 
 
 PAGE 
 
 Foxwell V. Bostock, (1864) (L. C.) 12 W. E. 723 ; 10 L. T., N. S. 
 
 144 ; 4 De G. J. & S. 298 . 43, 89, 107, 120, 164, 166, 
 
 228, 230 
 
 V. Bradbury, L. C, 7tli Dec. 1863, A. 2391 . . .487 
 
 V. Webster, (1863) 3 N. R. 103, 180 ; 4 De G. J. & S. 77 ; 9 
 
 L. T., N. S. 528 ; 12 W. R. 186 ; 10 Jur. N. S. 137 . . 253 
 Frearson v. Loe, (1878) L. R. 9 Cli. D. 48 ; 27 W. R. 183 . 238, 249, 
 
 259 
 Fusee Vesta Co. v. Bryant & May, (1887) L. R. 34 Cli. D. 458 ; 
 4 P. 0. R. 71 ; 56 L. J. Ch. 187 ; 56 L. T. 110 ; 
 
 35 W. R. 267 171, 172 
 
 V. , (1887) 56 L. T. 136 ; 4 P. 0. R. 191 . . 276, 281 
 
 G. 
 
 Gadd & Mason v. Mayor, &c. of Manchester, (1892) (C. A.) 9 
 P. 0. R. 249, 516 ; 67 L. T. 569 . 27, 39, 41, 51, 53, 59, 83, 87, 89, 
 
 96, 130, 337 
 
 Gale's Patent, In re, (1891) 8 P. O. R. 438 269 
 
 GaUoway's Patent, In re, (1843) 1 Web. P. C. 724 ; 7 Jur. 453 . 73, 
 
 202, 203, 206 
 
 V. Bleaden, (1839) 1 Web. P. C. 268, n. ; 1 Web. P. C. 521 . 53, 
 
 57, 296, 298 
 
 Gamble v. Kurtz, (1846) 3 C. B. 425 233 
 
 Gandy v. Reddaway, 2 P. 0. R. 49 ; Griff. P. C. 101 . . .118 
 Gardner v. Broadbent, (1856) 2 Jur. N. S. 1041 ; 4 W. R. 767 . 254, 
 
 255, 256, 259 
 
 Gare's Patent, In re, L. R. 26 Cli. D. 105 154 
 
 Garrard v. Edge, (1889) (C. A.) 6 P. 0. R. 372 ; 58 L. J. Cli. 397 ; 
 
 60 L. T. 557 ; 37 W. R. 501 . . . . 313 
 
 V. , (1889) (C. A.) 6 P. 0. R. 563. . . . 231, 335 
 
 V. , (1890) (C. A.) L. R. 44 Cli. D. 224 ; 7 P. 0. R. 139 ; 
 
 59 L. J. Ch. 379 ; 62 L. T. 510 ; 38 W. R. 455 .. . 335 
 
 Garthwaite's Patent, In re, Griff. P. C. 284 136 
 
 Gaulard & Gibbs' Patent, In re, (1886) Griff P. C. 320 . . 271 
 
 , (1887) L. R. 34 Ch. D. 396 ; 56 L. J. Ch. 606 ; 56 L. T. 
 
 284 ; ,35 W. R. 301 273 
 
 , (1889) (C. A.) 6 P. 0. R. 215 ; affirming 5 P. O. R. 525 . 89, 
 
 168, 335 
 
 , (1890) (H. L.) 7 P. O. R. 367 . . . . 46, 89, 168 
 
 V. Lindsay, (1888) (C. A.) L. R. 38 Ch. D. 38 ; 57 L. J. 
 
 Ch. 687 ; 59 L. T. 44 ; 5 P. 0. R. 192 .... 171,172 
 
 Geary v. Norton, (1846) 1 De G. & S. 9 252 
 
 Germ Milling Co. v. Robinson, (1884) 1 P. O. R. 217. . 311, 312 
 
 V. , (1885) 3 P. 0. R. 11 ; 55 L. J. Ch. 287 ; 53 L. T. 
 
 696 ; 34 W. R. 194 311,313,475 
 
 Gibson v. Brand, (1841) 1 Web. P. C. 627 . . 12, 56, 61, 100, 108 
 
 V. , (1842) 4 M. & G. 179 ; 4 Scott, N. R. 844 ; 1 Web. 
 
 P. C. 631 ; 11 L. J. C. P. 177 ... 31, 116, 218, 237 
 
 Gillett V. Green, (1841) 7 M. & W. 347 ; 9 Dowl. 219 ; 1 Web. 
 
 P. C. 271 ; 10 L. J. Ex. 124 329 
 
 V. Wilby, (1839) 9 C. & P. 334 ; 1 Web. R C. 270 . . 226 
 
TABLE OF CASES. XXV 
 
 PAGE 
 
 Glazbrook v. Gillatt, 9 Beav. 492 495 
 
 Glossop's Patent, Gritf. P. C. 285 142 
 
 Goddard v. Lyon, isee Lyon v. Goddard (H. L.). 
 
 Gosnell v. Bishop, (188S) 5 P. 0. R. 41, 151 .. . 33, 42 
 Goucher's Patent, In re, (1865) 2 Moo. P. C., N. S. 532 . . 213 
 Gouclier v. Clayton, (1865)34 L. J. Ch. 239 ; 11 Jur. N. S. 107 ; 
 
 13 W. R. 336; 11 L. T. Rep. N. S. 732 193 
 
 Graham v. Fanta, (1892) 9 P. 0. R. 164 126 
 
 Granger, Ex parte, (1812) Godson on Patents, 2nfU-d., p. 225 . 176 
 Greaves v. Eastern Counties RaiL Co., (1859) 1 E. & E. 961 ; 28 
 
 L. J. Q. B. 290 ; 5 Jur. N. S. 733 334 
 
 Green's Patent, Griff. P. C. 286 140 
 
 Greer v. Bristol TanninL; Co., (1885) 2 P. 0. R. 268 . . . 257 
 Grenfell & McEvoy's Patent, In re, (1889) 7 P. O. R. 151 . .126 
 Griffin's Application, In re, (1888) 6 P. O. R. 296 . . . 138 
 Grover & Baker Sewing Machine Co. v. Millard, (1862) 8 Jur. 
 
 N. S. 713 194 
 
 Guest & Barrow's Patent, In re, (1888) 5 P. 0. R. 312 . 138, 139 
 
 Guilbert Martin v. Kerr, (1886) 4 P. O. R. 18 . . . . 334 
 Guyot V. Thomson, (1894) (C. A.) 11 P. 0. R. 541 ; L. R. 1894, 
 
 3 Ch. 388 ; 64 L. J. Ch. 32 ; 71 L. T. 416 ; affirming 8 R. 810 ; 
 
 71 L. T. 124 7, 184 
 
 H. 
 
 Haddan's Patent, In re, (1884) 54 L. J. Ch. 126 ; 51 L. T. 19i); 
 
 Griff. P. C. 108 ; 33 W. R. 96 . . . . 285, 305 
 
 , (1885) Griff". L. 0. C. 12 160, 161 
 
 Hall & Others, In re, (1888) L. R. 21 Q. B. D. 137 ; 57 L. J. Q. B. 
 
 494 ; 59 L. T. 37 ; 5 P. 0. R. .306 ; 36 W. R. 892 . 170, 174 
 
 c. Conder, (1857) 2 C. B. N. S. 22 ; 3 Jur. N. S. 366 ; 26 
 
 L. J. C. P. 138 ; 5 W. R. 491 . . . 177, 178, 189 
 
 V. FrankUn, (1838) 3 M. & W. 259 8 
 
 V. Jarvis, (1822) 1 Web. P. C. 100 ; 1 Carp. P. C. 423 . 31 
 
 Hallett V. Hague, (1831) 2 B. & Aid. 370 94 
 
 Halsey v. Brotherhood, (1881) (C. A.) L. R. 19 Ch. D. ,386; 51 
 L. J. Ch. 233 ; 45 L. T. 640 ; 30 W. R. 279 ; affirming L. R. 
 15 Ch. D. 514 ; 49 L. J. Ch. 786 ; 43 L. T. 366 ; 29 W. R. 9 . 274, 
 
 275, 282 
 Hampton v. Facer's Patent, In re, (1887) Griff". L. O. C. 13 . 165 
 
 Hancock v. Bewley, (1860) John. 601 ; Good. P. C. 219 . .9 
 
 -y. Moulton, (1852) Johnson's Patentee's Manual, 3rd ed., 
 
 p. 208 ; M. Dig. 506 234, 250, 253 
 
 V. Somervell, (1851) 39 New Lon. Jour. 158 . . .55 
 
 Hardy's Patent, /// re, (1849) 6 Moo. P. C. C. 441 ; 13 Jur. 177 . 198, 
 
 203 
 Hannar v. Playne, (1809) Dav. P. C. 311 ; 11 East, 101 . 91, 100, 
 
 107 
 Harris v. Rothwell, (1886) 3 P. O. R. 243 ; Griff. P. 109 . 299, 301 
 
 V. , (1886) 3 P. 0. R. 383 ; Griff. P. C. Ill ; L. R. 35 
 
 Ch. D. 416 63 
 
XXVI TABLE OF CASES. 
 
 PAOE 
 
 Harris v. Rothwell, (1887) (C. A.) L. R. 35 Ch. D. 426 ; 56 L. J. 
 Cli. 459; 56 L. T. 552; 35 W. R. 581; 4 P. 0. R. 225 51, 
 
 63, 64 
 Harrison v. Anderston Foundry Co., (1876) (H. L.) L. R. 1 App. 
 Cas. 574; 2 S. C. L. R., 4th series, 857 . 43, 95, 107, 108, 119, 
 
 121, 122, 228 
 Harwood v. Great Northern Rail. Co., (1860) 29 L. J. Q. B. 193; 
 
 6 Jur. N. S. 993 ; 2 B. & S. 194 . . . 37, 51 
 
 V. , (1865) (H. L.) 11 H. L. Cas. 654; 35 L. J., Q. B. 
 
 27 ; 12 L. T., N. S. 771 ; 14 W. R. 1 37 
 
 Haslani Engineering Co. v. Goodfellow, (1887) L. R. 37 Ch. D. 
 118 ; 57 L. J. Ch. 245 ; 57 L. T. 788 ; 36 W. R. 391 ; 
 
 5 P. O. R. 28 172 
 
 V. Hall, (1887) 4 P. 0. R. 203 287, 288 
 
 V. , (1887) 5 P. O. R. 1 45 
 
 V. , (1888) (C. A.) 5 P. 0. R. 144 ; L. R. 20 Q. B. D. 
 
 491 • 57 L. J. Q. B. 352 ; 59 L. T. 102 ; 36 W. R. 407 . . 331 
 Haslett V. Hutchinson, (1891) 8 P. 0. R. 457 . . . . 186 
 Hassall v. Wright, (1870) 40 L. J. Ch. 145 ; L. R. 10 Eq. 509 ; 
 
 18 W. R. 821 178, 187 
 
 Hastings' Patent, In re, (1567) 1 Web. P. C. 6; Noj, R. 
 
 182 . . . . • • • • . 19 49 
 
 V. Brown, (1853) 1 E. & B. 450; 22 L. J. Q. B. 161 ; 17 ' 
 
 Jur. 647 109 
 
 Hatfield's Patent, In re, Griff. P. C. 288 136 
 
 Haworth v. Hardcastle, (1834) 1 Web. P. C. 480; 4 M. & Sc. 
 
 720 • 1 Bing. N. C. 182 ; 3 L. J. C. P. 311 . . 74, 97, 146 
 Haydo'ckv. Bradbury, (1886) 4 P. 0. R. 74 . . . . 330 
 Hayne v. Msdthj, (1789) 3 T. R. 438 ; Dav. P. C. 156 . 190, 192 
 Haythornthwaite's Application, In re, (1889) 7 P. 0. R. 70 . 139 
 Havward v. Hamilton, Griff. P. C. 115 . . . 35, 41, 43,45 
 
 1 r Pavement Lighting Co., Griff. P. C. 124 . . . 256 
 
 Hazlehurst v. Rylands, (1890) 9 P. O. R. 1 . . . . 294 
 
 Heald's Patent, In re, (1891) 8 R 0. R. 429 .. . 15, 136 
 Heap V. Hartley, (1889) (C. A.) L. R. 42 Ch. D. 461 ; 58 L. J. 
 Ch 790 ; 6 P. 0. R. 495 ; 61 L. T. 538 ; 38 W. R. 136 ; affirm- 
 inc^ 5 P. 0. R. 603 . . . .7, 181, 183, 187, 216, 247 
 Hearson's Patent, In re, (1884) Grift'. P. C. 309 ; 1 P. 0. R. 213 . 159, 
 
 160, 171 
 
 , (1885) Griff. P. C. 266 128 
 
 Heath & Frost's Patent, /?i re. Griff. P. C. 289 . . . .141 
 
 - Griff. P. C. 310 165 
 
 Heath's Patent, In re, (1853) 8 Moo. P. C. C. 217 ; 2 Web. P. C. 
 
 247 ; M. Dig. 114 204,209 
 
 ^, Smith, (1854) 3 Ell. & Bl. 256 ; 2 C. L. R. 1584 ; 18 Jur. 
 
 601 • 23 L. J. Q. B. 166 ; 2 Web. P. C. 268 . 51, 54, 56 
 
 ,. Urnvin, (1842) 10 M. & W. 684 ; 2 D., N. S. 482 ; 6 Jur. 
 
 1068 ; 12 L. J. Ex. 46 ; 1 Web. P. C. 551 . 295, 299 
 
 ,. , (1845) (Exch.) 14 L. J. Ex. 153 ; 2 Web. P. C. 221 ; 
 
 13 M. & W. 583 220 
 
 ^ (1847) (V. C.) 15 Sim. 552 ; 16 L. J. Ch. 283 . 220 
 
 ^' ' n 852) (Ex. Ch.) 22 L. J. C. P. 7 ; 2 W^eb. P. C. 
 
 236 ; 12 C. B. 522 .. . 45, 98, 103, 115 
 
TABLE OF CASES. XXVll 
 
 PAGE 
 
 Heath v. Unwin, (1855) (H. L.)5 H. L. Cas. 505 ; 16 C. B. 713 ; 
 
 25 L. J. C. P. 8 ; 3 W. R. 625 .. . 45, 220, 233, 235 
 Heathlield v. Green way, (1893) 11 P. 0. R. 17 ; 38 Solors. Jour. 
 
 59 295, 300 
 
 Henderson v. Mostyn Copper Co., (1868) L. R. 3 C. P, 202 . 184 
 Henser v. Hardie, (1894) 11 P. 0. R. 421 . . . . 237, 291 
 Herbert's Patent, hi re, (1867) L. R. 1 P. C. 399 ; 4 IMoo. P. C, 
 
 N. S. 300 200, 209 
 
 Herrburger v. Squire, (1889) 6 P. 0. R. 194 ; affirming 5 P. 0. R. 
 
 581 45, 64, 277, 281 
 
 Hesse v. Stevenson, (1803) 3 B. & P. 565 ; Dav. P. C. 244 . 176 
 
 Heugh V. Chamberlain, (1877) 25 W. R. 742 . . . .189 
 Higgins' Patent, /h re, (1891)9 P. O.R. 74 ... 137 
 
 Higgs V. Goodwin, (1858) 27 L. J. Q. B. 421 ; 5 Jur. N. S. 97 ; 
 
 Ell. Bl. & Ell. 529 31, 237 
 
 Hill's Application, In re, (1888) 5 P. O. R. 599 . . . . 139 
 
 Patent, In re, (1863) 1 Moo. P. C, N. S. 258 ; 9 Jur. N. S. 
 
 1209 ; 12 W. R. 25 ; 9 L. T., N. S. 101 . . 200, 201, 207, 212 
 HiU V. Thompson, (1817) (L. C.) 1 Web. P. C. 229 ; 3 Mer. 622 . 74, 
 
 259 
 
 V. , (1817) (L. C.) 1 Web. P. C. 235 ; 3 Mer. 626 . 43, 71, 
 
 93, 232, 327 
 
 V. , (1818) 2 B. Moo. 424 ; 8 Taunt. 375 ; 1 Web. P. C. 
 
 239 55, 67, 82, 145, 146 
 
 Hills V. Evans, (1862) (L. C.) 31 L. J. Ch. 457 ; 8 Jur. N. S. 525 ; 
 
 6 L. T., N. S. 90 ; 4 De G. F. & J. 288 . 59, 61, 93, 96, 285, 
 
 325 
 
 r. London Gas Light Co., (1857) 27 L. J. Ex. 60 . . 98 
 
 V. , (1860) 29 L. J. Ex. 409 ; 5 H. & N. 312 . 31, 41, 53, 
 
 56, 57, 59, 61, 81 
 Hinde v. Osborne, Griff. P. C. 1 27 ; 2 P. 0. R. 45 . . . 338 
 
 Hindley v. Emery, (1865) L. R. 1 Eq. 52 316 
 
 Hinks V. Safety Lighting Co., (1876) L. R. 4 Ch. D. 6^7 • 46 
 
 L. J. Ch. 185 ; 36 L. T., N. S. 391 . . . . 42, 45, 93, 122 
 Hocking v. Eraser, (1885) Griff. P. C. 129 ; 3 P. O. R. 3 . 334, 338 
 Hocking & Co. v. Hocking, (1886) Grift'. P. C. 129 ; 3 P. r' 
 
 291 293 
 
 Hoffman's Patent, In re, (1889) 7 P. O. R. 92 . . . 139 
 
 Hoffman v. Postill, (1869) (L. J.), L. R. 4 Ch. 673 ; 17 W. R 901 • 
 
 20 L. T., N. S. 893 308,309 
 
 Holland v. Fox, (1853) 1 C. L. R. 440 ; 1 W. R. 448 . . 298 301 
 Holliday v. Heppenstall, (1889) (C. A.) 6 P. O. R. 320 ; L r' 
 41 Ch. D. 109 ; 58 L. J. Ch. 829 ; 61 L. T. 313 ; 37 W. R. 
 
 662 300, 301 
 
 Hollins V. Capper, (1888) 5 P. 0. R. 289 52 
 
 Holmes v. London & North Western Rail. Co., (1852) 22 L J 
 
 C. P. 57 ; Macr. P. C. 13 ; 12 C. B. 831 . . . ' ' 107 
 
 Homan's Patent, In re, (1888) 6 P. O. R. 104 . . . [ 15 
 Honiball's Patent, In re, (1855) 9 Moo. P. C. C. 378 ; 2 Web" 
 
 P. C. 201 ; 3 Eq. R. 225 ; M. Dig. 164 . . .' 212 
 
 V. Bloomer, (1854) 2 Web. P. C. 199 ; 10 Ex. 538 ; 1 Jur 
 
 N. S. 188 ; 24 L. J. Ex. 11 ; 3 W. R. 71 ; 3 C. L. R. 167 ; 
 
 M. Dig. 46 52, 57, 334 
 
XXVlll TABLE OF CASES. 
 
 ' PiGE 
 
 Hookam's Patent, In re, (1886) Griff. L. O. C. 32 . . . 142 
 Hopkinson v. St. James, &c. Electric Light Co., (1893) 10 
 
 P. O. R. 46 . . . . 67, 68, 72, 104, 109, 173, 260, 336 
 Hornblower v. Boulton, (1799) 8 T. R. 95 ; Dav. P. C. 221 ; 1 
 
 Carp. P. C. 156 . • . . . . 26, 29, 34, lOO 
 
 Horrocks v. Stubbs, (1886) 3 P. 0. R. 221 89 
 
 Horsley v. Knighton's Patent, (1869) L. R. 8 Eq. 475 ; 17 W.R. 
 
 1054 ; 21 L. T. R., N. S. 345 ; 39 L. J. Ch. 157 . . . 187 
 Horton V. Mabon, (1862) 12 C. B., N. S. 437 ; 31 L. J. C. P. 255 ; 
 
 10 W. R. 582 ; 6 L. T. R., N. S. 289 . 33, 37, 45 
 v. , (1864) (Ex. Ch.) 16 C. B., N. S. 141 ; 12 W. R. 491 ; 
 
 9 L. T. R., N. S. 815 ; 4 N. R. 66 37, 45 
 
 Houghton's Patent, In re, (1871) 7 Moo. P. C, N. S. 309 ; L. R. 
 
 3 P. C. 461 200, 204 
 
 Househill Co. v. Neilson, (1842) (H. L.) 1 Web. P. C. 673, 676, 
 
 718, n. ; 9 ('. & F. 788 . . 26, 27, 33, 52, 57, 58, 61, 78, 103 
 Household v. Fairburn, (1885) Griff. P. C. 131 ; 2 P. 0. R. 140 . 281 
 
 How V. M'Kernan, (1862) 30 Beav. 547 304 
 
 Huddart v. Grimsliaw, (1803) Dav. P. C. 265 ; 1 Web. P. C. 85 ; 
 
 Carp. P. C. 200 43 
 
 Hu'dies' Patent, In re, (1879) L. R. 4 App. Cas. 174 ; 48 L. J. 
 
 P. C. 20 ; 27 W. R. 493 200 
 
 Hull V. BoHard, (1856) 25 L. J. E.'c. 304 ; 1 H. & N. 134 . 290, 30l, 
 
 302 
 Humpherson v. Syer, (1887) (C. A.) 4 P. 0. R. 184, 407 . 48, 51, 52, 
 
 57 
 Hutchinson's Patent, In re, (1861) 14 Moo. P. C. C. 364 . 204, 211 
 V. Patullo, (1888) (C. A.) 5 P. 0. R. 351 ; alfirming 4 P. O. 
 
 R. 329 89 
 
 Huth's Patent, In re, (1884) Griff. P. C. 292 . . . . 140 
 
 Incandescent Gas Light Co. v. Cantelo, (1895) 12 P. O. R. 262 . 247 
 Ipswich, The Clothworkers of, (1615) Godbolt, 252 ; 1 Roll. R. 4 . 19 
 
 J. 
 
 Jablochkoff's Patent, In re, (1891) L. R. 1891, App. Cas. 293 ; 
 
 60 L J. P. C. 61 ; 8 P. 0. R. 281 ; 65 L. T. 5 . . 209, 214 
 Jackson v. the Duke of Newcastle, (1864) 33 L. J. Ch. 698 . 314 
 
 V. Needle, (1884) 1 P. O. R. 174 256 
 
 V , (1885) Griff. P. C. 133 ; 2 P. 0. R. 191 . 38, 45 
 
 V Wolstenhulmes, (1884) 1 P. 0. R. 105 ; Grift". P. C. 134 . 230 
 
 Jensen v. Smith, (1885) 2 P. 0. R. 249 45 
 
 Jessop's case, (before 1795) Cit. 2 H. Bl. 490 ; Dav. P. C. 182, 
 
 203; 1 Web. P. C. 42, n 146 
 
 Johnson & Atkinson's Patent, In re, (1873) L. R. 6 P. C. 87 . 204, 
 
 205, 212 
 
TABLE OF CASES. XXIX 
 
 PAGE 
 
 Johnson's Patent, In re, C1871) 8 Moo. P. C, N. S. 282 ; L. R. 
 
 4 P. C. 75 201, 203, 208 
 
 , (1877) L. R. 5 Ch. D. 503 ; 46 L. J. Ch. 555 . . 154 
 
 V Edge, (1891—2) (C. A.), L. R. 1892, 2 Ch. 1 ; 61 L. J. 
 
 Ch. 262 ; 66 L. T. 44 ; 40 W. R. 437 ; 9 P. 0. R. 142 . 275, 276, 
 
 277, 281 
 Jones' Patent, In re, (1854) 9 Moo. P. C. C. 41 . . . 213 
 
 Griff. P. C. 313 156 
 
 Griff. P. C. 265 128 
 
 Griff. L. 0. C. 33 137 
 
 Jones V. Berger, (1843) 1 Web. P. C. 544 ; 5 M. & G. 208 ; 6 
 
 Scott, N. R. 208 ; 7 Jiir. 883 ; 12 L. J. C. P. 179 . 295, 
 
 298 299 
 
 V. Lees, (1856) 1 H. «& N. 189 ; 2 Jur. N. S. 645 ; 26 L. J.' 
 
 Ex. 9 179 183 
 
 V. Pearce, (1831) 2 Coop. 58 53 
 
 V. , (1832) 1 Web. P. C. 122 ; 1 Carp. P. C. 524 ; 1 
 
 Lon. Jour. C. S. 215 31, 53, 57, 237 
 
 Jordan v. Moore, (1866) L. R. 1 C. P. 624 ; 12 Jur. N. S. 766 • 
 
 35 L. J. C. P. 268 ; 14 W. R. 769 ' 37 
 
 Joy's Patent, In re, (1893) 10 P. 0. R. 89 . . . . 200 
 Jupe V. Pratt, (1837) 1 Web. P. C. 145 . . 26, 33, 222 234 
 
 K 
 
 Kay's Patent, In re, (1839) 1 Well. P. C. 568 ; 3 Moo. P. C. C. 
 
 24 199, 202, 208 
 
 , (1894) 11 P. 0. R. 279 ; 70 L. T. 756 ; 8 R. 263 . 272 
 
 V. Marshall, (1836) (L. C), 1 My. & Cr. 373 ; 2 Web. P. C. 39 117 
 
 V. , (1839) (C. P.), 2 Web. P. C.71 ; 5 Bing. N. C. 492 • 
 
 7 Scott, 548 ; 2 Arn. 78 ; 8 L. J. C. P. 261 . . 67 
 Kaye v. Chubb, (1887) (C. A.), 4 P. 0. R. 289 ; affirmincr 4 
 
 P- 0. R. 23 .... 62, 96, 334, 338 
 
 V. , (1888) (H. L.), 5 P. 0. R. 641 .. . 107 99q 
 
 Kelly V. Batchelar, (1893) 10 P. 0. R. 289 . . . . ' 237 
 V. Heathman, (1890) L. R. 45 Ch. D. 256 ; 8 P. r'343 • "" 
 
 60 L. J. Ch. 22 ; 63 L. T. 517 ; 39 W. R. 91 . . . [ 107 
 Kennv's Patent Buttonholeing Co. v. Somervell, (1878) 38 L T 
 
 878 ; 26 W. R. 786 ] ISO 
 
 Kensington, &c. Electric Lighting Co. v. Lane Fox Electrical Co 
 
 (1891) L. R. 1891, 2 Ch. 573 ; 64 L. T. 770 ; 39 W. R. 65o"; 
 
 8 P. 0. R. 277 257, 275, 277, 278 
 
 King & Co.'s Trade-marks, (1892) (C. A.), L. R. 1892, 2 Ch 462 • 
 
 9 P. 0. R. 350 ; 67 L. T. 33 ; 40 W. R. 580 ; affirmincr 66 
 
 L. T. 489 .272 
 
 King, Brown & Co. v. Anglo-American Brush Corporation, (1888) 
 (C. A. So. & H. L.), 7 P. O. R. 436 ; 17 Ct. of Sess. Cas. 1266 ; 
 affirming 6 P. O. R. 436. Affirmed by the House of Lords' 
 L. R. 1892, App. Cas. 367 ; 19 Ct. of 'Sess. Cas. H. L. 20 • 9 
 
 P. 0. R. 313 52,62,89 
 
 Knowles v. Bovill, (1870) 22 L. T. Rep. N. S. 70 . 183 
 
XXX TABLE OF CASES. 
 
 PAGE 
 
 Kurtz V. Spence, (1887) L. R. 36 Ch. D. 770 ; 4 P. O. R. 427 ; 
 
 58 L. T. 320 ; 36 W. R. 438 . . , . 277 
 
 V. , (1887) 57 L. J. Ch. 238 ; 58 L. T. 438 ; 5 P. 0. R. 
 
 161 15, 52, 72, 111, 275, 276 
 
 Lain SON v. Treraere, (1834) 1 A. & E. 792 ; 3 N. & M. 603 . 188 
 Lake's Patent, In re, (1887) Grift; L. 0. C. 16 . . . 162, 164 
 
 , Griff. L. O. C. 35 142 
 
 , (1888) 5 P. O. R. 415 24, 137 
 
 , (1891) (P. C.), L. R. 1891, App. Gas. 240 ; 8 P. 0. R. 227 ; 
 
 60 L. J. P. C. 57 204 
 
 Lamb v. Nottingham Manufacturing Co., M. R. 14th March, 
 
 1874, B. 776 ; 'Seton on Decrees, 4th ed. 349 . . 288, 289, 480 
 Lancaster's Patent, In re, (1884) Griff. P. C. 293 ... 140 
 
 Lane Fox's Patent, In re, (1892) 9 P. 0. R. 411 . . . . 208 
 Lane Fox v. Kensington & Knightsbridge Lighting Co., (1892) 
 
 (C. A.), L. R. 1892, 3 Ch. 424^; 9 P. O^ R. 413 ; 67 L. T. 440 ; 
 
 affirming L. R. 1892, 2 Ch. 66 ; 66 L. T. 825 ; 9 P. 0. R. 221 
 
 38, 39, 72, 89, 168 
 Lang's Patent, In re, (1890) 7 P. 0. R. 469 . . . .158 
 
 V. Gisborne, (1862) 31 Beav. 133 ; 8 Jur. N. S. 736 ; 31 
 
 L. J. Ch. 769 ; 10 W. R. 638 ; 6 L. T., N. S. 771 . 63, 64 
 V. Whitecross Co., (1889-90) (H. L.), 7 P. 0. R. 389; 
 
 affirming 62 L. T. 119 ; 6 P. O. R. 570 . . 170, 171, 172, 173 
 
 Law V. Ashworth, (1890) 7 P. 0. R 86 284 
 
 Lawrence's Patent, In re, (1892) 9 P. 0. R. 85 . . . 205, 206 
 Lawrence r. Perry, (1885) 2 P. 0. R. 179 ; Griff. P. C. 143 . 59, 66, 
 
 74, 125, 169, 172 
 Lea V. Saxby, (1875) 32 L. T., N. S. 731 . . . . 306, 307 
 Leadbeater v. Kitchin, (1890) (C. A.), 7 P. O. R. 235. . 38, 122 
 Leather Cluth Co. v. American Leather Cloth Co., (1865) (H. L.), 
 
 11 H. L. Cas. 523 ; 35 L. J. Ch. 53 ; 12 L. T. 742 ; 11 Jur. 
 
 N. S. 513 ; 13 W. R. 873 133 
 
 Ledgard v. Bull, (1886) (P. C), 11 App. Cas. 648 ; 3 P. 0. R. 390 
 
 261, 287, 288 
 Lee's Patent, In re, (1856) 10 Moo. P. C. C. 226 ... 200 
 
 Legge V. Wakelam, (1893) 10 P. O. R. 379 . . . .41 
 
 Lewin v. Brown, (1866) 14 W. R. 640 177 
 
 Lewis V. Davis, (1829) 1 Web. P. C. 488; 3 C. & P. 502 ; 1 Carp. 
 
 P. C. 471 44 
 
 V. Marling, (1829) 10 B. & C. 22 ; 4 C. & P. 56 ; 5 M. & R. 
 
 66 ; 1 Web. P. C. 493 ; 1 Carp. P. C. 478 . 16, 52, 74, 109, 111, 
 
 115, 145 
 Liardet v. Hammond Electric Lighting Co., (1883) 31 W. R. 710 189 
 V. Jolmson, (1778) 1 Web. P. C. 53 ; Bull, N. P. 78 ; 1 Carp. 
 
 P. C. 35 46, 49, 114 
 
 Lifeboat Co. v. Chambers, (1891) (C. A. S.), 8 P. O. R. 418. 51, 109 
 Lister v. Eastwood, (1864) 9 L. T., N. S. 766 . . . . 229 
 
TABLE OF CASES. XXXI 
 
 PAGE 
 
 Lister v. Leather, (1857) (Q. B.), 8 E. & B. 1004 ; 3 Jur. N. S. 433, 
 
 811 ; 5 W. R. 603 ; 29 L. T. 142 . 34, 44, 107, 124, 
 
 228, 230 
 
 V. , (1858) (Ex. Cli.), 27 L. J. Q. B. 295 ; 4 Jur. N. S, 
 
 947 ; 8 E. & B. 1031 44 
 
 V. Norton, (1884) I P. 0. R. 114 ; Griff. P. C. 148 . . 256 
 
 V. , (1885) 2 P. 0. R. 68 ; Griflf. P. C. 149 . . . 304 
 
 V. , (1886) 3 P. 0. R. 199 ; Griff. P. C. 151 . 35, 51, 57, 65, 
 
 78, 98, 133 
 Livet's Patent, In re, (1892) 9 P. 0. R. 327 . . 206, 209, 213 
 
 L'Oiseau & Pierrard's Patent, In re, Griff. L. 0. C. 36 . 138, 140 
 London & Leicester Hosiery Co. v. Griswold, (1886; 3 P. 0. R. 
 
 251 ; Griff. P. C. 154 191 
 
 Longbottom v. Shaw, (1888) (C. A.), 5 P. O. R. 497 ; 6 P. 0. R. 
 
 143 45, 335 
 
 V. , (1889) 6 P. 0. R. 510 ; L. R. 43 Ch. D. 46 ; 58 
 
 L. J. Ch. 734 ; 61 L. T. 325 ; 37 W. R. 792 . 334 
 
 V. , (1891) (H. L.), 8 P. 0. R. 333 .... 42 
 
 Longdendale Cotton Spinning Co., In re, (1878) L. R. 8 Ch. D. 
 
 150; 38 L. T. 776 ; 26 W. R. 491 316 
 
 Lorrain's Patents, In re, (1888) 5 P. 0. R. 142 . . . . 138 
 Losh V. Hague, (1837) 1 Web. P. C. 200 ; 2 Coop. 59 . 37, 51, 56, 
 
 250, 253 
 
 V. , (1839) 7 D. P. C. 495 ; 5 M. & W. 387 ; 3 Jur. 409 ; 
 
 8 L. J. Ex. 251 ; 7 Dowl. 495 334 
 
 Lovell V. Hicks, (1836) 2 Y. & C. 46 ; 5 L. J. Ex. 101 . .181 
 
 Lowe's Patent, In re, (1846) 10 Jur. 363 204 
 
 V. , (1852) 8 Moo. P. C. C. 1 212 
 
 V. , (1856) 25 L. J. Ch. 454 ; 4 W. R. 429 . . . 15 
 
 Lucas's Patent, (1854) Macr. P. C. 235 173 
 
 Lucas V. Miller, (1885) 2 P. O. R. 155 ; Griff. P. C. 156 . 75, 87, 118 
 
 Luke's Patent, /u?-e. Griff P. C. 294 136 
 
 Lyon V. Goddard, (1893) (C. A.), 10 P. 0. R. 121, 334 . 35, 39, 44, 
 
 46, 53, 97, 338 
 V. , (1894) (H. L.), 11 P. O. R. 354 . . . 46, 53 
 
 M. 
 
 McAlpine v. Mangnall, (1846) (Exch. Ch.), 15 L. J. C. P. 298 ; 
 3 C. B. 496 176 
 
 McCormick v. Gray, (1861) 7 H. & N. 25 ; 31 L. J. Ex. 42 ; 9 
 
 W. R. 809 ; 4 L. T., N. S. 832 221, 236 
 
 McDougall V. Partington, (1890) (C. A.), 7 P. O. R. 216 . . 192 
 
 V. , (2), (1890) 7 P. O. R. 351, 472 . . . 311,313 
 
 Macevoy & Grenfell's Patent, In re, (1889) 7 P. 0. R. 151 . . 126 
 Macevoy's Patent, Jri re, (1888) 5 P. O. R. 285 . . . .142 
 Macfarlane v. Price, (1816; 1 Web. P. C. 74 ; 1 Stark. 199 . 106 
 
 Mclnnes' Patent, In re, (1868) 5 Moo. P. C, N. S. 72 ; L. R. 2 
 
 P C. 54 • 37 L. J. P. C. 23 . . . 207 
 
 Macnamara v. Hulse, (1842) C. & M. 471 ; 2 Web. P. C. 128, n. 
 
 109, 327, 328 
 Main's Patent, In re, (1888) 7 P. 0. R. 13 25 
 
XXXll TABLE OF CASES. 
 
 PAGE 
 
 Majiceaux, 7?.';jj«Wfl, (1870) L. R. 6 Ch. 272 . . . .137 
 Mandlebercj v. Morley, (1893) 10 P. 0. R. 256 ; 38 S. J. 24 . 287, 290 
 ]^Iantou V. Manton, (1815) Dav. P. C. 333 ; 1 Carp. P. C. 278 . 323 
 
 V. Parker, (1814) Dav. P. C. 327 ; 1 WeK P. C. 192, n. . 70 
 
 Marsden v. Saville Street Foundry Co., (1878) L. R. 3 Ex. D. 
 203 ; 39 L. T. N. S. 97 ; 26 W. R. 784 . . . 20, 24, 150 
 
 Martin's Patent, In re, Griff. P. C. 320 271 
 
 Mathers v. Green, (1865) (L. C), L. R. 1 Ch. 29 ; 35 L. J. Ch. 1 ; 
 
 11 Jur. N. S. 845 ; 14 W. R. 17 ; 13 L. T., N. S. 420 . 9, 179, 180 
 Meadows v. Kinauan, (1860) 29 L. J. Ex. 205 . . . . 476 
 Medlock's Patent, hi re, (1865) 22 Newt. Lond. Jour. N. S. 69 . 160, 
 
 173 
 Mercier v. Cotton, (1876) L. R. 1 Q. B. D. 442 . . . . 304 
 ]\lever v. Sherwood, (1890) 7 P. O. R. 283 .... 171, 173 
 Miller's Patent, In re, (1894) 11 P. O. R. 55 ; 63 L. J. Ch. 324 ; 
 
 70 L. T. 270 272 
 
 V. Clyt^e Bridge Steel Co., (1890) (C. A. Sc), 8 P. 0. R. 
 
 198 ; afRrmed by H. L. 9 P. 0. R. 470 . 104, 109, 122, 
 
 225, 231 
 
 V. Scarle, (1893) 10 P. 0. R. 106 . . 75, 87, 88, 100, 104, 
 
 109, 125 
 Milligan v. Marsh, (1856) 2 Jur. N. S. 1083 ... 21, 22 
 
 Millington V. Fox, (1838) 3 My. & Cr. 338 252 
 
 Mills V. Carson, (1892) (C.A.), 10 P. 0. R. 9; affirming 9 P. 0. R. 
 
 338 184, 191 
 
 Milner's Patent, In re, (1854) 9 Moo. P. C. C. 39 . . . 212 
 Minter v. Mower, (1837) (K. B.), 6 A. & E. 735 ; 1 N. & P. 595 ; 
 W. W. & D. 262 ; 1 Web. P. C. 142 ; 6 L. J. K. B. 
 
 183 116 
 
 V. Wells, (1834) (Exch.), 5 Tvr. 163 ; 1 Cr. M. & R. 505 ; 1 
 
 Web. P. C. 134 ; 1 Carp. P. C. 639 ; 4 L. J. Ex. 2 ; 
 affirming 1 Web. P. C. 127 ; 1 Carp. P. C. 622 . 13, 15, 
 
 29 233 
 
 V. Williams, (1835) 4 Ad. & Ell. 251 ; 1 Web. P. C. 135 ; 5 
 
 Nev. & M. 647 ; 1 H. & VV. 585 ; 5 L. J. K. B. 60 . . 243 
 
 Mitchell V. Reynolds, (1713) 19 Mod. R. 130; 1 P. Wms. 181 . 49 
 Moore v. Bennett, (1884) 1 P. 0. R. 129 ; GrifF. P. C. 158 . 43, 107, 
 
 108,121, 339, 471 
 
 V. Thomson, see Tliomson v. Monre (H. L.) 
 
 More wood v. Tupper, (1855) 3 C. L. Rep. 718 . 
 Morgan's Patent, In re, (1843) 1 Web. P. C. 737 
 
 , (1876) 24 W. R. 245 
 
 — -, (1886) Gritf. L. O. (J. 17 
 
 , (1887) 5 P. O. R. 186 ; 58 L. T. 713 . 
 
 Morgan v. Fuller, (1866) L. R. 2 Eq. 296, 297 ; 14 L. T. 
 N. S. 353; 14 W. R. 497 . 
 
 V. Seaward, (1835) (V. C), 1 Web. P. C. 167 . 
 
 V. (1836) (N. P.), 1 AVel). P. C. 170 ; 1 Carp, 
 
 91,104,109,114,2.33,327 
 
 V. (1837) (E.xch.), 2 M. & W. 544 ; Mur. & H. 55 ; 1 
 
 Jur. 527 ; 1 AVeb. P. C. 187 ; 1 Carp. P. C. 96 ; 
 6 L. J. E.x. 153 . 48, 51, 53, ,56, 57, 67, 70, 74, 79, 
 
 81, lUO, 145 
 
 
 229 
 
 . 197 
 
 210 
 
 
 187 
 
 . 162, 
 
 165 
 
 
 269 
 
 . Rep. 
 
 
 
 298 
 
 
 52 
 
 C. 37. 
 
 73, 
 
TABLE OF CASES. XXXlll 
 
 Morgan v. Windover, (1887) 4 P. 0. R. 417 .. . 35, 75 
 
 V. , (1888) (G. A.), 5 P. O. E. 295 . . . . 52 
 
 V. , (1890 (H. L.), 7 P. O. R. 131 . . 35, 36, 45, 73 
 
 V. , (189U) 7 P. O. R. 446 293, 295 
 
 Morris v. Bransom, (1776) BiiU. N. P. 76 ; 1 Web. P. C. 51 ; 1 
 
 Carp. P. C. 30 34 
 
 Moseley v. Victoria Rubber Co., (1886) 3 P. O. R. 351 ; 55 L. T. 
 
 482 ; Gritf. P. G. 482 306 
 
 V. , (1887) 4 P. 0. R. 241 ; 57 L. T. 142 . 66, 83, 87, 88 
 
 Moser v. Marsden, (1891) 9 P. O. R. 214 218 
 
 V. , (1893) (G. A.) 10 P. O. R. 350 ; reversing 10 P. O. R. 
 
 205 21, 22, 34, 41, 168 
 
 V. Sewell, (1893) 10 P. 0. R. 365 .... 255, 257 
 
 Mosey's Patent, In re, (1858) 25 Beav. 581 ; Higgins' Dig. 339 ; 
 
 6 W. R. 612 187 
 
 Moss V. Malings, (1886) L. R. 33 Gh. D. 603 ; 35 W. R. 165 ; 56 
 
 L. J. Gh. 126 ; 3 P. 0. R. 373 ; Gritf. P. G. 166 . 42, 45, 52, 303 
 Muirhead v. Gommercial Gable Go., (1894) (G. A.), 12 P. O. R. 
 
 39; reversing 11 P.O. R. 317 192 
 
 Mullins V. Hart, (1852) 3 Car. & K. 297 . . . . 52, 56 
 Muntz's Patent, In re, (1846) 2 Web. P. C. 113. 199, 201, 202, 212 
 
 V. Foster, (1843-4) 2 Web. P. G. 93 ; 1 Dowl. & Low, 942 . 35, 
 
 59, 96, 219, 233, 238, 243, 256, 318, 327 
 Murchlandu Nicholson, (1892) (G. A. Sc), 10 P. 0. R. 417 ; 20 
 
 Ct. of Sess. Cas. 10U6 234 
 
 Murray v. Clayton, (1872) (L. J.), L. R. 7 Gh. 570 ; 20 W. R. 649 ; 
 
 27 L. T., N. S. 110 . . 44,45,46,53,229,233 
 
 V. , (1872) (V. C), 21 W. R. 118 ; 42 L. J. Gh. 191 ; 
 
 L. R. 15 Eq. 115 ; 27 L. T., N. S. 644. . 264, 308 
 Muskett V. HiU, (1839) 5 Bing. N. G. 694 ; 7 Scott, 855 . . 181 
 
 N. 
 
 Nairn's Patent, In re, (1891) 8 P. O. R. 444 . . . . 165 
 Napier's Patent, In re, (1861) 13 Moo. P. G. C. 543 ; 9 W. R. 
 
 390 198 
 
 Needham v. Johnson, (1884) 1 P. 0. R. 49 ; Griff. P. G. 168 29, 94 
 
 r. Oxley, (1863) 11 W. R. 852 ; 8 L. T., N. S. 604 ; 2 N. R. 
 
 388 261, 285 
 
 V. , (1863) 1 H. & M. 248 . . . . 287, 288, 492 
 
 Neilson v. Belts, see Betts v. Neilson (H. L.). 
 
 t). Forman, (1841) 2 Coop. 61, n 257 
 
 V. Fothergill, (1841) (L. G.), 1 Web. P. C. 287 . . . 190 
 
 V. Harford, (1841) 1 Web. P. C. 295 . 78, 81, 93, 96, 100, 111, 
 
 223 233 327 
 
 V. (1841) (Exch.), 1 Web. P. G. 331 ; 8 M. & W. 806 ;' 
 
 11 L. J. Ex. 20 ; 10 L. J. Ex. 493 . 26, 28, 29, 78, 
 81, 111, 116, 122, 223, 302, 326 
 
 V. Thompson, (1841) 1 Web. P. G. 278 ; 2 Coop. 61, n. 92, 257 
 
 Nettlefolds v. Reynolds, (1891) 8 P. O. R. 410 ; 65 L. T. 699 . 300 
 V. , (1891-92) 9 P. 0. R. 270 . . . . 33, 225 
 
XXXIV TABLE OF CASES. 
 
 PAGE 
 
 Newall V. Elliot, (1858) 4 C. B., N. S. 2G9 ; 4 Jur. N. S. 562 ; 
 
 27 L. J. C. P. 337 57, 85 
 
 V. , (1863) (Exch.), 32 L. J. Ex. 120 ; 1 H. & C. 797 ; 
 
 9 Jur. N. S. 359 ; 11 W. R. 438 ; 7 L. T. R., N. S. 
 753 194 
 
 V. (1864) (Exch.), 10 Jur. N. S. 954 ; 13 W. R. 11 ; 
 
 10 L. T. R,, N. S. 792 ; 4 N. R. 429 . 31, 84, 221, 
 
 242 
 
 t'. Wilkins, (1851) 17 L. T. Rep. 20 329 
 
 V. Wilisoii, (1852) 2 De G. M. & G. 282 ; 19 L. T. Rep. 161. 257 
 
 Newbery v. James, (1817) 2 Mer. 446 ; 1 Carp. P. C. 367 . 92, 147 
 Newby v. Harrison, (I860) 1 J. & H. 393 ; 3 De G. F. & J. 287. 181 
 
 Newsum v. Mann, (1890) 7 P. O. R. 307 46 
 
 Newton's Patent, In re, (1861) 14 Moo. P. C. C. 156 . . . 201 
 
 , (1862) 15 Moo. P. C. C. 176 ; 10 W. R. 731 ; 9 Jur. N. S. 
 
 109 208 
 
 , (1884) L. R. 9 App. Cas. 592; 1 P. O. R. 177 ; 52 L. T. 
 
 329 205, 212 
 
 V. Grand Junction Rail Co., (1846) 5 Ex. 331 ; 20 L. J. Ex. 
 
 427, n. ; M. Dig. 75 . . . .50, 225, 227, 328 
 
 V. Vaucher, (1851) 21 L. J. Ex. 305 ; 6 Ex. 859 . 78, 98, 229 
 
 Nickel's Patent, In re, (1841) 1 Web. P. C. 650 ; 4 Beav. 563 . 154 
 
 V. Haslam, (1844) 13 L. J. C. P. 146 ; 8 Scott, N. R. 97 ; 7 
 
 M. & G. 378 ; 8 Jiu\ 474 81, 82 
 
 V. Ross, (1849) 8 C. B. 679 21, 23 
 
 Nobel's Explosives Co. v. Anderson, (1894) (C. A.), 11 P. 0. R. 
 519 ; affirming 11 P. O. R. 115 ; affirmed by House of 
 Lords, 12 P. 0. R. 164 . 34, 94, 98, 222, 225, 234, 334 
 
 r. Jones, Scott & Co. (1880-n (C. A.), L. R. 17 Ch. D. 721 ; 
 
 50 L. J. Ch. 582 ; 44 L. T. 593 ; 30 W. R. 294 . 240, 
 
 242 
 
 V. , (1882) (H. L.), L. R. S App. Cas. 5 ; 52 L. J. Ch. 
 
 339 ; 48 L. T. 490 ; 31 W. R. 388 . . . 242 
 Noble's Patent, In re, (1850) 7 Moo. P. C. C. 191 . 209, 211, 213 
 Nordenfelt's Patent, In re, (1886) Griff. L. O. C. 18 . . 157, 165 
 
 V. Gardner, (1884) 1 P. 0. R. 61 ; Griff. P. C. 174 . 122, 225, 
 
 228 333 
 North British Rubber Co. v. Macintosh & Co., (1894) 11 P. O. R.' 
 
 477 338 
 
 Norton's Patent, In re, (1863) 1 Moo. P. C, N. S. 339 ; 9 Jur. 
 
 N. S. 419 ; 11 W. R. 720 ; 1 N. R. 557 . 198, 200, 206, 
 
 209 
 
 V. Brooks, (1861) 7 H. & N. 499; 8 Jur. N. S. 155; 10 
 
 W. R. Ill 191 
 
 Nunn-y. D' Albuquerque, (1865) 34 Beav. 595 . . . .265 
 Nussey v. Leachman's Patent, (1889) 7 P. 0. R. 22 . . . 206 
 Nuttail V. Hargreaves, (1891) (C. A.) L. R. 1892, 1 Ch.'23 ; 61 
 L. J. Ch. 94 ; 65 L. T. 597 ; 40 W. R. 200 ; 8 P. O. R. 450 ; 
 affirming 8 P. O. R. 273 89 
 
TABLE OF CASES. XXXV 
 
 O. 
 
 PAOK 
 
 Oldham v. Langmead, (before 1789) Cit. 3 T. R. 439, 441 . .188 
 Oimson V. Clarke, (1862) 32 L. J. C. P. 8 ; 13 C. B., N. S. 337 ; 
 9 Jur. N. S. 749 ; 11 W. R. 118 ; 7 L. T., N. S. 
 
 361 ; 1 N. R. 61 37, 45 
 
 V. (1863) (Ex. Ch.), 32 L. J. C. P. 291 ; 14 C. B., N. S. 
 
 475 ; 10 Jur. N. S. 128 ; 11 W. R. 787 ; 2 N. R. 192 . 33, 45 
 Otto V. Linford, (1882) 46 L. T., N. S. 35 . 27, 59, 72, 73, 94, 100, 
 
 104, 109,115 
 
 V. Steel, (1885) Griff. P. C. 180 ; 3 P. O. R. 109 ; L. R. 31 
 
 Ch. D. 241 ; 54 L. T. 157 ; 55 L. J. Ch. 196 ; 34 W. R. 289 . 63, 
 
 64, 193, 332 
 Oxford and Cambridge Universities v. Richardson, (1802) 6 Ves. 
 
 689 240, 255 
 
 Oxley V. Holden, (1860) 30 L. J. C. P. 68 ; 8 C. B., N. S. 666 ; 8 
 W. R. 626 ; 2 L. T., N. S. 464 . . 52, 57, 65, 78, 97, 98, 243 
 
 Palmer v. Cooper, (1853) 9 Ex. 231 ; 23 L. J. Ex. 82 ; 2 C. L. R. 
 
 430 ... . 296 297 299 
 
 V. Wagstaff, (1853) 8 Ex. 840 ; 17 Jur. 781 ; 22 L. J. Ex.' 
 
 295 ; 1 W. R. 438 ; 1 C. L. R. 448 .. . 298 
 
 V. , (1854) 9 Ex. 494 ; 23 L. J. Ex. 217 ; 2 C. L. R. 
 
 1052 94 
 
 Parker v. Maignen's Filtre Rapide Co., (1888) 5 P. 0. R. 207 . 303 
 Parkes v. Stevens, (1869) (L. C.) L. R. 8 Eq. 358 ; 38 L. J. Ch. 
 627 ; 17 W. R. 846 ; affirmed L. R. 5 Ch. 36 ; 18 W. R. 
 233 ; 22 L. T. R., N. S. 635 . . 37, 93, 108, 118, 230, 231, 327 
 Parkinson v. Simon, (1894) (C. A.) 11 P. 0. R. 238, 493 . 96, 98, 
 
 99 122 334 337 
 Parnell's Patent, In re, (1888) 5 P. 0. R. 126 . . ' .' .' 186 
 Parnell v. Mort, Liddell & Co., (1885) (C. A.) L. R. 29 Ch. D. 
 325 ; 2 P. O. R. 55 ; 53 L. T. 186 ; 33 W. R. 481 ; Griff. P. C. 
 
 182 334 
 
 Patent Bottle Envelope Co. v. Seymer, (1858) 5 C. B., N. S. 164 ; 
 
 5 Jur. N. S. 174 ; 28 L. J. C. P. 22 . . . . 33, 227 
 
 Patent Type Founding Co. v. Richards, (1860) 2 L. T. R., N. S. 
 
 359 289 
 
 Patent Tvpe Founding Co. v. Walter, (1860) 8 W. R. 353; Johns. 
 
 727 313 
 
 V. 5 H. & N. 192 ; 29 L. J. Ex. 207 ; 6 Jur. N. S. 
 
 103 ; 1 L. T., N. S. 382 475 
 
 Patterson's Patent, In re, (1849) 6 Moo. P. C. C. 469 ; 13 Jur. 
 
 593 206 
 
 Patterson v. Gas Light & Coke Co., (1876) (C. A.) L. R. 2 Ch. D 
 
 812 ; 45 L. J. Ch. 843 ; 35 L. T. R., N. S. 11. 8, 
 
 17,67 
 
 V. , (1877) (H. L.) L. R. 3 App. Cas. 239 ; 47 L. J. Ch. 
 
 402 ; 38 L. T., N. S. 303 ; 26 W. R. 482 . 16, 26, 48, 51, 61 
 
 Patteson v. Holland, (1845) Hindmarch, 293 . . . .318 
 
 c 2 
 
XXXVl TABLE OF CASES. 
 
 PAOE 
 
 Peckover v. Rowland, (1893) 10 P. O. R. 234 ; affirming 10 
 
 P. O. R. 118 122, 231, 301, 303 
 
 Penn v. Bibby and Peim v. Jack, (1866) L. R. 1 E(i. 548 . . 302 
 
 V. ,(1866) L. R. 3Eq. 308; 36 L. J. Oh. 277; 15 
 
 L. T. R., N. S. 385 .. . 256, 263, 329, 331 
 
 V. , (1866) L. R. 2 Ch. 127 ; 36 L. J. Ch. 455 ; 15 W. R. 
 
 208 ; 15 L. T. R., N. S. 399 . . 35, 37, 41, 85, 
 
 86,88 
 
 V. , (1866) L. R. 2 Eci. 314 ; 14 L. T. R., N. S. 495 ; 
 
 14 W. R. 760 323, 324 
 
 V. , (1867) L. R. 5 Eq. 81 ; 37 L. J. Ch. 136 ; 16 W. R. 
 
 243 ; 17 L. T., N. S. 407 263 
 
 V. Fernie, (1866) L. R. 3 Eq. 308 331 
 
 Pei-kin's Patent, In re, (1845) 2 AVeb. P. C. 6 . . 198, 205, 213 
 Peroni v. Hudson, (1884) 1 P. O. R. 261 ; Griff. P. C. 261 . 330, 335 
 Perry v. Mitchell, (1840) 1 Web. P. C. 269 .... 291 
 
 V. Skinner, (1837) Hindmarch, Patents, p. 207 ; 2 M. & W. 
 
 471 ; M. & K. 122 ; 1 Jur. 433 ; 1 Web. P. C. 250 ; 6 L. J. 
 
 Ex. 124 173 
 
 Pether v. Shaw, (1893) 10 P. O. R. 293 Ill 
 
 Petnian v. Bull, see Ledgard v. B^ill (P. C). 
 
 Phillips V. Ivel Cycle Co., (1890) 7 P. O. R. 77 ; 62 L. T. 392 . 333 
 Philpott V. Hanbury, (1885) 2 P. O. R. 33 ; Gntf. P. C. 185 . 59, 
 
 61, 73, 108 
 Pickard v. Prescott, (1890) (C. A. S.) 7 P. 0. R. 361 ; 17 Court 
 
 of Sess. Cas. 1102 ; 27 Sc. L. R. 933 . . 63, 125 
 
 V. , (1892) (H. L.) 9 P. 0. R. 195 ; 19 Court of Sess. 
 
 Cas. H. L. 56 51, 63 
 
 Pietschmann's Patent, In re, Griff. P. C. 314 . . . .159 
 Piggott V. Anglo-American Telegraph Co., (1868) 19 L. T. R., 
 
 N. S. 46 311 
 
 Pinkus' Patent, /?i re, (1847) 12 Jur. 233 .... 205,207 
 Pirrie v. York St. Spinning Co., (1892-4) (C. A. I.) IIP. O. R. 
 429 ; L. R. 1894, Ir. R. 417 ; affirming 10 P. O. R. 34 ; L. R. 
 
 Ir. 31 Ch. 3 41, 49, 73, 75, 81, 303, 339 
 
 Pitman's Patent, In re, (1871) 8 Moo. P. C, N. S. 293 ; L. R. 
 
 4 P. C. 84 198, 210 
 
 Plating Co. v. Far(iuharson, Griff. P. C. 187 .. . 98. 311 
 Plimpton V. Malcolmson, (1875) (M. R.) L. R. 20 Eq. 37 ; 44' 
 
 L. J. Ch. 257 ; 23 W. R. 404 . . . 64, 256, 473 
 
 V. , (1876) L. R. 3 Ch. D. 531 ; 45 L. J. Ch. 505 ; 34 
 
 L. T. R., N. S. 340 . 21, 58, 59, 62, 64, 100, 105, 109, 
 
 112, 153, 321, 490 
 
 V. Spiller, (1876) 20 Sols. Jour. 1876, p. 860 . . . 299 
 
 V. , (1876) (C. A.) L. R. 4 Ch. D. 286 ; 35 L. T. 656; 
 
 25 W. R. 152 258, 473 
 
 V. , (1877) (C. A.) L. R. 6 Ch. D. 412 ; 47 L. J. Ch. 
 
 211; 37 L. T. 56; 26 W. R. 285 . 61,64,67,94,118,122,123 
 Poole's Patent, lure, (1867) 4 Moo. P. C, N. S. 452 ; L. R. 1 
 
 C. P. 514 ; 36 L. J. P. C. 76 203, 208 
 
 Pooley V. Pointon, (1885) Griff. P. C. 200 ; 2 P. O. R. 167. . 333 
 Postcard Automatic Supply Co. v. Samuel, (1889) 6 P. O. R. 
 560 184 
 
TABLE OF CASES. XXXVll 
 
 PAGE 
 
 Preston Davies v. Black, (1894) (C. A. Sc.) 11 P. O. R. 574 ; 
 
 affirming 11 P. 0. R. 299 225, 229, 242 
 
 Price's Patent Candle Co. v. Baiiwen's Patent Candle Co., (1858) 
 
 4 K. & J. 727 260, 265 
 
 Printing and Numerical Registering Co. v. Sampson, (1875) 44 
 L. J. Ch. 705 ; L. R. 19 Eq. 462 ; 32 L. T. R., N. S. 354 ; 23 
 
 W. R. 463 179 
 
 Proctor V. Bayley, (1889) (C. A.) L. R. 42 Ch. D. 390 ; 6 P. 0. R. 
 538 ; 59 L. J. Ch. 12 ; 61 L. T. 752 ; 38 W. R. 100 ; 
 reversing 6 P. 0. R. 106 . . 238, 241, 251, 316, 338 
 
 V. Bennis, (1887) (C. A.) L. R. 36 Ch. D. 740 ; 4 P. O. R. 
 
 333 ; 57 L. J. Ch. 11 ; 57 L. T. 662 ; 36 W. R. 456 . 27, 
 
 33, 119, 219, 223,224, 233 
 V. Sutton Lodge Chemical Co., (1888) 5 P. O. R. 184 . 317, 332 
 
 R. 
 
 Railway and Electric Appliances Co., Re, (1888) L. R. 38 
 
 Ch. D. 597 ; 57 L. J. Ch. 1027 ; 59 L. T. 22 ; 36 W. R. 730 . 178 
 Ralston v. Smith, (1865) (H. L.) 11 H. L. C. 223; 20 C. B. 
 
 N. S. 28 ; 13 L. T. R., N. S. 1 ; 35 L. J. C. P. 49 . . 37, 164 
 Redges v. MuUiner, (1892) 10 P. 0. R. 21 . . . . 184, 265 
 Redmund's Patent, In re, (1828) 1 Web. P. C. 649, n. ; 5 Russ. 
 
 44 154 
 
 R. V. Arkwright, (1785) 1 Web. P. C. 64 ; Dav. P. C. 61 ; 
 
 Printed Cases, fol. Lon. 1785 ; 1 Carp. P. C. 53. 15, 49, 
 
 70 92 96 
 
 V. County Court Judge of Halifax, (1891) (C. A.) L. R. 1891, ' 
 
 2 Q. B. 263 ; 8 P. 0. R. 342 ; 60 L. J. Q. B. 550 ; 65 
 L. T. 104 ; 39 W. R. 545 ; affirming L. R. 1891, 1 
 Q. B. 793 ; 8 P. O. R. 338 ; 39 W. R. 492 . . 1, 318 
 
 V. Crampton, (1886) 3 P. O. R. 367 132 
 
 V. Cutler, (1847) 3 0. & K. 215 ; Macr. P. C. 124 ; 14 Q. B. 
 
 372, n 38, 111 
 
 V. Else, (1785) 1 Web. P. C. 76 ; Bull N. P. 76 ; Dav. 
 
 P. C. 144 78 
 
 V. Lister, (1826) Web. P. L. 80 233 
 
 V. Metcalf, (1817) 2 Stark. R. 249 ; 1 Web. P. C. 141, n. . 79, 
 
 104 
 
 V. Mill, (1850) 20 L. J. C. P. 16 ; 10 C. B. 379 ; 15 Jur. 
 
 59 ; 1 L. M. & P. 695 163, 165 
 
 V. , (1851) 14 Beav. 312 163 
 
 V. Wallis, (1886) 3 P. 0. R. 1 132 
 
 V. Wheeler, (1819) 2 B. & Aid. 345 ; 1 Carp. P. C. 394 . 13, 
 
 15, 32, 79, 109, 146 
 Renard v. Levinstein, (1864) (V.-C.) 3 N. R. 665 ; 10 L. T. R., 
 
 N. S. 94 306 
 
 V. , (1864) (V.-C.) 11 L. T. R., N. S. 505 ; 13 W. R. 229. 73, 
 
 303 
 V. , (1864) (L. J.) 10 L. T., N. S. 177 . . . 22, 256 
 
XXXVIU TABLE OF CASES. 
 
 PAGB 
 
 Renard v. Levinstein, (1865) (V.-C.) 2 Hem. & M. 628 ; 5 N. R. 
 
 301 ; 11 L. T., N. S. 766 ; 13 W. R. 382 . . 7, 184, 216 
 
 Roberts' Patent, In re, (1839) 1 Web. P. C. 573 . . . . 202 
 
 Robinson's Patent, In re, Gritf. P. C. 267 128 
 
 Roden v. London Small Arms Co., (1876) 46 L. J. Q. B. 213 . 183 
 Rolls V. Isaacs, (1878) L. R. 19 Ch. D. 268 ; W. N. 
 (1878), p. 37; 51 L. J. Ch. 170; 45 L. T. 704; 30 W. R. 243. 69, 
 
 150 
 Roper's Patent, In re, (1887) 4 P. 0. R. 201 .. . 205, 206 
 Rose's Patents Co. v. Braby, (1894) 11 P. 0. R. 198 . . 38, 262 
 
 Rothwell's Patent, In re, Gritf. P. C. 320 271 
 
 Rothwell V. King, (1886) 3 P. 0. R. 379 256 
 
 Rowcliffe V. Longford Wire, Iron and Steel Co., (1887) 4 P. 0. R. 
 
 281 45 
 
 V. Morris, (1885) 3 P. 0. R. 17 107 
 
 V. , (1886) 3 P. O. R. 145 334 
 
 Ruberv's Patent, In re, (1837) 1 Web. P. C. 649, n. . . . 154 
 Rusliton V. Crawlev, (1870) L. R. 10 Eq. 522 . . 33, 45, 117 
 Russell's Patent, lii re, (1857) Goodeve P. C. 589 ; 2 De G. & J. 
 
 130 ; 6 W. R. 95 ; 30 L. T. Rep. 178 . . .15, 136, 180 
 Russell V. Cowley, (1834) (L.C.) 1 Web. P. C. 457, 459, 471 ; 2 
 
 Coop. C. C. 59, n. ; 1 Carp. P. C. 532 . 31, 44, 
 
 94 255 
 
 V. , (1835) 1 Cr. M. & R. 864 ; 1 Web. P. C. 463 ; l' 
 
 Carp. P. C. 557 34, 44, 94, 234 
 
 V. Crichton, (1837) 15 Dec. of Ct. of Sess. 1270 ; 1 Web. 
 
 P. C. 667, n 311 
 
 V. Hatfield, (1885) Griff. P. C. 204 ; 2 P. 0. R. 144 . . 289 
 
 V. Ledsam, (1843) 11 M. & W. 647 ; 7 Jur. 585 ; 1 D. & L. 
 
 347 ; 12 L. J. Ex. 439 . . . 295, 296, 299 
 
 V. , (1845) 14 M. & W. 574 ; 14 L. J. Ex. 353 . 131, 233 
 
 Rylands' Patent, In re, (1888) 5 P. 0. R. 665 . . . .165 
 V. Asliley's Patent Bottle Co., (1890) 7 P. 0. R. 175 . . 309 
 
 S. 
 
 Samuda's Patent, In re, (1846) Cit, Hind, on Pat. 534 . .134 
 Savory v. Price, (1823) 1 Web. P. C. 83 ; 1 Ry. & Mo. 1 . 109, 116 
 Saxby's Patent, In re, (1870) L. R. 3 P. C. 292 ; 7 Moo. P. C. C, 
 
 N. S. 82 ; 19 W. R. 513 199, 201, 204 
 
 Saxby v. Gloucester Waggon Co., (1880) W. N. 1880, p. 28 . 315 
 
 V. , (1880) L. E. 7 Q. B. D. 305 ; 50 L. J. Q. B. 577 . 38, 
 
 45 
 
 V. , (1883) (H. L.) Griff. L. 0. C. 54 . . . . 15 
 
 Schlumberger's Patent, In re, (1853) 2 Eq. R. 1 ; 9 Moo. P. 
 
 C. C. 1 212 
 
 Scott and Young, Ex parte, (1871) L. R. 6 Ch. 274 ; 19 W. R. 
 
 425 15, 18 
 
 Seed V. Higgins, (1860) (H. L.) 8 H. L. C. 550 ; 30 L. J. Q. B. 
 
 314 ; 6 Jur. N. S. 1264 ; 3 L. T. R., N. S. 101 . 29,33, 93, 117, 
 
 165, 321, 328 
 
TABLE OF CASES. 
 
 XXXIX 
 
 86; 
 154 
 
 Sellers v. Dickinson, (1850) 5 Ex. 312 ; 20 L. J. Ex. 417 . 227, 
 Semet's Patent, In re, (1894) 12 P. O. K. 10 ; L. K. 1895, A. C. 
 
 78 
 
 Seirell's Patent, In re, (1888) 6 P. 0. R. 101 
 ShuUenberger's Application, In re, (1889) 6 P. 0. R. 550 
 Sharp's Patent, In re, (1840) 1 Web. P. C. 641 ; 10 L. J. Cli 
 
 3 Beav. 245 
 
 Sharp V. Brauer, (1886) 3 P. 0. R. 193 ; Griff. P. C. 205 
 Shaw V. Bank of England, (1852) 22 L. J. Ex. 26 
 
 V. Beck, (1853) 8 Ex. 392 
 
 V. Day, (1894) 11 P. O. R. 185 . 
 
 Sheehan v. Great Eastern Rail. Co., (1880) L. R. 16 Ch. D 
 
 50 L. J. Ch. 68 ; 43 L. T. 432 ; 29 W. R. 69 . 
 Shone's Patent, In re, (1892) 9 P. O. R. 438 
 Siddell's Patent, In re, Griff. P. C. 320 
 
 PAGE 
 
 .328 
 
 209 
 
 165 
 
 25 
 
 311, 
 
 167 
 
 45 
 
 476 
 
 . 324 
 
 99, 193 
 
 59; 
 
 180, 216 
 . 206 
 
 . 271 
 Vickers, (1887) (C. A.) 5 P. 0. R. 81, 416 ; L. R. 39 
 
 Ch. D. 92 ; 59 L. T. 575 . . 85, 87, 89, 259, 504 
 , (1890) (H. L.) L. R. 15 App. Cas. 496 ; 7 P. 0. R. 
 
 292 ; 60 L. J. Ch. 105 ; 63 L. T. 590 ; 39 W. R. 
 
 385 35, 43, 85, 124, 130, 504 
 
 V. , (1889) 61 L. T. 223 ; 6 P. 0. R. 464 
 
 V. , (1892) 9 P. O. R. 152 . 
 
 Sidebottom v. Fielden, (1891) 8 P. 0. R. 266 . 
 Sielaff's Application, In re, (1888) 5 P. 0. R. 484 
 Siemens v. Karo, (1891) 8 P. 0. R. 376 
 Sillar's Patent, In re, (1882) Good. P. C. 581 
 Simister's Patent, In re, (1842) 1 Web. P. C. 
 
 P. C. C. 164 
 
 Simon, Ex parte, see In re Van Gelder's Patent. 
 
 Simpson v. Holliday, (1864) 20 Newt. Lond. Jonr. N. S. 105 
 
 V. (1865) (L. C), 13 W. R. 577 ; 12 L. T. R., N. S. 99 
 
 21 Newt. Lond. Jour. N. S. Ill ; 5 N. R. 340 
 
 721 
 
 264 
 
 . 264 
 
 298, 300, 313 
 
 . 139 
 
 . 298, 300 
 
 . 200, 207 
 
 4 Moo. 
 
 . 205 
 
 (1866) (H. L.), L. R. 1 H. L. 315 
 
 Singer v. Stassen, (1884) (C. A.) 1 P. 0. R. 121 
 
 50 L. T. 326 
 
 Singer Manufacturing Co. v. Wilson, (1865) 
 
 L. T., N. S. 140 ; 13 W. R. 560 ... . 
 Skinner v. Perry, (1892) (C. A.), L. R. 1893, 1 Ch. 413 
 
 Ch. 196 ; 67 L. T. 696 ; 41 W. R. 217 ; 2 R. 
 
 P. 0. R. 1 ; affirming 9 P. 0. R. 406 . 
 Slazenger v. Feltham, (1888) 6 P. 0. R. 130 . 
 Smith's Patent, In re, (1850) 7 Moo. P. C. C. 133 
 
 , (1855) Macr. P. C. 232 
 
 Griff. P. C. 268 
 
 (1885) (P. C), 2 P. O. R. 14 ; Griff. P. C. 263 . 
 
 V. Buckingham, (1870) 18 W. R. 314 ; 21 L. T.,N. S 
 
 V. Cropper, see Cropper v. Smith (H. L.). 
 
 V. Davidson, (1857) 19 C. S. 691 
 
 V. Dickenson, (1804) 3 B. & P. 630 . 
 
 116, 
 234 
 
 104, 
 117 
 35L. J.Ch.811. 32, 
 74, 109, 117 
 Griff. P. C. 207 ; 
 
 . 170, 172, 214 
 5 N. R. 505 ; 12 
 
 . 311, 313, 476 
 ; 62 L. J. 
 179; 10 
 
 160, 
 
 819, 
 
 275 
 193 
 213 
 173 
 1,30 
 196 
 181, 
 189 
 
 53 
 
 148 
 
xl TABLE OF CASES. 
 
 PAGE 
 
 Smith V. Lang, (1890) 7 P. 0. R. 148 298 
 
 V. L. & N. W. Rail. Co., (1853) 2 E. & B. 69 ; 17 Jur. 1071 ; 
 
 Macr. P. C. 188 180, 227 
 
 V. L. & S. W. Rail. Co., (1854) Kay, 408 ; 23 L. J. Ch. 
 
 562 ; 23 L. T. R. 10 ; 2 Eq. Rep. 428 ; 2 W. R. 310 . 253 
 
 V. Neale, (1857) 26 L. J. C. P. 143 ; 2 C. B., N. S. 67 ; 3 
 
 Jur. N. S. 516 ; 5 W. R. 563 ; 28 L. T. 87 ; 29 
 
 L. T. 93 177 
 
 r. Scott, (1859) 6 C. B. N. S. 771 ; 28 L. J. C. P. 325 ; 5 
 
 Jur. N. S. 1356 191 
 
 V. Upton, (1843) 6 M. & G. 251 319 
 
 Soames' Patent, In re, (1843) 1 Web. P. C. 729 . 24, 196, 197, 198 
 Societe Anonyme Trade Mark, In re, (1893) 10 P. O. R. 290 . 272 
 Societe Anonyme des Manufactures de Glaces v. Tilghman's 
 Patent Sand Blast Co., (1883) (C. A.), L. R. 25 Ch. D. 1 ; 53 
 L. J. Ch. 1 ; 49 L. T. 451 ; 32 W. R. 71 ; 48 J. P. 68 ; Griflf. 
 
 P. C. 209 183, 246 
 
 Solvo Laundry Co. v. Mackie, (1893) 10 P. 0. R. 68 . . . 301 
 Southby's Patent, In re, (1891) L. R. 1891, App. Cas. 432 ; 8 
 
 P. 0. R. 433 200, 206 
 
 Speckhart v. Campbell, Solicitors' Jour. Feb. 2, 1884 . . 285 
 
 Spencer v. Ancoats Vale Rubber Co., (1888) 6 P. 0. R. 46 . 217, 337, 
 
 338 
 
 V. Jack, (1864) (L. C), 11 L. T. R., N. S. 242 . . . 327 
 
 Spicer v. Todd, (1839) 1 D. P. R. 306 217 
 
 Spilsbury v. Clough, (1842) 2 Q. B. 466 ; 2 G. & D. 17 ; 6 Jur. 
 
 579 ; 1 Web. P. C. 255 ; 11 L. J. Q. B. 109 . . . . 155 
 Stead V. Anderson, (1846) 2 Web. P. C. 147 .. . 54, 58 
 
 V. , (1847) 4 C. B. 806 ; 2 Web. P. C. 151 ; 16 L. J. 
 
 C. P. 250 58, 220, 222, 233 
 
 V. Williams, (1843) (N. P.), 2 Web. P. C. 126 . 51, 54, 57 
 
 V. , (1844) (C. P.), 2 Web. P. C. 137 ; 7 M. & G. 818 ; 
 
 8 Scott, N. R. 449 ; 8 Jur. 930 ; 13 L. J. C. P. 218 . 58, 63, 
 
 64,81 
 Steers v. Rogers, (1892—3) (H. L.), 1 R. 173 ; L. R. 1893, App. 
 
 Cas. 232 ; 10 P. 0. R. 245 ; 62 L. J. Ch. 671 ; 68 L. T. 726 ; 
 
 affirming L. R. 1892, 2 Ch. 13 ; 9 P. O. R. 177 ; 61 L. J. Ch. 
 
 676 ; 66 L. T. 502 9, 179 
 
 Steiner v. Heald, (1851) 20 L. J. Ex. 410 ; 6 Ex. 607 ; 17 Jur. 875 ; 
 
 reversing 2 Car. & K. 1022 40 
 
 Stell's Patent, In re, (1891) 8 P. 0. R. 235 139 
 
 Stevens v. Keating, (1847) (L. C), 2 Web. P. C. 176, 181 ; 
 
 2 Phill. 333 220, 233, 328 
 
 V. , (1848) (Exch.), 2 Exch. 772 ; 19 L. J. Ex. 57 ; 2 
 
 Web. P. C. 192 109 
 
 Stewart's Patent, (1885) 3 P. 0. R. 7 199, 213 
 
 V. Casey, (1891) (C. A.), L. R. 1892, 1 Ch. 104 ; 9 P. 0. R. 
 
 9 ; 61 L. J. Ch. 61 ; 66 L. T. 93 ; 40 W. R. 180 ; affirming 
 
 8 P. O. R. 259 ; 65 L. T. 40 177, 186 
 
 Stocker v. Rogers, (1843) Car. & Kir. 99 ... . 330, 331 
 V. Warner, (1845) 9 Jur. 136 ; 14 L, J. C. P. 90 ; 1 C. B. 
 
 148 169 
 
 Stocking V. Llewellyn, (1842) 3 L. T. R. 33 . . . . 259 
 
TABLE OF CASES. xli 
 
 PAGE 
 
 Stoner v. Todd, (1876) L. E. 4 Ch. D. 58 ; 46 L. J. Ch. 32 ; 35 
 
 L. T. R., N. S. 661 ; 25 W. R. 38 . . . 58, 66, 83, 85, 86 
 
 Stoney's Patent, (1888) 5 P. O. R. 519 199 
 
 Stuart's Application, In re, (1892) 9 P. O. R. 452 .. . 135 
 
 Stubbs' Patent, Iti re, Griff. P. C. 298 138 
 
 Sturtz V. De la Rue, (1828) 5 Russ. 322 ; 1 Web. P. C. 83 ; 
 
 7 L. J., 0. S. Ch. 47 .... 81,92,100,114,259 
 
 Sudbury V. Lee, (1894) 11 P. 0. R. 58 38 
 
 Sugg V. Bray, (1884-5) 1 P. O. R 45 ; 2 P. O. R. 223 ; Griff. 
 
 P C 210 ....... 282 
 
 V. Silber, (1876) L. R.'l Q. B. d! 362 . . . . 315 
 
 V. , (1877) L. R. 2 Q. B. D. 493 301 
 
 Swaine v. G. N. Rail. Co., (1863) 12 W. R. 391 ; 4 DeG. J. & S. 
 
 211 316 
 
 Swinborne v. Nelson, (1853) 16 Beav. 416 ; 22 L. J. Ch. 331 . 307 
 Sykes v. Howarth, (1879) L. R. 12 Ch. D. 826 ; 48 L. J. Ch. 769 ; 
 
 41 L. T. 79 ; 28 W. R. 215 . . 217, 236, 243, 245, 291, 301 
 
 T. 
 
 Talbot v. La Roche, (1854) 15 C. B. 310 ; 2 C. L. Rep. 836 ; 
 
 M. Dig. 210 287, 288, 289 
 
 Tangye v. Stott, (1865) 14 W. R. 386 ... 260, 285, 491 
 
 Tatham v. Dania, (1869) Grift'. P. C. 213 38 
 
 Tattersall's Patent, In re, (1891) 9 P. O. R. 150 . . 138, 139 
 
 Taylor v. The Drosophore Co., (1894) 11 P. 0. R. 536 . . 284 
 
 V. Hare, (1805) 1 Web. P. C. 292 ; 1 B. & P. N. R. 260 . 183, 
 
 193 
 Templeton v. Macfarlane, (1848) (H. L.), 1 H. L. C. 595 . . 74 
 Tennant's case, (1802) 1 Web. P. C. 125 ; Dav. P. C. 429 ; 1 Carp. 
 
 P. C. 177 11 
 
 Terrell, In re, (1882) L. R. 22 Ch. D. 473 ; 47 L. T. 588 ; 31 
 
 W. E. 208 337 
 
 Tetley v. Easton, (1852) (N. P.), Macr. P. C. 48 . . 73, 96, 115 
 
 V. , (1853) (g. B.), 2 E. & B. 956 ; 18 Jur. 350; 23 
 
 L. J. Q. B. 77 ; Macr. P. C. 82 . . . . 107 
 V. , (1857) (C. P.), 2 0. B., N. S. 706 ; 26 L. .J. C. P. 
 
 269 124 
 
 Thomas' Patents, In re, (1892) 9 P. 0. R. 367 . . . . 203 
 
 V. Fox well, (1858) 5 Jur. N. S. 37 230 
 
 V. , (1859) (Ex. Ch.), 6 Jur. N. S. 271 . . . . 95 
 
 V. Hunt, (1864) 17 C. B., N. S, 183 . . . . 183, 247 
 
 ■ V. Sorrell, Vaug. Rep. 351 181 
 
 V. Welch, (1866) L. R. 1 C. P. 192 ; 12 Jur. N. S. 316 ; 35 
 
 L. J. C. P. 200 . . 86 
 
 Thompson v. American Braided Wire Co., see American Braided 
 Wire Co. v. Thompson (H. L.). 
 
 V. James, (1863) 32 Beav. 570 45 
 
 Thomson v. Batty, (1888) 6 P. O. R. 84 . . 58, 73, 109, 115 
 
 V. Hughes, (1890) 7 P. 0. R. 71 257 
 
 V. Macdonald, (1890) 8 P. O. R. 5 . . . . 293, 295 
 
xlii TABLE OF CASES. 
 
 PAOE 
 
 Thomson v. Moore, (1889) (H. L.), 7 P. 0. R. 325 ; affirming 6 P. 
 
 0. R. 426 27, 33, 193, 225, 229, 233 
 
 Thorn v. Worthing Skating Rink Co., (1876) L. R. 6 Ch. D. 
 
 415, n 233 
 
 Thwaite's application, In re, (1892) 9 P. 0. R. 515 . . .137 
 Tickelpenny v. Army and Navy Co-operative Society, (1888) 5 
 
 P. O. R. 405 45 
 
 Tielens v. Hooper, (1850) 5 Exch. 830 184 
 
 Tilghman's Patent Sand Blast Co, v. Wright, (1884) 1 P. O. R. 
 
 103 ; Grifi'. P. C. 216 288, 289 
 
 Todd's application, /?; re, (1892) 9 P. 0. R. 487 . . . 135, 138 
 Tolhausen's Patent, In re, (1866) 14 W. R. 551 . . . .135 
 Townsend v. Hawarth, (1875) L. R. 12 Ch. D. 831, n. ; Higgins' 
 
 Dig. Pt. II. p. 60 (not fully reported anywhere) . 236, 243, 245 
 Travell v. Carteret (35 Car. II.), 3 Lev. 135 .... 145 
 Trotman's Patent, In re, (1866) L. R. 1 P. C. 118 ; 3 Moo. P. C, 
 
 N. S. 488 203, 204 
 
 V. Wood, (1864) 16 C. B., N. S. 479 194 
 
 Tucker v. Kaye, (1891) (C. A.), 8 P. 0. R. 58, 234 . . . 46 
 Turner v. Hancock, (1881) L. R. 20 Ch. D. 303. . . . 337 
 V. Winter, (1787) 1 Web. P. C. 77 ; 1 T. R. 602 ; Dav. 
 
 P. C. 145 . . . . 67, 70, 74, 92, 108, 114, 116, 322 
 
 Tweedale v. Ashworth, (1890—92) (H. L.), 9 P. O. R. 121 ; 
 
 affirming 8 P. 0. R. 49— C. A. ; and 7 P. O. R. 426 . 225, 235, 
 
 243, 334 
 
 U. 
 
 Ungar v. Sugg, (1889) 6 P. 0. R. 337 275 
 
 ^,, , (1892) (C. A.). 9 P. 0. R. 113 ; affirming 8 P. 0. R. 
 
 385 262, 263, 276 
 
 Cnion Electrical Power Co. v. Electrical Power Storage Co., 
 (1888) (C. A.), L. R. 38 Ch. D. 325 ; 59 L. T. 427 ; 36 W. R. 
 913 ; 5 P. O. R. 329 ; afhrming 57 L. T. 791 ; 36 W. R. 263 . 284 
 United Horsenail Co. v. Stewart,'(1885) 2 P. O. R. 122 64, 67, 74 
 
 V. , (1886) 3 P. O. R. 139 ; Gritt". P. C. 217 . 261, 262, 264 
 
 V. , (1886) 4 P. 0. R. 130; 14 Ct. Sess. Cas. 4th 
 
 series, 266 . .261 
 
 V. , (1886) (H. L.), 5 P. 0. R. 260 ; L. R. 13 App. Cas. 
 
 401 ; 59 L. T. 561 261, 263, 339 
 
 V. Swedish Horsenail Co., (1888) 6 P. 0. R. 1 . . 45, 74 
 
 United Phonograph Co. v. Young, (1894) 11 P. 0. R. 489 . 330, 331 
 United Telephone Co. v. Bassano, (1885—6) (C. A.), 3 P. 0. R. 
 
 295 ; Griff. P. C. 220 ; affirming 2 P. 0. R. 70 . 72, 73 
 
 V. Dale, (1884) L. R. 25 Ch. D. 778 ; 53 L. J. Ch. 295 ; 
 
 Gritf. P. C. 227 ; 50 L. T. 85 ; 35 W. R. 428 . 237, 245, 
 
 260 
 
 V. Donohoe, (1886) L. R. 31 Ch. D. 399 ; 3 P. 0. R. 45 ; 
 
 Gritf. P. C. 227 293 
 
 V. E(iuitable Telephone Association, (1888) 5 P. 0. R. 233 . 257 
 
 V. Harrison, (1882) L. R. 21 Ch. D. 720 ; 51 L. J. Ch. 705 ; 
 
 46 L. T. 620 ; 30 W, R. 724 . 61, 63, 64, 85, 89, 123, 
 
 234 333 
 
TABLE OF CASES. xliii 
 
 United Telephone Co. -;;. Henry, (1884) 2 P. 0. R. 11 ; Griff. P. 
 
 C. 228 243 
 
 V. London Globe Telephone Co., (1884) L. R. 26 Ch. D. 766 ; 
 
 1 P. 0. R. 117 ; 53 L. J. Ch. 1158 ; Griff. P. C. 229 ; 
 
 51 L. T. 187 ; 32 W. R. 870 . . . . 241, 259 
 
 V. Maclean, Scotch Sess. Cas., 4th series, 710 . . .73 
 
 V. Patterson, (1888) 6 P. O. R. 140 ; 6 L. T. 315 . . 332 
 
 V. St. George, (1885) 3 P. O. R. 33 255 
 
 r. , (1886) 3 P. 0. R. 321 332 
 
 V. Sharpies, (1885) L. R. 29 Ch. D. 164 ; 2 P. 0. R. 28 ; 54 
 
 L. J. Ch. 633 ; Grift". P. C. 232 ; 52 L. T. 384 ; 33 
 
 W. R. 444 238, 244 
 
 V. Townsend, (1885) 3 P. 0. R. 10 332 
 
 V. Walker, (1886) 4 P. 0. R. 63 ; 56 L. T. 508 . . . 263 
 
 Universities of Oxford and Cambridge v. Richardson, (1802) 
 
 6 Ves. 689 ... 240, 255 
 
 Un\vin v. Heath, see Heath v. Univin (H. L.). 
 
 Upmann v. Elkan, (1871) L. R. 7 Ch. 130 ; 41 L. J. Ch. 246 ; 25 
 
 L. T. 813 ; 20 W. R. 131 243, 252 
 
 Useful Patents Co. v. Rylands, (1885) 2 P. 0. R. 255 ; Griff. 
 P. C. 234 52, 57, 58 
 
 Vaisey's Patent, In re, (1894) 11 P. 0. R. 591 . . . . 271 
 Van de Poele's Patent, (1889) 7. P. 0. R. 69 . . . . 25 
 Van Gelder's Patent, In re, (1888) (C. A.) 6 P. O. R. 22 . 158, 164, 
 
 167 
 Van Gelder Co. v. Sowerby Bridge Flour Co., (1890) (C. A.) L. R. 
 
 44 Ch. D. 374 ; 7 P. O. R. 208 ; 59 L. J. Ch. 583 ; 63 L. T. 
 
 132 ; 38 W. R. 625 ; reversing 7 P. O. R. 41 . . 7, 181, 217 
 Vavasseur v. Krupp, (1878) L. R. 9 Ch. D. 351 ; 39 L. T. R., 
 
 N. S. 437 ; 27 W. R. 176 260 
 
 Vickers v. Siddell, see Siddell v. Vickers (H. L.). 
 
 Vidi V. Smith, (1854) 3 E. & B. 969 ; 1 Jur. N. S. 14 ; 23 L. J. 
 
 Q. B. 342 ; 2 C. L. R. 1573 476 
 
 Vincent's Patent, In re, (1867) L. R. 2 Ch. 341 ; 15 W. R. 524 . 135 
 Von Buch's Patent, In re, Griff". L. 0. C. 40 . . . . 138 
 Von Heyden v. Neustadt, (1880) (C. A.) L. R. 14 Ch. D. 230 ; 
 
 50 L. J. Ch. 126 ; 42 L. T. 30U ; 28 W. R. 496 . 66, 67, 244 
 Vorwerk v. Evans, (1890) 7 P. 0. R. 265 . . . . 33, 225 
 
 W. 
 
 Walker v. Clarke, (1887) 4 P. O. R. Ill ; 56 L. J. Ch. 239 ; 56 
 
 L. T. Ill ; 35 W. R. 245 ... . 257, 275, 277, 283 
 Wallington v. Dale, (1852) 7 Ex. 888 ; 23 L. J. Ex. 49 . 93, 100, 327 
 Walton V. Bateman, (1842) 1 Web. P. C. 613 . 53, 93, 219, 233, 327 
 
 V. Lavater, (1860) 3 L. T. R., N. S. 272 ; 8 C. B., N. S. 162 ; 
 
 29 L. J. C. P. 275 ; 6 Jur. N. S. 1251 . 191, 215, 221, 244 
 
 V. Potter, (1841) 1 Web. P. C. 585 . 13, 31, 219, 233, 328 
 
 Ward V. Livesey, (1887) 5 P. 0. R. 102 184 
 
xliv TABLE OF CASES. 
 
 PAGE 
 
 Warwick v. Hooper, (1850) 3 M. & G. 60 184 
 
 Washburn & Moeii Manufacturing Co. v. Cunard Steamship Co., 
 
 (1889) 6 P. 0. R. 398 218, 243, 252 
 
 Watling's Patent, In re, Griff. P. C. 320 271 
 
 V. Stevens, (1886) (C. A.) 3 P. O. R. 147 ; affirming 3 
 
 P. 0. R. 37 87, 107 
 
 Wedmar v. Coriwration of Bristol, (1862) 11 W. R. 136 . . 316 
 Wegmann v. Corcoran, (1879) L. R. 13 Ch. D. 65 ; 39 L. T. R., 
 
 N. S. 563 ; 27 W. R. 357 ; 41 L. T. R., N. S. 358 . 95, 109, 111, 
 
 112,333 
 
 Weir V. Denny, (1894) 11 P. O. R. 657 271 
 
 Welch's Patent, In re, (1889) 8 P. 0. R. 442 ... . 139 
 Wenham v. Carpenter, (1887) 5 P. O. R. 68 . . . . 173 
 Wenham Gas Co. v. Champion Gas Co., (1890) 8 P. 0. R. 22 ; 
 
 63 L. T. 827 287 
 
 V. , (1891) (C. A.) 9 P. 0. R. 49 ; affirming 8 P. 0. R. 
 
 313 43, 122, 123, 224, 225, 337 
 
 Werdermann v. Societe Generale d'Electricite, (1881) (C. A.) L. R. 
 
 19 Ch. D. 246 ; 45 L. T. 514 ; 30 W. R. 33 . . . . 178 
 Westinghouse's Patent, hi re, Griff. P. C. 315 , . . 160, 161 
 Westley Richards v. Perkes, (1893) 10 P. 0. R. 181, 382 . 51, 52, 
 
 53, 193, 271, 303, 319, 322, 334 
 Westrupp & Gibbins' Patent, hi re. Ex parte Wells, (1836) 1 Web. 
 
 P. C. 554 212 
 
 Whatman v. Pearson, (1868) L. R. 3 C. P. 422 . . . , 217 
 White V. Fenn, (1867) 15 W. R. 348 ; 15 L. T. R., N. S. 505 . 231 
 
 V. Toms, (1867) 37 L. J. Ch. 204 ; 17 L. T., N. S. 348 . 37, 45 
 
 Whitehouse's Patent, In re, (1830) 1 Web. P. C. 649, note (m) . 154 
 
 , (1838) 1 Web. P. C. 473 ; 2 Moo. P. C. C. 496 . . . 198 
 
 Whitton V. Jennings, (1860) 1 Dr. & S. 110 . . . . 259 
 Wield's Patent, In re, (1871) L. R. 4 P. C. 89 ; 8 Moo. P. C, N. S. 
 
 300 204, 212, 213 
 
 WiUiams v. Nash, (1859) 5 Jur. N. S. 696 ; 28 L. J. Ch. 886 ; 28 
 
 Beav. 93 131 
 
 V. Nye, (1890) (C. A.), 7 P. 0. R. 62 . " . . 38, 45, 46 
 
 V. WilUams, (1819) 3 Mer. 157 148 
 
 Willoughby v. Taylor, (1893) 11 P. 0. R. 45 . . . . 335 
 Wilson V. Union Oil Mills Co., (1891) 9 P. 0. R. 57 . 72, 191, 192 
 Winby v. Manchester Steam Tramways Co., (1889-90) 6 P. 0. R. 
 
 359 ; 8 P. 0. R. 61 45, 51, 234 
 
 Winter v. Baybut, (1884) 1 P. 0. R. 76 . . . . 170, 317 
 Wirth's Patent, In re, (1879) L. R. 12 Ch. D. 303 ; 28 W. R. 
 
 329 8, 24 
 
 Wood V. Leadbitter, (1845) 13 M. & W. 838 ; 9 Jur. 187 ; 14 
 
 L. J. Ex. 161 184 
 
 V. Zimmer, (1815) 1 Web. P. C. 44, 82 ; Holt, N. P. 58 ; 
 
 Kay, P. C. 290 ; 1 Carp. P. C. 290 ... 52, 56, 113 
 
 Woodcroft's Patent, In re, (1841) 1 Web. P. C. 740 ; 3 Moo. 
 
 P. C. C. 171 206 
 
 , (1846) 2 Web. P. C. 18 199 
 
 Woodward v. Sansum, (1887) (C. A.) 4 P. 0. R. 166 ; 56 L. T. 
 
 347 ; affirming 3 P. O. R. 357 83, 87 
 
 WooUey v. Broad, (1892) 9 P. 0. R. 208 184 
 
TABLE OF CASES. xlv 
 
 PAGE 
 
 Wren v. Wield, (1869) L. R. 4 Q. B. 213 ; 38 L. J. Q. B. 88 ; 20 
 
 L. T. R., N. S. 277 292 
 
 V. , (1869) L. R. 4 g. B. 730 ; 38 L. J. Q. B. 327 ; 20 
 
 L. T. R., N. S. 1007 274, 275 
 
 Wright's Patent, Li re, (1839) 1 Web. P. C. 575 ... 200 
 
 V. Hitchcock, (1870) L. R. 5 Ex. 37 ; 39 L. J. Ex. 97 . 82, 231, 
 
 244 
 
 Y. 
 
 Yates & Kellett's Patent, In re, (1887) (P. C.) L. R. 12 App. 
 Cas. 147 ; 57 L. J. P. C. 1 ; 4 P. O. R. 150 . . . 204, 205 
 
 Young V. Fernie, (1864) 12 W. R. 901 ; 4 Gitf. 577 ; 10 Jur. 
 N. S. 926 ; 10 L. T. R., N. S. 861 ; 9 Prac. Mech. Jour., 
 2nd Series, 102 ; 4 N. R. 218 . . 31, 53, 61, 67, 323 
 
 V. Hermand Oil Co., (1892) (H. L. Sc.) 9 P. O. R. 373 ; 
 
 reversing 8 P. O. R. 28!) 192, 225 
 
 V. Rosenthal, (1884) 1 P. O. R. 29 ; Griff. P. C. 249 72, 221, 333 
 
 T. 
 
THE LAW AND PEACTICE 
 
 RELATING TO 
 
 LETTERS PATENT FOR INVENTIONS. 
 
 CHAPTER I. 
 
 LETTERS PATENT. 
 
 Letters patent for inventions are granted by the Crown by- 
 virtue of its common law prerogative. Letters patent are 
 franchises, being a branch of the royal prerogative vested in the 
 hands of a subject. In Reg. v. County Court Judge of Halifax (a), 
 Baron Pollock, in giving the judgment of the Court, said : "It 
 was contended on behalf of the defendant that 'franchise' in- 
 cludes the right or privilege which is granted by a patent for a 
 new invention. The primary meaning of the word ' franchise,' as 
 its origin denotes, is a freedom ; but it has been used in the 
 language of the law in a wider sense as including a liberty or 
 privilege. In Termes de la Ley, tit. ' Franchise,' the only mean- 
 ing given to it is * an immunity or exemption from ordinary 
 jurisdiction.' The various rights, however, which it aptly 
 describes are dwelt upon at great length in the Digests of Viner 
 and Comyn, and in Bacon's Abridgement ; and in Blackstone's 
 Commentaries, Vol. II. p. 7, it is said : ' Franchise and liberty 
 are used as synonymous terms, and their definition is, a royal 
 privilege, or branch of the king's prerogative, subsisting in the 
 hands of a subject. Being, therefore, derived from the Crown, 
 they must arise from the king's grant ; or in some cases may be 
 held by prescription, which, as has been frequently said, pre- 
 supposes a grant. The kinds of them are various and almost 
 
 (a) L. R., 1891, 1 Q. B. 793, 797 ; rmed by C. A., L. R., 1891, 2 Q. B. 263. 
 T. B 
 
2 THE LAW OF PATENTS. 
 
 infinite.' In Chitty's Prerogative of the Crown, p. 119, a 
 franchise is defined to be a royal privilege, or branch of the royal 
 prerogative, subsisting in the hands of a subject by a grant from 
 the king; and for this he refers to Finch's Law, p. 164. In 
 Comyn's Digest, tit. * Prerogative,' D. 30, it is said : ' The king 
 may grant to another to have any franchise or liberty as privileges 
 of trade ; ' and under the head of ' Trade ' (B), instances are 
 given of grants by the king's patent for the sole printing of 
 certain books. In Darcy v. Allen {h), the Court said, in dealing 
 with the first question — viz., whether the said grant to the plaintiff 
 of the sole making of cards within the realm was good or not — 
 * Also such charter of a monopoly, against the freedom of trade 
 and traffic, is against divers Acts of Parliament, as 9 Edw. III. 
 cc. 1 & 2, which for the advancement of trade and traffic extends 
 to all things vendible, notwithstanding any charter of franchise 
 granted to the contrary, or usage or custom, or judgment given 
 upon such charters, which charters are adjudged by the same 
 Parliament to be of no force or effect.' These words are in- 
 applicable to the * first question,' unless the Court intended to 
 assume that the grant of the sole making of cards within the 
 realm was a ' charter of franchise ' ; and, although the charter of 
 franchise mentioned in the statute cited apparently referred to 
 charters which had been granted to corporations or towns, it 
 seems to be a fair inference that the Court considered such charter 
 of a monopoly as a charter of franchise ; and that this would be 
 none the less true when the monopoly answered to the description 
 which the Court declared to be lawful, i.^., 'where any man by his 
 own charge and industry, or by his own wit or invention, doth 
 bring any new trade into the realm, or any engine tending to the 
 furtherance of a trade that never was used before, and that for the 
 good of the realm.' The result of these authorities is, in our 
 opinion, that * franchise ' does include such a right as was put in 
 issue by the proceedings in the county court." 
 
 By the creation of monopolies to first and true inventors in the 
 right of using their inventions, a species of property is created in 
 favour of inventors, as a reward for the benefits which they have 
 conferred on humanity, by the exercise of their thought, know- 
 
 {h) 11 Rep. 84. 
 
LETTERS PATENT. 3 
 
 ledge, and industry. It is to the interests of the community that 
 persons should be induced to devote their time, energies and 
 resources in furtherance of the development of arts and manu- 
 factures, and this was recognised in England from the earliest 
 periods which can pretend to be described as civilized. 
 
 It was to the advantage of the whole community that inventors 
 should be rewarded, and no measure of reward can be conceived 
 more just or equitable, and bearing a closer relation to the benefit 
 conferred by the particular inventor than to grant him the sole 
 right of making, using and vending his invention for a limited 
 period of time. 
 
 In the corrupt ages of the Stuarts, it is not to be wondered at, 
 that the prerogative of the crown to grant monopoly rights to first 
 and true inventors, should have been made a lever for assuming 
 a prerogative to grant monopoly rights in trade generally. In 
 the reign of James the First, to such an extent had this abuse 
 been carried, that it was deemed advisable by the legislature 
 that the rights of the crown in respect of letters patent should be 
 declared by legislative enactment — this was the origin of the 
 Statute of Monopolies. 
 
 It has been supposed that the prerogative of the crown to grant 
 letters patent for inventions was created by this statute, but the 
 most cursory perusal of its enactments and of the authorities 
 which preceded it, shows clearly that, so far from the statute 
 giving to the crown any right which it did not possess before it 
 was passed, it has as its intention the limiting the right of the 
 crown, and the declaring that, which had always been the com- 
 mon law upon the subject. In the first section of this Act, for 
 instance, we find it recited " that all grants of monopolies and of 
 the benefit of any penal laws, or of power to dispense with the 
 law, or to compound for the forfeiture, are contrary to your 
 Majesty's laws, which your Majesty's declaration is truly consonant 
 and agreeable to the ancient and fundamental laws of this your 
 
 realm That all monopolies, and all commissions, grants, 
 
 licenses, charters, and letters patent heretofore made or granted or 
 hereafter to be made or granted .... are altogether contrary to 
 the laws of this realm, and so are and shall be utterly void and of 
 none effect, and in no- wise to be put in use or execution." 
 
 B 2 
 
4 THE LAW OF PATENTS. 
 
 Section 6 saved the granting of letters patent to inventors in 
 the following words : 
 
 "Provided also, and be it declared and enacted, that any 
 declaration before mentioned shall not extend to any letters 
 patent and grants of 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 grants shall not use, 
 so as also they be not contrary to the law, nor mischievous to the 
 State by raising of prices of commodities at home, or hurt of 
 trade, or generally inconvenient ; the said fourteen years to be 
 accounted from the date of the first letters patent or grant of such 
 privilege hereafter to be made, but that the same shall be of such 
 force as they should be if this Act had never been made and of 
 none other." 
 
 It will thus be seen that the Statute of Monopolies creates no 
 statutory rights, but merely saves the common law rights of the 
 crown; and by section 116 of the Patents Designs and Trade 
 Marks Act, 1883, it is enacted, '' Nothing in this Act shall take 
 away, abridge or 'prejudicially affect the prerogative of the croicn in 
 relation to the granting of any letters patent, or to the icithholding 
 of the grant thereof ^ By section 46 of the same Act the word 
 " invention " is defined as meaning " any manner of new manufac- 
 ture the suhject of letters patent and grant of privilege within section 6 
 of the Statute of Monopolies .... and includes an alleged 
 invention. '^ 
 
 So it is that in the present day, notwithstanding the various 
 statutes which have been passed in relation to letters patent for 
 inventions, these monopolies are still granted upon the mere 
 motion of the sovereign, in the exercise of her royal prerogative, 
 and that all that has been done, has been declaratory of the limits 
 within which that prerogative should be exercised, and of the 
 method of procedure to be adopted in obtaining letters patent for 
 inventions. 
 
 For the purpose of supporting the validity of the letters patent 
 it is necessary that the patentee should conform to certain 
 requisites, and these requisites are indicated in the 6th section of 
 
LETTERS PATENT. 
 
 the Statute of Monopolies. In the first place, he must be the 
 true and first inventor of a new manufacture ; the new manu- 
 facture must not be contrary to law, nor must it be mischievous 
 to the State, by raising the prices of commodities at home ; it 
 must not be hurtful to trade, nor generally inconvenient. The 
 Act of 1883 has adopted this definition of an invention, and any- 
 thing that does not conform with all these requisites is not 
 entitled to be called an invention. The host of important decided 
 cases as to the construction of the 6th section of the Statute of 
 Monopolies, and the enormous expense, and labour and learning, 
 which have been devoted to obtaining these decisions, no doubt 
 induced the legislature to adopt a definition which had in some 
 respects obtained a correct judicial meaning ; but it is doubt- 
 ful whether it was wise to re-enact it in a form which had, 
 we may say, centuries ago, already become to some extent 
 obsolete. 
 
 The protection of trade by means of guilds, and by all those 
 various schemes which were elaborated in the middle ages, has 
 been found to be fallacious. Industries in this country are no 
 longer protected by the artificial process of law, and therefore 
 it is difficult to understand the correct meaning which would 
 be given to the words in the 6th section of the Statute of 
 Monopolies, which refer to an invention having a tendency to 
 raising the prices of commodities at home, or to hamper trade, 
 or to be generally inconvenient, terms exceedingly vague in 
 themselves, and which the Courts have not had occasion to con- 
 sider for a very great number of years. 
 
 These matters, and the construction which is to be placed 
 upon the word " invention," will have to be dealt with hereafter, 
 when we consider the cases which have been decided upon the 
 subject. 
 
 Thus we see that the same essentials must be proved by an 
 applicant for the grant of letters patent to-day as were necessary 
 at the date of the Statute of Monopolies ; he must be the first to 
 introduce into this realm the manufacture for which, he seeks a 
 patent, whether by enterprise in importing it from abroad, or by 
 the exercise of his own inventive faculty. The Patents, &c.. 
 Acts, 1883-1888, deal merely with points of procedure and 
 
6 TUE LAW OF PATENTS. 
 
 practice, adopting, as has been already pointed out, the definition 
 of an invention contained in the sixth section of the Statute of 
 Monopolies ; the Act of 1883 consolidated all the provisions of 
 previous acts on the subject, at the same time introducing some 
 few innovations, the eifect of which will be dealt with in detail in 
 the course of the consideration of the various branches of the 
 subject as they arise. 
 
THE PATENTEE. 
 
 CHAPTER II. 
 
 THE PATENTEE. 
 
 By sect. 46 of the Act of 1883, the word " patentee " is 
 construed as meaning " the person for the time being entitled to 
 the benefit of the patent," consequently it may mean the 
 original grantee, his executors and administrators, or any 
 assignee. 
 
 A mortgagee is the legal owner of the patent, but if not regis- 
 tered in " The Register of Patents " as proprietor, he is not the 
 person for the time being entitled to the benefit of it so as to con- 
 stitute him " patentee," and it is not necessary that he should 
 be joined as a party in an action for infringement (a), and semble 
 this would be the case, even if he was so registered (b). 
 
 An exclusive licensee has not such an interest in the patent as 
 to enable him to maintain an action for infringement, he may, 
 however, sue in the name of the grantor of the license (c). 
 
 Lord Justice Cotton in the Court of Appeal said : " AU that 
 is contended is that an exclusive license is equivalent to a grant, 
 and that the licensee may, without the concurrence of the patentee, 
 or without there having been any violation of the agreement 
 between the patentee and himself, sue the person who is infrin- 
 ging the rights conferred by the license. In my opinion that is 
 wrong. That is turning that which is merely a license into 
 something very diJfferent, namely a grant of the whole letters 
 patent" (d). 
 
 (a) Van Geldcr Apsimon & Co. v. C. 154 ; Renard v. Levinstein, 2 Hem. 
 
 Soiverby Bridge Flour Co., L, R., 44 & M. 628. 
 Ch. D. 374. (''^^ Heap v. Hartley, L. R., 42 Ch. 
 
 (&) lb. p. 389. D. 469 ; Guyot v. Thomson, 11 P. 0. 
 
 (c) Heap V. Hartley, L. R., 4-.i Ch. R. 541, 554. 
 D, 461 ; Derosnc v. Fairie, 1 Web. P 
 
8 THE LAW OF PATENTS. 
 
 By sect. 4 of the same Act it is enacted : (1) Any person, 
 whether British subject or not, may malie an application for a 
 patent. 
 
 It will be observed that there is no limitation whatever pre- 
 venting a person under incapacity, either by reason of infancy 
 or otherwise, from obtaining a patent. 
 
 There does not appear to have ever been a question as to 
 whether an infant or a married woman might under the old law 
 have become a grantee of letters patent. The new law, however, 
 is perfectly clear, and sweeps away any doubt that might have 
 been entertained on the subject. 
 
 Before this Act it was competent for an alien to obtain a 
 patent ; Lord Cairns in the matter of Wirth's Patent (e), went 
 even further than this : " I am quite clear that letters patent 
 may be granted to a foreigner who is resident abroad for 
 an invention communicated to him by another resident 
 abroad" (/). 
 
 But qusere if letters patent could be obtained by an alien 
 enemy (g). 
 
 In Patterson v. Gas Light and Coke Co., James, L.J., in the 
 Court of Appeal, said : "Although it is not necessary for the 
 determination of this suit to pronounce any final decision on 
 this point, we deem it right to say that we think it at the least 
 very questionable whether it can be competent for a member of 
 an official commission or committee to take out a patent for the 
 subject-matter of their official investigation {h). 
 
 It has been thought doubtful whether a beneficed clergyman 
 could become the grantee of letters patent, since the exercise 
 of an invention would probably amount to trading within the 
 meaning of 57 Geo. III. c. 99 (/). 
 
 Rule 73 of the P. O. Rules, 1890 : " A body corporate 
 may be registered as proprietor by its corporate name." It 
 could, however, only become proprietor as assignee of the 
 letters patent, or as co-grantee with the original inventor, since 
 
 (e) Wirth's Patent, L. R., 12 Ch. D. (</) Bloxam v. Elsee, 1 C. & P. 558, 
 
 303 ; 28 W. R. 329. {h) L. R., 2 Ch. D. 832. 
 
 (/) See also Chapptll v. Purday, 14 (?) Hiudmarcli on Patents, p. 35 
 
 M. & W. 318. Hall v. Franklin, 3. M. & W. 259. 
 
THE PATENTEE. 9 
 
 a corporation, being without a mind, lacks tliat which is obviously 
 an essential to invention (k). 
 
 By sect. 4 (2) it is enacted " Two or more persons may make a 
 joint application /o>' a patent, and a patent may he granted to them 
 jointly.'^ 
 
 Only one of the applicants need make the declaration, a 
 capitalist or other person or persons may join an inventor and 
 obtain a valid joint patent {I). 
 
 A grant of letters patent confers on the patentee " a right to 
 exclude others from manufacturing in a jDarticular way and using 
 a particular invention " {m), it does not affect his right of 
 manufacturing according to his invention, which he would have 
 had if there were no letters patent at all ; consequently, where a 
 patent for an invention is granted to two or more persons in the 
 usual form, each one may use the invention without the consent 
 of the others, and without affording an account of his profits to 
 his co-patentees («), and this is the case whether they are 
 co-grantees or co-assignees. 
 
 As to rights of such co-patentees to the profits made by 
 granting licenses, qusere (o). 
 
 A co-owner of letters patent is entitled to work the invention 
 without accounting for profits, even though he may be mort- 
 gagee of the share of the other co-owner (^j). 
 
 By sect. 5 (1) " An application for a patent must he made in 
 the form set forth in the schedule to this Act or in such other 
 form as may he from time to time prescrihed ; and must he left at 
 or sent by post to the Patent Office in the prescrihed manner " {q). 
 (2) " An apjiUcation tnust contain a declaration to the effect that 
 the applicant is in p)ossession of an invention whereof he, or, in 
 the case of a joint application, one or more of the applicants, 
 claims or claim to he the true and first inventor or inventors, and 
 
 {k) Hiiidmarcli on Patents, p. 34. Mathers v. Ch-een, L. R., 1 Ch. 29 ; 35 
 
 {I) 48 & 49 Vict. c. 63, s. 5. L. J., Ch. 3 ; Hancock v. Bewley, 1 
 
 (?n) Per Lord Chancellor in Steers v. Johns. 604 ; Good P. C. 219. 
 
 Rogers, L. R., 1893, App. Cas. 235 ; 10 (o) Mathers v. Green, L. R., 1 Ch. 
 
 P. 0. R. 251. 33 ; 35 L. J., Ch. 3. 
 
 (n) Steers v. Rogers, 9 P. 0. R. 177; (^?) Steers Y.Rogers, supra ; see Chap. 
 
 L. R., 1892, 2 Ch. 13 ; 10 P. 0. R. XII., post. 
 
 245 ; L. R., 1893, App. Cas. 232 ; {q) See Appendix, Forms A, Al, A2. 
 
10 THE LAW OF PATENTS. 
 
 for which he or they desire or desires to obtain a patent, and must 
 he accompanied by either a provisional or complete specification. 
 
 By sect. 99 of tlie Act, due provision is made for enabling 
 infants, and people under incapacity to take the requisite steps 
 for obtaining letters patent. 
 
 Sect. 34 makes provision for tlie granting of letters patent to 
 the legal representatives of a deceased inventor, provided appli- 
 cation be made within six months from the decease of the 
 inventor ; the application must contain a declaration by the legal 
 representative that he believes such person to be the true and 
 first inventor of the invention. 
 
 We have now to deal with the construction of the words 
 " first and true inventor." 
 
 The reason that the common law has created a prerogative 
 of the Crown to grant letters patent to first and true inventors is, 
 that the public benefit by the consideration which the inventor 
 gives in return for the monopoly privilege which is granted to him. 
 That consideration may be divided into three parts. 
 
 In the first place the patentee must be the actual inventor, 
 that is, the consideration must move from him. 
 
 Secondly, he must have invented a new and useful invention. 
 
 Thirdly, he must publish his invention. 
 
u 
 
 CHAPTER III. 
 
 THE CONSIDERATION BEING THE ACTUAL INVENTOR. 
 
 An actual inventor is a person who, either by accident or design, 
 produces or discovers an art or manufacture. The process of 
 invention may be divided into two parts. The operation of the 
 mind, and the carrying out the results of that operation by the 
 hands. It is true that when an invention is the result of pure 
 accident the physical production may precede the operation of the 
 mind in perceiving its applicability, still, as a general rule, it will 
 be observed that the operation of the mind will precede the 
 physical production. The operation of the mind must, in aU 
 eases, be that of the mind of the inventor. The carrying out of 
 the results of the operation of the mind may be done by the hands 
 of the inventor or by those of anyone else whom he may employ 
 for the purpose. 
 
 In Tennant's Case (a) a material portion of the invention 
 claimed was found to have been suggested by a chemist at 
 Glasgow. Lord Ellenborough held, that the patent was bad 
 because the plaintiff was not the inventor. It will be observed 
 in this case, that although it is possible that the plaintiff was the 
 first person to use the particular method for making bleaching 
 liquor, still, inasmuch as that method of producing this bleaching 
 liquor was thought out by someone else and communicated to the 
 plaintiff, he was held not to be an inventor. In considering this 
 question, we must not confuse the idea of first manufacturer with 
 that of first inventor. 
 
 It is evident that cases may arise where the operation of one 
 man's mind may have assisted the operation of another's mind. 
 
 (a) Tennant's Case, 1 Web. P. C. 12.5. 
 
12 THE LAW OF PATENTS. 
 
 In this case it will be a question for the jury as to which was, so 
 to speak, the dominant mind and which the servient mind, the 
 dominant mind will he entitled to the patent. In Allen v. 
 Raicson (6), Tindal, C. J., said : " It would be difficult to define 
 how far the suggestions of a workman employed in the con- 
 struction of a machine are to be considered as distinct inventions 
 by him, so as to avoid a patent incorporating them taken out by 
 his employer. Each case must depend upon its own merits. 
 But when we see that the principal objects of the invention are 
 complete without it, I think it is too much that a suggestion of a 
 workman, employed in the course of the experiments, of some- 
 thing calculated more easily to carry into effect the conceptions of 
 the inventor, should render the whole patent void." 
 
 In Cornish v. Keene (c) Tindal, C. J., said : " Sometimes it is 
 a material question to determine whether the party who got the 
 patent was the real and original inventor or not, because these 
 patents are granted as a reward, not only for the benefit conferred 
 upon the public by the discovery, but also the ingenuity of the 
 first inventor ; and although it is proved that it is a new discovery, 
 so far as the world is concerned, yet if anybody is able to show 
 that although that was new with the party who got the patent, 
 he was not the man whose ingenuity first discovered it, that he 
 borrowed it from A. or B., or had taken it from a book that was 
 printed in England, and which was open to all the world — then, 
 although the public had the benefit of it, it would be an important 
 question whether he was the first and original inventor of it." 
 There is no doubt that under the circumstances stated by the 
 Chief Justice, the patentee would not be the original inventor. 
 
 We do not propose to deal at length with the cases that succeed 
 Cornish v. Keene. The principle laid down in those cases we 
 have cited has been invariably followed. In Gibson v. Brand (d), 
 Tindal, C.J., said : "A man may publish to the world that which 
 is perfectly new in all its use, and has not before been enjoyed, 
 and yet he may not be the first and true inventor, he may have 
 borrowed it from some other person or book. The legislature 
 
 (h) Allen V. Rawson, 1 C. B. 574. {d) Gibson v. Braml, 1 AVeb. P. C. 
 
 (c) Cornish v. Keene, 1 Web. P. C. 628. 
 507. 
 
CONSIDERATION — BEING ACTUAL INVENTOR. 13 
 
 never intended that a person, who had taken his knowledge from 
 the art of another, from the labours and assiduity of another, 
 should be the man who was to receive the benefit of another's 
 skill." The same judge in Walton v. Potter {e) : " If the subject- 
 matter of the patent has been published in a dictionary, for 
 example, and if a man merely adopts it, the merit is so small 
 that his patent for it would be worth nothing." 
 
 In R. V. WJieeler (/), Abbott, C.J., delivering the judgment of 
 the Court said : " If the patentee has not invented the matter or 
 thing of which he represents himself to be inventor, the considera- 
 tion of the royal grant fails, and the grant consequently becomes 
 void. And this will not be the less true, if it should happen that 
 the patentee has invented some other matter or thing, of which, 
 on due representation thereof, he might have been entitled to a 
 grant of the exclusive use," 
 
 In Bloxam v. Elsee (g), the patentee had worked out the 
 principle of his invention in his own mind, the mechanical 
 details and arrangements requisite for carrying the principle 
 into practice so as to realize the idea were extremely numerous 
 and complicated, and Mr. D. was employed professionally to 
 assist in these arrangements. Mr. D. had suggested several parts 
 of the machine to the patentee. An objection was taken that 
 the patentee was not the inventor, the objection was overruled. 
 It will be seen in this case that the patentee's mind conceived the 
 invention, and that Mr. D. was only, so to speak, the intellectual 
 hands employed by the patentee to carry out that which he had 
 previously conceived in his mind. The summing-up of Baron 
 Alderson, in the case of Minter v. Wells (h), is instructive on 
 this point: "The patentee," said the learned judge, "claims 
 under the patent, stating, in his petition to the Crown, that he 
 is the true inventor of the machine in question, and if it could be 
 shown that he was not the true inventor, but that someone else 
 had invented it, the Crown is deceived in that suggestion, which 
 was the foundation on which it granted the patent, and then the 
 
 (e) TFalton y. Potter, 1 Web. P. C. 132, n. 
 592. (h) Minter v. Wells, 1 Web. P. 0, 
 
 (/) E. V. mweler, 2 B. & Aid. 345. 127. 
 (g) 1 C. & P. 558 ; 1 Web. P. C. 
 
14 THE LAW OF PATENTS. 
 
 law is, that the patent obtained under such circumstances would 
 be void, and no action could be maintained against the party for 
 the infringement of the patent. If Sutton suggested the principle 
 to Minter, then he, Sutton, would be the inventor ; if, on the 
 other hand, Minter suggested the principle to Sutton, and Sutton 
 was assisting him, then Minter would be the first and true 
 inventor, and Sutton would be a machine, so to speak, which 
 Minter uses for the purpose of enabling him to carry his original 
 conception into effect." 
 
 Exactly to what extent the man who conceives an idea is 
 entitled to improvements suggested by the person he employs to 
 work out that idea, is difficult to define, and must depend upon 
 the facts of each case in which the question may arise ; but the 
 guiding principle is. Is it the mere idea, or is it the method of 
 carrying it into effect that constitutes the pith of the invention ? 
 
 In EUas v. Grovesend Tinplate Co. (^), the facts were as 
 follows : In the year 1867, and subsequently, one Morewood took 
 out patents for machines for removing the superfluous tin from 
 tinplates, this he effected by the immersion of the tinplate in a 
 grease-pot by means of a cradle, with an adjustable guide at each 
 end, so that the plate, upon immersion, was sent down into the 
 grease-pot in a perpendicular position, and so brought under the 
 rollers therein, these rollers raised the plate to the surface in a 
 like perpendicular position having in the meantime squeezed or 
 compressed from the plate any superfluous tin adhering to it ; by 
 means of what was practically a duplicated machine of this 
 description Morewood was able to treat two plates at a time, but 
 when the " double Morewood " was at work it brought up the 
 plates alternately and not simultaneously. In 1885 it occurred 
 to the plaintiff that saving in time and labour would be effected 
 if a similar machine were constructed to bring up the two plates 
 simultaneously. In 1886 he communicated his idea to Mr. Gflyn 
 Thomas, of whose works he was the manager, describing it " to 
 work two sheets at a time, side by side, on the Morewood prin- 
 ciple, with rollers lengthened." The patent was held invalid for 
 want of subject-matter, but the Master of the Rolls in the Court 
 
 {i) Elias V. Grovesend Tinplate Co., 7 P. 0. E. 455. 
 
CONSIDERATION — BEING ACTUAL INVENTOR. 1 5 
 
 of Appeal said (k) : " Supposing there is an invention in tliat 
 which is claimed — the carrying out of an idea in a machine — was 
 the whole of that invention Mr. Elias', the plaintiff's, or was not 
 part of it the invention of Karrop the machinist ? Upon the 
 assumption that there must be more than the idea, and that the 
 machine is part of the invention — I mean the mechanism is part 
 of the invention — was the whole of that done by Elias ? The 
 evidence seems to me to be clear as to this, that he had the idea 
 in his mind of doubling Morewood's pot lengthways, that is of 
 making a pot of Morewood's twice the size of Morewood's, so that 
 the two plates might be put in side by side. That was his idea. 
 If that was all, it was not patentable ; but it is to be done in a 
 machine. Did he have anything in the world to do with the 
 construction of the machine which upon the assumption is part of 
 the invention ? .... If it is an invention Karrop has invented 
 part of it." 
 
 The above quoted cases (I) all seem to show that the man who 
 conceives the idea has no right to the inventions of the man whom 
 he employs to carry it out other than mere improvements in 
 mechanical details, whether that man be his immediate servant 
 or an independent mechanic, and the relationship of master and 
 servant gives to the master no rights to the invention of his 
 servant (wi). 
 
 A. may have invented something, it may have pleased him to ; 
 try a few experiments with his invention, and then to abandon it ; 
 without publication. B. may subsequently have invented the 
 same thing altogether independently of A. If B. applies for ; 
 letters patent he is at law the first inventor ; but should it be 
 shown that the process of invention was not carried on in B.'s 
 mind at all, but that A. communicated his ideas to B., although | 
 
 (Jc) lb. pp. 465, 466. Ch. 456 ; E. v. Arkwnght, Dav. P. 
 
 (Z) Allen V. Rawson, 1 0. B. 551, C. 61; Soman's Fatent, 6 P. 0. R. 104 ; 
 
 574 ; Minter v. Wells, 1 Web. P. C. JBarUr v. Walduck, 1 Carp. P. C. 
 
 127 ; R. V. Wheeler, 2 B. & Aid. 349 ; 438 ; Re RusselVs Patent, 2 De G. & 
 
 Elias Y. Ch'ovesend Tinplate Co., 7 P. J. 130; Scott v. Young, L. R., 6 Ch. 
 
 0. R. 455 ; see also David d; Woodleifs 274 ; Saxby v. Gloucester Waggon Co., 
 
 Patent, Griflf. L. 0. C. 26. Griff. L. 0. C. 56 ; In re Heald's Patent, 
 
 (m) Barker v. Sliaw, 1 "Web. P. C. 8 P. 0. R. 429 ; but see JTwrfe v. yS^ence, 
 
 126, n. ; In re Lowe's Patent, 25 L, J., 5 P. 0. R. 180. 
 
16 THE LAW OF PATENTS. 
 
 with the full intention of abandoning them, B. will not be the 
 first inventor. Take, for instance, the case of DoUoncVs 
 Patent (n) : this was an improvement in the manufacture of 
 object-glasses for telescopes. Dr. K. had made and used 
 identically similar object-glasses for his own purposes, but he 
 had in no way published his invention. Dollond, without any 
 communication from Dr. K., had re-invented these object-glasses ; 
 held that Dollond's patent was good. 
 
 In Lewis v. Marline/ (o), Mr. Justice Bailey said : " If I discover 
 a thing for myself, it is no objection to my claim to a patent that 
 another also has made the discovery, provided I first introduce it 
 into public use." The suggestion in that case having been that 
 the patentee had acquired his invention by seeing a model of a 
 similar machine which had been brought from America ; it was 
 disproved that he had seen the model, and consequently he was 
 held to be the first and true inventor. 
 
 In dealing with this branch of the subject, and showing that 
 one of the essential portions of the consideration for the grant of 
 letters patent is the labour of the mind of the inventor, we may 
 cite the case of Patterson v. Gas Light and Coke Company {p). 
 In that case certain referees had been appointed under the City 
 of London Gas Act to inquire into the subject of the purification 
 of gas. The plaintiff was one of those referees. The referees 
 drew up a report on the 31st January, 1872. The report con- 
 tained a description of the subject-matter of the plaintiff's patent. 
 Subsequently to the making of the report, but before its delivery 
 to the Board of Trade, the plamtiff, who had really discovered 
 the invention, obtained provisional protection. The action was 
 brought against the Gas Light and Coke Company for infringing 
 his patent. The company alleged that the invention was not 
 new, and also denied the title of the plaintiff to take out a patent 
 in respect of it, on the ground presumably, that he had no con- 
 sideration to offer to the public in return for the grant of letters 
 patent, he having already disposed to the public of his knowledge 
 upon the subject for other considerations. In the judgment of 
 the House of Lords, Lord Blackburn said : " It seems to me 
 
 {n) 1 Web. P. C. 43. 43 3. 
 
 (o) 10 B. & C. 27 ; 1 Web. P. C. {p) L. R., 3 App. Gas. 239, 213. 
 
CONSIDERATION — BEING ACTUAL INVENTOR. 17 
 
 clear that the duty of the referees under the Act was to ascertain 
 how far the gas could be practically j^urificd by each company. 
 If they found that gas containing not more than a certain limited 
 amount of impurity could be practically produced by any means, 
 they were to prescribe the maximum amount accordingly, and 
 they were by obvious implication, though it is not expressly 
 enacted, to make public how this degree of purity could prac- 
 tically be obtained. It was not material to them to inquire 
 whether these were means previously known, which the com- 
 panies had failed to make use of from parsimony, negligence or 
 ignorance, or whether there was some new idea which had been 
 developed during the course of their enquiries, which made these 
 old means practically valuable when before they were not. They 
 were not at all required to distinguish new from old. In all 
 these respects the report was quite different from a specification. 
 But, as soon as they became aware that the gas could be practi- 
 cably brought to this degree of purity, their duty was to fix the 
 maximum accordingly, and to make known to the public the 
 means by which this could practicably be done. The report of 
 the 31st January, 1872, is drawn up as it ought to have been. 
 It shows that, by some means there explained, purity to a great 
 extent could practicably be obtained, it makes no attempt to 
 show how much of this was previously known though neglected, 
 and it nowhere states that any part of what was now disclosed 
 was invented by one of their own body." In the Court of 
 Appeal James, L. J., had said {q) : " Although it is not necessary 
 for the determination of this suit to pronounce any final decision 
 on this point, we deem it right to say that we think it at the 
 very least very questionable whether it can be competent for a 
 member of an official commission or committee to take out a 
 patent for the subject-matter of their official investigation . . . 
 It is to be borne in mind that the report then made belonged 
 absolutely to the State. Every fact and figure in it had been 
 ascertained, and obtained at the public expense, every hour of 
 every refei^ee and of the secretary employed in the production of 
 it was public time . . . the consideration for every patent is the 
 communication of useful information to the public. What con- 
 
 {q) L. R., 2 Oh. D. 832. 
 T. C 
 
18 THE LAW OK PATENTS. 
 
 sideratiou is there when the information was already the propert)' 
 of the State ? " 
 
 These judgments, although going to a point which was not 
 ahsolutely necessary for the decision of the case (for the case was 
 decided upon the ground of want of novelty in the invention), 
 tend to show that it was in the minds of the judges that the 
 mental labour of making the discovery being an essential element 
 for the consideration of the grant, if that mental labour had 
 already been paid for by the State, it fiiiled as a consideration to 
 support the patent. 
 
 By sect. 35 of the Act of 1883, " A patent g)rnitecl to the true 
 and first inventor shall not he invalidated by an application in fraud 
 of him, or hy provisional protection obtained thereon, or by any use 
 or publication of the invention subsequent to that fraudulent applica- 
 tion during tlic p^ci'iod of ^provisional protection.'' This clause is 
 only a re-enactment of that which had been decided to be the 
 law previous to the Act. In Ex parte Scott and Young (r), the 
 servant had filed a provisional specification of an invention, after 
 which the master filed a specification for a similar invention, and 
 subsequently filed a complete specification, and obtained letters 
 patent. It was held that, under the circumstances, the Great 
 Seal might be affixed to the letters patent of the servant's inven- 
 tion, and that the patent might bear the date of his provisional 
 specification. 
 
 In the case of Ex parte Bates and Bedgate (s), it was held, 
 that leaving a provisional specification, and obtaining a pro- 
 visional protection, does not prevent a second applicant from 
 leaving a specification of a similar invention, and obtaining valid 
 letters patent fjr the invention before six months have elapsed 
 from the time when the first provisional specification was left, 
 and in such a case letters patent will not be granted to the first 
 applicant for any part of his invention, which is covered by the 
 letters patent already obtained by the second applicant, but in 
 this case there was no suggestion of fraud on the part of the 
 second applicant. Tbis decision has, however, been doubted in 
 Re Bering's Patent (t), by Lord Cairns, who said: "I may 
 
 (r) L. R., 6 rii. 274. {t) L. H., 13 Ch. D. 395. 
 
 (.f) L. R., 4 Ch. 577. 
 
CONSIDERATION — BEING ACTUAL INVENTOR. L9 
 
 however, state my objections to that decision " [Bates and 
 Reihjate), " which I never could thoroughly understand ; it has 
 always seemed to rae that if Parliament held out to inventors the 
 advantage they could get from provisional protection, the in- 
 ventor should have the enjoyment of that advantage for the six 
 months granted to him. Parliament intended the six months 
 to be for the completion of the invention, and for perfecting the 
 specification, and never said that the applicant should be deprived 
 of or lose that privilege for want of any due diligence on his 
 part." 
 
 The difficult questions, however, which arise in these cases, 
 seem to be set at rest by the 14th section of the Act of 1883 : 
 " Where an application for a patent in respect of an invention has 
 been accepted, the invention may, daring the period hetween the date 
 of the application and the date of sealing such pa lent , he iised and 
 published ivithout prejudice to the patent to he granted for the same. 
 And such protection from the consequences of use and publication is 
 in this Act referred to as provisional protection." 
 
 The general question of concurrent applicants, where there is 
 no fraud, that is, where each applicant is in a position to offer 
 the consideration of mental labour, will be considered in a sub- 
 sequent Chapter. It is only material here so far as concurrent 
 application is brought about by reason of one man fraudulentlj' 
 appropriating the invention of another. 
 
 The right of the Crown to grant letters patent to true and first 
 importers of inventions appears to have been a common law 
 right. We find that so far back as 1567 a patent had been 
 granted to one Hastings {u) for the making of frisadoes in con- 
 sideration of his having imported the skill of manufacturing them 
 from abroad. So in Mathey's case, " It was granted unto him 
 the sole making of knives with bone hafts and plates of lattice, 
 because, as the patent suggested, he brought the first use thereof 
 from beyond the seas." This was in the reign of Elizabeth. In 
 the clothivorkers of Ipswich case we have this (,/•) said, " The king 
 granted unto B. that none besides himself should make ordnances 
 for battery in the time of war : such grant was adjudged void. 
 
 (m) 1 Web. P. C. 6. (x) 1 Web. P. C. 6 ; 1 Godb. 252 
 
 254. 
 
 c 2 
 
20 THE LAW OF PATENTS. 
 
 But if a man hatli brought in a new invention and a new trade 
 in the kingdom in peril of his life and consumption of his estate 
 or stock, &c., or if a man hath made a new discovery of 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." 
 This was in 1615. 
 
 Then came the Statute of Monopolies, and we have seen that 
 the 6th section of that Act carefully excepted " the sole working 
 or making of any manner of new manufactures within this realm, 
 to the true and first inventor or inventors of such manufactures, 
 which others at the time of making such letters patents and 
 grants shall not use." 
 
 Afterwards came the decisions of Darcy v. Allin (y), and 
 Edgebiiry v. Stevens (s), where it is said, '"for the statute speaks 
 of new manufactures within this realm, so that if it be new here 
 it is within the statute, for the Act intended to encourage new 
 devices useful to the kingdom, and whether learned by travel or 
 by study it is the same thing." See the remarks of Eyre, C.J,, 
 in BouUon v. Bull [a). 
 
 In the early days of manufacturing enterprise, when true 
 inventors were so exceedingly rare as scarcely ever to be heard 
 of, the word inventor had not acquired the meaning which it has 
 at present, and seems to have been used to designate a first 
 introducer rather than a first inventor. In the early reports 
 shortly succeeding the Statute of Monopolies we do not find the 
 judges in any difficulty in dealing with the words " true and first 
 inventor," sliowing that the word inventor had not the precise 
 meaning v/hich it has since acquired. 
 
 In JJarsden v. Saville Street Co. (b) in the Court of Appeal, 
 Jessel, M. R., said, speaking of imported inventions, " It has 
 been argued tluit before the Statute of James such patents were 
 valid and were allowed by the judges, and that the statute 
 
 (y) 1 Wclj. P. C. C. (a) 2 H. Bl. 491. 
 
 (2) 1 Web. P. C. 35 ; 2 Salk. 447. (b) L. R., 3 Ex. D. 203. 
 
CONSIDERATION BEING ACTUAL INVENTOR. 21 
 
 merely restricts the duration of the patent aud does not destroy 
 the right as it previously existed. Even supposing that were so, 
 the statute defines who are considered to be worthy recipients of 
 the grant of such a monopoly, as it was then called, and the 
 definition so given has been followed ever since. It is difficult to 
 say a priori on what principle a person who did not invent 
 anything, but who merely imported from abroad into this realm 
 the invention of another, was treated by the judges as being the 
 first and true inventor. I have never been able to discover the 
 principle ; and although I have often made enquiry of others, 
 and of some who are more familiar with the patent law than 
 even I am, although I cannot pretend not to possess a consider- 
 able familiarity with it, I could never get a satisfactory answer. 
 The only answer was, ' It has been so decided and you are bound 
 by the decisions.' But it is an anomaly as far as I know, not 
 depending on any principle whatever. It has never been de- 
 clared by any judge or authority that there is such a principle, 
 and, not being able to find one, all I can say is that I must look 
 on it as a sort of anomalous decision which has acquired by time 
 and recognition the force of law." 
 
 The practice of granting letters patent to the first importers of 
 manufactures and inventions new within this realm has been 
 uniformly sustained by our Courts of law (c) . 
 
 In Milligan v. Marsh (d) it was held by Yice-Chancellor 
 Page-Wood that a person taking out a patent and making a 
 declaration that he is a first inventor, when, in truth, he is only 
 an importer of a communicated invention, makes a false sugges- 
 tion, and the patent is void. 
 
 When the Act of 1883 was passed, doubts were expressed as 
 to whether the effect of sect. 5, sub- sect. 2, was not to do away 
 with the granting of patents for what are known as communica- 
 tions from abroad, these doubts were shared by the author, 
 particularly with reference to the case of Milligan v. Marsh [siqyra). 
 The question has since been in a manner touched upon in the 
 
 (c) Plimpton v. Malcolmson, L. R. , 530, 535 ; Edmunds' Patent, GrifF. P. C 
 
 3 Ch. D. 555 ; Chappell v. Pnrday, 14 283 ; Moser v. Marsden, 10 P. 0. R. 
 
 M. & W. 318 ; Nichels v. Rosa, 8 C. B. 359. 
 723 ; Carpenter v. Smith, 1 Web. P. C. {d) 2 Jur. N. S. 1083, 
 
22 THE LAW OF PATENTS. 
 
 case of In re Arcr//'i^ patent (e), where, although in no way 
 deciding the point, it appears to have been considered that such a 
 patent might be granted. StirHng, J. (subsequently affirmed by 
 the Court of Appeal) in giving judgment, said, "The rdes 
 which have been framed by the Board of Trade under the power 
 conferred upon them by sect. 101 of the statute contain provisions 
 which the statute itself does not contain, in reference to an 
 application for a grant for an invention which has been 
 communicated from abroad. Rule 27 provides that the applica- 
 tion for such a gram shall be in the form ' A ' in the 2nd 
 schedule, and that form is different from that which is prescribed 
 by the statute and from the terms in which Lindsay made the 
 application" (his Lordship read the form, and continued:) " That 
 form has been framed so as to fit in with sect. 5, sub-sect. 2, of 
 the statute, which enacts that an application must contain a 
 declaration .... that the applicant is in possession of an 
 invention, whereof, he ... . claims to be the true and first 
 inventor. That form has not been followed iu this case. There 
 is no decision that a patent taken out as for an original invention, 
 when in fact the invention patented was communicated from 
 abroad, is void, though there is in the case of Milli<jan v. Maish 
 {sujjra) what appears to be a dictum of Vice-ChanceUor Sir W. 
 Page-Wood, to that effect, nor is there any decision that where 
 an invention is partly original and partly communicated from 
 abroad, the part communicated from abroad ought to be dis- 
 tinguished in the specification ; but in the case of Renanl v. 
 Levemtein (/), the Lord Justice Knight Bruce expressed great 
 doubt upon the point." .... And at p. 318 : " That being so 
 notwithstanding that the invention was founded on a communica- 
 tion received from abroad it appears to me that it well might be 
 held that the statutory declaration made by the applicant was 
 true in point of law." 
 
 Lindley, L.J., in the case of Moser v. Marsden {g), iu his judg- 
 ment in the Court of Appeal, said : " Then it was suggested that, 
 as the English patentee had himself improved Grosselin's inven- 
 
 (c) In re Avery's Patent, L. R., 36 (/) 10 L. T., N. S. 177. 
 
 Cli. D. 316. {(j) 10 P. 0. R. 359. 
 
CONSIDEHATlON — BEING ACT[TAL INVENTOR. '23 
 
 tion, the speciticatiuu ought to have shown tliis on its face ; and 
 that, as the whole invention was not communicated to the 
 plaintiff by Grosselin, as stated by the plaintiff, the patent is bad. 
 This point has been raised before, but as yet it has not found 
 favour in any Court. Nor ought it ; there is no substance in it. 
 The patentee is the true and first inventor within the meaning of 
 the patent laws, whether he invents himself or whether he simply 
 imports a foreign invention. I cannot see how he is anything 
 but a true and first inventor if he does both ; that is, if he both 
 imports a foreign invention and improves it himself." 
 
 A j)atent granted to a British subject, in his own name for an 
 invention communicated to him by a foreigner, the subject of a 
 state in amity with this country, is not void, although such 
 patent be in truth taken out and held by the grantee in trust for 
 such foreigner {h). 
 
 The person who takes out the patent need not be a meritorious 
 importer, he may be merely the clerk or agent to whom the 
 communication was made for any special purpose by the foreign 
 inventor, as for the purpose of enabling him to take out the patent 
 for the benefit of such foreigner (?). 
 
 The importer of a new manufacture or invention will be 
 considered the true and first inventor, even though he is not the 
 assignee of the foreign inventor, and he may be the foreigner 
 himself, if the Crown chooses to grant him a patent {k). 
 
 Sect. 23 of the Act of 1883 provides for the registration of 
 owners of patents. Sect. 85 prohibits the registration of any 
 trust. This does not abolish trusts, but merely prohibits the 
 registration of trusts. 
 
 The importer of an invention need not have acquired the 
 information from a foreigner resident abroad, but may have done 
 so from a British subject abroad (l). 
 
 But a communication made in England by one British subject 
 to another, of an invention, does not make the person to whom the 
 communication is made the first and true inventor within the 
 
 (h) Beard v. Egerton, 3 C. B. 129 ; ChcqjpeU v, Purday, 14 M. & W. 318 ; 
 
 15 L. J., C. P. 274 ; 10 Jur. 643. see also Beard v. Egerton, 3 C. B. 130. 
 
 {i) lb. 15 L. J., C. P. 274. (/) Nickels v. Ross, 8 C. B. at p. 710, 
 
 (^•) See remarks of Pollock, C.B. ia per Wilde, C.J. 
 
24 THE LAW OP PATENTS. 
 
 meaning of 21 Jac. I. c. 3, so as to enable him to take out letters 
 patent fur the invention (ni). 
 
 It was decided in In re Wirth's Patent {n) that a patent could 
 be granted to a foreigner resident abroad for an invention com- 
 municated to him by another foreigner also resident abroad. 
 This, however, will no longer be the case, a direction having been 
 made that only persons resident in the United Kingdom may 
 apply for a grant of letters patent in Form A 1, this regulation 
 being expressly intended to prohibit agents living abroad from 
 making the declaration in Form A. 1 (o). 
 
 " The merit of an importer is less than of an inventor .... 
 and it is an argument against the patent, that it was imported and 
 not invented. I do not say it takes away the merit, but it makes 
 it much smaller." Per Lord Brougham in In re Soames' 
 Patent {])). 
 
 It is provided by 46 & 47 Vict. c. 57, s. 103, as amended by 
 48 & 49 Vict. c. 63, s. 6, that any person who has applied for 
 protection for any patent in any foreign state with whom we have 
 entered into international arrangements for mutual protection of 
 inventions, shall be entitled to a patent for his invention in this 
 country in priority to other applicants, and such patent, on 
 registration, shall have the same date as the date of the protec- 
 tion obtained in such foreign state, provided that his application 
 is made within seven months from his applying for protection in 
 the foreign state with which the arrangement is in force. 
 
 In an application for a patent in respect of an invention 
 communicated from abroad, the circumstances under which the 
 invention was obtained by the importer will not be inquired 
 into (q), and the object of sect. 103 is to preserve to the foreign 
 inventor a priority for a certain period over persons who might 
 otherwise have anticipated him by filing an application for a 
 patent for his invention without authority to do so. 
 
 The rights under this section are purely personal to the 
 
 {'III) Marsden v. Savilh Street Co., (^j) 1 Web. P. G. 733. 
 
 C. A., L. R., 3 Ex. D. 203. (/?) Edmund: 8 Patent, Griff. P. C. 
 
 (n) L. R., 12 Cli. D. 303 ; 23 W. R. 283 ; Re Lake, 5 P. O. R. 415 ; Re 
 
 329. Bairstow's Patent, 5 P. 0. R. 288. 
 
 o) P. 0. J., 9th May, 1884. 
 
CONSIDER ATIOX — BEING ACTUAL INVENTOR. 25 
 
 applicant in the foreign country himself, and cannot be enjoyed 
 by the agent of such applicant or by any person to whom he has 
 communicated his invention (r). 
 
 Where the foreign inventor had made two applications in his 
 own country, the first of which applications was aboitivc, and 
 further, the foreign patentee made a declaration that the proceed- 
 ings under the second application were in all respects the same as 
 if no prior application had been made, it was held by the L.O. 
 that the seven months mentioned in sect. ] 03 should run from 
 the date of protection obtained upon the second application, and 
 he directed that the English patent should be sealed as of that 
 date (s). 
 
 Where a foreign inventor was resident in a country with which 
 international arrangements for the mutual protection of inventions 
 was made after an application had already been lodged in this 
 country by another for letters patent in respect of a similar 
 invention, it was held by the L.O. that such foreign inventor was 
 entitled to apply in priority over other applicants for so much of 
 the seven months as remained after the Order in Council declaring 
 such foreign country to be " one of the contracting states " (t). 
 
 We have now shown what is meant when it is said that the 
 consideration must move from the patentee personally. 
 
 (r) Ec Shallenberger, 6 P. 0. K. (s) lie Fan dc Poele, 7 P. 0. R. 69. 
 
 550 ; Re Carez, 6 P. 0. R. 552 {t) In re Main's Patent, 1 P. 0. R. 13. 
 
26 THE LAW OP PATENTS. 
 
 CHAPTER IV. 
 
 A. MEW AND USEFUL INVENTION. SUBJECT MATTER. 
 
 Sect. 6 of the Statute of Monopolies defines a new invention 
 as " any manner of new manufacture which others at the time 
 of making such letters patent shall not use." 
 
 We have seen that the Act of 1883 has adopted this definition 
 of an invention. We have now to consider the legal meaning 
 wliich has been placed upon the words "New Manufactures." 
 
 A new manufacture does not mean, as it is erroneously sometimes 
 supposed, only a new article of manufacture, but it also means a 
 new process or method of manufacturing something new or old ; 
 it does not mean a new principle of manufacturing, but it means 
 a new application of principles. No man can claim an invention 
 in a principle («), for that would be to invent the laws of nature, 
 which have always existed. 
 
 Man merely discovers the principle, and if, when he discovers 
 a principle he can discover a method of utilizing the principle so 
 as to make it applicable to the production of a new manufacture, 
 he can obtain a patent for the method, and to a large extent will 
 be protected in the application of the principle itself. 
 
 Mr. Justice Wills in Easterhrook v. The Great Western Rail- 
 way Co. said {b) : " Although there cannot be a patent for an 
 idea or principle apart from its physical embodiment in adequate 
 apparatus, yet, that if the specification discloses the idea, shows a 
 method by which it can be carried out and does not limit the 
 claim of the patentee, any apparatus which by different mechanical 
 means carries out the same idea is an infringement of the patent 
 
 {a) Boulton v. Bull, 2 H. Bl. 479 ; The HouscMU Co. v. Neilson, 1 AVeb. 
 
 Dav. P. C. 196, 212 ; HornUuwcr v. P. C. 673 ; Crossley v. Potter, Macr. 
 
 Boulton, 8 T. R. 101 ; Jupe v. Pratt, 1 P. C. 240 ; Patterson v. The Gas Light 
 
 AVeb. P. C. 146 ; Neilson v. Harford, Co., L. R., 3 App. Cas. 246. 
 
 1 Web. P. C. 342 ; 8 M. & W. 806 ; (&) 2 P. 0. R. 207. 
 
SUBJECT MATTER. 27 
 
 though the method and even the puiposc to which the prmciple 
 or idea is applied be different from those embodied in the 
 specification." 
 
 Lord Justice Clark Hope in directing the jury in the case of 
 The Househill Co. v. Neihon (c), said : — " 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 
 show that you are aware that no particular sort or modification, 
 or form of the apparatus, is essential in order to obtain benefit 
 from the principle ; then you may take out your patent for the 
 mode of carrying it into effect, and are not under the necessity of 
 describing and confining yourself to one form of apparatus .... 
 You may generally claim the mode of carrying the principle 
 into effect by mechanical contrivance, so that any sort of apparatus 
 applied in the way stated will more or less produce the benefit, 
 and you are not tied down to any form." 
 
 In the Court of Appeal, Lord Justice Cotton, speaking on this 
 subject, said : — " Where there is a principle first applied in a 
 machine capable of carrying it into effect, the Court looks more 
 narrowly at those who carry out the same principle, and say they 
 do it by a different mode, and looks to see whether, in effect, 
 although the mode is not exactly the same, it is only a colour- 
 able difference — a mechanical equivalent for a substantial part of 
 the patentee's invention being looked upon as a mere colourable 
 difference" {d). 
 
 In Otto V. Linford (e), claim 1 of the plaintiff's specification 
 ran as follows : — " Admitting to the c} linder a mixture of com- 
 bustible gas or vapour with air, separate from a charge of air or 
 incombustible gas, so that the development of heat and the 
 expansion or increase of pressure produced by the combustion arc 
 
 (c) 1 Web. P. C. 685. v. Bennis, L. E., 36 Cli. 1). 740 j 4 P. 
 
 {d) The AutomaticlVci(jhing Machine 0. R, 333; Thomson r. Moore, Q 'P. 0. 
 
 Co. V. Kniijht, 6 P, 0. R. 304 ; see also R. 426 ; Gadcl & Mason v. The Mayor, 
 
 Badische Anilin uiid Soda Fabrik v. d:c., of ManehesUr, 9 P. 0. R. 525. 
 Levinstein, 21?. 0. E. 91, 92, 93; L.R., (c) 46 L. T., JS\ S. 35. 
 
 24 Ch. D. 156, 171, et seq. ; Proctor 
 
28 THE LAW OF PATENTS. 
 
 rendered (jradnal substantially as and for the purposes set 
 forth." 
 
 Jessel, M.R,, in the Court of Appeal, said (/): — "It is said 
 that what is claimed is a principle . . . . or, as it is some- 
 times termed, the ' idea ' of putting a cushion of air between the 
 explosive mixture and the piston of the gas motor engine, so as 
 to regulate, detain, or make gradual, what would otherwise be a 
 sudden explosion. Of course, that could not be patented. I do 
 not read the patent so ; I read the patent as being to the effect 
 that the patentee tells us that there is the idea which he wishes 
 to carry out ; but he also describes other kinds of machines 
 which will carry it out ; and he claims to carry it out substan- 
 tially by one or other of these machines. That is the subject of 
 a patent .... One of the strongest illustrations that I 
 know of is the patent for the hot blast in the iron manufacture {g), 
 where there was nothing new at all except the idea that the 
 application of hot air instead of cold air to the mixture of iron 
 ore and fuel, would produce most remarkable results in the shape 
 of economy in the manufacture of iron. The inventor or dis- 
 coverer could not patent that, but what he did was this, he said ; 
 ' I will patent that idea in combination with the mode of carry- 
 ing it out, that is, I tell you that you may heat your air in a 
 closed vessel next your furnace, and then that will effect the 
 object.' It was held that that would do." 
 
 So in Tlie Edison Bell Pliono(jmph Co. v. Smith (h), where 
 the plaintiffs claimed in their specification : — " In a phonograph, 
 attaching both the recording point and the reproducing point to 
 the same diaphragm, means being provided whereby either of 
 the points may bo brought into operative position on the surface 
 of the phonogram." It was pleaded by the defendants that 
 this was a claim for the principle of attaching both the points to 
 the same diaphragm; Wright, J., held that it was not so, 
 deciding it to be " a claim for a particular arrangement of essen- 
 tial parts of a machine, which arrangement has obvious advan- 
 tages, but has never before been made practicable, and which has 
 now been found practicable in a way disclosed by the specifica- 
 
 (/) At page 39. 806 ; 11 L. J., Ex. 20. 
 
 (g) 1 Web. P. C. 295 ; 8 M. & W. {!>) 11 P. 0. li. 148. 
 
SUBJECT MATTER. 29 
 
 tion. Such a claim ought probably to be construed as a claim 
 of monopoly for that arrangement carried out by any means sub- 
 stantially similar to those disclosed in the specification" (i). 
 
 A claim of every method of application of a principle is a 
 claim of the principle itself, and is not subject-matter of a grant 
 of letters patent (/r) . 
 
 The novel application of an old principle is subject-matter 
 of a grant, if invention is disclosed, and provided that such 
 novel application constitutes a new and useful improvement in 
 manufacture (/), but the patentee is strictly tied down to the 
 method of application disclosed in his specification, and valid 
 patents 'may be taken out by others for different methods of 
 carrying the same principle into eff'ect {m). 
 
 In Barber v. Grace (n), the patentee's invention related to 
 improvements in the finishing of hosiery and similar goods, and con- 
 sisted in submitting them to the pressure of hot boxes or surfaces 
 heated by steam, water, or other fluid. At the trial it appeared 
 that the alleged infringement consisted in pressing goods between 
 cylindrical revolving rollers heated by steam, it was held by 
 Pollock, C.B., that the use of such rollers was not a mere colour- 
 able evasion of the patent, and that the defendants had not 
 infringed. 
 
 In Box /toil V. Bali (o), the Lord Chief Justice Eyre said : 
 " When the effect produced is some new substance or composi- 
 tion of things, it should seem that the privilege of sole working 
 or making ought to be for such new substance or composition, 
 without regard to the mechanism or process by which it has been 
 
 {i) At page 163 ; see also Boidton v. N. S. 142 ; Cannington v, Nuttall, 
 
 Bull, Dav. P. C. 162 ; Hornblovn- v. L.R., 5 H. L. 205 ; 40 L. J., Ch. 739. 
 
 Boulton, 8 T. R. 95 ; Electric Telegraph (m) Automatic Weighing Machine 
 
 Co. V. Brett & Little, 10 C. B. 838 ; 20 Co. v. Anight, 6 P. 0. R. 113 ; Seed v. 
 
 L. J., C. P. 123 ; Minter v. JFells, 1 Higgins, SH.L.Ca. 550; Curtis \. Piatt, 
 
 "Web. P. C. 127; Cannington^. Nuttall, L. R., 3 Ch. D. 135 (n.) ; Needham v. 
 
 L. R., 5 H. L. 205. Johnson, 1 P. 0. R. 49 ; Bovill v. Pirn, 
 
 IJc) Neilson v. Harford, 1 Web. P. C. 11 Ex. R. 718, 739 ; Fletcher v. The 
 
 355 ; Booth v. Kcnnard, 2 H. & N. 95; Glasgow Gas Commissioners, 4 P. 0. . 
 
 26 L. J., Exch. 305 ; Axitomatic 388. 
 
 Weighing Machine Co. v. Knight, 6 P. {n) 1 Ex. R. 339 ; 17 L. J., Ex. 122. 
 
 O. R. 297, 308. (o) 2 Bl. 463 ; Dav. P. C. 162. 
 
 (Z) Dangerfield v. Jones, 13 L, T., 
 
30 THE LAW OF PATENTS. 
 
 produced, which, though perhaps also new, will be only useful as 
 producing the new substance. "When the effect produced is no 
 substance or composition of things, the patent can only be for the 
 mechanism, if new mechanism is used, or for the process, if it 
 bo a now method of operating with or without old mechanism, 
 by which the effect is produced." Mr. Justice Heath said, " What 
 then falls within the scope of the proviso ? such manufactures as 
 are reducible to two classes : the first class includes machinery, 
 the second, substances, such as medicines formed by chemical 
 and other processes, where the vendible substance is the thing 
 produced, and that which operates preserves no permanent form ; 
 in the first class the machine, and in the second the substance 
 produced, is the subject for the patent. I approve of the term 
 ' manufacture ' in the statute, because it precludes all nice refine- 
 ments ; it gives us to understand the reason of the proviso — that 
 it was introduced for the benefit of trade." With reference to 
 this judgment, we may point out that a new chemical substance 
 is not a new manufacture, as the words "new manufacture" 
 are understood in modern times, but that in the case of manu- 
 facturing a new chemical substance, the process of making 
 tliat substance is the subject of the patent, and not the substance 
 when made. 
 
 Upon perusing the cases which we propose to quote, it will be 
 seen that the more modern view of the construction of the words 
 " new manufacture "has been the result of a great deal of develop- 
 ment. At first the judges seemed to be inclined to limit the 
 subject-matter of letters patent to new articles produced ; but as 
 the arts and manufactures of the country progressed and increased, 
 it was seen that by far the most important inventions were 
 inventions in the process of making old and well-kno^vm articles 
 of commerce, and so it became evident that should the construc- 
 tion of the words " new manufactures " be entirely limited to the 
 production of new articles, to the exclusion of the process of 
 manufacturing old articles by cheaper, better and improved 
 methods, the inducement which the common law intended to 
 give to inventors would be curtailed to the narrowest possible 
 limits. 
 
SUBJECT MATTER. 31 
 
 Hall V. Jam's (p) was an action for the infringement of 
 a patent for the improvement of the manufacture of lace by 
 the use of the flame of gas for the purpose of singeing the fluffy 
 ends of the surface of lace manufactured from cotton. For the 
 defendants it was contended that the process was not new. Fire 
 and flame had been applied for similar purposes before the 
 plaintiff's invention. The mere doing that with the flame of gas 
 could not be the subject-matter of a patent. The patent, which 
 was clearly only for a process, was supported. In Jones v. 
 Pearce (q) the patentee had used the principle of suspension to 
 the manufacture of wheels ; the patent was supported because, 
 although the principle could not be patented, the method of 
 applying that principle to the manufacture of wheels was properly 
 the subject of a patent. In Russell v. Cowley (/■) the patent, 
 which was for an improved process of manufacturing iron tubes, 
 was supported. Lord Lyndhurst, in giving judgment, said : It is 
 an invention to manufacture tubes for gas and other purposes by 
 welding them without the use of any mandril or internal support, 
 by which certain advantages are produced." 
 
 In Walton v. Potter (s) Chief Justice Tindal said : " Now 
 there can be no doubt whatever that, although one man has 
 obtained a patent for a given object, there are many modes open 
 for a man of ingenuity to obtain a patent for the same object ; 
 there may be many roads leading to one place, and if a man has, 
 by dint of his own genius and discovery, after a patent has been 
 obtained been able to give to the public without reference to the 
 former one, or borrowing from the former one, a new and 
 superior mode of arriving at the same end, there can be no 
 objection to his taking out a patent for that purpose." In this 
 case the learned judge by the word " object " must have meant 
 the method of producing an article. 
 
 The same judge, in Gibson v. Brand (t), said : " The patent is 
 taken out ' for a new or improved process for the manufacture of 
 
 (p) 1 Web. P. C. 100 ; see also E. 903 ; NeivallY. Elliot, 13W. R. 11. 
 
 Booth V. Kcnnard, 1 Hurl. & N. 527 ; {q) 1 Web. P. C. 122. 
 
 Hicjgsy. Godu-in, 27 L. J., Q. B. 421 ; (r) 1 Web. P. C. 459. 
 
 Hills V. London Gas Light Co., 29 L. (s) 1 Web. P. C. at p. 590. 
 
 J., Ex. 409; Young v. Fernie, 12 AV. {t) 1 AVeb. P. C. 633. 
 
32 THE LAW OF PATENTS. 
 
 silk, and silk in combination with certain other fibrous substances,' 
 
 taken out therefore strictly for a process undoubtedly 
 
 there is a very strong reason to suppose if the specification is 
 carefully and properly prepared, so as to point out with great 
 distinctness and minuteness what the process is, that such a 
 patent may be good in law. Such certainly was the opinion of 
 Chief Justice Eyre, in Bon/fon v. Waff (u), and such also appears 
 to have been the opinion (carefully guarding against any abuse of 
 that doctrine) of Lord Tenterden in the case of The King v. 
 WJieeler (.r), who said that ' the subject-matter of letters patent, 
 i.e., the word " manufacture," as used in the Statute of James, 
 is generally understood to denote either a thing made, which is 
 useful for its own sake, and vendible, or to mean an engine or 
 instrument, or some part of an engine or instrument, to be 
 employed either in the making of some previously-known article, 
 or in some other useful purpose .... or it may perhaps extend 
 also to a new process to be carried out by known implements or 
 elements acting upon known substances, and ultimately producing 
 some other known substance, but producing it in a cheaper 
 or more expeditious manner or to a better or more useful 
 account.' " 
 
 Since the date of these earlier decisions the law seems to have 
 been considered as settled upon the subject. In Boicley v. 
 llancoch {y) Lord Cranworth said : " A discovery that the 
 mixture of two or more simple substances in certain definite 
 proportions will form a compound substance valuable for medical 
 or other qualities, would afford a good ground for a patent. A 
 discovery of some machinery, whereby such a mixture might be 
 more quickly and effectually accomplished, might be the foun- 
 dation of another patent." In Simpson v. Holiday (s) the 
 specification said, " I mix aniline with dry arsenic acid and allow 
 the mixture to stand for some time, or I accelerate the operation 
 by heating it to, or nearly to, its boiling point until it assumes a 
 rich purple colour." The patentee claimed " the manufacture or 
 preparation of red or piir[)lc dyes by heating aniline dyes with 
 arsenic acid as hereinbefore described." Lord Chelmsford, in 
 
 («) 2 H. Bl. 468 ; Dav. P. C. 207. {y) 6 De G., M. & G. 402. 
 
 {x) 2 B. & Aid. 349. {z) L. R., 1 H. L. 315. 
 
SUBJECT MATTEE. 33 
 
 giving judgment, said : " There is nothing on the face of the 
 specification to show that the invention described is not, in every 
 part of it, the subject of a patent." It is obvious that there may- 
 be many different processes of accomplishing the same object : if 
 some of the processes are old, and that which is claimed is 
 merely a new method, the subject of the invention will be 
 confined to that method (a) . 
 
 Where the object of a patent is old, and the means to effect it 
 only are new, the court will construe the invention strictly, as it 
 looks jealously at the claims of inventors seeking to limit the 
 rights of the public to a well-known object (b). 
 
 But where a patent is for a new process to effect a new object 
 which had been sought after but not previously attained, the 
 doctrine of mechanical equivalents will apply, and a man will be 
 held to have infringed who has arrived at the same result by 
 means of a process bearing a substantial resemblance to the 
 invention of the patentee (e) . 
 
 There appears to be some doubt as to whether a patent could 
 be granted for a mereproduct, irrespective of the means by which 
 it was made. Cotton, L.J., has expressed an opinion that 
 a product would be proper subject-matter. In his judgment in 
 the case of VorwerJc i^ 8on v. Evans 8f Co. (d) he said : " I decide 
 that, not on the ground that there could not be a patent for a 
 waistband, if that was claimed as a new thing, provided it was 
 new, because it would be going against principle, I think, to say 
 that there could be no claim for such a thing if it were entitled to 
 
 (a) Bovill V. Pi7nm, 11 Excli. 739. Ch. D. 740 ; 57 L. J., Ch. 11; Gosnellv. 
 
 (b) Curtis V, Piatt, L. R., 3 Ch. D. Bishop, 5 P. 0. R. 158; NcttlefoUs v. 
 135 (n.) ; The Patent Bottle Envcloxoe Reynolds, 9 P. 0. R. 270. 
 
 Co. Y. Seymer, 5 C. B. N. S. 164; fforton (c) Jicjje v. Pratt, 1 AV. P. C. 145 ; 
 
 V. 3Iahon, 12 C. B. K S, 437 ; Ormson Houschill Co. v. Neilson, 1 W, P. C. 
 
 V. Clarke, 14 C. B. N. S. 475 ; Jupe v. 673, 685 ; Curtis v. Piatt, L. R., 3 Ch. 
 
 Pratt, 1 W. P. C. 146 ; Barber v. Grace, D. 136, n. ; L. R., 1 H. L. 337 ; The 
 
 1 Eich. 339 ; 17 L. J., Ex. 122 ; Badische Anilin und Soda Fabrik v. 
 
 Bovill V. Pimm, 11 Exch. R. 718, 739 ; Levinstein, 2 P. 0. R. 91 ; Proctor v. 
 
 Seed V. Higgins, 8 H. L. C. 550; Z?cti?us, 4 P. 0. R. 333; L. R., 36 Ch. D. 
 
 PMshtonv. Crawley, L. R., 10 Eq. 522; 740; 57L. J.,Ch. 11; Thoinsony. Moore, 
 
 The Badische Anilin imd SodaFabrikv. 6 P. 0. E,. 426. This subject istreated at 
 
 Levinstein, 2 P. 0. R. 91 ; Proctor v. length in Chap. XVII. on Infringement. 
 Beyinis, 4 P. 0. R. 333 ; L. R., 36 (d) 7 P. 0. R. 271. 
 
 T. I) 
 
34 THE LAW OF PATENTS. 
 
 be protected by a patent, and I tbink it would be contrary 
 to principle, because if there is a new thing produced, then, in my 
 opinion, there could be a thoroughly good patent taken out for 
 that" (e). 
 
 Hereafter, in considering the specification, we shall have 
 to discuss the limitations within which a patent for a new 
 process will be held valid, and the cases which have been decided 
 upon the point. 
 
 Any addition to or subtraction from any known machine or 
 process causing the old machine or process to accomplish an 
 object in a more speedy, perfect or economical manner, is 
 evidently the subject of a patent. In Hornhloio&r v. Boulton (/) 
 Mr. Justice Grose said : " A doubt is entertained whether there 
 can be a patent for the addition of an old manufacture, this doubt 
 rests altogether upon Bircofs case (g), if that were to be con- 
 sidered as law at this date (1799) it would set aside many patents 
 
 for many ingenious inventions if, indeed, a patent could 
 
 not be granted for the addition it would be deprixdng the public 
 of one of the best benefits of the Statute of James." In Lister v. 
 LeatJier (h) Lord Campbell said : " The assertion that all 
 patents for improvements of existing patents must be void, is 
 obviously untenable " (i). In Fox v. Dellentahlc {];) Malins, V.-C, 
 said : " No doubt a man may make an invention which is partly 
 covered by an existing patent, but he cannot use it without the 
 licence of the patentee. He may wait for the expiration of the 
 patent and take out one himself. If his invention be novel, that 
 patent will be valid " (/). 
 , During the argument in Vickers v. Sid dell, Lord Herschell 
 suggested that if a man used a mechanical equivalent, and 
 
 (e) See also Bowen, L. J., ib. p. 274; & N. 531 ; Morris v. Bransom, 1 Web. 
 
 also American Braided Wire Co. v. P. C. 51 ; 1 Carp. P. C. 30 ; Bull. N. 
 
 Thomson, 5 P. 0. E. 113 ; 6 P. 0. R. R. 76 ; Bovill v. Moore, 2 Coop. Ch. 
 
 518 ; NoheVs Explosive Co. v. Anderson, Ca. 56 ; Dav. P. C. 361 ; 2 Marsh. R. 
 
 11 P. 0. R. 530. 211 ; Moser v. Marsden, 10 P. 0. R. 
 
 (/•) 8T. Rep. 104. 361, 
 
 [fj) 3 Inst. 184. (A;) 15 W. R. at p. 195. 
 
 (A) 8 E. & B. at p. 1017. (Z) See also Lister v. LeatJier, 8 E. & 
 
 (i) See also Russell v. Cowley, 1 Cr. B, 1017 ; In re Fox's Patent, 1 Web. 
 
 M. & R. 864 ; Booth v. Kennard, 1 H. P. C. 431, ii. 
 
SUBJECT MATTER. 35 
 
 produced a superior result, such improvement would be patent- 
 able (m). 
 
 An application of an old machine or an old material for a new 
 purpose, may be the subject of a patent ; for instance, Muntz v. 
 Foster (n) was an action for an infringement of a patent for the 
 manufacture of metal plates to be used for sheathing the bottoms 
 of ships. The improvement consisted of using an alloy of zinc 
 and copper in certain proportions for the manufacture of the 
 plates, and for this purpose copper alone had hitherto been used. 
 The alloy of zinc and copper was to produce an old and well- 
 known material, still the application of that old material to 
 sheathing of ships had not before been discovered, and upon its 
 being shown that such an application was a great improvement on 
 the old method of sheathing with copper, it was held that the 
 patent could be sustained. 
 
 The application of a known instrument or machine to a new 
 purpose will not support a patent unless the means or method of 
 application is also new and discloses the exercise of a certain amount 
 of ingenuity. Exactly what degree of invention is requisite is 
 difficult to define, and it is impossible to formulate a rule capable 
 of appljdng to every case that might arise, the question being one 
 that must be decided upon the facts of each particular case. 
 
 Lord Esher, M.R., in Li/o)/ v. Goddard said (o) : — " I know 
 that a case before the House of Lords has been cited, Morgan v. 
 Windover (p), which, it is said, lays down a rule that would 
 oblige us in this case to say that there is no invention. I have a 
 very strong feeling myself that that case in the House of Lords 
 was decided from this view of it : that the patentee there did not 
 claim the combination of the springs at the back of the carriage 
 and the springs at the front, but what he did claim was the mode 
 of attaching each of those springs to the bed of the carriage, and 
 although I am not obliged to say that I should have agreed with 
 them as to the fact they found, they found that that was not 
 
 (to) 7 P. 0. R. 303. L. J., Ch. 455. 
 
 {n) 2 Web. P. C. 103 ; see alsoifoy- (o) 10 P. 0. R. 344 ; see also Lister 
 
 ward V. Hamilton, Griff. P. C. 115 ; v. Norton, 3 P. 0. R. 205 ; Morgan v. 
 
 Lister v. Norton, 3 P. 0. R. 199 ; Pcnn Windover, 4 P. 0. E. 426. 
 V. Bihly, L. R., 2 Ch. App. 127 ; 36 ^j) 7 P. 0. R. 131. 
 
 D 2 
 
36 THE LAW OF PATENTS. 
 
 sufficient invention. They thought so, and therefore I suppose 
 in that case, as there is no contradicting them, we may take it 
 that they were right ; but because there was no invention in that 
 case, how can that be an authority for saying that there is no 
 invention in this ? " 
 
 In Morgan v. Windover Lord Halsbury, in the House of Lords, 
 said (q) : " Whether that invention is to be ascertained by con- 
 sidering something originally discovered or by considering a 
 combination producing a new result, still it cannot but be certain 
 that the Statute of Monopolies, and the whole branch of the law- 
 founded on that statute, make it an absolute condition to the 
 validity of a patent that there should be what may properly be 
 called invention, and the application of well-known things to a 
 now analogous use is not properly the subject-matter of a patent." 
 
 In that case the patent consisted in the application of C springs, 
 which previously had only been employed on the back of a 
 carriage, to the fore part, and arranged so as not to interfere with 
 the fore wheels and their motion in turning the carriage. This 
 contrivance was new, and was admitted to give greater ease and 
 comfort in the motion of the carriage to which it was attached. 
 The patent was upheld in the lower courts, but these decisions 
 were reversed by the House of Lords, where it was held nem. con. 
 that there was not sufficient ingenuity disclosed to support a 
 grant of letters patent. Lord Herschell in his judgment said (;■) : 
 " Now, my Lords, if it had required mechanical ingenuity and 
 skill to adapt the composite springs which had heretofore been 
 used in the hind part of a carriage to the fore part of a carriage, 
 so that it was not the mere substitution in front in substantially 
 the same way as the substitution had taken place at the back, 
 but that it needed some skill and ingenuity to adapt to the front 
 part of the carriage that which had been applied to the back, I 
 should have thought that there was sufficient subject-matter, 
 and that the patent could have stood. But when once it is 
 admitted that all that can be claimed as new is the idea of 
 putting it in the front instead of at the back, and that n-hcn once 
 that idea uas entertained, any workman told to do it iroii/d, icithout 
 
 (q) lb, at p. 1J4. (r) lb. at p. lo7. 
 
SUBJECT MATTER. 37 
 
 any instructions or any special mechanical skill, be able at once to do 
 it, it seems to me that that really concludes the case against the 
 respondents." 
 
 In Penn v. Bibby (s) Lord Chelmsford, L.C, recognised the 
 difficulty of stating any definition which should be applicable to 
 every case. He said : " It is very difficult to extract any prin- 
 ciple from the various decisions on this subject which can be 
 applied with certainty to every case, nor indeed is it easy to 
 reconcile them to each other." He then proceeds to dissent 
 from the definition given by Lord Campbell in Brook v. Aston, 
 doubting the accuracy of the report, and proceeds to say : " Lord 
 Chief Justice Cockburn approaches much nearer to the enuncia- 
 tion of a principle, or at least of a rule for judging in these cases, 
 in Harwood v. G. N. B. (t), where he says, ' although authorities 
 established the proposition that the same means, apparatus, or 
 mechanical contrivance cannot be ajDplied to the same purpose, or 
 to purposes so nearly cognate and similar as that the application 
 of it in one case naturally leads to the application of it when 
 required in some other, still the question in every case is one of 
 degree, whether the amount of affinity or similarity which exists 
 between the two purposes is such that they are substantially the 
 same, and that determines whether the invention is so sufficiently 
 meritorious as to be deserving of a patent/" The case o{ Har- 
 wood V. G. N. B., quoted above by the Lord Chancellor, was 
 carried to the House of Lords, where Lord Chelmsford, then Lord 
 Chancellor, said : " The question is, whether there can be any 
 invention of the plaintiff in having taken that thing, which was a 
 fish for the bridge, and having applied it as a fish for the railway. 
 
 Upon that I think the law is well and rightly settled 
 
 viz., that you cannot have a patent for a well-known mechanical 
 appliance, merely because it is applied in a manner or to a 
 purpose which is analogous to the manner or purpose in or by 
 which it has hitherto been notoriously used " {u). 
 
 (s) L. R,, 2 Ch. App. 127. 11 H. L. Cas. 223 ; Jordan v. ]lJoore, 
 
 {t) 29 L. J., Q. B. 193. L. E., 1 C. P. 624 ; Parkes v. Stevens, 
 
 {u) IIH.L. Cas. 651; see also Zrorto?i L. R. 8 Eq. 367; L. R., 5 Ch. 36; 
 
 V. ^l/a?)o?t, 12C. B., N. S. 437;16C.B., Losh v. Hague, 1 Web. P. C. 200; 
 
 N. S. 141; 31 L. J., C. P. 2.55; JFhifc v. Ormsou v. Clark; 32 L. J., C. P. 8 ; 
 
 Toms,2';L.J.,Ch.20i;lialstunv.Smith, Bricnionv. Eawkes, 4 B, & Aid. 541 j 
 
38 THE LAW OF PATENTS. 
 
 In Re(j. V. Cutler (a;) Lord Denman said : '' "With regard to 
 the third and fourth claims, in which the defendant claims the 
 application of tubes in the construction of tubular flues, it appears 
 to me that he has no right to take out a patent for the mere 
 application of particular things to any particular pui'j)ose. If he 
 had made a new combination, that would have been a new dis- 
 covery, and a proper subject for a patent. ... I think that the 
 application of an article to produce any particular result, the 
 party having no claim either to the mode of producing the article, 
 or to the mode of applying it for attaining that result, forms no 
 ground for a patent." Lord Denman's distinction between the 
 mere application of an old instrument to a new purpose and a 
 new combination, appears to have been followed, and to be a 
 correct exposition of the law. 
 
 In Jaclison v. Needle [y) North, J., said : " The plaintiff's first 
 witness seemed to have an idea that because the parcels post was 
 new, therefore a thing to be sent through the parcels post was 
 new : there is no foundation for that." 
 
 In Bush V. Fox (s) Chief Baron Pollock graphically illustrated 
 the point we are now discussing. He said : "I think if one man 
 invents a new mode of looking at the moon, somebody else cannot 
 take out a new patent for looking at the sun. If a man were 
 to take out a patent for a telescope to be used to make obser- 
 vations on land, I do not think anyone could say, ' I will take 
 out another patent for another telescope to be used for taking 
 observations on the sea.' " That case was ultimately confirmed 
 lin the House of Lords {a). In Brook v. Aston Baron Martin 
 said ih) : *' The application of a well-known tool to work pre- 
 
 Saxhy V.Gloucester Waggon Co., Ti-R., it Knightsbridgc LigJiting Co., L. E., 
 
 7 Q. P.. D. 305 ; Britain v, Hirsch, 5 1892, 3 Ch. 424 ; 9 P. 0, R. 413 ; 
 
 P. 0. Pi. 226 ; Blakey v. Latham, 6 P. Siulbury v. Lee, 11 P. 0. R. 58 ; Rose's 
 
 0. 11. 184; Deutsche Ndhmaschinen Patents Co. \. F. Brahy &; Co., IW. 0. 
 
 Fahrik vorm., Wcrtheim v. Pfaff, 7 P. R. 198. 
 
 0. R. 251, 258 ; Williams v. Nye, 7 [x) 3 C. & K. 215 ; see also Tatham 
 
 P. 0. R. 62 ; Elias v. Grovesend Tin- v. Dania, Griff. P. C. 213. 
 
 plate Co., 7 P. 0. E. 455 ; Leadbcatcr {y) Griff. P. C. at p. 134. 
 
 V. Kitchin, 7 P. 0. R. 235 ; The (;) Macr. P. C. 164. 
 
 Embossed Metal Plate Co. v. Saupe, 8 («) 5 H. L. C. 707. 
 
 P. O.R. 355 ; Lane Fox v. Kensington {b) 28 L. J., Q. B. 170. 
 
SUBJECT MATTER. 39 
 
 viously untried materials, or to produce new forms, is not a 
 subject of a patent." 
 
 The border line between a sufficient and an insufficient amount 
 of ingenuity to support a patent for a new use of an old machine 
 is exceedingly fine. The above cited cases give instances where 
 the Courts have held that no invention was disclosed ; we now 
 propose to quote a few examples of patents which have been 
 supported as exhibiting an adequate amount of invention. 
 
 In Gadd v. The Mayor, 8fc., of Manchester (c), the object of the 
 plaintiff's patent was to keep gasometers vertical without having 
 recourse to the external guiding frames generally used ; this 
 object was not in itself new, but had never been attained by 
 any method resembling that employed by the patentees. The 
 principle employed by them was one which had previously 
 been described in specifications of inventions for keeping floating 
 docks and pontoons in a horizontal position. It was held by the 
 Court of Appeal, reversing the decision of the Court below, that 
 in the application of that principle to gasometers there were 
 practical difficulties to be overcome which required a considerable 
 degree of ingenuity, and was good subject-matter for a patent. 
 
 In Lane Fox v. Kensington and Knightshridge Electric Light- 
 ing Co. {d), Lindley, L. J., said : " On the one hand, the 
 discovery that a known thing — such, for example, as a Plante 
 battery — can be employed for a useful purpose for which it has 
 never been used before is not alone a patentable invention ; but, 
 on the other hand, the discovery how to use such a thing for such 
 a purpose will be a patentable invention if there is novelty in the 
 mode of using it, as distinguished from novelty of purpose, or if 
 any new modification of the thing, or any new appliance is 
 necessary for using it for its new purpose, and if such mode of 
 user, or modification, or appliance involves any appreciable merit. 
 It is often extremely difficult to draw the line between patent- 
 able inventions and non-patentable discoveries, but I have 
 endeavoured to state the distinction as I understand it, and so 
 far as is necessary for the purposes of the present case," 
 
 In Ijyon v, Goddard {e), Bowen, L.J., said : "When yuu see 
 
 (c) 9 P. O. K. 51G. 9 p. 0. K. JllS, 416 
 
 {cl) L. R., 1892, 3 Cli. 424, 429 : (e) 10 P. 0. R. 334 346. 
 
40 THE LAW OF PATENTS. 
 
 that the point of this invention is that it enables a process which 
 has been discovered since, to be carried out in a machine which 
 alone is adapted for that purpose and process, and when you 
 observe the marked and beneficial effect, and the commercial and 
 the scientific success of the new machine, you can only answer 
 the question whether there has been ingenuity in one way. I 
 think, not only that there has been ingenuity, but I think myself 
 that there has been very great ingenuity in it, and none the less 
 because it is easy afterwards, as has been pointed out, to say 
 other people might have seen the result." 
 
 In the case of Stciner v. Heald (/), in the Exchequer 
 Chamber, the head-note is inexplicable and erroneous. If the 
 case itself is read, it will be found to be in accordance with the 
 other decided cases on this subject : In the ordinary process of 
 dyeing, by means of madder, the colouring matter was obtained 
 from fresh madder by the application of hot water ; the refuse, 
 after boiling, was called spent madder. It had long been known 
 to dyers, that a portion of the colouring remained in the spent 
 madder, but it was not known how to extract it, as it remained 
 in combination with the plant ; recently it was discovered that 
 by means of acid and hot- water the pure colouring matter of 
 madder, called garancine, could be obtained from fresh madder, 
 and that this process extracted the colouring matter of the plant. 
 The plaintifi" obtained a patent for the new manufacture of 
 garancine, by applying the same process of acid and hot water to 
 the spent madder ; since his invention the spent madder, which 
 was previously worthless, became valuable. 
 
 At the trial Chief Baron Pollock directed the jury to find a 
 verdict for the defendant, upon the ground apparently that there 
 was no subject for a patent ; in reversing this decision Mr. 
 Justice Pearson said : " Now spent madder miglit be a very 
 difierent thing from fresh madder in its properties, or it might 
 be in effect the same thing as fresh madder in its properties, 
 chemical and otherwise, with the difi'erence only that part of its 
 colouring matter had been already extracted. Again, the pro- 
 perties, chemical and otherwise, might or might not have been 
 known to chemists and other scientific persons, so that they could 
 (/) 20 L. J. Excli. 410. 
 
SUBJECT MATTER. 41 
 
 find out whether fresh madder and spent madder were different 
 or substantially the same things. The points appear to us to 
 be questions of fact, and materially to affect the validity or 
 invalidity of a patent." It will appear, therefore, that the Court 
 were of opinion that it was a question of fact whether spent 
 madder and fresh madder were the same thing in their chemical 
 properties ; if they were, no patent ; if they were not, the 
 validity of the patent would be sustained, but the fact must be 
 decided by the jury. 
 
 In Bamlett v. PicMey {g), Blackburn, J., said : " There 
 may be cases in which a thing is used which would be 
 identically the old one to produce a new product altogether, but 
 applied to something so totally different that there is an obvious 
 invention in it. Take this example. It was discovered that by 
 taking flour and making it into tough dough by means of 
 machinery you could spin it into a pipe known as macaroni pipe. 
 An ingenious man knowing how to spin flour into a pipe, it 
 occurred to him to take red-hot iron, and spin that into pipes by 
 machinery in the same way as flour was spun into a pipe for 
 macaroni. That was not an invention as it turned out, but had 
 that been so, and had he been able to spin the iron in the same 
 way as flour was spun into pipes for macaroni, few men I think 
 would deny that there was an invention there, it being a product 
 so completely new, and that it would be an invention for making 
 a new manufacture which others did not make, because the result 
 was so totally different, even although in fact the machinery 
 which was used for the purpose, except that it was made stronger, 
 would be identically the same as the machinery originally used 
 for the purpose of making the macaroni." 
 
 Lindley, L.J., in Gadd v. The Mayor, 8fc., of Mcoichester, 
 after an elaborate review of the authorities, expressed the law 
 
 (g) Griff. P. C. at p. 42 ; see also Braided Wire Co., 5 P. 0. R. 113 ; 6 
 
 Hayioard v. Hamilton, Griff. P. C. 115; P. 0. R. 518 ; L. R. 44 Cli. D. 274 
 
 Dangcrjldd v. Jones, 13 L. T., N. S. iloscr v. Marsden, 10 P. 0. R. 350 
 
 1^^; Hills X.London Gas Co., ^Yi.k,!^. Lajgc v. Wakelam, 10 P. 0. R. 379 
 
 312; 29 L. J., Ex. 409; Penny. Bihhy, Tirricy. York Street Spinning Co., 10 
 
 L. R., 2 Ch. 127, 136 ; Ehrliclt v. Ihlee, 5 P. 0. R. 34 ; 11 P. 0. R. 429. 
 P. 0. R. 437; 'Thomson v. The ^Lmerican 
 
4.2 THE LAW OF PATENTS. 
 
 upon this subject by the two following propositions: "1. A 
 jDatent for the mere use of a known contrivance, without any 
 additional ingenuity in overcoming fresh difficulties, is bad, and 
 cannot be supported. If the new use involves no ingenuity, but 
 is in manner and purpose analogous to the old use, although not 
 quite the same, there is no invention : no manner of new manu- 
 facture within the meaning of the Statute of James. 2. On the 
 other hand, a patent for a new use of a known contrivance is 
 good and can be supported if the new use involves practical 
 difficulties which the patentee has been the first to see and over- 
 come by some ingenuity of his own. An improved thing pro- 
 duced by a new and ingenious application of a known contrivance 
 to an old thing, is a manner of new manufacture within the 
 meaning of the Statute (/0-" 
 
 In Gosnell v. JBishojj (/), Bowen, L.J., said : " Where 
 there has been for some time a long unsatisfied demand, and then 
 suddenly an article springs into existence and satisfies it, the 
 length of time during which the demand has remained uncomplied 
 with is matter from which it may be inferred that 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 or in some 
 shape." 
 
 And, in Hinks v. Safeti/ Lighting Co. {k), Jessel, M.E., said : 
 "Where a slight alteration in a combination turns that which 
 was practically useless before into that which is very useful 
 and very important. Judges have considered that, though the 
 invention was small, yet the result was so great as fairly to be 
 the subject of a patent ; and, as far as a rough test goes, I know 
 of no better." 
 
 In the case of Longhottom v. Shaiv {I), Lord HerscheU said: 
 " Great reUance is placed upon the fact that when this patent was 
 taken out and frames were made in accordance with it, there was 
 
 (h) 9 P. 0. R. 524. {k) L. K, 4 Ch. D. C15. 
 
 (i) 5 P. 0. R. ]58 ; see also 3foss v. (1) 8 P. 0. R. 33C ; see also makey 
 
 Mallnrjs, 3 P. 0. R. 378 ; The American v. Latham, 6 P. O. R. 187 ; Gosnellv. 
 
 Braided Wire Co. v. Thomsoyi, 5 V. 0. Bishop, 5 P. 0. R. 158. 
 R. 125. 
 
SUBJECT MATTER. 43 
 
 a large demand for them .... I do not dispute that that is a 
 matter to be taken into consideration ; but, again, it is obvious 
 that it cannot be regarded in any sense as conclusive. I think 
 that its value depends very much upon certain other circum- 
 stances. If nothing be shown beyond the fact that the new 
 arrangement results in an improvement, and that this improve- 
 ment causes a demand for an apparatus made in accordance with 
 the patent, I think that it is of very little importance." 
 
 In Doivling v. Billington {m) the patent in question was one for 
 a method as distinguished from a patent for a machine to carry 
 out the method, or for the manufactured article. It was admitted 
 that the " method " required no novel machinery, but consisted 
 in the use, by the workman, of an existing machine in a way 
 which was novel and the result useful, it was held that this was 
 good subject-matter. 
 
 A new combination is an invention consisting of the discovery 
 that two or more, new or old, processes, materials, or implements, 
 when used together, will become applicable to a new purpose, or 
 will effect an old purpose in a better, cheaper, or more * 
 expeditious manner than it had before been done. 
 
 In IIuddaH v. Grhmliaw {>i), Lord Ellenborough said: "I 
 suppose it will not now be disputed that a new combination of 
 old materials, so as to produce a new effect, may be the subject of 
 a patent." There may be a valid patent for a new combination 
 of materials previously in use for the same purpose (o). 
 
 In Foxivell v. Bostoch (p), Lord "Westbury said : " If a combina- 
 tion of machinery for effecting certain results has previously 
 existed and is well known, and an improvement is afterwards 
 discovered, consisting, for example, of the introduction of some 
 new parts, or an altered arrangement in some particulars of the 
 
 (ill) 7P R 191. ^P^ 12'\V. R. 725; see also ^«mso?i 
 
 (n) Dav. P. C. 267 ; 1 Web. P. C. '^- ^^^^ Anderston Foundry Co., L. R. 1 
 
 86 ; see also Tindnl, C.J., in Crane v. App. Cas. 574 ; Hay ward v . Hamilton, 
 
 Price, 1 Web. P. C. 408 ; 4 M. & G. Griff. P. C. 115 ; Moore v. Bennett, 
 
 &30 ; Vickers v. Siddell, 7 P. 0. R. Giiff- P- C- l^'S ; Wcnlmrn Gas Co. v. 
 
 292 ChamjJion Gas Lamp Co., 8 P. 0. R. 
 
 (o) Hill V. Thomrson, per Lord 320 ; Boijd v. Horrocks, 9 P. 0. R. 77. 
 EUlou, 1 Web. P. C. 237. 
 
44 THE LAW OF PATENTS. 
 
 existing constituent parts of the macliine, an improved arrange- 
 ment or improved combination may be patented." 
 
 Bovill's i^atent consisted of a combination of a blast with an 
 exhaust of air to millstones, for the purpose of preventing the 
 heat generated in grinding corn and saving the dust generated. 
 It was proved that a blast and an exhaust had been used 
 separately, but that the combination was a substantial improve- 
 ment. The patent was held good (q). 
 
 In Crane v. Price (r), the patentee, in his specification, after 
 specifically disclaiming the use of the hot blast or the use of 
 anthracite coal, proceeded : " "What I do claim as my invention 
 is, the application of anthracite or stone coal or culm combined 
 with the using of hot air blast in the smelting and manufacture 
 of iron from ironstone, mine or ore as above described." The 
 patent was held valid for the combination. 
 
 In his judgment in this case. Lord Chief Justice Tindal said : 
 " We are of opinion that if the result produced by such a combi- 
 nation is either a new article, or a better article, or a cheaper 
 article to the public than that produced before by the old method, 
 that such a combination is an invention or manufacture intended 
 by the statute to, and may well, become the subject of a 
 patent " (s). 
 
 This exposition of the law has been approved of by the Court 
 of Appeal in the cases Murray v. Clayton (t) and Lyon v. 
 Goddard iii). 
 
 A combination may be patented which consists in the omission 
 from an old process or machine of some part which had pre- 
 viously been considered to be essential {x), or in the substitu- 
 tion for some part of an old process or machine of a mechanical 
 equivalent which was not known before to be a mechanical equiva- 
 
 {q) Bovill V. Keyworth, 7 E. & B. (r) 1 Web. P. C. 377 ; 12 L. J., C. 
 
 725;; 29 L, T. 194 ; Brunton v. Eawkcs, P. 81 ; 4 M, & G. 580. 
 4 B. & Aid. 550 ; Lewis v. Davis, 1 (s) 1 Web. P. C. 408. 
 
 Web. P. C. 488; 3 C. & P. 502 ; 1 (/!) L. R., 7 Ch. 584. 
 
 Carp. P. C. 471 ; Carpenter v. Smith, (u) 10 P. 0. R. 334, 346. 
 
 1 Web. P. C. 538; Allen v. Eawson, (x) Booth y. Kennard, IB.. kliJ. 527 
 
 1 C. B. 551 ; Lister v. Leather, 8 E. & 2 H. & N. 84 ; 26 L. J., Ex. 23, 305 
 
 B. 1004 ; 27 L. J., Q. B. 295 ; Daiujer- Russell v. Cowley, 1 Web. P. C. 457 
 
 field V. Jones, 13 L. T., N. S. 142. 1 Cr. M. & R. 864. 
 
SUBJECT MATTER. 45 
 
 lent {y), provided that a sul)stantial improvement is effected there- 
 by ; but a patent will not be upheld which consists merely in sub- 
 stitution of a well known mechanical equivalent for some part 
 of an old process or machine (s). 
 
 In Williams v. Nye (a), Cotton, L.J., said: "In order 
 to maintain a patent, there must be a substantial exercise of the 
 inventive power or inventive faculty. Sometimes very slight ' 
 alterations will produce very important results, and there may be 
 in those very slight alterations very great ingenuity exercised and - 
 shown to be exercised by the patentee." 
 
 A combination of two well-known contrivances without 
 ingenuity will not support a grant of letters patent. 
 
 A patent was granted in 1870 for railway signalling apparatus ; 
 in 1871 another patent was granted for other improvements in 
 railway signalling apparatus ; in 1874 the plaintiffs obtained a 
 patent for a combination which, in effect, was constituted of the 
 improvements in the 1870 and 1871 patents ; any person with 
 ordinary knowledge of the subject would, by placing the two 
 inventions of 1870 and 1871 side by side, be able to effect the 
 desired combination without making any further experiment or 
 gaining any further information. Field, J., held the 1874 patent 
 void (b). 
 
 The mere fact that the improvement was the result of 
 
 {y) Heath v. Umvin, 2 Web. P. C. v. Hamilton, Griff. P. C. 115, 117 ; 
 
 228, 302 ; 5 H. L, Cas. 505, 5«2, 545 ; HinJcs v. Safety Lighting Co., L. R., 4 
 
 The Badische Aniliyi unci Soda Fabrik Ch, D. 615 ; Moss v. Malings, 3 P. 0. 
 
 V. Levinstein, 2 P. 0. R. 90. R. 373, 378 ; Edison v. Woodhouse, 4 
 
 (z) Thomimn v. James, 32 Beav. P. 0. R. 79, 92. 
 
 570 ; Horton v. Mahon, 12 C. B., N. {h) Saxhy y. Gloucester Waggon Co., 
 
 S. 437 ; 16 C. B., N. S. 141 ; 31 L. J., L. R., 7 Q. B. D. 305 ; see also WhUe 
 
 C. P. 255 ; Rushton v. Crawley, L. v. Toms, 37 L. J., Ch. 204 ; Ormsony. 
 
 R., 10 Eq. 522 ; Murray v. Clayton, Clarke, 13 C. B., N". S. 337 ; 14 C. B., 
 
 L. R. 7 Ch. 570 ; Jensen v. Smith, 2 N. S. 475 ; Jackson v. Needle, 2 P. O. 
 
 P. 0. R. 249 ; Fletcher v. Arden, 5 P. R. 191 ; Shar2} v. Bauer, 3 P. 0. R. 
 
 0. R. 46 ; TickelpennyY. Army d: Navy 193; Rowcliffe v. Lonqford Wire 
 
 Cooperative Society, 5 P. 0. R. 405; Iron Co., 4 P. O. R. 281; Haslam 
 
 United Horseshoe Co. v. Stvedish Horse- v. Hall, 5 P. O. R. 22 ; Longhottom 
 
 nail Co., 6 P. 0. R. 1 ; Winby v. v. Shaio, 5 P. 0. R. 497 ; 6 P. O. 
 
 Manchester Steam Tramways Co., 8 P. R. 143; Herrburger v. Squire, 6 P, 
 
 0. R. 61. 0. R. 194; Morgan v Windover, 
 
 (a) 7 P. 0. R. 67 ; see also Hayward 7 P. 0. R. 131 ; Williams v. Nye, 7 
 
46 THE LAW OF PATENTS. 
 
 accident (c), or was one that appeared ol)vioiis after it had been 
 made (d), is of no importance, provided that the result is the 
 production of a cheaper or better article than had been produced 
 before, by some new combination that had not previously 
 occurred to any one else (<?), 
 
 In Cannington v. Nuttall (/),it was held that the patent could 
 be sustained, although each principle or process in it was previously 
 well known, provided that the mode of combining these processes 
 was new and produced a beneficial result, and provided also that 
 the specification claimed not the old processes or any other, but 
 only the new combination. This case is very instructive, as 
 clearly demonstrating what is meant by a " new combination." 
 
 To summarise the law upon " subject-matter," a patent may 
 be granted for : — 
 
 (1) A new principle, coupled with a method of application, 
 though the principle by itself would not be subject-matter. 
 
 (2) The novel application of an old principle, if invention is 
 disclosed and a substantial improvement effected, but the patentee 
 is strictly tied down to his method of application. 
 
 (3) A new machine, material, or process for a new purpose. 
 
 (4) A new machine, material, or process for an old purpose, 
 but the Courts will construe the invention strictly. 
 
 (5) An old machine for a new purpose will be subject-matter 
 only where the novel application obviously demanded the exercise 
 of inventive power, but no patent will be granted for the applica- 
 tion of an old machine to a purely analogous purpose. 
 
 (6) A new combination of new and old, or now, or old processes 
 or materials, so as to effect an old purpose in a better, cheaper, 
 or more expeditious way than had been done before, coupled with 
 the exercise of ingenuity. 
 
 (7) An improvement by the omission of a part of an old 
 
 r. 0. R. 62 ; Ncwsurn v. Mann, 7 P. 343 ; Bcnno Jaffi v. Richardson, IIP. 
 
 O. R. 307; In re Gaulard & Gihhs' 0. R. Ill ; Edison y. Smith, 11 P. 0. 
 
 Patent, 7 P. 0. R. 3G7, 380 ; Tucker v. R. 398. 
 
 Kaye, 8 P. 0. R. 58, 234. (c) Crane v. Price, 1 Web. P. C. 
 
 (c) Crane v. Price, 1 Web. P. C. 410; 408 ; Hurray v. Clayton, L. R., 7 Ch. 
 Boulton V. Bull, Dav. P. C. 198; [)8i; Lyon v. Goddard, 10 P. 0. U. Si6; 
 Liardet v. Johnson, 1 Web. P. C. 54. 11 P. 0. R. 354. 
 
 (d) Lyon v. Goddard, 10 P. 0. R. (/) L. R., 5 H. L. 205. • 
 
SUBJECT MATTER. 47 
 
 machine wliich was previously tliouglit essential, or by the 
 addition of a new part, or by the substitution for an old part of a 
 new piece of mechanism, or even of a mechanical equivalent 
 which was not previously known to be such, provided that a 
 substantial improvement is thereby effected, and provided that 
 the improvement required the exercise of ingenuity. 
 
 (8) A new product. 
 
 (9) A new method of using an old machine, by which a new 
 and useful result is attained. 
 
48 THE LAW OF PATENTS. 
 
 CHAPTER V. 
 
 NOVELTY. 
 
 Having now considered tlie interpretation which has been 
 placed by the Courts upon the word " manufacture," we next 
 examine what has been hold to be a " new manufacture," that is 
 to say, to what extent prior user is an answer to an action for the 
 infringement of a patent. It is evident, that, if the alleged new 
 manufacture can be shown to have been in the possession of the 
 public before the application for the grant of letters patent, that 
 there is no consideration for the grant. The patentee offers to 
 the public, in return for the monopoly privilege, his information 
 and knowledge respecting a new manufacture ; if the public is 
 already possessed of the information or knowledge, the supposed 
 inventor has nothing to give (a). We shall see hereafter, when 
 we discuss the practice of the Courts in actions for the infringe- 
 ment of patents, that the burden of proof lies on the alleged 
 infringer when he sets up a defence of prior user, i.e., of want of 
 novelty in the alleged manufacture at the date of the patent ; 
 and it is as well to keep this in mind in reading the cases which 
 have been decided as to what amounts to prior user. 
 
 We have seen that the Statute of Monopolies is a mere declara- 
 tion of that which was the law before it was passed ; it was 
 always held by the Courts that the principle of a patent grant 
 was not an arbitrary advantage granted by the Crown to one 
 subject in detriment to the rest, but that it was an advantage 
 granted by the Crown to persons who introduced a new manufac- 
 ture, and that it was granted upon principle, not for the benefit 
 of the patentee but for the benefit of the public : it being con- 
 
 (a) Patterson v. Oas Light «£• Coke Eumi^Uerson v. Syer, 4 P. 0. R. 407, 
 Co., L. R., 3 App. C. 239 ; Morgan v. 414. 
 Seaward, 2 M. & W. 544, 561 ; 
 
NOVELTY. 49 
 
 sidered to the benefit of the public that reasonable encouragement 
 should be given to inventors to induce them to devote their time, 
 energies and resources to the improvement of the arts and manu- 
 factures of the realm. 
 
 In the case of Hasting's Patent (b), decided in 1567, the 
 patent was in consideration of the patentee having brought into 
 the country the making of frisadoes as they were made in Haar- 
 lem, in Amsterdam, being not used in England. The infringers 
 defended the patentees' bill in the Exchequer Chamber, on the 
 ground that they had made bales very like to Mr. Basting's 
 frisadoes, prior to the date of Mr. Hasting's patent ; they were 
 therefore not restrained from making bales like his frisadoes. A 
 patent was granted to " one Humphrey, of the Tower, ' for the 
 sole and only use of a sieve or instrument for melting of lead, 
 supposing it was his own invention, and therefoi^e prohibited all 
 others to use the same for a time ' ; and because others used the 
 like instrument in Derbyshire, contrary to the intent of his 
 patent, therefore he did sue them in the Exchequer Chamber 
 by English bill, in which Court the question was whether it was 
 newly invented by him, whereby he might have the sole privilege, 
 or else used before at Mendip, in West country, which if it were 
 there before used then the Court were of opinion that he should 
 not have the sole use thereof" (c). 
 
 The general question in disputed patents is whether the inven- 
 tion was known and in use before the patent ? In Her v. Ark- 
 Wright {d), decided in 1785, Buller, J., gave a definition of 
 " novelty " which now would be considered too wide. " Thus 
 the case stands as to the several component parts of this machine, 
 and if upon them you are satisfied that none of them were inven- 
 tions unknown at the time this patent was granted, or that they 
 were not invented by the defendant, upon either of these points 
 the prosecutor is entitled to your verdict." 
 
 In Canningtoti v. Nt(ttaJl{e), Lord Hatherley, L.C., said : *'It 
 
 (&) 1 Web. P. C. 6. (f?) 1 Web. P. C. 64. 
 
 (c) 1 Web. P. C. 7 ; Darcyy. AlHn, (g) l. R., 5 H. L. 216; see also 
 
 1 Web. P. C. 6 ; MitcJieU v. Beijnolds, Pirriev. York Street Flax Spiiming Co., 
 
 19 Mod. R. 130 ; Liardet v. Johnson, 1 iq p. 0. R. 37, 39. 
 Web. P. C. 52, 53. 
 
50 THE LAW OF PATENTS. 
 
 is quite apparent, my Lords, that the cooling thing, the current 
 of air, was nothing new — it is as old as the fables of -3^]sop — it is 
 as old as the man blowing his soup in order to make it cool. 
 But so it is with every invention — the skill and ingenuity of the 
 inventor are shown in the application of well-known principles. 
 Few things come to be known now in the shape of new principles, 
 but the object of an invention generally is the applying of well- 
 known principles to the achievement of a practical result not yet 
 obtained. And I take it that the test of novelty is this : Is the 
 product which is the result of an apparatus for which the 
 inventor claims letters patent, effectively obtained by means of 
 your new apparatus, whereas it had never before been eflfectively 
 obtained by any of the separate portions of the apparatus which 
 you have now combined into one valuable whole for the purpose 
 of effecting the object you have in view? " 
 
 Pollock, C.B,, treating with this subject in his judgment in 
 Newton v. TJte Grand Junction Railway Co. (/), said : " It was 
 argued that the same criterion is to be applied to the question of 
 infringement as to that of novelty. But that is not so. In order 
 to ascertain the novelty you take the entire invention ; and if, in 
 all its parts combined together, it answer the purpose by the 
 introduction of new matter, by any new combination, or by a 
 new application, it is a novelty entitled to a patent." 
 
 When we speak of an invention being new, we mean that it 
 must be new so far as the public are concerned, that is, so far as 
 the means of information of the public goes. If a man had 
 invented a machine and made it and used it secretly, so that no 
 one but himself had access to it, and the general public had no 
 means of information upon it, there is no doubt that a subsequent 
 inventor, re-inventing, so to speak, the same machine, and dis- 
 closing his knowledge to the public in his specification, would be 
 entitled to a valid patent {g) . A machine made by the person 
 who kept it secret would not amount to such a pubHc knowledge 
 as would anticipate the invention of the patentee, but if the first- 
 made machine had been used in such a manner that other persons 
 had been enabled to acquire the knowledge of its use and appHca- 
 
 (/) 5 Excli. Tl. 334; 20 L. J., Ex. (g) Dollond's Patent, 1 "Web. P. C. 
 
 429. 43. 
 
NOVELTY. 51 
 
 tion, there would be a prior user to void the subsequent patent. 
 Lord Chief Justice Tindal said, in Cornish v. Keene (h) : " If it 
 was known at all to the world publicly, or practised openly so 
 that any other person might have the means of acquiring a 
 knowledge of it as well as the inventor, then the patent would 
 be void." In Carpenter v. Smith (/), Lord Abinger, C.B., 
 analyzed the meaning of the words "public use." "Public use 
 does not mean a use or exercise by the public, but a use or 
 exercise in a public manner." Taking that as a definition of 
 the meaning of the words " public use," it will be apparent that 
 the question of prior user is one of fact, and one which will have 
 to be considered by a jury or a judge sitting as a jury upon the 
 facts of each particular case (/>•) . 
 
 The law on this point was laid down by Lord Blackburn in 
 Patterson v. The Gas Light and Coke Co. (/), in the words of Mr. 
 Hindmarsh : " If the public once become possessed of an invention 
 bt/ any means ichatever, no subsequent patent can be granted for it, 
 either to the true or first inventor himself, or to any other person, 
 for the public cannot be deprived of the right to use the invention, 
 and a patentee of the invention could not give any consideration 
 to the public for the grant, the public abeady possessing every- 
 thing that he could give" {in). 
 
 The public become possessed of an invention if, before the 
 inventor has applied for a grant of letters patent, it has been 
 used by, exhibited, or published to any person {n) without 
 reserve and without injunction to secrecy (o), and that too whether 
 
 {h) 1 Web. P. C. 508. R. 193. 
 
 (z) 9 M. & W. 304 ; see also Belts {m) Hindmarch on Patents, p. 33. 
 
 V. Neilson, 3 De G. J. & S. 82 ; L. R., {n) Losh v. Hague, 1 Web. P. C. 
 
 3 Ch. 429 ; Heath v. Smith, 3 E. & B. 200 ; Stead v. Williams, 2 Web. P. C. 
 
 256 ; Harwood v. G. N. Ey. Co., 29 L. 12G ; Hu7npherson v. Syer, 4 P. 0. R. 
 
 J., Q. B. 193 ; 2 B. & S. 194 ; Croys- 407, 415 ; Harris v. Rothwell, 5 P. 0. 
 
 dale V. Fisher, 1 P. 0. R. 17, 21 ; R. 225, 230. 
 Lister v. Norton, 3 P. 0. R, 199, 210. (o) Stead v. Williams, 2 Web. P. C. 
 
 (^-) Pickard v. Prescott, 9 P. 0. R. 126 ; Morgan v. Seaward, 2 M. & W. 
 
 200. 544, 559 ; Winhy v. Manchester Steam 
 
 (/) L. R.,3 App. Cas. 244; see also Tramways Co.,. 8 P. O. R. 61, QQ ; 
 
 Lister v. Norton, 3 P. 0. R. 211 ; Lifeboat Co. v. Chambers, 8 P. 0. R. 
 
 Humpheo'son v. Syer, 4 P. 0. R. 414 ; 418 ; Gadd v. Mayor, &c., of Man- 
 
 Westley Richards v. Perkcs, 10 P. 0. Chester, 9 P. 0. R. 249, 527. 
 
 E 2 
 
52 THE LAW OF PATENTS. 
 
 but one sample of the invention was used (ja), or the information 
 was obtained from one whom the inventor had placed under the 
 bond or seal of confidence (q), or if the anticipating machine was 
 made simply for the purpose of export (r). 
 
 An offer to sell, although no sale is effected, constitutes a prior 
 publication of the invention, and will vitiate a subsequent patent (s). 
 
 Whether the mere manufacture of an article will or will not 
 amount to a "public user " depends upon the circumstances under 
 which it was carried on (t). 
 
 In Befts V. Neilson (u) Lord Chelmsford said : " If the evidence 
 which I am about to examine establishes the fact that lead coated 
 with tin by mechanical pressure, and capable of useful appli- 
 cation, has upon any occasion been manufactured openly, not by 
 way of experiment, but in the course of business, although not a 
 single piece of the material was actually sold, I should hold that 
 Betts' patent was invalidated." 
 
 In Morgan v. Windover {x) Cotton, L.J., in his judg- 
 ment in the Court of Appeal, said : " If, in truth, we were 
 satisfied that a carriage, in accordance with that which is claimed 
 by Mr. Morgan as his invention, was then made, and made in a 
 practical working shape, it would not be material that it had 
 never been used from that time to this, because there would have 
 been a prior use of that which is claimed by Mr. Morgan as his 
 invention ; but, as was pointed out by Lord Brougham in The 
 Househill Co. v. Neilson {y), although, if there is a complete 
 anticipation by prior user, the abandonment of it is nothing, yet 
 
 (j)) Eonihall V. Bloomer, 2 Web. P. {t) Moss v. dialings, 3 P. 0. R. 373, 
 
 C. 200 ; HolHns v. Capper, 5 P. 0. R. 378 ; Lewis v. Marling, 4 C. & P. 57 ; 
 
 289. Belts v. Menzies, 8 E. & B. 923 ; Betts 
 
 {q) Ihiiivpherson v. Syer, 4 P. 0. R. v. Neilson, L. R. , 3 Ch. 436 ; Morgan 
 
 407, 416; Useful Patents Co. v. y. Sea^vard,l'^(ib. V.C.IQT ; Bramah 
 
 Rylands, 2 P. 0. R. 255 ; Kurtz v. v. Hardcastle, Holroyd, 81. 
 
 Spence, 5 V.O.^.l&l. (tO L. R., 3 Ch. 436; see also 
 
 (r) Carpenter v. Smith, 1 Web. P. Humpherson v. Syer, 4 P. 0. R. 407 ; 
 
 C. 530 ; Westley Richards v. Perkes, 10 Westley Richards v. Perkes, 10 P. 0. 
 
 P. 0. R. 181, 192. R. 192. 
 
 (s) Oxley V. Holden, 8 C. B., N. S. {x) 5 P. 0. R. 302, 303. 
 
 666 ; Wood v. Zimmer, 1 Holt N. P. C. {y) 1 Web. P. C. 673 ; see also King, 
 
 58 ; 1 Web. P. C. 82, ti. ; Mullins v. Brown d; Co. v. Th-e Anglo-American 
 
 Hart, 3 Car. k K. 297. Brush Co., 6 P. 0. R. 414, 424. 
 
NOVELTY. 53 
 
 when it is a question of whether, really, there was a carriage 
 perfected in accordance with the plans of 31)'. Ilorgan, the fact 
 that it had never been used for 36 years, or something of that 
 sort, before he took out his patent is most material, as leading to 
 the conclusion that that which was made in the year 1848 was 
 not a perfect carriage in accordance with the invention of 
 Jfr. Morgan.''^ 
 
 Where the anticipating machine was incomplete and practi- 
 cally useless for the purpose for which it was intended, or merely 
 experimental, and abandoned as being unsatisfactory (s), or 
 what was nothing more than a scientific curiosity of no practical 
 value («), it has been held that a subsequent patent for a 
 workable and efficient machine is not vitiated thereby. 
 
 In Smith v. Davidson, a Scotch case [h], the Lord President 
 said : " In order to invalidate letters patent on the ground of 
 previous use it is necessary not only that the use shall have 
 been prior to the date of letters patent, but that it should be a 
 public and not a secret use." The remarks of Lord Bramwell, in 
 Hills V. London Gaslight Co. (c), on this subject were as follows : 
 " If a person has invented anything which is the subject of a 
 patent, and has kept it to himself or communicated it privately 
 to one or two, in fact has not made it public knowledge, if anyone 
 else discovers that invention it is new, that is to say, new in the 
 sense that the first invention has not been published." 
 
 As further illustrating the distinction between " public use " 
 and " secret use " we may quote the words of Mr. Justice 
 Williams in Hancock v. Somervell, which is quoted in " Newton's 
 London Journal/' Yol. XXXIX., p. 158. " The defendants say 
 that the invention had been substantially published and was in 
 use, not in secret use, but in public use, in England before the 
 
 (2) Murray v. Clayton, L. R., 7 Ch. (a) Young v. Fernie, 4 Giff. 577, 
 
 570 ; Hills v. London Gas Light Co., 5 611 ; see also Benno Jaffi v. Richard- 
 
 H. & N. 312 ; Jones v. Fearcc, 1 Web. son, 11 P. 0. R. 93. 
 P. C. 121 ; 2 Coop. Ch. Ca. 58 ; {h) 19 C. S. 691. 
 
 Galloway v. Bleaden, 1 Web. P. C. 521, (c) 5 H. & N. 336 ; see also Morgan 
 
 525 ; Walton v. Bateman, 1 Web. P. C. v. Seaward, 2 M. & W. 544 ; Gadd v. 
 
 613, 619 ; Cornish v. Keeyie, 1 Web. Mayor, &c., of Manchester, 9 P. 0. R. 
 
 P. C. 501, 508; Bar-low v. Baijliss, 516; Westley Richards y.Perkes, 10 P 
 
 Griff. P. C. 44 ; Lyon v. Goddard, 10 0. R. 181. 
 P. 0. R. 121, 134 ; 11 P. 0. R. .354. 
 
54 THE LAW OF PATENTS. 
 
 date of the patent, and if that is so it would entitle the defen- 
 dants, no doubt, to a verdict upon this novelty issue. Upon that 
 part of the case the view that it seems to me ought to be taken by 
 you is this : you will first consider whether the material was 
 before the public ; it is not necessary that it should be used by 
 the public if it is in public use, not in secret use .... I should 
 here say that I do not think it necessary the use should be 
 actually for sale ; if it were in public use it need not be sold ; it 
 would be sufficient, for instance, if it were in use, handed about 
 the country for the purpose of attracting customers. If you 
 should think that the material being so in use, it was so palpable 
 that you could make it when you got the material, that sub- 
 stantially the disclosure of the material was a disclosure of the 
 means of making it, that would be a public use." 
 
 In Steady. Anderson id) Baron Parke placed some considerable 
 limitation on the meaning of the words "public use " in saying, 
 "If the mode of forming and laying blocks at Sir W. Worsley's 
 had been precisely similar to the plaintiff's, that would have been 
 sufficient user to destroy the plaintiff's patent, though put in 
 practice in a spot to which the public had not free access." 
 
 It is difficult to draw the line precisely between public and 
 secret use ; we do not suppose that for the purpose of showing 
 that some use was secret use it would be necessary to show an 
 intention of secrecy, but in all cases it will be a matter of 
 fact whether the use was so private and so secret as to make it 
 practically impossible that the j)ublic should become acquainted 
 with the manufacture. 
 
 Erie, J., in Heath v. Smith (e), cast a doubt even upon 
 whether secret use would not amount to anticipation. He 
 said :■ " If one party only had used the process and had brought 
 out the article for profit and kept the method entirely secret, I am 
 not prepared to say that then the patent would have been valid." 
 But this seems to be in direct contradiction to the decision in 
 Uoilond's Case (/). In that case the objection to Dollond's 
 patent was that he was not the inventor of the method of making 
 
 {d) 2 Web. P. C. 149; see also Stead 166, 171. 
 V. Waiiams, 2 Web. P. C. 126, 136. (/) 1 Web. P. C. 43. 
 
 («) ?, E. & B. 256 ; 23 L. J., Q. I'.. 
 
NOVELTY. 55 
 
 new object-glasses, but that Dr. Hall had made the same 
 discovery before him ; but it was held that, inasmuch as Dr. / 
 Hall had confined it to his closet, and the public were not ' 
 acquainted with it, Dollond was to be considered the inventor [g). 
 
 In Betts V. Neikon {h) it is said, " There may be public use 
 of a patented article, without actual sale of the goods manu- 
 factured." 
 
 There are some conflicting cases on the subject of secret use. 
 It does not appear to be open to much doubt that purely secret 
 use, without publication, even if accompanied with the sale of 
 the article manufactured, provided the article itself, by its appear- 
 ance or other qualities, does not disclose the invention (*), ought 
 not to invalidate the letters patent granted to a subsequent 
 inventor, since he is in the position to, and does give to, the 
 public the full considieration required by the Statute of Monopolies 
 and the common law, for the patent grant which he applies for. 
 On the other hand, if the secret use has been by himself, and 
 he only applies for letters patent when he has any fear of 
 his invention being discovered, then, probably, the previous 
 secret use of the inventor would be held to invalidate his 
 patent. 
 
 This branch of the subject is surrounded with considerable 
 difficulty, for bearing in mind that the consideration which the 
 inventor gives for the patent is the information which he is in a 
 position to give to the world, it is difficult to understand upon 
 what principle, if he keeps that information to himself and manu- 
 factures an article which of itself does not disclose his invention, 
 he should not have a patent ; since he is always in a position 
 to give the information to the public, and to give a valid con- 
 sideration for the grant. Unless indeed we regard the grant of 
 letters patent, as not only the result of a contract between two 
 parties, the state and the inventor, but also as somewhat after 
 the nature of a reward for invention, which is only given for 
 merit. There is, as we have pointed out before, no merit in 
 
 ((/) See also remarks of Buller, J., in {h) L. R., 3 Ch. 429. 
 
 Boulton V. Bull, 2 H. Bl. 463 to 470 ; (0 iTftHfycA,- v. (Sowi^rycZ/, 39 Newton's 
 
 and Dallas, J., in Hill v. Thompson, 1 London Journal, 158. 
 Web. P. C. 241. 
 
56 THE LAW OF PATENTS. 
 
 publishing an invention which you find it difiicult to keep any- 
 longer secret. Of course it would be otherwise where the article 
 itself, by its appearance or by its properties, discloses the inven- 
 tion ; the Courts, in their decisions, seem to have recognized the 
 difficulty of this question. Baron Parke, in 3Iorgan v. Sea- 
 icanl (/) said : " For if the inventor could sell his invention, 
 keeping the secret to himself, and, when it was likely to be dis- 
 covered by another, take out a patent, he might have practically 
 a monopoly for a very much longer period than fourteen years," 
 It does not seem to have been expressly decided that if an 
 article sold did not disclose the invention, the use of the inven- 
 tion, if kept secret, would invalidate a subsequent patent by the 
 inventor. Baron Parke as we have seen seems to have thought 
 that it would ; on the other hand the cases which have been cited 
 above clearly lay down as law that a patent will only be antici- 
 pated if the subject of it has been made public, either by being 
 disclosed to or practised by any person without reserve or in a 
 place to which the public could have access, and consequently if 
 the original inventor manufactured articles but kept the inven- 
 tion secret so that no one else could practise it, it is evident upon 
 the authority of those cases, and |)articularly of BolloncTs. Case 
 and HilJs v. TJie London Gaslight Co., that if someone else should 
 re-invent the same matter subsequently, the secret use of the 
 invention by the first inventor would not invaHdate the patent of 
 the second inventor ; and if not the patent of the second inventor, 
 why, upon principle, should one person from whom the considera- 
 tion would move personally be in a worse position than another ? 
 It may be said, perhaps, that the common law contemplated bona 
 fides on the part of the in\ entor, and a bond fide discovery of the 
 invention to the public within a reasonable time, and that the 
 working of the invention in secret and subsequent application for 
 the patent was strong evidence of mala fides, and consequently 
 would avoid the patent on the ground of a constructive fraud 
 upon the public {m). 
 
 {I) 2 il. & W. 544. Gibson v. Brand, 1 Web. P. C. 628 
 
 {m) As to publication by sale, see Carpenter v. Smith, 1 Web. P. C. 536 
 
 Wood V. Zimmcr, 1 Web. P. C. 44 ; MiiUins v. Hart, 3 Car. & K. 297 
 
 Lash V. ffag2ic, 1 Web. P. C. 205 ; Heath v. Smith, 3 E. & B. 256 ; 2 Web. 
 
NOVELTY. 57 
 
 Mere experiments with a view to discovery have been fre- 
 quently held not to invalidate a subsequent patent ; few inventions 
 could be made without trial, and there are some things of such 
 magnitude that the trials cannot practically be conducted in 
 private ; hence it has been held that the mere making of experi- 
 ments, with a view to invention, does not invalidate a patent 
 whether made by the inventor himself (n), or by others to whom 
 he has lent his machine for that purpose (o), nor will the fact 
 that pecuniary profit resulted from such experiments necessarily 
 avoid a subsequent patent (j)). 
 
 Whether the experiments may be fairly so regarded, or whether 
 they amount to such an open use of the machine as to constitute 
 a publication, is a question to be decided upon the facts of each 
 particular case (q). 
 
 Lord Esher, M.R., speaking on this subject in I^lias v. 
 Grorese)id Tinplate Co. (r), said, "The patent law about that 
 is, that so long as you are experimenting upon the thing in the 
 hands of people who ought not to disclose it, you must have 
 people to assist you, and you cannot do everything yourself in 
 your own private room, but so long as you are only doing it 
 with people who are to assist you, and who ought not to tell, 
 that is experimenting, and it is no publication ; it does not make 
 it public property. But if you go on with all that you have 
 been in doubt about, to erect or make your patent — if it is a 
 
 P. C. 268 ; Honiball v. Bloomer, 2 Web. 466 
 
 P. C. 200 ; Oxley v. Eolden, 8 C. B., (o) Bentley v, FUmimj, 1 Car. & K. 
 
 N. S. 666 ; LisUr v. Norton, 3 P. 0. R. 587 ; Useful Patents Co. v. Rylands, 2 
 
 199. P. 0. E,, 262 ; Humplierson v. Sycr, 4 
 
 {n) Newall v. Elliot, 4 C. B., N. S. P. 0. R. 407, 411 ; Elias v. Grovesend 
 
 269; Hills v. London Gas Light Co., Tinplate Co., 7 P. 0. R. 455, 466. 
 
 29 L. J., Ex. 409; see also Jones v. (p) Newall v. Elliot, 4 C. B., N. S. 
 
 Pearce, 1 Web. P. C. 122; Bramah v. 269 ; Morgan v. Seaward, 2 M. & W. 
 
 Uardcastlc, Holroyd, 81 ; Cornish v. 544. 
 
 Keene, 1 Web. P. C. 508 ; Galloway v. {q) Cornish v. Keene, 1 Web. P. C. 
 
 Bleaden. 1 Web. P. C. 525 ; Stead v. 501, 507 ; In re Adamson's Patent, 6 
 
 Williams, 2 Web. P. C. 135 ; House- De G., M. & G. 420 ; 25 L. J., Cli. 456; 
 
 hill Co. V. Neilson, 1 Web. P. C. 673 ; Brereton v. Bichardson, GrifiF. P. 0. 54; 
 
 Edison & Swan Electric Light Co. v. 1 P. 0. R. 165 ; Elias v. Grovesend 
 
 JVoodhou.se, Griff. P. C. 90 ; Elias v. Tinplate Co., 7 P. 0. R. 455, 462. 
 
 Grovesend Tinplate Co., 7 P. 0. R. 455, (r) 7 P. 0. R. 466. 
 
58 THE LAW OF PATENTS. 
 
 machine, to make your machine — if all that is over, and you 
 put it up in a public workshop or in a place where other people 
 would come who are not hound by any I'ule of secrecy or faith — 
 who are not bound to keep the secret — if you put it up in a 
 place which they are to frequent and where they can see it, you 
 have published it, and if you have published it, it becomes 
 public property — it becomes the property of all the world 
 immediately." 
 
 The manufacture and sending out of samples for the purpose 
 of experimenting as to the satisfactory character of the inven- 
 tion has been held not to amount to a publication (s). 
 
 There is another description of anticipation which is capable 
 of invalidating a patent besides that of public use, and that is 
 prior publication. Prior publication means the printing, writing, 
 or publishing of some document to which the public have access, 
 containing such a description of the invention as will enable a 
 practical man to carry it out from the description given. Yague 
 hiuts or descriptions of experiments, incomplete, or imperfect, 
 are not sufficient to invalidate a subsequent patent (f). It is 
 not necessary that that which is described in the book or pub- 
 lication should have been carried out in practice, it equally 
 anticipates the patent (u). The question will always be one of 
 fact, depending on the circumstances of each particular case, and 
 the point which should be left to the consideration of the jur}^ is, 
 whether upon the whole evidence there has been such a publica- 
 tion as to make the description part of the public stock of infor- 
 mation (v). 
 
 It is necessary that the description in the publication 
 which is relied upon as evidence of prior pubKcation, should 
 be such as will when carried out produce the patented 
 article ; otherwise, however similar the description may be, if 
 
 (s) The Useful Patents Co. y.Rylands, "Web. P. C. 718, n. 
 Griff. P. C. 234 ; 2 P. 0. R. 255. (v) Stead v. JVilliams, 2 Web. P. C. 
 
 (t) Betts V. 3lenzies, 1 E. & E. 1038; 142 ; 8 Scott 472 ; Stead v. Avderson, 
 
 3 Jur., N. S. 358 ; 10 H. L. Cas. 154, 2 Web. P. C. 147; 4 C. B. 806; 
 
 157 ; Stonerv. Todd, L. R., 4 Ch. D. Plim2->ton v. Malcolmson, L. R., 3 Ch. 
 
 58 ; Thomson v. Patty, 6 P. 0. R. 84. D. 531. 
 
 {u) The Eousehill Co. v. Neilsov, 1 
 
NOVELTY. 59 
 
 it will not produce the alleged invention it will not amount to 
 anticipation (w). 
 
 Vice -Chancellor Wood, in JBctts v. Menzies (x), said, "I 
 think that if a man sits down and takes out a patent from his 
 own conjectures without ever having tried the experiments set forth 
 in it, that will not invalidate a subsequent patent taken out and 
 practically worked, especially when it turns out that the method 
 prescribed by the earlier patent is practically useless." This 
 remark of the learned yice-Chancellor indicates how difficult a 
 thing it is to lay down a general rule which shall bind every 
 case ; indeed no such general rule has ever been framed. It is 
 evident that if a man were to describe an invention in a book or 
 in a specification, and describe it so minutely and accurately that 
 any practical person could from the description produce the 
 invented matter, it would be immaterial whether the writer had 
 tried experiments or had ascertained whether his invention 
 would work in practice or not. If it should afterwards turn out 
 to work in practice, and work as described, without any further 
 inventive power and without any further invention being neces- 
 sary, the description in the book or specification would be sufficient 
 to invalidate any subsequent patent for the same invention. 
 
 In Betts V. Menzies (supra) the Vice-Chancellor had before him 
 a case where the method described in the earlier publication was 
 practically useless. In that event there is no doubt that the 
 description would not invalidate a subsequent patent, because 
 further invention would be necessary to bring the matter to a 
 successful issue. 
 
 When Betts v. Menzies {y) came before the House of Lords, 
 Lord Westbury said : " To eflPect a new patent, it must be clear 
 that the antecedent specification disclosed a practical mode of 
 
 {w) Muntzy. Foster, 2 Web. P. C. GrifiF. P. C. 44; Erlilichx. IliUe, 5 P. 
 
 94 ; Hills v. London Gas Light Co., 29 0. E. 437 ; Gadd v. Ma>/or, d:c., of 
 
 L. J., Ex. 409 : Hills y. Evans, 31 L. Manchester, 9 P. 0. R. 516, 533 ; 
 
 J., Ch. 457 ; Betts v. Ncilson, L. R., 5 English and American Machhury Co. 
 
 H. L. 15; Pl'imjjton v. Malcolmson y. Union Boot Co., 1\Y. 0.'R.UT,ZQ7, 
 
 L. R., 3 Ch. D. 531 ; Otto v. Linford, 373. 
 
 46 L. T., N. S. 39; Philpoty.Hanbury, (x) 3 Jiir. N. S. 358. 
 
 2 P. 0. R. 33, 43 ; Lawrence v. Perry, (^y) 10 H. L. C. 117. 
 2 P. 0. R. 179 ; Barlow v. Baylis, 
 
60 THE LAW OF PATENTS. 
 
 producing the result which was the object and effect of the 
 subsequent discovery ; a barren general description therefore, 
 though containing some suggestive information or involving some 
 speculative theory, could not be treated as avoiding for want of 
 novelty a subsequent sj^ecification or invention, unless it was 
 ascertained that the antecedent publication involved the same 
 amount of useful information." In the same case the opinion of 
 the judges having been taken by the House of Lords as to 
 whether the Court could pronounce Betts' patent to be void 
 simply on the comparison of two specifications without evidence 
 to prove identity of invention, and also without evidence that 
 Dobbs' specification disclosed a practical mode of producing the 
 result, or some part of the result described in Betts' patent ; 
 Blackburn, J., subsequently Lord Blackburn, gave it as his 
 opinion, " that to avoid a patent on the ground of want of 
 novelty, it is necessary to show that part of what the patentee 
 claimed as a new invention was at the date of the patent already 
 a publicly-known invention ; this may be shown by proving that 
 the invention was already disclosed in a publication accessible to 
 the public .... it is not necessary to show that the invention 
 thus made publicly known had already been put in actual use 
 .... as soon as it has been ascertained that the description in 
 the book makes known an invention, that is to say, that it adds 
 to the public stock of knowledge what would without any further 
 discovery enable a person to produce a result in the nature of a 
 
 nevv manufacture If Dobbs had made it part of the 
 
 public knowledge how to produce a new material as a practical 
 result, and Betts had afterwards claimed to have a patent for, 
 amongst other things, producing that result, he would have 
 claimed that which was not new, and if Dobbs had not made 
 it part of the public knowledge how to produce the result, then 
 Betts would not have claimed anything already known. The 
 Court cannot tell without evidence whether what Dobbs disclosed 
 would produce a result, and, therefore, as it seems to me, cannot 
 pronounce the first patent void without evidence. I therefore 
 answer your lordships' question in the negative (2)." 
 
 {z) See also Belts v.Neilson, L. R., 3 Cli. i-29; L. R., 5 H. L. 1. 
 
NOVELTY. 61 
 
 The cases whicli have been decided have generally been upon 
 the subject of antecedent publication by means of a specification, 
 but it is evident that the publication of a book or newspaper, or 
 in any other form which gives the public a means of information, 
 is equally potent as an anticipation of a subsequent patent (a). 
 Hilk V. London Gas Light Company {h) illustrates very clearly 
 the principle laid down by Lord Westbury in Betts v. Menzics. 
 The plaintiff obtained a patent for the employment of hydrated 
 oxide of iron in purifying coal gas. A specification was put in 
 evidence as published some ten years prior to the plaintiff's 
 patent by one Croll, in which he said that coal gas could be 
 purified by using the oxide of manganese, the oxide of zinc, or 
 the oxide of iron. Now there are two descriptions of oxide of 
 iron, hydrated and anhydrous. Anhydrous oxides of iron will 
 not purify coal gas. It was held, therefore, that inasmuch as 
 further experiments were required to discover that the action of 
 hydrated oxide of iron was different from that of anhydrous 
 oxide of iron in the purification of coal gas, that the antecedent 
 specification did not anticipate the plaintiff's specification. 
 
 In Hills V. Evans (c) Lord Westbury said : " The antecedent 
 statement must, in order to invalidate the subsequent patent, be 
 such that a person of ordinary knowledge of the subject would at 
 once perceive and understand and be able practically to apply 
 the discovery without the necessity of making further experi- 
 ments." 
 
 In Philpotf v. Hanhury {d), however. Grove, J., said : 
 " What I am going to say now is an expression of opinion 
 
 that is rather obiter As a matter of fact my opinion is 
 
 .... that there is not the same necessity for accurate descrip- 
 tion of how an invention shall be carried into effect, for the 
 purpose of anticipating an invention, as there is for the purpose 
 of sustaining a patent in the hands of a patentee, because in the 
 latter case a description ought to be given which ought not to 
 
 (a) Young v. Fernie, 12 W. R. 901 
 Carpenter v. Smith, 1 Web. P. C. 530 
 Gibson v. Brand, 1 Web. P. C. 628 
 The Househill Co. v. Neilson, 1 Web 
 P. C. 718, n. ; Plimptmiv. Spiller, L, 
 
 Light d; Coke Co., L. R., 3 Ajip. Cas. 
 239; United Telephone Co. v. Harrison, 
 L. R., 21 Ch. D. 720. 
 
 {h) 29 L. J., Ex. 409. 
 
 (f) 31 L. J., Ch. 463. 
 
 R., 6 Ch. D. 412 ; Patterson v. Gas {d) 2 P. 0. R. 43. 
 
62 THE LAW OF PATENTS. 
 
 merely inform the minds of every skilled person or scientific 
 person in tlie trade, but should inform the minds of ordinary 
 people who are accustomed to work at the trade. Therefore I 
 think that there is a distinction ; but I am willing to rest my 
 definition or description of what anticipates a patent on this, that 
 there must be a publication which when read by persons versed 
 in the trade, skilful and well acquainted with the trade (I might 
 even limit it perhaps to those in the trade who are most skilled 
 — the higher class of skilled workmen), would enable them to 
 understand it. If it be such it anticipates the patent. If it is a 
 mere suggestion, if it is so erroneous in the description that they 
 cannot, by reasonable application of the mind, find out what it 
 means, it does not anticipate the patent." 
 
 In King, Broivn ^ Co. v. The Anglo-American Brush Co., 
 Lord McLaren in his judgment said that the proposition of prior 
 publication " may be proved by showing that the invention was 
 previously described, not necessarily in language sufficient as a 
 direction to a mechanic, but in language clear and intelligible to 
 educated men, conversant with the subject, and capable of giving 
 the necessary directions to the hypothetical workman" (e). 
 
 In Kaye v. Chubb Lord Esher, M.H., said (/) : "T quite agree 
 with what has been stated as to the law by Lord Westbury. If 
 in the first patent which is thus alleged there is a general state- 
 ment which gives no clear intimation either by its own construc- 
 tion or by that mode of putting construction upon patents — 
 namely, by considering what would be the effect of it upon a 
 hypothetical workman of ordinary skill — if it is so general that, 
 neither by its own construction nor that adapted mode of construc- 
 tion, it would lead to any clear conclusion at all either as to the 
 result or as to the means, and if some other person coming with 
 great skill and great care should, out of the general words, really 
 produce something not inconsistent with them, but which is not 
 disclosed by them, I quite agree that he can take out a patent, 
 
 (e) 7 P. 0. E. 443 ; see also Betts v. P. 0. R. 122 ; Dowlimj v. Billington, 
 
 Neilson, L. R., 5 H. L. 15 ; Plini23to7i v. 7 P. 0. R. 204. 
 
 Malcolmson, L. R., 3 Ch. D. 531 ; Bray (/) 4 P. 0. R. 298 ; see also Be7ino 
 
 V. Gardner, 4 P. 0. R. 405 ; American Jaffi, v. EicJiardson, 11 P. 0. R, 111, 
 
 Braided Wire Co. v. Tlwinson, 5 261. 
 
NOVELTY. 63 
 
 and he cannot be defeated, because tliat wbich is really his 
 invention can be got within general words which describe 
 nothing," 
 
 It is not necessary that the book containing the description of 
 the invention should be sold so as to constitute an anticipation. 
 Mere exhibition in a bookseller's window for sale is sufficient 
 publication, or sending it to a bookseller's in this country to be 
 published ((/). "There is no difference between a foreign 
 inventor and an English one if, when the inventor is a foreigner, 
 he publishes the book in a foreign language and sends it over to 
 the booksellers in this country for the purpose of being sold (h)." 
 Prior publication in a foreign journal and in a foreign language 
 will invalidate an English patent if it can be shown that a single 
 copy was deposited in England in a public place, and was open 
 to public inspection (/). 
 
 In Otfo V. 8ieel, where a French treatise was placed in the 
 British Museum library in 1863, it was held by Pearson, J., 
 that having regard to the arrangements of the library there 
 was no prior publication in England of matter contained in the 
 treatise so as to avoid a patent taken out in 1876. The library 
 arrangements were as follows : There was no access to the public 
 to any part of the library of the British Museum beyond the 
 reading room. The public had access to the general catalogue 
 and to books of reference kept in the reading room. In the 
 general catalogue of the British Museum the printed books were 
 referred to under the names of their authors. The treatise in 
 question was entered in the catalogue under the name of Beau 
 de Pochas, and in no other place. It was itself kept in an inner 
 room, and it could only be obtained by one of two means, either 
 by some person knowing of the book and writing the name of the 
 book on a piece of paper and requesting that the book might be 
 furnished to him ; or if a reader wanted to find something on a par- 
 ticular subject, and wentto the superintendent and asked what books 
 there were that he had better read. The superintendent, if not able 
 
 (g) Lang v. Gishorne, 31 Beav. 133. 383 ; Pickard v. Prcscott, 7 P. 0. R. 
 
 {Ji) Per M. R. in Lang v. Gishorne, 361 ; 9 P. 0. R. 195. 
 
 31 Beav. 135 ; see also Harris v. Roth- (i) United TelepJwne Co. v. Harrison, 
 
 well, L. R., 35 Cli. D. 416 ; 56 L, J., L. R., 21 Cli. D. 720 ; Stead v. 
 
 Ch. 459 ; 56 L. T. 552 ; 3 P. 0. R. Williams, 8 Scott K R. 449. 
 
64 THE LAW OF PATENTS. 
 
 to give the information, would direct one of the assistants to take 
 him to that section of the library where such hooks were likely to 
 be found, and would desire him to let the reader look over the 
 titles of those books, and select what book he pleased out of that 
 section of the library. 
 
 In Harris Y. Bothwell (k), Lord Justice Lindley, reading the 
 judgment of Lord Justice Cotton and himself, after an elaborate 
 review of the authorities, said : " The conclusion at which I have 
 arrived, and which in my judgment is most in accordance with 
 the authorities, and the principles which underlie them, may be 
 thus expressed. Prima, facie, a patentee is not the first inventor 
 of his patented invention if it be proved that before the date of 
 his patent an intelligible description of his invention, whether in 
 English or in any other language commonly known in this 
 country, was known to exist in this country, either in the patent 
 office or in any other library to which the public are admitted, 
 and to which persons in search of information on the subject to 
 which the patent relates, would naturally go for information. 
 But if, as in the Plimpton cases (/) and in Offo v. Stee/(m), it be 
 proved that the foreign publication although in a public library, 
 was not in fact known to be there, the unknown existence of the 
 publication in this country is not fatal to the patent." 
 
 A patent for a machine may be anticipated by a drawing of it 
 unaccompanied by explanatory letterpress if published in a book or 
 elsewhere so that it could become generally known, provided that 
 any mechanist would understand it, and could make the machine 
 from the drawing without any further information, and without 
 the exercise of ingenuity (//). 
 
 An inventor may invalidate his own invention by previous 
 publication in a specification. For instance, if an inventor 
 
 (Jc) 4 P. 0. R. 225, 232; see also L. J., Ch. 505; Plimpton v. Spiller, 
 
 Slead V, Williams, 7 M. & G. 818; L. R., 6 Ch. D. 412; 47 L. J., Ch. 
 
 Lanr/v. Gishorne, 31 Beav. 133 ; United 211. 
 
 Telephone Co. v. Harrison, L. R., 21 (»«) Otto v. Steel, L. R., 31 Ch. D. 
 
 Ch. D. 720 ; The United Horsenail Co. 241 ; 55 L. J., Ch. 196 ; 3 P. 0, R. 109. 
 
 V. Stewart, 2 P. 0. R. 133. in) Herrhiirger v. Squire, 6 P. 0. R. 
 
 (I) Plimpton V. Malcolmson, L. R. , 198. 
 3 Ch. D. 531 ; 44 L. J., Ch. 257 ; 45 
 
NOVELTY. 65 
 
 applies for letters patent and files a complete specification, and 
 after the publication of the specification abandons it and begins 
 again, applying for letters patent for the same invention, the 
 previous publication of the specification will invalidate a subse- 
 quent patent. 
 
 Under the Act of 1883 it is clear that if he only filed a 
 provisional specification there would be no publication, since 
 provisional specifications which are subsequently abandoned are 
 not published. In Oxley v. Holden (o) it appeared that on the 
 17th March, 1858, the plaintiff obtained provisional protection 
 for an invention of indiarubber pads to be applied to the windows 
 of carriages. On the 10th April, 1858, he obtained a second 
 provisional protection for three heads of invention, whereof one 
 comprised the above-mentioned indiarubber pads. The first 
 application was abandoned, and the second carried to completion 
 — there was no evidence that between the date of the first application 
 and the second the invention had in any way been put in practice or 
 published : held, that the first application did not invalidate the 
 patent. 
 
 Erie, C. J., in the course of his judgment said : " Although 
 the first provisional specification may afford an objection either 
 to receiving a second patent for the same invention, or to 
 granting a patent for the invention after the first specification 
 has expired, there is no principle of law, and no enactment 
 making the patent void if it is so granted ; and, on the contrary, 
 sect. 24 (of the Act of 1852) enacts that the patent, dated as of 
 the day the provisional specification was delivered in, shall be of 
 the same force and validity as if it had been sealed on that day. 
 This patent is dated as of the 10th of April. On that day the 
 protection given under the specification of the 17th of March 
 existed ; and the patent is valid by the operation of this 
 section " (|;). 
 
 In Lister v. Norton (q) the same question arose, but there the 
 patentee had publicly used the invention between the dates of 
 the two provisional specifications. Chitty, J., held that the 
 
 (o) 8 C. B., N. S. 666. Vict. c. 63, s. 4. 
 
 ip) Ibid, at p. 708 ; cf. 46 & 47 Vict. (q) Griff. P. C. at pp. 151, 153. 
 
 c. 57, ss. 13 and 14 ; also 48 & 49 
 
 T. F 
 
66 THE LAW OF PATENTS. 
 
 reasoning of OxUij v. Holden applied to this case, and said : 
 " But reverting to the point of law, I think that this user in 
 public is covered by the grounds on which the Court of Common 
 Pleas decided Oxiey v. Holden. The Court held that the pro- 
 tection of the first provisional specification extended down to the 
 grant of the patent, and made this one of the grounds of their 
 decision. A provisional specification was the creature of the Act 
 of 1852. That Act, after providing for the filing of such a 
 specification which is to describe the nature of the invention, and 
 for the grant of the certificate, proceeds in the 8th sect, to enact 
 that ' Thereupon the invention therein referred to may during 
 the term of six months from the date of the application for letters 
 patent for the said invention be used and published without 
 prejudice to any letters patent to be granted for the same.' The 
 phrase ' to be granted for the same ' obviously means in this 
 section, and in the 9th sect, (which relates to the filing of a 
 complete specification in the first instance) for the same inven- 
 tion, and cannot be construed as referring to the application or 
 
 petition There is no express condition in the Act 
 
 avoiding the protection conferred in reference to the first pro- 
 visional specification by the filing of a second provisional specifica- 
 tion in relation to the same invention, and having regard to the 
 decision in OxIey v. Holden (supra), it is not open to me to say 
 that there is any such implied condition." 
 
 So far as the author can ascertain this judgment was not appealed 
 from, nor does it appear to have been discussed in any subsequent 
 cases. Should the decision be upheld the results will be curious. 
 
 If, however, a provisional specification containing a sufficiently 
 clear description of the nature of an invention be published, it 
 will amount to an anticipation so as to avoid a subsequent patent 
 granted for the same invention (r). 
 
 In Von Heyden v. Neudadt the defendants pleaded anticipa- 
 tion, and put in evidence a mass of paragraphs extracted from 
 a large number of publications. James, L.J"., in his judg- 
 ment, said (.s) : " We are of opinion that if it requires this 
 
 (r) Lawrence, v. Perry, 2 P. O. R. (s) 50 L. J., Ch. 128 ; see also 
 
 187; Sloncr v. Todd, L. R., 4 Cli. D. MoseUy v. Victoria Ruhler Co., 4 P. 
 58 0. R. 252. 
 
NOVELTY. {^7 
 
 mosaic of extracts from annals and treatises spread over a series 
 of years, to prove the defendants' contention, that contention 
 
 stands thereby self-condemned And even if it could be 
 
 shown that a patentee made his discovery of a consecutive process 
 by studying, collating and applying a number of facts discrimin- 
 ated in the pages of such works, his diligent study of such works 
 would as much entitle him to the character of an inventor as 
 the diligent study of the works of nature would do." 
 
 A patent will be upheld where the result of the invention for 
 which it was granted is the production of an article in abundance 
 and suitable for economic and commercial purposes, which 
 previously had been but a scientific curiosity and of no practical 
 value whatever {t). 
 
 The consideration for a grant of letters patent is entire and 
 indivisible, consequently where two or more mechanisms or 
 processes are claimed in one specification the want of novelty of 
 one will avoid the whole {u), but where one of the claims is but 
 subsidiary to the rest and does not in any way increase or enlarge 
 the monopoly claimed by the remainder of the specification, the 
 Courts have held want of novelty in such a claim to be no 
 objection to the patent {x). 
 
 In Hopkinson v. St. James and Pall Mall Electric Light Co., 
 Mr. Justice Romer said : "I think it is not a fair objection to the 
 novelty of a process which is intended to be, and which is, of 
 great use, when applied to a system comprising many things, to 
 say that the case of one has not been expressly excluded by the 
 inventor, and that, as the application of the process to the case of 
 the one, so far as it could be applied to the one, was known, 
 therefore the process has been anticipated, though the utility of 
 
 [t) roim^v. i^mwc, 4Giff. 577, 611; & C. 178; Turner \. JVinter, 1 Web. 
 
 Edison and Swan Electric LUjht Co. v. P. C. 77 ; 1 T. R. 602 ; Bramali v, 
 
 Woodhouse, Griff. P. C. 93 ; 4 P. 0. R. HardcastU, 1 Carp., P. C. 168 ; Patter- 
 
 106 ; Von Eeijden v. Neustadt, L. R. , son v. Gas Light d- Coke Co., L. R., 
 
 14 Ch. D. 230 ; 50 L, J., Ch. 126. 2 Ch. D. 812, 833 ; CrJ2>per v. Smith, 
 
 (u) HillY. Thompson, 8 Taunt. 375; 1 P. 0. R. 87 ; Tlie United Horsenail 
 
 1 Web. P. C. 239 ; Brunton v. Hccivkes, Co. v. Stewart, 2 P. 0. R. 132. 
 
 4 B. & Aid. 541; Morgan v. Seaward, (x) Plimxtton v. Spiller, L. R., 6 
 
 2 M. & W. 544; Kay v. Marshall, 2 Ch. D. 412. 
 Web. P. C. 71 ; Bloxam v. Elsee, 6 B. 
 
 F 2 
 
68 THE LAW OF PATENTS. 
 
 the invention practically disappears when the case of the one is 
 considered (?/)." 
 
 Mr. Justice Kekewich, in Ehrlich v. Ihlee (2), said : "If within 
 a short time of the first manufacture and sale, an article of 
 commerce commands a ready and extensive sale, that fact, which 
 is proof of utility, must be accepted as evidence, not conclusive, 
 but cogent of novelty." 
 
 By sect. 39 of the Patents, &c., Act of 1883, it is enacted 
 that, " The exhibition of an invention at an industrial or interna- 
 tional exhibition, certified as such by the Board of Trade, or the 
 2nibHcation of any description of the invention during the period of 
 the holding of the exhibition, or the use of the invention for the 
 purpose of the exhibition in the place ivhere the exhibition is held, or 
 the use of the invention during the jyeriod 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 representative to apply for and obtain provisional p)roteetion 
 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 
 
 " {b) The application for a patent must be made before or within 
 six months from the date of the opening of the exhibition " (a). 
 
 By sect. 103 of the same Act, as amended by 48 & 49 Vict. 
 c. 63, s. 6, it is enacted as follows : — 
 
 " (1) // Her Majesty is pleased to make any arrangements with 
 the Government or Governments of any foreign state or states for 
 mutual protection of inventions, designs, and trade-marhs, or any of 
 them, then any person who has applied for protection for any inven- 
 tion, design, or trade-mark in any such state, shall be entitled to a 
 patent for his invention, or to registration of his design or trade- 
 mark {as the case may be) under this Act, in piriority to other 
 applicants ; and such patent shall have the same date as the date of 
 the application in such foreign State. 
 
 (y) 10 P. 0. R. 60. {a) See Appendix, p. 449, post ; note 
 
 (2) 5 P. 0. R. 205, 453 ; see also The effect of 49 & 50 Vict. c. 37, s. 3 ; also 
 
 Americnn Braided JFirc Co. v, llioiii- P. R., 1S90, r. 15. 
 
 son, 5 P. 0. R. 113, 125. 
 
NOVELTY. 69 
 
 " 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/our months, from his appli/ing for protection in the foreign 
 state with which the arrangement is in force. 
 
 ** Provided that nothing in this section shall 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 he. 
 
 " (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 during such jjcriods of the invention, or 
 the exhibition or use therein during such periods of the design, or the 
 vublication therein during such periods of a description or represen- 
 tation 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. 
 
 " (4) The provisions of this section shall apply only in the case 
 of those foreign states iclth resjject 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 force with respect to that state " [b). 
 
 A foreign patentee has a double right, he may either take 
 advantage of the Act and apply for a patent, antedated to the 
 date of his foreign application, and thereby shorten the period of 
 protection to that extent, or he may obtain a patent for the full 
 period in the ordinary way, the date of the patent being con- 
 clusive to show which course he has pursued, but after having 
 obtained a patent for the full period in the ordinary way, he may 
 not avail himself of the provisions of sect. 103 to escape the result of 
 a publication of his invention during the period thatelapsed between 
 his foreign application and his application in this country (c). 
 
 The fact of an invention having been practised previously in a 
 British Colony, will not affect the power of the Crown to grant 
 letters patent for its exercise in this country [d). 
 
 {h) See also International Conveu- Groth, 8 P. O. R. 113. 
 tion, 1883, p. 411, post. {rl) RoJh v. Lsxucs, L. R., 10 Cli. D. 
 
 (c) 2'hc British Tannin;/ Co, v. 268. 
 
70 THE LAW OF PATENTS. 
 
 CHAPTER VI. 
 
 UTILITY. 
 
 "We now come to the consideration of the question of utility, 
 for not only must the invention be new, but it must be new and 
 useful. The 6th section of the Statute of Monopolies does not 
 refer to the necessity of utility in the invention, but saving, as it 
 does, the common law prerogative of the Crown in respect of 
 inventions, it refers us back to what had previously been held to 
 be the necessary elements of an invention. In Darcy v. Allin (a), 
 decided in 1602, it was held, the invention must tend to the 
 furtherance of trade, and be for the good of the realm, and that 
 the monopoly was granted in consideration of the good that the 
 inventor doth bring by his invention to the commonwealth, other- 
 wise not. Consequently an essential element of a valid grant is, 
 that it should be for something which is for the good of the 
 realm ; that is, it must be useful (b). 
 
 In Boulton v. Bull (c), Booke, J., said : "The public have aright 
 to receive a meritorious consideration in return for the protection 
 granted." In the same case BuUer, J., said : " The invention 
 professes to lessen the consumption of steam, and to make the 
 patent good the method must be capable of lessening the con- 
 sumption to such an extent as to make the invention useful." 
 And in the case of The King v. Arkwright (d) the same judge, 
 in leaving the matters to the jury, said : " There is another 
 question, whether the stripe in it makes a material alteration, for 
 
 (a) Noy, R. 182. 327 ; 1 Web. P. C. 192, n. ; The 
 
 (h) Eclcjchury v. Hteiilicns, 1 Web. Badische Anilin und Soda Fabrik v. 
 
 P. C. 35 ; R. V. Arkivrighi, 1 Web. Levinstein, 4 P. 0. R. 462. 
 
 P. C. 72 ; Tur^ier v. Winter, 1 Web. (c) 2 H. Bl, 478. 
 
 P. C. 80 ; Morgan v. Seaward, 2 M. & {d) 1 Web. P. C. 72. 
 
 W. 544 ; Manton v. Parker, Dav. T. C. 
 
UTILITY. 71 
 
 if it appears, as some of the witnesses say, to do as well without 
 the stripes, and to answer the same purpose if you suppose the 
 stripes never to have been used before, that is not such an 
 invention as will support the patent." 
 
 It will always be a question for the consideration of the jury, 
 •whether the invention is useful ; that is, whether that which is 
 new is a sufficient advance or improvement upon what was 
 already known by the public as to add to a material extent to 
 the public stock of knowledge (e). It does not mean that there 
 must necessarily be a great deal of invention, or an extensive 
 operation, to support the patent, but that the invention w^hen 
 carried out in some way materially improves the process or 
 manufacture, either by cheapening the article produced, or by 
 improving its quality, or by improving the method of producing, 
 or the uses to which it can be put. 
 
 Each of the cases which have been decided upon the question of 
 utility deal, and necessarily must deal, with an independent state 
 of facts ; and, consequently, no case can be said to be an authority 
 for another case ; but they go to show the general principle that 
 " utility " means a substantial improvement, and not necessarily 
 an extensive improvement ; for instance, a man might invent a 
 large and complicated machine for the manufacture of boots, 
 which, when completed, would do nothing which was not done 
 before, and would not make them any quicker or any cheaper 
 than they were made before. Such a machine would not form 
 the subject of a patent. On the other hand, a man might 
 discover a new needle for stitching boots, which would economise 
 half-an-hour in the manufacture of each boot ; such a needle 
 would be the subject of a patent, although the whole improvement 
 might consist of a bend. 
 
 In Crane v. Price, Tindal, C. J., said : " If the invention be 
 new and useful to the public, it is not material whether it be the 
 result of long experiments and profound research, or whether by 
 some sudden or lucky thought, or mere accident of discovery " (/"). 
 
 The test of utility of an invention, is that, when put in practice 
 by a competent man, it should really do what it assumes to do, 
 
 (c) Rill V. Thomimn, 1 Web. P. C. Cornish v. Kecw, 1 Web. P. C. 506. 
 •237 ; Bloxaiii v. Elsee, 1 C. & P. 565 ; (/) 1 Web. P. C. 411. 
 
72 THE LAW OF PATENTS. 
 
 and be practically useful at the time when the patent is granted 
 for the purposes indicated by the patentee [g). 
 
 Utility to support a grant of letters patent does not depend 
 at all upon the amount of commercial success that may result 
 from the invention (A), nor is it affected by the fact that it may 
 be enormously expensive when put in practice (/), provided that 
 cheapness of production is not the main point of the inventor's 
 claim, in which case commercial failure will be taken into con- 
 sideration as evidence of the uselessness of the invention. 
 
 In The Badische Anilin unci Soda Fnbrik v. Levinstein, before 
 the House of Lords, Halsbury, L.C., said: ''The element of 
 commercial pecuniary success has, as 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 pro- 
 duction, such a consideration is of the very essence of the patent 
 itself, and the thing claimed has not really been invented unless 
 that condition is fulfilled " (/.•). 
 
 The fact that a patent was never put into practice is no proof 
 of the uselessness of the invention. In Ediaon v. Holland (l), 
 Lindley, L. J., said : " The utility of the patent must be 
 judged by reference to the state of things at the date of the 
 patent ; if the invention was then useful, the fact that subsequent 
 improvements have replaced the patented invention and rendered 
 it obsolete and commercially of no value, does not invalidate 
 the patent" (ni) ; and Cotton, L.J., in the same case, 
 
 (g) Per Lindley, L.J., in La7ic Fox 3 P. 0. R. 313; Ehrlich v. Uilee, 5 
 
 v.KensingtonandKnightsbridijc Electric P. 0. R. 450 ; Kurtz v. Spence, 5 
 
 Lighting Co., 9 P. 0. R. 417 ; Cornish P. 0. R. 182 ; Edison v. Holland, 6 
 
 V. Keene, 1 Web. P. C. 507 ; Per Grove, P. 0. R. 257, 277, 283 ; Lane Fox v. 
 
 J., in Yovmg v. Fi,osenthal, 1 P. 0. R. Kensington <ii Knightt^hridge Electric 
 
 41 ; The Badische Anilin U7id Soda Lighting Co. 9 P. 0. R. 417 ; Wilson 
 
 Fabrik v. Levinstein, 4 P. 0. R. 462, v. Union Oil Mills Co., 9 P. 0. R. 69, 
 
 466 ; L. R., 12App. Gas. 712, 719, 720 ; 70 ; I{o2}kinson v. St. James cfc Fall 
 
 Edison v. Holland, 6 P. 0. R. 283 ; see Mall Electric Light Co., 10 P. 0. R. 62. 
 
 also Wilson v. Union Oil Mills Co., (i) Wilson v. Union Oil Mills Co., 
 
 9 P. 0. R. 70. 9 P. 0. R. 69, 70 ; The Badische Anilin 
 
 {h) The Badische Anilin und Soda und Soda Fabrik v. Levinstein, W.O.^. 
 
 Fabrik v. Levinstein, L. R., 12 App. 462, 466. 
 
 Cas. 712, 719, 720 ; 4 P. 0. R. 462, {k) 4 P. 0. R. 462. 
 
 466 ; Otto V. Linford, 46 L. T., N. S. (I) 6 P. 0. R. 243. 
 
 41 ; United Tele'phonc Co. v. Bassano, (vi) lb. p. 283. 
 
UTILIT'^. 73 
 
 said (n) : "A patent is not to be defeated simply because subse- 
 quent inventions improved the patented article, or because, in 
 consequence of subsequent improvements, no article was, in fact, 
 made in accordance with the specification." 
 
 In Olto V. Linford, Lord Jessel, M.R., said : " It is quite 
 true that it has been said that it is prima facie evidence of want 
 of utility (o) if you do not make and vend your machine ; but 
 that is subject to this observation, that you may make and vend 
 an improvement upon it, and if you have found out immediately 
 after you have patented your invention that it can be improved, 
 it does not by any means show that the first invention was 
 useless " (p). 
 
 A very slight amount of utility will be sufficient to support a 
 patent. Alderson, B., in Morgan v. Seaward, said (q) : " I 
 think if it was of different construction from any other steam 
 engine, and of an// use to the public, then that is sufficient." 
 Again, Lord Jessel, M.R., in Otto v. Linford, said (>•) : " And, 
 as to this question of utility, very little will do." 
 
 " The law does not require any definite amount of utility, and 
 a very sKght amount of utility will be sufficient, provided it does 
 not appear that the Crown has been deceived as to the extent of 
 the utility of the invention " (s). 
 
 Utility, however great it may be, cannot by itself support a 
 grant of letters patent, and the application of an old contrivance 
 to an analogous purpose, however useful the result may be, will 
 not constitute a patentable invention (t). 
 
 (n) 6 P. 0. R. p. 277. Anilin und Soda Fabrik v. Levinstein, 
 
 (o) Morgan v. Seaward, 1 Web. 4 P. O. R. 462. 
 P. C. 186 ; Tetley v. Easton, Macr. {r) 46 L. T., N. S. 41 ; see also 
 
 P. C. 63. Pliilpott V. Hanhury, 2 P. 0. R 37 ; 
 
 {p) 46 L. T., N. S. 41 ; Galloway's Ehrlich v. Ihlee, 5 P. 0. R. 450 ; Pirrie 
 
 Patent, 1 Web. P. C. 724 ; Rcnard v. v. Yoi-k Street Flax Spinning Co., 10 
 
 Levinstein, 11 L. T., N. S. 505 ; United P. 0. R. 39. 
 
 Telephone Co. v. Maclean, Scotch Ses- (s) Per Chatterton, V. -C, in Pirrie 
 
 sion Cases, 4tli Series, 710; see also v. York Street Flax Sjnnning Co., 10 
 
 United Telephone Co. v. Bassano, 3 P. 0. R. 39 ; see also Easterbrook v. 
 
 P. 0. R. 313 ; Thom2)son v. Batty, 6 Great Western Railway Co., 2 P. 0. R. 
 
 P. 0. R. 100. 201, 210. 
 
 {q) 1 Web. P. C. 186 ; see also per (0 Per Lord Watson in Morgan v. 
 
 Baron Halsbnry, L.C., in The BaiHsche Windover, 7 P. 0. R. 136. 
 
74 THE LAW OF PATENTS. 
 
 Utility, like novelty, is part of the consideration for a grant of 
 letters patent, and if a material portion of the invention be 
 useless, there is a failure of consideration, and the patent is 
 altogether void (ii), so, too, where a specification claims ability by 
 means of one process to produce two or more things or effect two 
 or more results, and fails in any one of them. The patent is void 
 for falsity of suggestion, the Crown having been deceived in the 
 grant (.r) ; but want of utility in an immaterial part of a machine, 
 which is not claimed as essential, will not vitiate a patent. 
 
 Lord Tenterden, C.J., in Lewis v. 3IarKng, said : "I agree 
 that if the patentee mentioned that as an essential ingredient in 
 the patent article, which is not so, nor even useful, and whereby 
 he misleads the public, his patent may be void ; but it would be 
 very hard to say that the patent should be void because the 
 plaintiffs claim to be the inventors of a certain part of the 
 machine not described as essential, and which turns out not to 
 be useful " {y). 
 
 Tindal, C. J., in Haworth v. Hardcastle, said : " If the jury 
 think it useful in the general, because some cases occur in which 
 it does not answer, we think it would be much too strong a 
 conclusion to hold that patent void" (s). 
 
 In that case part of the patentee's claim was for the applica- 
 tion of the machinery described for drying calicoes, the said 
 machinery being adapted for taking up and removing the said 
 calicoes after being dried. At the trial it appeared that the 
 machine failed in taking up certain cloths stiffened with 
 clay. 
 
 Where an invention is as a whole useful, a very small amount 
 of utility will be sufficient to support a second and subsidiary 
 
 (m) Simpson v. Hollidaij, L. R., 1 {x) Turner v. Winter, 1 Web. P. C. 
 
 H. L. 315, 322 ; TcmiMon v. Macfar- 77 ; Bloxam v. Elsce, 6 B. & C. 169, 
 
 lane, 1 H. L. Ca. 595; Turnerv. Winter, 178. 
 
 1 Web. P. C. 77 ; Morgan v. Seaimrd, (y) 10 B. & C. p. 25 ; see also Morgan 
 
 2 M. & W. 544 ; Bloxam v. Elsee, 6 v. Seaivard, 2 M. & W. 544 ; Eaioorth 
 B. &C. 169; Hill V. Thompson, 1 Web. v. Hardcastle, 1 Bing. N. C. 182; 
 P. C. 232 ; 3 Mcr, 622 ; Lawrence v. United Horsenail Co. v. Stewart, 2 
 Perry, 2 P. 0. R. 179 ; The United P. 0. R. 132 ; United Horseshoe d: Nail 
 Horsenail Co. v. Stewart, 2 P.O. R. Co.y. Swedish Horsenail Co.,Q'2.0.B..S. 
 132 ; United Horseshoe & Nail Co. v. {z) 1 Bing. N, C. 190. 
 
 Swedish Horsenail Co., 6 P. 0. R. 8. 
 
UTILITY. 75 
 
 claim (a), and it does not show that the patent is bad because 
 one of the methods claimed is preferred to the others (b). 
 
 Commercial success is strong and almost conclusive evidence of 
 utility (c), though, as has been pointed out above, its absence is 
 no proof of want of utility (d). 
 
 Kay, J., in Lucas v. MiUer (e), said : " Better evidence of the 
 utility of an invention cannot possibly be had than the fact that 
 the defendant has attempted to infringe it." 
 
 (a) Ehrlich v. Ililec, 5 P. 0. R. 203, can Braided Wire Co. v. Thomson, 5 
 455. P. 0. R. 113 ; Pirrie v. York Street Flax 
 
 (b) Miller v. Scarle, 10 P. 0. R. Spinjiing Co., 10 P. 0. R. 39. 
 110 ; Ehrlich v. Ihlee, 5 P. 0. R. 437, (d) See ante, p. 72. 
 
 455. (e) 2 P. 0. R. 160 ; see also Morgan 
 
 (c) Cole V. Sequi, 5 P. 0. R. 495 ; v. Windover, 4 P. 0. R. 422 ; Miller v. 
 Ehrlich v. Ililee, 5 P. 0, R. 205 ; Amcri- Scarle, 10 P. 0. R. 111. 
 
THE LAW OP PATENTS. 
 
 CHAPTER VII. 
 
 THE SPECIFICATION. 
 
 The third condition which supports the consideration for a 
 valid patent is that the patentee must publish his invention, that 
 is to say, that in the specification which he tiles, and which forms 
 the basis of the description of the subject-matter of his patent, he 
 must give such an account of his invention, of the way of working 
 it, and of what he particularly claims, as to enable an ordinary 
 skilled person to carry out the invention without further 
 assistance or discovery. By the 5th section of the Act of 1883 it 
 is provided : — 
 
 " (1) An application for a pafeiit must be made in the form set 
 forth in the first schedule to this Act, or in such other form as may 
 he from time to time prescribed ; and must be left at, or sent by 
 post to, the Patent Office in the prescribed manner. 
 
 " (2) An application must contain a declaration to the effect that 
 the applicant is in p)ossession of an invention whereof he, or in the 
 case of a joint application, one or more of the apjjlicants, 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 
 acco7n2)anied by either a p)rovisional or complete specification {a). 
 
 " (3) A provisional specification must describe the nature of the 
 invention, and be accompanied by drawings if required. 
 
 («) " Whereas sub-sect. 2 of s. 5 of enacted that : The declaration nieu- 
 
 the principal Act requires a declaration tioned in sub-sect. 2 of s. 5 of the 
 
 to be made by an applicant for a patent principal Act may be either a statutory 
 
 to the effect in that sub-sect, mentioned, declaration under the Statutory Declara- 
 
 and doubts have arisen as to the nature tions Act or not, as may be from time 
 
 of that declaration, and it is expedient to time prescribed." Patents, &c.. Act, 
 
 to remove such doubts ; Be it theiefore 1885, s. 2. 
 
THE SPECIFICATION. 11 
 
 " (4) A complete specification y whether left on application or 
 subsequently, must particalarly describe and ascertain the nature 
 of the invention, and in what manner it is to be performed, and 
 must be accompanied by draivings if required (b) . 
 
 " (5) A specification, tvhether provisional or complete, must 
 commence tcith the title, and in the case of a complete specifi- 
 cation must end ivith a distinct statement of the invention 
 claimed.'^ 
 
 Such are the provisions of the new Act in respect of the 
 requirements of the specification. It leaves the law respecting 
 the necessary disclosures to be made in the specification very 
 much as it was before ; and the changes which are made are 
 more changes of practice than anything else. 
 
 The regulations dealing with the manner and the time in which 
 a specification must be lodged, and the practice generally upon 
 an application for a grant of letters patent, will be reserved for 
 consideration in a subsequent chapter (c) ; for the present it is 
 proposed to treat merely with the internal requirements of the 
 specification, that is to say, the amount of disclosure which is 
 required by the Crown, and which constitutes an im.portant part 
 of the consideration given by the patentee to the public in return 
 for the monopoly granted to him. 
 
 The specification is the means which is provided by the state, 
 whereby a patentee publishes his invention, that is, dedicates it to 
 the public. We have observed that two descriptions of specifi- 
 cations are provided for, one called " provisional," and the other 
 "complete"; the applicant for letters patent may, if he so 
 pleases, in the first instance, file a complete specification, or he 
 may file a specification which, for want of a better word, has been 
 described as provisional ; subsequently, and within the prescribed 
 time, filing a complete specification, wbich particularly describes 
 
 (&) By the Patents, &c., Act, 1886, drawings which accomjianied tlie pro- 
 s. 2, it is provided :" The retpirement visional specification, and no patent 
 of sub-sect. 4 of s. 5 of the Patents, &c., heretofore sealed shall be invalid by- 
 Act, 1883, as to drawings shall not be reason only that the Complete Specifica 
 deemed to be insufficiently complied tion was not accompanied by drawings 
 with by reason only that instead of but referred to those which accompanied 
 being accompanied by drawings the the provisional specification." 
 Conii)lete Specification refers to the (c) Chap. VIII. 
 
78 THE LAW OF PATENTS. 
 
 and ascertains his invention. It is only necessary, however, that 
 the provisional specification should describe the nature of the 
 invention; and although it is not absolutely necessary that full 
 details should be given as to the method of working the invention, 
 care should be taken to ascertain to what extent and in what 
 direction the invention goes. 
 
 There are three things in the specification which must agree 
 with each other — the title, the provisional specification, and the 
 complete specification. 
 
 THE TITLE. 
 
 The title of the specification must disclose the object of the 
 invention {d). 
 
 The title is a part of the specification, and should be read 
 into it so that it may limit the patentee's claim, which otherwise 
 would be too large (e). 
 
 In the case of Rex v. Else (/), the title of the patent was held 
 to contain the claim, there being no other claim. 
 
 The title must not be inconsistent with the specification, that is 
 to say, it must not embrace an invention substantially different, 
 neither more nor less extensive than that disclosed by the 
 specification. For instance, a man who had invented a new 
 street lamp, and described his invention in the title as being 
 " a method or methods of more completely lighting cities, towns 
 and villages," was held to have vitiated his patent by going too 
 far in his title. His claim should have been for a new or 
 improved street lamp {g). So care must be taken that an 
 improvement in buttons, for instance, is not described as an 
 improvement in the manufacture of buttons ; if the improvement 
 is in the article, it must be so stated, and if in the process, 
 likewise. In Camjoion v. Benyon (h) the title was " a new and 
 improved method of making and manufacturing double canvas 
 
 {d) HouseUll Co. v. Neilson, 1 Web. v. Norton, 3 P. 0. R. 203. 
 
 P. C. 678. (/) 1 Web. P. C. 76. 
 
 (e) Neivton v. Faucher, 21 L. J., Ex. {g) Cochrane y. Smethurst, Dav. P. C. 
 
 308 ; Neilson v. Harford, 1 Web. P. C. 354 ; 2 Coop. Ch. Cas. 57 ; 1 Stark. R. 
 
 312, 373 ; Oxle]j v. Holden, 8 C. B., 205. 
 
 N. S. 666 ; 30 L. J., C. P. 68 ; Lister [h) 6 B. Mo. 71. 
 
THE SPECIFICATION. 79 
 
 and sail cloth with hemp and flax, without any starch whatever ; " 
 the title, therefore, described an invention, the novelty and utility 
 of which was to omit the use of starch, but upon reading the 
 specification we find that the real invention was an improved 
 mode of twisting the threads to be applied to the making of 
 unstarched cloth, the patent was held bad. In the case of 
 Bloxam v. Elsee (i) the title for the invention was for a machine 
 for " making paper in single sheets without seam or joining from 
 1 to 12 feet and upwards wide, and from 1 to 45 feet and 
 upwards in length." It was found that to vary the width of the 
 paper it was necessary to have a diff'erent machine, and that 
 consequently the title did not correspond with the invention, and 
 the title was held bad. In Felton v. Greaves (k), the title was 
 " a machine for an expeditious and correct mode of giving a fine 
 edge to knives, razors, scissors and other cutting instruments." 
 The machine would not sharpen scissors : — Held bad. 
 
 In Croil V. MIge (/) the title was for " improvements in the 
 manufacture of gas for the purpose of illumination, and in 
 apparatus used therein, and when transmitting and measuring 
 gas," an important part of the patentee's claim consisted in a new 
 mode of manufacturing clay retorts, an apparatus used in the 
 manufacture and not in the transmitting and measuring of gas : — 
 Held, that there was fatal inconsistency, the specification being 
 substantially wider than the title. 
 
 These cases seem to have been decided upon the ground that 
 an incorrect or too extensive title is evidence of fraud upon the 
 Crown. For instance, in Brunton v. Hairkes {m), Best, J., 
 said : " That the patent was taken out for more than the 
 patentee was entitled to, that, in my opinion, avoids the patent 
 in toto, for the king is deceived." 
 
 Mere vagueness in the title is not a fatal objection to a patent, 
 provided that it is sufficiently explained by the specification. 
 
 (i) Bloxam V. Elsee, 6 B. & C. 169. v. Wheeler, 2 B. & Aid. 345 ; Morgan 
 
 {Jc) 3 C. & P. 611 ; see also Ecx v. v. Seatvard, 2 M. & W. 544 ; 6 L. J., 
 
 Wheeler, 2 B. & AM. 345 ; Rex v. Met- Ex. 153 ; Bloxam v. Elsee, 1 Car. & P. 
 
 calf, 2 Stark. R. 249. 558 ; 6 B. & C. 169 ; 3 L. J. (0. S.), 
 
 [I) 9 C. B. 479 ; 19 L. J., C. P. 261. Q. B. 93. 
 
 (in) 4 B. & Aid. 558 ; see also Rex 
 
80 THE LAW OF PATENTS. 
 
 In Cook V. Pearce (w), Tindal, C.J., in the Exchequer 
 Chamber, said : " This was an action on the case against the 
 defendant for the infringement of a patent taken out by the 
 plaintiff for improvements in carriages. The 6th plea, after 
 setting out the specification, averred that * although the said 
 alleged invention in the declaration of letters patent respectively 
 mentioned is therein styled and described as improvements in 
 carriages, yet the said invention in truth, and in fact, is not an 
 invention of improvements of carriages generally, but certain 
 alleged improvements in the fixing and adapting of German 
 shutters in those carriages only in which German shutters are 
 used, and that German shutters cannot be used in divers and 
 very many carriages, to wit, coaches, &c.,' and so the defendants 
 say that the title of the said invention is too large and general, 
 and by reason thereof the said letters patent are void and of no 
 
 force It has been observed that the decision (in the 
 
 Court below) docs not proceed upon the ground that the title of 
 this patent must be held of necessity to claim more than the 
 invention as explained by the specification, as if the title had 
 been ' an invention and improvement of all carriages,' and the 
 specification had limited the invention to the improvement of one 
 or more species of carriages only, or if the title had been for the 
 invention of two things, and the specification had shown it to be 
 an invention of one only out of the two ; in such cases it may be 
 readily admitted that the patent would be void, in the first, 
 because there was no specification enrolled agreeing with the 
 title, and in the second, upon the principle laid down by Mr. 
 Justice Bayley, in his judgment in Brunton v. Hawkes : ' that the 
 entire discovery of all the things for which the patent was taken 
 out may be held to be the consideration upon which the patent 
 was granted by the Crown;' but such an objection would not 
 apply to the case now before us, for the words ' improvements in 
 carriages ' do not necessarily imply in all carriages, but in their 
 ordinary use may well be held to be satisfied by an invention for 
 improvements in some carriages only, but the ground of the 
 decision is as before stated confined to the vagueness and 
 
 (n) 8 Q. B. 10.')4, 1062. 
 
THE SPECIFICATION. 81 
 
 generality of the title, and to that only. Now the mere vague- 
 ness of the title appears to us to be an objection that may well bo 
 taken on the part of the Crown before it grants the patent, but to 
 afford no ground to avoid the patent after it has been granted. 
 If such title did not agree with the specification when enrolled, 
 or if there had been any fraud practised on the Crown in 
 obtaining the patent with such title, the patent in those cases 
 
 might undoubtedly be held void We think it 
 
 would be unsafe to lay down the rule in terms so large as it 
 appears to have been adopted by the Court below, for that it 
 would endanger the validity of very many patents which had 
 hitherto been free from exception, if every patent must be held to 
 be void simply on the ground that its title was conceived in such 
 terms as to be capable of comprising some other invention besides 
 that contained in the specification in the absence at the same 
 time of any proof of an intention to commit any fraud upon the 
 Crown, or of deceiving or misleading the public " (o). It will be 
 seen, therefore, that although variance between the title and the 
 specification is held to vitiate the patent as in Felton v. Greaves, 
 that mere excess and generality in the title will not vitiate the 
 patent in the absence of any evidence of fraud upon the 
 Crown (p). 
 
 In Neilson v. Harford (q), Abinger, C.B., said: "If the 
 specification is consistent with the title, that would be sufficient ; " 
 and Baron Parke said, "The title of the patent is for the im- 
 proved application of air, though that is ambiguous. It is 
 sufiiciently explained by the specification, and is not at variance 
 with it." 
 
 Purely teclmical objections to a title have been held not to 
 affect a patent ; in The Electric Telegraph Co. v. Brett (r) the 
 
 (o) This decision was followed in N. 312. 
 Crosslcy v. Potter lay Pollock, C.B. See [q) 1 Web. P. C. 333. 
 
 Macr. P. C. 242. (r) 10 C. B. 838 ; see also Fisher v. 
 
 (p) Nickels v. Haslam, 7 M. & G. Deivick, cited 8 Q. B. 1056 ; Berosne v. 
 
 378, 385 ; Sturtz v. De La Eue, 5 Russ. Fairie, 5 Tyr. 393 ; Beard v. Ecjcrton, 2 
 
 322 ; Neilson v. Harford, 1 Web. P. C. Car. & K. 667 ; 3 C. B. 97 ; Pirric v. 
 
 295 ; Morgan v. Seaivard, 1 Web. P. C. York St. Flax Spinning Co., 10 P. 0. 
 
 196 ; Stead v. Williams, 2 Web. P. C. R. 45. 
 137 ; Hills v. London Gas Co., 5 H. & 
 
 T. G 
 
82 THE LAW OF PATENTS. 
 
 title of the plaintiff's patent was an " Invention of improvements 
 in giving signals and sounding alarums in distant places hy means 
 of electric currents transmitted through metallic circuits.''^ Sub- 
 sequently to tbe date of this patent it was discovered that the 
 earth would complete the circuit and render a return wire un- 
 necessary ; this was the method employed by the defendants in 
 woi'king their apparatus, and it was argued by them that so long 
 as they did not employ a metallic circuit throughout, they could 
 not infringe the patent of the plaintiffs ; mctalhc circuits, although 
 mentioned in the title, were not a condition necessary to the 
 existence of the improvements claimed by the plaintiffs in their 
 specification, and it was held that this objection could not be 
 sustained. 
 
 Cresswell, J., in his judgment in the Court of Common Pleas, 
 said (.s) : "It appears to us reasonable to hold that a claim for 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, so long as it 
 remains identical with regard to improvements claimed and 
 their application." 
 
 The question of variance between the title and the specification 
 is one upon which the decided cases can have but little bearing. 
 All that can be gleaned from previous decisions of the Courts is 
 that variance is a fatal blemish ; but in the immense variety of 
 inventions it is evident that the same variance will never occur in 
 any two cases, and it will be a question for the Court in each 
 individual case that comes before it to decide whether, in that 
 case, the specification and the title vary or differ from each 
 other ; and although the decided authorities will be of assistance 
 to the Court in showing to what extent variance has been held in 
 prior cases to vitiate the patent, no prior decision will be 
 absolutely binding [t). 
 
 (s) 10 C. B. 881. P. C. 239 ; Nickels v. Haslam, 13 L. J. 
 
 (t) Bainbridijc v. Wighy, Higgins' C. P. 146 ; Croll v. Edge, 9 C. B, 479 ; 
 Digest, 155 ; IIlll v. Thvmpson, 1 Web. IVright v. Hitchcock, L. R., 5 Ex. 37. 
 
THE PROVISIONAL SPECIFICATION. 83 
 
 THE PROVISIONAL SPECIFICATION. 
 
 It was found that application for letters patent, being made 
 merely upon the title of an invention, caused a groat deal of 
 inconvenience and uncertainty, therefore, by the Patent Law 
 Amendment Act, 1852, the provisional specification was created. 
 Prior to the passing of that Act, applicants for letters patent, 
 when they made their application, merely deposited the title of 
 their invention. By sect. 6 of that Act a provisional specification 
 was required, which should give some more definite information 
 as to the nature of the invention for which protection was sought 
 than could be possibly given in a mere title. 
 
 " The whole object of provisional protection is to enable a 
 patentee to work at and improve his invention without risk of 
 invalidating his patent by premature publication or user (see 
 46 & 47 Vict. c. 57, s. 14). The only limit set to what he can 
 do in this respect is that the invention, as finally specified, must 
 not be a different invention from that provisionally protected " (u) 
 
 It is very difficult to clearly define the distinction between that 
 which is absolutely necessary in the provisional specification and 
 that which is absolutely necessary in a complete specification. 
 In Woodward v. Sarmtm (x) the Court of Appeal held that all a 
 patentee need do in his provisional specification is to describe his 
 invention. He need not go on therein to describe any method ot 
 carrying out the invention, but, whether he do so or not, if a 
 difierent or further mode of carrying out the invention is described 
 in his complete specification that will not invalidate the patent so 
 long as such new method of carrying out is fairly within the 
 invention as described in the provisional specification. In 
 Moseleij v. Victona Rubber Co. (y), Chitty, J. laid it down that 
 the object of a provisional specification is only to describe gener- 
 ally and fairly the nature of the invention, and not to enter into 
 all the minute details of the complete specification. 
 
 {u) Per Lindley, L.J., in Gadd v. (x) 56 L. T. 347 ; 4 P. 0. R. 166, 
 
 Mayor, &c., of Manchester, 9 P. 0. R. 174. 
 
 526 ; see also Stoner v. Todd, L. R., (y) 4 P. 0. R. 241, 251 ; 57 L. T. 
 
 4 Ch. D. 59 ; Ex parte Bates and Red- 142. 
 gatt, L. R., 4 Ch. 577. 
 
 G 2 
 
84 THE LAW OF PATENTS. 
 
 Sect. 8 of the Act of 1852, to which wo have referred, says 
 that " the law officer must be satisfied that the provisional 
 specification describes the nature of the invention," and we have 
 seen that the exact words of that section are retained in sub- 
 sect. 3 of sect. 5 of the Act of 1883 ; and probably the Legislature 
 had in view the desirability of retaining the effect of the numerous 
 valuable decisions of the Courts of law upon the construction 
 which should be placed upon what is a sufficient description of the 
 nature of the invention. It will be observed that the complete 
 specification to which we shall refer at greater length hereafter 
 must not only describe the nature of the invention, but must also 
 ascertain the nature of the invention and in what manner it is to 
 be performed ; but both a provisional specification and a complete 
 specification must commence with a title, and the complete 
 specification must conclude with a distinct statement of the 
 invention claimed (z). 
 
 The cases which we have quoted, and which were decided prior 
 to the year 1852, as to the fatal nature of a variation between 
 the title and the specification, will apply equally to the considera- 
 tion of a variance between a provisional and a complete specifica- 
 tion. It is evident, however, that the object of the Legislature 
 in creating' a provisional specification, and founding upon it a 
 period of provisional protection, was to enable the inventor in 
 that interval to improve and perfect his invention, and to clearly 
 ascertain what was new and what was old in that which he 
 proposed to patent. That being so, it is obvious that it could 
 not have been the intention of the Legislature that, when framing 
 a complete specification, the inventor should be bound to follow 
 implicitly every detail which he had given in his provisional 
 specification, or that he should be prevented from adding to or 
 subtracting from his invention ; for, in that case, the object of 
 the Legislature would be defeated. 
 
 In Neivall v. miott (a), Pollock, C.B., said : " The object of 
 the statute which requires a provisional specification is nothing 
 more than a legislative recognition of the custom which called 
 upon every patentee, when he applies for a patent, to give some 
 
 {z) PoBt, p. 90, et seq. (a) 10 Jur., N. S. 955. 
 
THE PROVISIONAL SPECIFICATION. 85 
 
 notion of what his invention is ; that has been followed by Act of 
 Parliament, requiring it to be done ; but the object in both cases 
 is to ascertain the identity of the invention, and make it certain 
 that the patentee shall ultimately obtain his patent for that 
 invention which he presented to the Attorney- General in the 
 first instance .... I have no doubt that the object of the Act 
 of Parliament was not to ascertain the entirety of the invention, 
 but the identity of the invention, so as to enable the Attorney- 
 General, and, in fact, to enable a jury ultimately to determine 
 whether the invention fully specified was the same invention as 
 that which was presented to the notice of the Attorney-General 
 by the provisional specification." Baron Channell in the same 
 case, at p. 960, describes a provisional specification as a " short 
 note or minute of that which was ultimately disclosed in the full 
 specification." It will be observed that in the cases to which we 
 drew attention upon the subject of variance between title and 
 specification, the point always was as to whether the title and the 
 specification varied in the description of the nature of the inven- 
 tion ; and the same principle holds good when considering the 
 variation between the provisional and complete specification, the 
 question always is. Do they differ in their description of the 
 nature of the invention ? In Newall v. Elliott (b), Byles, J., 
 said : " The office of the provisional specification is only to 
 describe generally and fairly the nature of the invention, and 
 not to enter into all the minute details as to the manner in which 
 the invention is to be carried out" (c). 
 
 Lord Chelmsford, in Pom v. Bihbi/ (d), said : " The relation 
 which the provisional specification bears to the complete specifica- 
 tion is much the same as that which before the Patent Law 
 
 Amendment Act a title bore to the specification the 
 
 only objection then which is open upon the complete specification, 
 is whether it is sufficient in itself, and whether it agrees with the 
 provisional specification. Now, by * agreement ' is not meant a 
 
 (b) 4 0. B., N. S. 269, 293. 4 Ch. D. 58, 59 ; United Telephone Co. 
 
 (c) See also Siddell v. Vickers, 5 v. Harrison, L. R., 21 Ch. D. 720 
 P. 0. R. 99, 416, 426 ; 7 P. 0. R. 292 ; 746. 
 
 L. R., 39 Ch. D. 92, 97; L. R., 15 (rf) L. R., 2 Ch. 127, 133. 
 
 App. Cas. 496 ; Stoncrv. Todd, L. R., 
 
86 THE LAW OF PATENTS. 
 
 perfect correspondence, but merely that there shall be nothing in 
 the complete specification at variance with the provisional." The 
 learned Lord Chancellor then proceeds to quote NewaWs case, to 
 which we have referred, and proceeds : " JSTor is it at all necessary 
 that the specification should extend to everything comprehended 
 in the provisional specification. Perhaps a better illustration of 
 this proposition could not be given than that which was offered 
 in the course of the argument. If the patentee were to introduce 
 into his complete specification everything which was warranted 
 by the terms of the provisional specification, and afterwards found 
 that a part of that which he had claimed would invalidate his 
 patent for want of novelty, or for any other reason, he might 
 afterwards cure the objection by a disclaimer. Now if he would 
 be allowed to disclaim in such a case, which is a matter of 
 indulgence, he must have a right to waive his claim to any por- 
 tion of the grant which the allowance of the provisional specifica- 
 tion had entitled him to demand. It is clear, therefore, that 
 unless a complete specification in this case claims something 
 different from the provisional specification, the objection to the 
 patent under consideration cannot prevail." 
 
 In the absence of fraud, any part, whether in the description 
 or the claim of the provisional specification, may be omitted in 
 the complete specification without the necessity of any dis- 
 claimer (e). In Stoner v. Todd{f), Jessel, M.R., said: "I 
 must consider first the nature of a provisional specification, and 
 the effect of a provisional specification on a final specification 
 of the same invention. A provisional specification was never 
 intended to be more than a mode of protecting an inventor, 
 until the time of filing a final specification ; it was not intended 
 to contain a complete description of the thing so as to enable any 
 workman of ordinary skill to make it, but only to disclose the 
 invention, fairly no doubt, but in its rough state ; until the 
 inventor could perfect its details, the provisional specification as 
 such is not and cannot be known to the public. It is never 
 
 (e) Thomas \. fFefc/i, L. R., 1 C. P. above j Re Everitt's Patent, Griff. 
 192 ; see also the remarks of Lord L. 0. C. 27. 
 Chelmsford in Penn v. Bibby, (luoted (/) L. R., 4 Ch. D. 58. 
 
THE PKOVLSIONAL SPECIFICATION. 87 
 
 published unless with the final specification, when they become 
 parts of the same document." 
 
 Lord Justice Lopes, in Woodward v. Sa)isum {(J), said : " A pro- 
 visional specification was never intended to contain a complete 
 and exhaustive description of the invention. It was intended to 
 be sufficiently specific to disclose the nature of the invention so as 
 to protect the inventor until the time for filing the final or 
 complete specification, but permitting him in the meantime to 
 perfect any details, to modify, supplement, and develop his 
 invention, always keeping within what I may call the ambit of 
 his invention as disclosed in his provisional specification. Pro- 
 vided that this is done, it is no objection that in the complete 
 specification an invention is described more particularly and in 
 more detail, nor to use the words of Lord Blackburn in Bailey v. 
 Roherton {h), * even if it be shown that there has been more 
 discovery made and so as to make the invention which he has 
 described in the provisional specification really workable.' It is 
 essential that the nature of the invention shall be the same, but 
 upon principle and upon authority, it is clear that improvements 
 in the arrangement of the mechanism, in the relative position and 
 adaptation of the diflFerent parts, with a view of producing the 
 same results, the substitution of mechanical equivalents and 
 modifications and developments within the scope of the invention 
 set out in the provisional specification are allowable, and cannot 
 be successfully relied on for the purpose of invalidating a patent 
 for disconformity." 
 
 In the same case. Cotton, L.J., said (on p. 175) : "A patentee 
 putting in a provisional specification showing the nature of his 
 invention is not bound to describe the way in which that can be 
 carried into effect and operation, but if he does describe a way of 
 doing it, and before he files his complete specification, he either 
 finds out improvements in that way or a difierent way of carrying 
 
 (g) 4 P. 0. R. 178 ; see also per Fry, Rubber Co., 4 P. 0. R. 248 ; Sidddl v. 
 
 L.J., in Crampton v. The Patents In- Vickers, 5 P. 0. R. 99, 426, 427 ; Gadd 
 
 vestment Co., 6 P. 0. R. 294, 295 ; also v. Mayor, d-c. of Manchester, 9 P. 0. R. 
 
 Lucas V. Miller, 2 P. 0. R. 155 ; Gritf. 526 ; Miller v. Scarle, 10 P. 0. E. 111. 
 P. C. 156 ; Watling v. Stevens, 3 {h) L. R., 3 App. Cas. 1055, 1075. 
 
 P. 0. R. 147, 151 ; Mosclcij v. Victoria 
 
88 THE LAW OF PATENTS. 
 
 into effect that wliich is described as his invention in the pro- 
 visional specification, he is bound to give the public the benefit of 
 what he has discovered as regards the mode of carrying the 
 invention, the nature of which must be described in the pro- 
 visional specification, into effect, even although there may he 
 improvement, and even invention ichich was not knoicn to him at 
 the time" (i). 
 
 But if the improvements discovered by the inventor between 
 the dates of filing his provisional and complete specifications are 
 of such a character as to amount to a new invention a fresh 
 patent must be taken out, since, should the patentee incorporate 
 such improvements in his complete specification, his patent would 
 be rendered void on the ground of variance (k). 
 
 In the case of Bailey v. Roherton {I), decided in the House of 
 Lords, the provisional specification stated the object of the inven- 
 tion to be the preserving of animal substances in the fresh state, 
 and the patentees claimed the use of a solution composed of a 
 certain quantity of gelatine mixed with bisulphite of lime, but in 
 the complete specification they claimed as solution No. 1 a 
 solution composed of bisulphite of lime alone, and gave no 
 direction how this solution was to be used. Bisulphite of lime 
 had been used by a prior patentee. In the action for infringe- 
 ment against the defendants who had used bisulphite of lime 
 pure and simple, it was held that the complete specification, if 
 large enough to cover the employment of bisulphite of lime for 
 the preservation of animal substances as practised by the 
 defenders, would claim an invention larger than and different 
 from that disclosed in the provisional specification. It will be 
 observed that in this case the invention, which was described in 
 the provisional specification, was the coating of animal substances 
 with a film of a mixture of gelatine and bisulphite of lime ; the 
 complete specification claimed the dipping of the animal substance 
 into a solution of bisulphite of lime in water; it is apparent, 
 
 (i) Sec also Crainpton v. The Patents P. 0. R. 111. 
 Jnvesinicni Co., 5 P. 0. R. 397; Cross- {k) Edison v. Woodliouse, L. R., 32 
 
 ley V. Beverley, 9 B. & C. 64 ; Moscley Ch. D. 520 ; Pcnn v. Lihhy, L. R., 2 
 
 V. Vidorm Bubher Co., 4 P. 0. R. 248 ; Ch. 127, 133. 
 57 L. T. 142 ; Miller v. Scarle, 10 (/) L. R., 3 App. Gas. 1055. 
 
THE PKOVISIONAL SPECIFICATION. 89 
 
 therefore, to anyone acquainted with the action of antiseptic 
 substances upon animal decomposition, that the operation of a 
 film of gelatine with bisulphite of lime is entirely different from 
 the operation of a solution of bisulphite of lime ; it is a totally 
 different idea, and therefore a different invention ; the complete 
 specification, therefore, was not an extension, curtailment or 
 modification of the provisional specification, but was a description 
 )f a totally different invention, and so it was held bad for 
 variance (;«). 
 
 Thus we see that the provisional specification is a mere 
 extension of the title ; but since variance between the title and 
 the specification vitiated the patent before the inauguration of 
 the provisional specification, variance between the provisional 
 and complete specification also vitiates a patent (n), but it is 
 quite open to a patentee to extend, improve or curtail the claim 
 which he has made in his provisional specification when he comes 
 to file his complete specification. A patent is not rendered 
 invalid by the fact that the complete specification describes 
 something different from anything specifically referred to in 
 the provisional specification, provided that what is so described 
 comes within the nature of the invention described in general 
 terms in the provisional specification (o). 
 
 In Gadd v. Mayor, Sfc, of Manchester {p), Lindley, L.J., said : 
 " Even under the present law the Court may be driven to hold a 
 patent invalid on the ground that the invention described and 
 claimed in a complete specification is not the same as that 
 provisionally protected; but having regard to the provisions 
 made for the comparison of the two documents by an official 
 
 (m) See also Nuttall v. Hargrcaves, 367 ; Latie Fox v. Kensington and 
 
 8 P. 0. R. 450 ; L. R., 1892, 1 Ch. D. KnigUshridge Electric Lighting Co., 9 
 
 23 ; Foxwell v. Bostock, 4 De G. J. & S. P. 0. R. 221, 238, 413, 420 ; L. R., 
 
 298 ; United Telephone Co. v. Harrison, 1892, 2 Ck QQ, 83 ; L. R., 1892, 3 Ch. 
 
 L. R., 21 Ch. D. 720 ; Horrocks v. 424 ; Cera Light Co. v. Dohhie, 11 
 
 Stubhs, 3 P. 0. R. 221, 233, 236 ; P. 0, R, 10, 16. 
 
 Hutchison v. Pattullo, 5 P. 0. R. 351, («) Nuttall v. Hargreaves, 8 P. 0. R. 
 
 362; King v. The Anglo-American 456; L. R., 1892, 1 Ch. 23. 
 Brush Co., 6 P. 0. R. 414 ; 7 P. 0. R. (o) Siddell v. Vickers, L. R., 39 
 
 436 ; In the Matter of Gaulard and Ch. D. 92. 
 Gihhs Patent, 6 P. 0. R. 215 ; 7 P. 0. R. {p) 9 1'. 0. R. 527. 
 
90 THE LAW OF PATENTS. 
 
 examiner (see 46 & 47 Vict. c. 57, s. 9, and 51 & 52 Vict. c. 50, 
 s. 4), the Court ought not to decide against the validity of a 
 patent on the ground in question, unless the two inventions are 
 unmistakeably different. If a case is on the border line, the 
 patent ought to be held good rather than bad." 
 
 THE COMPLETE SPECIFICATION. 
 
 We now come to the more important subject of the require- 
 ments of a complete specification. The complete specification 
 is, as we have seen, one of the essential considerations which 
 the patentee gives for the grant which is made to him. It is the 
 disclosure of his invention, and of the mode of performing it. It 
 contains the information which he is bound to give to the 
 public. That information must be bond fide, full, complete, and 
 unambiguous ; it must disclose the invention, the nature of it, 
 the intention of it, the way of performing it, and an exact state- 
 ment of what is claimed by the patentee {q). 
 
 These conditions are imposed by the common law ; they were 
 maintained intact by the Statute of Monopolies, by the Patent 
 Law Amendment Act, 1852, and are now specifically re-enacted 
 in the Act of 1883. 
 
 The specification must be sufiBcient — that is, it must give a 
 sufficient description of the invention to enable a person skilled 
 in the art to which it refers to perform the invention from the 
 description which it gives. It must be bond fide — there must be 
 no reserve on the part of the inventor. He must disclose what 
 he knows ; he must conceal nothing, and thus he must give to 
 the public the full benefit of his invention. 
 
 As has been pointed out above (r), an inventor is bound to 
 disclose in his complete specification any improvement that he 
 may have discovered relating to his invention during the period 
 of provisional protection ; but if such fresh discoveries amount to 
 another invention or consist merely in a better way of using his 
 invention as described in his provisional specification, he is not 
 
 {q) As to required conformity between supra, 
 provisional and complete specification, (r) See "The Provisional Specifica- 
 
 see "The Provisional Specification," tion," supra. 
 
THE COMPLETE SPECIFICATION. 91 
 
 required to give the public this further information in his 
 complete specification. 
 
 In Edison and Swan Electric Light Co. v. Woodhouse (s), a 
 patent date^ as to its provisional specification, November, 1879, 
 and as to its final specification, 10th May, 1880, claimed an 
 electric lamp with a carbon filament for its illuminating conductor. 
 The patentee took out a subsequent patent, dated as to its pro- 
 visional specification, December, 1879, for a method of making 
 carbon filaments for electric lamps. Objection was taken that 
 inasmuch as at the time of filing the complete specification of the 
 first patent the patentee knew the subject-matter of the second, 
 he should have included it in the first, and that therefore the first 
 patent was bad by reason of concealment. This objection was 
 overruled. 
 
 In Coles V. Baylis (f), the invention was for " Improvements 
 relating to the preparation of lithographic printing surfaces." It 
 was alleged by the defendant that the plaintiff was acquainted 
 with an improved method of using the lithographic printing 
 surfaces after they had been prepared by the patented process, 
 but that he had not disclosed the same in his specification, and 
 that therefore the patent was bad. Bacon, V.-C, overruled the 
 objection, and said : — " It is to be said that the specification 
 .... is bad because he knew a mode by which a stone pre- 
 pared according to the specification may be more conveniently or 
 more usefully worked than anybody but himself knew, that he 
 was bound to put that into the specification. I know no authority 
 for saying that." 
 
 In Harmar v. Playne {n), Lord Ellenborough said: — "The 
 object of requiring the specification to be enrolled seemed to be 
 to enable persons of reasonable intelligence and skill in the 
 subject-matter to tell from an inspection of the specification itself 
 what the invention was for which the patent was granted, and 
 how it was to be executed." In Morgan v. Seaward (x), Baron 
 Alderson said : — " The patentee ought to state in his specification 
 the precise way of doing it (referring to the invention) ; if it 
 
 (s) L. R., 32 Ch. D. 520. (it) Dav. P. C. 316. 
 
 {t) 3 P. 0. R. 178 ; Griff. P. C. 57. (x) 1 Web. P. C, at p. 182. 
 
92 THE LAW OF PATENTS. 
 
 cannot completely be done by following the specification, then a 
 person will not infringe the patent by doing it. If this were an 
 infringement, it would be an infringement to do that perfectly, 
 which, according to the specification, requires something else to 
 be done to make it perfect. If that be correct, you would pre- 
 vent a man from having a perfect engine. He says, practically 
 speaking, the difference in the length of the rods would not be 
 very material, the difference being small. But the whole ques- 
 tion is small, therefore it ought to have been specified, and if it 
 could not be ascertained fully it should have been so stated." 
 We quote this decision at length, because the exposition of the 
 law which it contains is still absolutely correct. The sub- 
 sequent cases have implicitly followed the judgment of Baron 
 Alderson (y). 
 
 In Cartwright v. Eaiim' (s). Lord Eldon said : — " The patent is 
 to be considered as a bargain with the public, and the specifica- 
 tion, therefore, is to be construed on the same principle of good 
 faith as that which regulates all other contracts. If, therefore, 
 the disclosure be such that the invention can be communicated to 
 the public, the statute is satisfied." 
 
 In the case of The King v. Arkwright (a), Mr. Justice BuUer 
 said : — " The public have a right to a fair, full, and true descrip- 
 tion of the invention in the specification." 
 
 It is incumbent on a patentee to give a specification of his 
 invention in the fairest and most unequivocal terms of which 
 the subject is capable (h). In the same case, Mr. Justice Buller 
 said : — " Many cases upon patents have arisen within our 
 memory, most of which have been decided against the patentees 
 upon the ground of their not having made a full and fair dis- 
 covery of their inventions. Whenever it appears that the paten- 
 tee has made a fair disclosure I have always had a strong bias in 
 his favour, because in that case he is entitled to the protection 
 which the law gives him," In Neivhery v. James (c), Lord 
 
 (y) See Neilson v. Thoinpson, 1 Web. Winter, Dav. P. C. 151 ; 1 Web. P. C. 
 
 P. C. 278. 80. 
 
 {z) Cited 14 Vesey, 131, 136. (c) 2 Mer. 451 ; sec also Sturtz v. De 
 
 (a) 1 Web. P. C. 72 ; Dav. P. C. 61. La Hue, 5 Russ. 322 ; 7 L. J., 0. S., 
 
 (J) Per Ashurst, J., in Turiur v. Ch. 47. 
 
THE COMPLETE SPECIFICATION. 93 
 
 Eldon said : — " In order to support a patent, the specification 
 should be so clear as to enable all the world to use the inven- 
 tion as soon as the term for which it was granted was at an 
 end." 
 
 We have next to consider the bearing of the different decisions 
 upon the question of what amounts to sufficiency in a specifica- 
 tion. It is always a question of fact whether the specification 
 is sufficient or not, taking care to distinguish between sufficiency 
 of description and an attempt to cover too much — it is for the 
 jury (that is, it is a question of fact) to say whether from the 
 description given the invention could be carried out. It is for the 
 Court to determine whether the inventor has claimed that which 
 is not new among that which is new (d). The question of the 
 sufficiency of the specification is a question for the jury (c). 
 
 The intelligibility of the specification is a question for the 
 jury (/). The construction of the specification is in the same 
 manner as the construction of all documents — a question of 
 law. The duty of the judge at Nisi Prius is to tell the jury 
 the specification says so-and-so, placing a meaning upon the 
 different words used and the different sentences used in the 
 specification. It is then for the jury to say it is intelligible or 
 it is not, it is sufficient or it is not sufficient, but the Court will 
 determine in all cases whether or not the patent is defective by 
 reason of the patentee having endeavoured to describe or to claim 
 too much (g). 
 
 "We will deal with these different heads in their natual order, 
 first, as to construction, next as to intelligibility, and then as to 
 sufficiency. 
 
 The leaning of the Courts is invariably in favour of the 
 patentee, and specifications will not be construed astutely so as to 
 overthrow a patent. Sir George Jessel, in the case of Hinlis v. 
 The Safety Lighting Co. (h), said "I am anxious, as I believe 
 
 (d) mil V. Thompson, 3 Mer. 626 ; 613, 619. 
 
 Seed V. Higgins, 8 H. L. C. 561. (g) Hill v. Thompson, 3 Mer. 626 
 
 (e) Bickford v. Skewes, 1 Q. B. 938 ; Beard v. Egerton, 19 L. J., C. P. 38 
 Wallington v. Dale, 7 Excli. 888 ; Hills v. Mmis, 31 L. J., Ch. 460 
 Parkes v. Stevens, L. R., 8 Eq. 358. Seed v. Higgins, 8 H. L. C. 565 ; Axil- 
 
 (/) Neilson v. Harford, 1 Web. P. C. son v. Harford, 1 Web. P. C. 370. 
 295 ; JFalion v. Bateman, 1 Web. P. C. {h) L. R., 4 Ch. D. 612. 
 
94 THE LAW OF PATENTS. 
 
 every judge is who knows anything of patent law, to support 
 honest bond fide inventors who have actually invented something 
 novel and useful, and to prevent their patents being overturned 
 on mere technical objections or on mere cavillings with the lan- 
 guage of their specifications, so as to deprive the inventor of the 
 benefit of his invention ; that is sometimes called a benevolent 
 mode of construction, perhaps that is not the best term to use, 
 but it may be described as construing the language of the speci- 
 fication fairly, with a judicial anxiety to support a really useful 
 invention, if it can be supported by a reasonable construction of 
 a patent ; beyond that the benevolent mode of construction does 
 not go." And the same judge, in Plimpton v. Spiller (?'), adopted 
 the remark that " the judge is not to be astute to find flaws in 
 small matters in a specification with a view to overthrow it." 
 
 In Needham v. Johnson (k), Lindley, L.J., said, "I do not like 
 the expression ' benevolent interpretation.' I do not believe in 
 it. The question is whether a given construction 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 invaHd." 
 
 In Otto V. Linford (/), Jessel, M.R., said, "I have heard 
 judges say, and I have read that other judges have said, that 
 there should be a benevolent interpretation of specifications. 
 What does this mean ? I think, as I have explained elsewhere, 
 it means this, when the judges arc convinced that there is a 
 genuine, great, and important invention, which, as in some cases, 
 one might almost say, produces a revolution, in a given art or 
 manufacture, the judges are not to be astute to find defects in the 
 specification, but on the contrary, if it is possible, consistently 
 with the ordinary rules of construction, to put such a construction 
 on the patent as will support it." 
 
 Lord Esher, M.R., in NoJjeVs Exjjlosive Co. v. Anderson, 
 said {m) : *' It is quite true that the Court has in this specifica- 
 
 (i) L. K., 6 Ch. D, 422. this point Russell v. Cowley, 1 "Web. 
 
 {k) 1 P. 0. R. 58. P. C. 457 ; 1 Cr. M. & R. 864 ; Hallctt 
 
 {I) 46 L. T., p. 39. V. Hague, 2 B. & Ad. 377 : Palmer v. 
 
 (wi) 11 P. 0. R. 524 ; see also on Wagstaffe, 9 Exch. 494, 501 ; Thomas 
 
THE COMPLETE SPECIFICATION. 95 
 
 tion, as in every other, to put upon it the most favourable con- 
 struction which it honestly can in favour of the patentee. What 
 does that involve ? If the Court does not take care to confine 
 the patentee's patent within its legitimate limits the Court will 
 hold the patent to be such as would render it void. Therefore 
 they must take care not to stretch his claim, otherwise they may 
 by their construction make the patent void. They must not 
 diminish the claim, limit it too tightly, or they may make his 
 patent worthless. Then they have to come to really what is^the 
 honest business conclusion of the meaning of what is written 
 down. That is what they have to do." 
 
 In the same case Lord Esher said (p. 523) : " I am clearly of 
 opinion that, whether the patent be a pioneer patent, or a master 
 patent, or a patent of the first invention, or whether it be a 
 valuable patent or a patent for the smallest thing, or whether it 
 be a patent for an improvement, or whatever the patent may be, 
 the canons of construction of the patent are precisely the same. 
 What is more, I am further of opinion that the canons of con- 
 struction of a patent are the same canons of construction that are 
 to be applied to every written instrument which has to be 
 construed by the Court." 
 
 Lord Chelmsford, in Harrison v. Anderston Foundry Co. (n), 
 said : " The language should be construed according to its ordinary 
 meaning, the understanding of technical words being, of course, 
 confined to those who are conversant with the subject-matter of 
 the invention, and if the specification is thus sufiiciently intelligible 
 it performs all that is required of it." In Clark v. Adie (o) it 
 was held that the words used in the specification must be construed 
 like the words in any other instrument, in their natural sense, 
 according to the general purpose of the instrument in which they 
 are found. 
 
 When two documents such as specifications are before the 
 Court for comparison, the Court must interpret the meaning of 
 
 V. Foxwell, 6 Jur., N. S. 272 ; Biimey {n) L. R., 1 App, Cas. 581. 
 
 V. FeUUman, Griff. P. C. at p. 50 ; (o) L. R., 2 App. Cas. 423 ; Dudgeon 
 
 Cropper v. Smith, Griff. P. C. 62 ; 1 v. Thompson, L. R., 3 App. Cas. 53; 
 
 P. 0. R. 88; Automatic Weighing JFeg7nann\. Corcoran, L-K, Id Ch. D. 
 
 Machine Co. v. Knight, 6 P. 0. R. 307 ; 77. 
 
 Edison V. S7nith, 11 P. 0. R. 400. 
 
96 THE LAW OF PATENTS. 
 
 the words, but the jury must say if they are identical (p). It is 
 evident that, inasmuch as technical expressions are used in 
 different trades and businesses, and that it is impossible for one 
 person to be acquainted with every trade and every business, and 
 every technical expression used in such trade and business, it is 
 not necessary that the specification should be intelligible to any 
 one, it is sufficient that it should be intelligible to a person 
 reasonably skilled in the trade to which it particularly refers, 
 and it must be intelligible to them "without the necessity of their 
 making new inventions of their own or additions to the specifica- 
 tion or experiments (q). 
 
 The Court will receive evidence for the purpose of determining 
 the exact sense in which the patentee made use of words and 
 technical terms in his specification (/•), but it will not consider 
 what the patentee says he meant or intended, if a competent 
 person of ordinary intelligence would on reading the specification 
 understand the language and words in a different sense, since it 
 is to such that the specification is addressed and upon the inter- 
 pretation of such persons that it is to be construed (s) ; except as 
 to the meaning of scientific terms or as to the working of 
 mechanical appliances or as to what will be the result of working 
 mechanical appliances, or for the purpose of ascertaining the 
 state of public knowledge at the date of the patent, expert 
 evidence is inadmissible in determining the construction of a 
 specification (t). 
 
 There are numerous authorities which bear out the general rule 
 of construction which has been laid down, viz., that a specifica- 
 tion of an invention must be construed by the same rules and 
 
 {p) Betts V. Menzies, 10 H. L. C. Ncilson v. Harford, Web. P. C. 295, 
 
 117 ; Muntz v. Foster, 2 Web. P. C. 313 ; Eills^. Evans, 31 L. J., Ch. 457 ; 
 
 107 ; Tetley v. Easton, Macr. P. C. 68 ; British Dynamite Co. v. Krcbs, Good, 
 
 but see Bush v. Fox, 5 H. L. C. 707 ; P. C. 92 ; Gadd v. Mayor, d-c, of 
 
 Booth V. Kennard, 2 H. & N. 84 ; also Manchester, 9 P. 0. R. 530. 
 
 Hills X. Evans, 31 L. J., Ch. 457. (s) Kaye v. Chuhh, 4 P. 0. R. 289, 
 
 {q) R. V. Arkwricjht, 1 Web. P. C. 302 ; Edism v. Woodhouse, 4 P. 0. R. 
 
 66 ; but see The Badische Anilin mid 108. 
 
 Soda Fabrik v. Levinstein, 4 P. 0. R. (t) Oadd v. Mayor, d-c., of Man- 
 
 467; L. R., 12 App. Cas. 710 ; Edison Chester, 9 P. 0. R. 530 ; Parkiiison v. 
 
 V. Holland, 6 P. 0. R. 282. Simon, 11 P. 0. R. 506. 
 
 (r) Elliott, V. Turner, 2 C. B. 446 ; 
 
THE COMPLETE SPECIFICATION. 97 
 
 upon the same principles that are applied to other written docu- 
 ments, and if, on the one hand, minute cavilling at the words of 
 a specification is not to be allowed as against a patentee, so, on 
 the other hand, the interpretation must not be strained in favour 
 of a patentee. 
 
 The patentee is to be presumed not to claim things which he 
 must have known perfectly well were not new (x), but if upon a 
 fair construction of the specification it is clear that he has claimed 
 such old contrivance the patent will be void upon that ground. 
 
 In Adie v. Clark (i/) Lord Blackburn said : " When it is 
 attempted .... to say that inasmuch as these specifications 
 show, or are alleged to show, that matters which upon a fair 
 construction of the specification are claimed by the patentee, were 
 old at the time that the patent was taken out, and were generally 
 known to be old, therefore the specification must be so construed 
 as not to include them ; that seems to me both contrary, as far 
 as I know, to the course of decision and contrary to principle." 
 
 A patent may be, as we have seen, for the application of a 
 newly- discovered principle of manufacture or, for that of an old 
 principle to a new object or, for a new method of carrying out an 
 old principle applied to an old object. It frequently becomes a 
 matter of construction upon the specification as to which of these 
 branches of invention the specification is intended to apply, and 
 there have been several cases upon the subject. It is evident 
 that inasmuch as the patent will be valid provided a fair descrip- 
 tion of a new invention in either branch is given, that, in con- 
 struing the specification of a patent a decided case upon some 
 other specification will be of very little value. We do not 
 propose, therefore, to discuss at length the constructions which 
 have been placed upon specifications in particular cases. The 
 words " improvements .... in the manner hereinafter men- 
 tioned," followed by a claim concluding with the words, " as 
 above described," have been held to limit the claim to the 
 particular machine described in the specification or to the 
 particular method of carrying out the process and not to include 
 
 (aj) Haworth v. Hardcastle, 1 Web. 85 ; Lyon v. Goddard, 10 P. 0. R. 
 
 P. G. 484 ; Oxley v. Holden, 8 C. B., 133. 
 
 N. S. 666 ; Cropper w. Smith, 1 P. 0. R. (y) L. R., 2 App. Cas. 423, 437. 
 
 T. H 
 
98 THE LAW OF PATENTS, 
 
 the principle of the process or any other method than that 
 described of carrying it out (s). 
 
 In the case of Hills v. London Gaslight Co. (a), it was held, 
 that where the meaning of a document depends upon its terms 
 and not on matters of fact, dehors the document, the question 
 will be for the judge, even although the terms are technical or 
 scientific ; and where an ambiguity is raised by evidence, dehors 
 the document, which is plain upon the face of it, the ambiguity 
 being as to a term which imports one thing in a scientific sense, 
 and another in a commercial sense — Query, whether it is for the 
 judge or the jury. We should venture to say, that it would 
 undoubtedly be for the jury. The question not being one at all 
 as to the construction of the document, but being as a matter of 
 fact, did the writer of the specification use the scientific term 
 or the commercial term ? A specification is to be construed 
 with reference to the state of knowledge at the time it is 
 published {b). 
 
 In the construction of a specification, as in the construction of 
 any other document, the Court will read the whole and endeavour 
 to place an interpretation upon it which will be consistent with each 
 part (c), and further, the Court will even look at the provisional 
 specification for the purpose of ascertaining the real object of the 
 invention disclosed iu the complete ; " for the object of the 
 complete is to carry out in detail that which is more generally 
 expressed in the provisional specification {d)." 
 
 The claims in specifications frequently claim the invention in a 
 general manner with the words added " as herein described." 
 It has been held that the meaning of the words " as herein 
 described " is not limited where the invention is for a mode of 
 
 (z) Barber v. Grace, 1 Exch. 339 ; Nobel's Explosive Co. v. A^vderson, 11 
 
 The Plating Co. v. Farquharson, Griff. P. 0. R. 519, 523. 
 
 P. C. 187. {c) Newton v. Vaucher, 6 Exch. 864 ; 
 
 (a) 27 L. J., Exch. 60. Oxlcy v. Holden, 8 C. B., N. S. 666 ; 
 
 {b) Heath v. Unwin, 22 L. J., C. P. Lister v. Norton, 3 P. 0. R. 203 ; Edi- 
 
 7 ; The Badische Anilin und Soda son v. Woodhouse, 4 P. 0. R. 107 ; 
 
 Fabrik v. Levinstein, L. R., 12 App. Parkinson v. Simon, 11 P. 0. R. 493, 
 
 Cas. 710, 4 P. 0. R. 449 ; Ellington v. 507. 
 
 Clark, 5 P. 0. R. 325 ; British Dyna- (d) Per Lord Esher, M.R., in Parkin- 
 mite Co. V. Krcbs, Goodeves P. C. 91 ; son v. Simon, 11 P. 0. R. 503. 
 
THE COMPLETE SPECIFICATION. 99 
 
 construction or manufacture, and not for a particular method of 
 carrymg^uf the principle which is described in the specification. 
 In Betts V. Menzies (e) Mr. Justice Blackburn, giving his opinion 
 to the House of Lords, said, " I agree with what was said by Mr. 
 Justice Crompton in the Court below that, if a general claim for 
 the use of an invention were cut down and limited to the use of 
 the invention in the particular way j^ointed out by reason of the 
 words ' as herein described,' it will be a narrow rule of construc- 
 tion, generally working to the detriment of patentees, and, what 
 weighs more with me, generally giving an effect to specifications 
 difierent from what the persons drawing them intended or those 
 reading them understand," 
 
 Another rule of construction is that the Court must give an 
 eflfective meaning to every part of it, if it can. 
 
 Lord Esher, M.R., in Parkinson v. Simon said: "Now when 
 you find a patent with several claims in it, you must, if you can, 
 so construe those claims as to give an efi'ective meaning to each 
 of them. If there are several claims in the patent which are 
 identical with each other, then some of them have no effect at 
 all. It follows from the ordinary rule of construction that you 
 must construe the different claims so as to make them effective if 
 possible, to be different from each other in some respects, or else 
 they are not effective (./)." 
 
 When a specification has once received a judicial construction 
 the Court, in a subsequent action in respect of the same inven- 
 tion, will hold itself bound on that point by such previous 
 decision (g), but fresh evidence may be adduced at the second 
 action for the purpose of showing that that which before was not 
 regarded as an anticipation, is so in fact (h). 
 
 In Arkwright v. Nightingale (/), Lord Loughborough, in 
 charging the jury, said : " The clearness of the specification must 
 be according to the subject-matter of it ; it is addressed to the 
 
 (e) 10 H. L. 0. 140. Machine Co., 6 P. 0. R. 367, 370. 
 
 (/) Parkinson v. Simon, 11 P. 0. R. {h) Shaw v. Day, 11 P. 0. R. 189 ; 
 
 502. see also Edison v. Holland, 6 P. 0. R. 
 
 {g) Edison v. Holland, 6 P. 0. R. 243, 277. 
 
 243, 276 ; The Aictomatic Weighing (i) 1 Web. P. C. 61. 
 Machine Co. v. Combined Weighing 
 
 H 2 
 
100 THE LAW OF PATENTS. 
 
 persons in the profession having skill in the subject, not to men 
 of ignorance, and if it is understood by those whose business leads 
 them to be conversant in such subjects, it is intelligible." And 
 in Hornhlower v. Boulton (k), to which we have previously 
 referred, Mr. Justice Grose said : " If the specification be such 
 as to enable artists to adopt the invention and to make the 
 manufacture, it is sufficient." 
 
 In Harmar v. Playne (/), Lord Ellenborough graphically puts 
 it : " No sort of specification would probably enable a ploughman 
 utterly ignorant of the art to make a watch." But it is necessary 
 that the specification should be in such terms as to enable 
 persons of ordinary ability to understand it, and it will not be 
 sufficient to show that one individual of extraordinary ability or 
 of very exceptional technical knowledge is enabled to understand 
 the specification {m). In Neilson v. Harford («), Baron Parke 
 puts it to the jury : " You are not to ask yourselves the question 
 whether persons of great skill, a first-rate engineer, or a second- 
 class engineer, as described by Mr. Farey, whether they would do 
 it, because generally these persons are men of great science and 
 philosophical knowledge, and they would, upon a mere hint in 
 the specification, probably invent a machine which would answer 
 the purpose extremely well ; but that is not the description of 
 persons to whom this specification is supposed to be addressed : 
 it is supposed to be addressed to a practical workman, who brings 
 the ordinary degree of knowledge, and the ordinary capacity, to 
 the subject (o)." 
 
 Lord Justice Lindley, in Edison v. Holland^ said [p) : " In 
 complying with the first condition, i.e., in describing the nature 
 
 {k) Dav. P. C. 228. 568 ; Badische Anili/ii und Soda Fabrik 
 
 (I) Dav. P. C. 318. V. Levinstein, 4 P. 0. R. 449 ; L. R., 
 
 {m) Sturtz V. De La Rue, 5 Russ. 12 App. Cas. 710 ; Edison v. Wood- 
 
 327. Iiouse, 4 P. 0. R. 79 ; Bray v. Gardner, 
 
 (n) 1 Web. P. C. 314. 4 P. 0. R. 406 ; Afiller v. Scarle, 10 
 
 (&) See also Morgan v. Seaward, 2 P. 0. R. 111. 
 
 M. & W. 544 ; 1 "Web. P. C. 167 ; 6 (i?) 6 P. 0. R. 280 ; see also Ark- 
 
 L. J., Ex. 153; Gibson v. Brand, 1 ivright v. Nightingale,! ^Veh.'P.C. 60 ; 
 
 Web. P. C. 627 ; Wallington v. Dale, Beard v. Egerton, 8 C. B. 165, 206 ; 
 
 7 Exch. 888 ; 23 L. J., Exch. 49 ; Plimp- Otto v. Linford, 46 L. T., N. S. 35, 40. 
 
 ton V. Maholmson, L. R., 3 Ch. D. 
 
THE COMPLETE SPECIFICATION. 101 
 
 of his invention, the patentee does all that is necessary, if he 
 makes the nature of his invention plain to persons having a 
 reasonable competent knowledge of the subject, although from 
 want of skill they could not themselves practically carry out the 
 invention. In complying with the second condition, i.e., in 
 describing in what manner the invention is to be performed, the 
 patentee does all that is necessary if he makes it plain to persons 
 having reasonable skill in doing such things as have to be done 
 in order to work the patent, what they are to do in order to 
 perform his invention." 
 
 In the case of the Badische Anilin Fahrik v. Levinstein (q), 
 the patentee claimed, " First, the production of red and brown 
 colouring matters, which in chemical language may be termed 
 the sulpho acids of oxyazo-naphthaline by the action of the diazo 
 compounds, which may be prepared from naphthylamine or from 
 the sulpho acids of naphthylamine upon any of the isomeric 
 naphthols, or of mixtures of the same, or upon any of the sulpho 
 acids which may be prepared from either alpha naphthol or from 
 beta naphthol, or from mixtures of the same substantially by the 
 process above described." It appeared that the patent was 
 dated 1878 ; that there were two descriptions of naphthylamine, 
 one called alpha naphthylamine and the other beta naph- 
 thylamine ; that the substance alpha naphthylamine had been 
 known for a considerable period of time, but that beta naph- 
 thylamine had only been discovered in 1876 ; that at the date of 
 the patent beta naphthylamine was very little known and very 
 rare ; that up to the year 1880 it was only used in laboratory 
 experiments and that it was very costly ; and that until beta 
 naphthylamine was known, the alpha compound only was known 
 and was called naphthylamine. Objection, that it was not 
 stated what naphthylamine it was intended to be used. 
 Pearson, J., said (r) : "I come to the conclusion that the word 
 ' naphthylamine ' in the patent means that which was generally 
 known in the year 1878 as naphthylamine, namely, what is now 
 
 described as alpha naphthylamine although beta 
 
 naphthylamine was invented in 1876 and would at once be called 
 
 iq) L. R., 24 Oh. D. 156. (r) At p. 161. 
 
102 THE LAW OF PATENTS. 
 
 beta naphthylamine to distinguish it from the naphthylamine 
 which had been known for at least fifteen years before, it does 
 not follow that that naphthylamine would all of a sudden acquire 
 the name of alpha naphthylamine ; it would remain in all the 
 books printed up to that time as naphthylamine only, and I am 
 satisfied that at the date of the patent and subsequently to the 
 date of the patent any person ordering naphthylamine simply, 
 would have been supplied with the old naphthylamine, and 
 nobody would have thought of asking him whether he wanted 
 ' beta naphthylamine.' Under these circumstances I think it 
 would be improj)er to come to the conclusion that any naph- 
 thylamine was meant in this patent except that which was known 
 simply as ' naphthylamine,' that is, that which is now properly 
 described as ' alpha naphthylamine.' " 
 
 In the Court of Appeal (s), Baggallay, L.J., difi'ering from 
 Fry and Bowen, L.J J., said : "If the language of the specifica- 
 tion can be fairly construed, so as in the one case put, to support 
 the validity of the patent, if challenged on the ground that the 
 use of beta naphthylamine would lead to failure, and in the 
 other to protect the patentee against an infringement by the use 
 of that substance, it would be fatal to the plaintiff's case in the 
 present action whether the language had been adopted 2)€r 
 inciiriani or of set design. Though the term ' the literature ' has 
 been conveniently applied to the documentary evidence admitted 
 in the present case, it is clear that publications of this nature 
 must be regarded as of two classes — those addressed to the 
 scientific world, and those addressed to working or practical men, 
 a distinction which cannot, in my opinion, be more simply and 
 clearly illustrated than it was by Dr. Odling, who being asked by 
 Pearson, J., when the body, as alpha naphthylamine, but for- 
 merly known as naphthylamine without any prefix, first acquired 
 its present name, replied as follows : * My Lord, there are two 
 distinct forms of literature upon the subject. There is the 
 systematic scientific literature, and there is the technical literature, 
 and in the technical literature it is called naphthylamine up to 
 the present day, but in the more scientific literature you may 
 
 (s) L. I!., 29 Ch. D. 366, 379, 384. 
 
THE COMPLETE SPECIFICATION. 103 
 
 find the distinction although it is very rare.' The distinction 
 between the information given by scientific literature and that 
 given by technical literature is one very important to be borne in 
 mind when we are dealing with questions such as that now under 
 consideration. Publications having reference to chemical science 
 and intelligibly expressed will always be enquired after and 
 studied in their laboratories by scientific chemists, ever on the 
 alert to make themselves acquainted with the newest compounds, 
 with a view of putting them to some useful purpose ; but, speak- 
 ing generally, it is not the fact that such publications are sought 
 after and studied by practical working chemists, whose labours 
 for the most part commence after the useful purpose has been 
 ascertained." 
 
 In the House of Lords, Lord Herschell, upon the same point, 
 said (f), " I am satisfied that after 1875 and down to the time of 
 the patent, alpha naphthylamine was still sometimes spoken of as 
 * naphthylamine,' and that if anyone had ordered ' naph- 
 thylamine ' of a manufacturer, he would without hesitation have 
 supplied alpha naphthylamine. Under these circumstances, I 
 entertain no doubt that any reader of the specification would 
 understand by the word ' naphthylamine * occurring in it, the 
 known commercial article, which, until recently at all events, had 
 always borne that name, and not beta naphthylamine, to which 
 the term ' naphthylamine ' alone had never been applied. I am, 
 therefore, of opinion that the specification is not in this respect 
 open to the charge of ambiguity." 
 
 If in the process of the invention it is necessary to use some old 
 or well-known apparatus, it is not necessary in the specification 
 to describe the apparatus, save in such terms as it is generally 
 known by, in the particular business to which it belongs (if). 
 
 In Heath v. Unwin (x), Baron Alderson said : " Every specifi- 
 cation is to be read as if by persons acquainted with the 
 general facts of the mechanical or chemical sciences involved in 
 such invention ; thus, if a particular mechanical process is 
 specified, and there are for some parts of it, as specified, other 
 
 {t) L. R., 12 App. Cas., at p. 723. P. C. 676. 
 
 {u) Crossley v. Beverley, 3 C. & P. (x) 2 Web. P. C. 245 
 
 513 ; Househill Co. v. Ncilson, 1 Web. 
 
104 THE LAW OF PATENTS. 
 
 well-known mechanical equivalents, the specification in those 
 parts is in truth the specification of the well-known equivalent 
 also, to those to whose general knowledge we refer : viz., 
 mechanics and readers of specifications ; and so it is with chemical 
 equivalents also, in a specification which is to be read by chemists. 
 But it may be that there are equivalents, mechanical and 
 chemical, existing, but previously unknown to ordinary skilful 
 mechanics and chemists. These are not included in the specifica- 
 tion, but must be expressly stated there." 
 
 An error in a specification which may be said, in a sense, to be 
 a technical error, will not vitiate a specification, although it be an 
 error in description, provided it be such an error that an ordinary 
 skilled workman would at once observe and be in a position to 
 correct ; provided it is not such an error as would require experi- 
 ments to show that it was an error {y). 
 
 In Edison and Swan Electric Light Co. v. Woodhouse (s), 
 Lindley, L.J. said : " Tbe next objection that requires notice is, 
 that it is contended that the evidence shows that it is essential to 
 success to increase the temperature gradually, and that the 
 specification is insufficient because it does not point this out. 
 Now the evidence certainly shows that the maintenance of a high 
 temperature is that which distinguishes Cheesebrough's process 
 from Despretz's experiment, and although Professor Dewar points 
 out the importance of a gradually increasing current, neither he 
 nor any other witness says that the temperature ought to be low 
 to begin with, and be gradually raised. Their evidence only 
 comes to this : that the temperature must be kept up and the 
 electric current must be increased, or the temperature will fall. 
 But the patentee Jiimself tells you this. He says that the 
 temperature must be as high as 7,000° F., and the sentence in 
 the specification, ' as the carbon increases in size more current is 
 required to maintain the temperature,' is shown by the evidence 
 
 {)j) Per Lord Westbury, Simpson v. 4 P. 0. R. 467; Miller v. Clyde Bridge 
 
 HoViduy, 13 W. £. 578 ; see also R. v. Steel Co., 8 P. 0. R. 201 ; Hopkinson v. 
 
 Mctcalf, 2 Stark. R. 249 ; Bainhridge v. St. James & Pall Mall Electric Light 
 
 Wigley, ParL Rep. 197 ; Morgan v. Co., 10 P. 0. R. 61 ; Miller v. Sca/rle, 
 
 Seaward, 1 Web. P. C. 174 ; Otto v. Lin- 10 P. 0. R. 106, 111. 
 
 ford, 46 L. T., N. S. 40 ; Badischc (z) Griff. P. C. at p. 95. 
 Anilin und Soda Fahrik v. Levinstein, 
 
THE COMPLETE SPECIFICATION. 105 
 
 to be useless, and an obvious truism to those who understand the 
 subject, unless the sentence is understood to be a direction to keep 
 up the temperature ; and when we find that in fact no difficulty 
 is experienced by reason of defective instructions on this point, 
 the Court cannot hold as a matter of law that the specification is 
 not sufficiently explicit. If the defendants had shown that the 
 directions as to temperature were not practically sufficient to 
 enable a competent person to make the patented articles, the case 
 would be very different ; but they have not attempted to do this ; 
 they rely on the words used, and on the evidence as to tempera- 
 ture already alluded to. This, in our opinion, is not sufficient 
 for their purpose. If the language of a specification is clear 
 enough to guide a competent workman, and enable him to obtain 
 the desired result, we cannot see how a Court can hold the 
 language insufficient in point of law. No doubt it is for the 
 Court and not for a workman to construe the specification ; but 
 if a workman says it is a sufficient guide to him, and the Court 
 believes him, the Court must hold that, as regards clearness of 
 description, the specification is in point of law sufficient." 
 
 In PUmj)ton v. Makohnson (a), Sir George Jessel said : " It is 
 plain that the specification of a patent is not addressed to people 
 who are ignorant of the subject-matter. It is addressed to people 
 who know something about it ; but there are various kinds of 
 people who know something about it, if it is a mechanical 
 invention, as this is ; you have, first of all, scientific mechanicians 
 of the first class, eminent engineers ; then you have scientific 
 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 manu- 
 factories of complicated and unusual machines, and who there- 
 fore must have made the subject a matter of very 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 and still more from 
 
 {a) L. R., 3 Ch. D. 568. 
 
106 THE LAW OF PATENTS. 
 
 imperfect description, and would be able to supplement so as to 
 succeed even from a defective description, and, even more than 
 that, would be able to correct an erroneous description — that is 
 what I would say of the two first classes, which I would call 
 the scientific classes. The other class consists of the ordinary- 
 workman, using that amount of skill and intelligence which is 
 fairly to be expected from him, not a careless man, but a careful 
 man, though not possessing that great scientific knowledge or 
 power of invention which would enable him by himself unaided 
 to supplement a defective description or correct an erroneous 
 description. Now, as I understand it, to be a good specification 
 it must be intelligible to the third class I have mentioned, and 
 that is the result of the law." This judgment very precisely lays 
 down the law upon the subject of intelligibility generally. 
 
 The next question, as to what is a sufficient specification, is by 
 far the most important branch of the subject. 
 
 We have seen that part of the consideration for the grant of 
 letters patent is, that the inventor shall particularly describe and 
 ascertain the nature of his invention, and in what manner it is to 
 be performed ; consequently for a specification to be sufiicient it 
 must particularly ascertain — (1) "What the invention itself is ; 
 (2) How the invention is to be carried out. Under the first head 
 the inventor must describe exactly and accurately what he has 
 invented, and if in the course of the description of his invention 
 it should be necessary for him to describe something which is old 
 but which he wishes to use in the process of his invention, he 
 must be careful to say, " This is old and I do not claim it as a 
 part of my invention." There are two reasons why the inventor 
 should be called upon to particularly state what he has invented ; 
 one is, that the public may be placed in a position to use the 
 invention so soon as the period of protection has elapsed ; and 
 the other is, that the public may be protected by being carefully 
 informed what it is that during the period of protection they are 
 not to use. In Macfarlane v. Price (b), Lord Ellenborough 
 said: "The patentee in his specification ought to inform the 
 person who consults it what is new and what is old ; he should 
 
 (/j) 1 Web. P. C. 74. 
 
THE COMPLETE SPECIFICATION. 107 
 
 say, * my improvement consists in this . . . .' A person ought 
 to be warned by the specification against the use of the particular 
 invention, but it would exceed the wit of man to discover from 
 what he is warned in a case like this." And the same judge, in 
 Harmar v. Playne (c), maintained the same opinion. 
 
 In the case of Holmes v. London and North- Western Rail- 
 way [d), A. obtained a patent for an improved turning-table for 
 railway purposes, and in his specification gave a description of 
 the machinery, of which no part was new except certain suspend- 
 ing rods ; the combination, however, was both new and useful. 
 In the specification the patentee claimed as his invention " An 
 improved turning table hereinbefore described, such my invention 
 being, to the best of my knowledge and belief, entirely new." 
 It was held, that no construction of the claim could be put upon 
 it as including a combination of the various parts which were old, 
 but that it must be construed as meaning that the patentee claimed 
 the several parts of the invention as being new, and the combina- 
 tion being the only part which was new, the patent was held void. 
 
 Where a patent is for a combination of old or new parts, or for 
 an improved arrangement of old mechanism, the specification 
 need not discriminate between the new and old parts of such 
 combination or improved apparatus {e) unless any of those sub- 
 ordinate parts are specifically claimed (/). Since it is the new 
 combination or improvement alone that constitutes the novelty 
 and merit of the invention, but it is necessary for the patentee to 
 particularly ascertain and define what his improvement consists 
 of, or what are the exact parts of his new combination, so that 
 any person of ordinary knowledge of the subject may be able at 
 once, on reading the specification, to perceive the invention and 
 the manner in which it is to be performed. 
 
 In Foxwell v. Bostock (g), Lord Westbury, L.C., said : " I 
 must therefore lay down the rule, which is consistent with and in 
 
 (c) Dav. p. G. 311 ; see also Carpenter Kelly v. Hcathman, 7 P. 0. R. 348. 
 
 V. Smith, 1 Web. P. C. 532 ; Tetley v. (/ ) Lister v. Leather, 8 El. & Bl. 
 
 Easton, 2 E. & B. 968. 1004 ; Uarrisoii v. Anderston Foundry 
 
 {d) 22 L. J., C. P. 57. Co., L. R., 1 App. Gas. 578 ; BowcUffe 
 
 (e) Kaye v. ChiM, 5 P. 0. R. 649 ; v. Morris, 3 P. 0. R. 23. 
 
 Watling v. Stevens, 3 P. 0. R. 41 ; {g) 4 De G. J. & S. 298, 313 ; see 
 
 Moore V. Bennett, 1 P. 0. R. 129, 143 ; also Roweliffc v. Morris, 3 P. 0. R. 23. 
 
108 THE LAW OF PATENTS. 
 
 reality a mere sequence from the decided cases, that in a patent 
 for an improved arrangement or new combination of machinery, 
 the specification must describe the improvement and define the 
 novelty otherwise, and in a more specific form than by the 
 general description of the entire machine ; it must, to use a 
 logical phrase, assign the differentia of the new combination." 
 
 Sir AV. M. James, Y.C., while commenting upon this case in 
 his judgment in Parkes v. Stevens {//), said : " It is obvious that 
 a patentee does not comply, as he ought to do, with the condition 
 of his grant if the improvement is only to be found, like a piece 
 of gold, mixed up with a great quantity of alloy." 
 
 The degree of sufficiency which is required by the law is very 
 aptly and accurately put by Eyre, C.J., in Boulton v. Bull{i) : 
 "Suppose a newly-invented chemical process and the specifica- 
 tion should direct that some particular chemical substance 
 should be poured upon gold in a state of fusion, it would be 
 necessary that, in order to carry out this operation, the gold 
 should be put in a crucible, and should be melted in that crucible, 
 but it would be hardly necessary to state in the specification the 
 manner in which, or the utensils with which, the operation of 
 putting gold in a state of fusion was to be performed. These are 
 mere incidents, with which every man acquainted with the 
 subject is familiar." In taking this distinction as a guide, 
 however, we must be careful to remember that could it be shown 
 that the chemical process would only be successful when the gold 
 was melted in a particular kind of crucible, or at a particular 
 temperature, that then, unless the description was given of the 
 temperature and of the crucible, the specification would be in- 
 sufficient. 
 
 In Turner v. Winter {k), Ashurst, J., said : " It is in- 
 cumbent on the patentee to give a specification of the invention 
 in the clearest and most unequivocal terms of which the subject 
 is capable. A.nd if it appear that there is any unnecessary 
 
 (h) L. R., 8 Eq. 365 ; see also (i) 2 H. Bl. 498 ; see also Badische 
 
 Harrison v. Aiidcrston Foundry Co., Ayiili/n mid Soda Fabrik v. Levinstein, 
 
 L. R., 1 App. Gas. 574, 578 ; Moore v. 4 P. 0. R. 469. 
 
 Bennett, 1 P. 0. R. 129, 143 ; Philpot (k) 1 Web. P. C. 80 ; see also Oibson 
 
 V. Eanhury, 2 P. 0. R. 33. v. Brand, 1 Web. P. C. 627. 
 
THE COMPLETE SPECIFICATION. 109 
 
 ambiguity affectedly introduced into the specification, or any- 
 thing which tends to mislead the public, in that case the patent 
 is void." 
 
 If a patentee suppresses anything, or if he misleads, or if he 
 does not communicate all he knows, his specification is bad. 
 
 In Crompton v. Ibbotson (l), the specification stated: "My 
 invention consists in conducting paper by means of a cloth against 
 a heated cylinder, which cloth may be of an// suitable material, 
 but I prefer it to be made of linen warp and woollen weft." It 
 appeared that the plaintiff had tried several things but was 
 unable to discover anything that would answer the purpose with 
 the exception of the material which he said " he preferred." Lord 
 Tenterden held that the specification was misleading, and there- 
 fore bad. 
 
 Jessel, M.R., in Plimpton v. Malcolmson {m) , said: "You 
 must not give people mechanical problems and call them specifi- 
 cations." 
 
 In E. V. Wheeler {n), Abbott, C.J., said: "A specification 
 which casts upon the public the expense and labour of ex- 
 periment and trial is undoubtedly bad." 
 
 But where the ambiguity is of such a character that it would 
 be cleared up by a workman of ordinary ability and information 
 in his trade, such ambiguity will not avoid the patent (o). 
 
 Lindley, L.J., in Edison v. Holland {pi), in his judgment 
 in the Court of Appeal, said : "I feel the great difficulty of 
 
 {I) D. k L. 33 ; see also Savory v. und Soda Fahrik v. Levinstein, 4 
 Price, 1 Web. P. C. 83 ; Lewis v. Marl- P. 0. R. 463 ; Thomson v. Batty, 6 
 ng, 1 Web. P. C. 493 ; Hastings v. P. 0. R. 84, 97 ; Lifeboat Co. v. Cham- 
 Brown, 22 L. J., Q. B. 161 ; Wegmann bers, 8 P. 0. R. 421 ; Miller v. Clyde 
 V. Corcoran, L. R., 13 Ch. D. 65. Bridge Steel Co., 8 P. 0. R. 201 ; ffop- 
 
 {m) L. R., 3 Cli. D. 576. kinson v. Pall Mall Electric Light Co., 
 
 [n) 2 B. & Aid. 354 ; see also Stevens 10 P. 0. R. 61 ; Miller v. Scarle, 
 
 V. Keating, 2 Exch. R. 778 ; British 10 P. 0. R. 111. 
 
 Dynamite Co. v. Krebs, Good. P. C. 90 ; {p) Q P. 0. R. 282 ; see also Macna- 
 
 Wegmann v. Corcora^i, L. R., 13 mara v. Hulse, 2 Web. P. C. 128, n. ; 
 
 Ch. D. 65. Otto V. Linford, 46 L. T., N. S. 35; 
 
 (o) Morgans. Seaward, 1 Web. P. C. Simpson v. Holliday, L. R., 1 H. L. 
 
 176; British Dynamite Co. v. Krebs, 315; Plimp)to7i v. Malcolmson, L. R., 
 
 Good. P. C. 93 ; Edison v. Woodhouse, 3 Ch. D. 531. 
 4 P. 0. R. 107, 108 ; Badische Anilin 
 
110 THE LAW OF PATENTS. 
 
 describing in words the distinction between an amount of 
 practice, without which failure is probable, but the necessity for 
 which does not destroy a patent, and an amount of experiment 
 and invention without which failure is certain, and the necessity 
 for which destroys a patent. The test, however, by which to 
 decide such a question is, I think, to be found by asking whether 
 anything new has to be found out by a person of reasonably 
 competent skill, in order to succeed, if he follows the directions 
 contained in the specification. If yes, the patent is bad ; if no, 
 it is good so far as this point is concerned." 
 
 There is a head note to the case of Betts v. Neilson (q), which 
 is apt to mislead ; it runs as follows : " Whether a specification 
 contains a sufficient description can only be ascertained by 
 experiments, and in making an experiment knowledge and 
 means may be employed which have been acquired since the 
 date of the patent." It is evident that this head-note is 
 incorrect, and if the case be read it will be found that the judg- 
 ment of Lord Chelmsford was, not that the specification of the 
 plaintifi" could be held sufficient or insufficient upon experiments 
 tried on the specification itself, with the assistance of subsequently- 
 acquired knowledge, but that the specification, which was alleged 
 to anticipate the plaintiff's patent, might be read for the purpose 
 of determining whether there was anticipation or not, or whether 
 there had been prior publication or not in the light of knowledge 
 acquired by the general public since the date of the specification. 
 This would be undoubtedly correct, because the question always 
 is, in dealing with matters of prior publication. Was the supposed 
 invention of the plaintiff's, at the time when he obtained his 
 patent, already part of the public stock of knowledge or not ? 
 The public stock of knowledge consisted of the specification, 
 which is put forth as anticipating the patent, together with all 
 knowledge on the subject which can be proved to have been 
 published or used prior to the date of the plaintiff's patent, and 
 so in reading a specification with a view to ascertaining whether 
 it anticipates a subsequent patent you must read into that specifi- 
 cation all subsequently-acquired knowledge of the subject prior 
 
 iq) L. R., 3 Ch. 429. 
 
THE COMPLETE SPECIFICATION. Ill 
 
 to the date of the patent ; but in discussing the sufficiency of the 
 specification which is actually in dispute, you cannot make use of 
 information which has been acquired since the publication, for 
 otherwise it would be held that the patent, which was void at 
 first for insufficiency of specification, might become valid at some 
 subsequent date by further discovery, which is obviously absurd. 
 
 So if a patentee says that there are many modes of doing a 
 thing, when, in fact, only one will do, this will also avoid the 
 patent (r), though the distinction must be noted between a claim 
 of something useless and a merely false and inaccurate description 
 of a method, which will not always avoid a patent. In Lewis v. 
 Marling, Lord Tenterden said : " I agree that if the patentee 
 mentioned that as an essential ingredient in the patent article, 
 which is not so, nor even useful, and whereby he misleads the 
 public, his patent may be void ; but it would be very hard to say 
 that this patent should be void because the plaintiffs claim to be 
 the inventors of a certain part of the machine not described as 
 essential, and which turns out not to be useful" (s). 
 
 The object of the patent is to benefit the world, and not to 
 obstruct a subsequent invention ; consequently, if the specification 
 is worded in such a manner as to grasp at more than the patentee 
 has actually invented, and to endeavour to cover, so to speak, 
 wholesale problematic inventions, the patent wiU be void (t). 
 
 The question of the sufficiency of a specification is one which 
 must be dealt with on each particular case as it arises ; a single 
 word added to a specification may make that which was insuffi- 
 cient sufficient, and that which would be a sufficient description 
 of one invention would be found to be an insufficient description 
 of another, consequently there can be no absolutely fixed rules of 
 construction in dealing with specifications. 
 
 In Wegmann v. Corcoran {ii) it was held that the specification 
 of a patent was bad if one of the materials to be used was 
 
 (r) Per Bailey, J., in Lewis v, Ciotler, 14 Q. B. 372, n. ; Macr. P. 0, 
 
 Marling, 1 Web. P. C. 496 ; see 124 ; Neilson v. Harford, 8 M. & W. 
 
 also Beard V. Egerton, 19 L. J,, C. P. 806 ; 1 Web. P. C. 295, 313, 371. 
 
 40 ; Kurtz v. Spence, 5 P. 0. R. 184 ; {t) Crosslcy v. Potter, Macr. P. C. 
 
 Pether v. Shaw, 10 P. 0. R. 297. 245. 
 
 (s) 10 B. & C. 25 ; see also R. v. (m) L. R., 13 Cli. D. 65. 
 
112 THE LAW OF PATENTS. 
 
 described by a generic comprising a variety of species, tbe 
 majority of which would be unsuitable. The specification of 
 a patent is bad if a skilled mechanic would not, without perform- 
 ing a series of experiments, be able to construct the machine 
 from the description. 
 
 The specification (.r) of a machine for crushing meal, described 
 the rollers as " to have a surface consisting of material containing 
 so much silica as not to colour the meal or flour. I prefer to 
 make them of iron, coated with china, and finally turned with 
 diamond tools ; " and the claim was, inter alia, for the use of 
 material " of the hardness required." It appeared that the 
 rollers must be made of very hard china, such as had scarcely 
 been made in Europe during this century, and specially tough, 
 and must be fixed in a peculiar manner to an iron core or spindle, 
 M'hich carried them ; and, according to the evidence, a miller or 
 a skilled mechanic would not, without making a series of experi- 
 ments, discover of what china the rollers must be made, or how 
 they must be fixed to the spindle. Held by the Court of Appeal, 
 confirming the judgment of Fry, J., that the specification was 
 insufficient and the patent invalid. Fry, J., had said : 
 "Though the grantee of a patent for an invention communicated 
 to him by a foreign resident abroad is only bound to tell the 
 public what he himself knows, yet if the original inventor has 
 not told him enough to enable him so to describe the invention 
 as that it could be constructed by the aid only of the specification, 
 the patent will be invalid. 
 
 It will be seen that the last- mentioned case is distinguishable 
 from the case of Plimpton v. Malcolmson {y). There the question 
 was whether the patentee, having disclosed a useful invention, 
 was bound to disclose something more, which he himself did not 
 know, but which was within the knowledge of the person 
 communicating from abroad ; in that case it was properly held 
 that he was not so bound, but it is obvious that he was bound to 
 describe an invention in his specification which of itself was use- 
 ful, and that he was bound to tell all that he himself knew, and 
 to give a sufficient description to work the invention. 
 
 (x) Wegmann v Corcoran, siipia. ment of Jessel, M.R., at p. 582. 
 
 (y) L. R., 3 Ch. D. 531. JuJg- 
 
THE COMPLETE SPECIFICATION. 113 
 
 We have seen that bona fides in the description of thuiuvention 
 is one of the essential elements of the consideration for the grant. 
 The patentee must say not only that which is sufficient to carry 
 out the invention, hut he must say all he knows, and he must 
 give every improvement which is within his knowledge at the 
 time and which assists the process or manufacture. Wood v. 
 Zimmer (s), decided so far back as 1815, gives a very clear idea 
 of the law upon this branch of the subject. In this action to try 
 the validity of Zinck's patent " for a method of making verdigris," 
 it appeared that the method described in the specification was 
 sufficient to make verdigris, but that Zinck had been accustomed, 
 clandestinely, to put aquafortis into the boiler, whereby the 
 metallic copper was dissolved more rapidly, but the verdigris 
 produced was neither better nor cheaper than that made according 
 to the specification. Gibbs, C. J., said : "It is said that the 
 method described makes verdigris, and that the specification is 
 therefore sufficient — the law is not so. A man who applies for a 
 patent, and possesses a mode of carrying out that invention in 
 the most beneficial manner, must disclose the means of producing 
 it in equal perfection and with as little expense and labour as it 
 costs the inventor himself. The price that he pays for his patent 
 is, that he will enable the public, at the expiration of his privi- 
 lege, to make it in the same way and with the same advantages. 
 If anything that gives an advantageous operation to the thing 
 invented be concealed, the specification is void. Now, though 
 the specification should enable a person to make verdigris 
 substantially as good without the aquafortis as with it, still, 
 inasmuch as it would be made with more labour by the omission 
 of aquafortis, it is prejudicial concealment and a breach of the 
 terms which the patentee makes with the public." 
 
 In this case it must have been proved that the patentee, at the 
 time when he obtained his letters patent and filed his specifica- 
 tion, knew of the benefit to be derived by the use of aquafortis. 
 It is evident that if he did not know it at the time, but discovered 
 it subsequently during the currency of the patent, that then it 
 would form an improvement upon his invention, and not one 
 
 {%) 1 Web. P. C. 82, n. 
 T. I 
 
114 THE LAW OF PATENTS. 
 
 which he could possibly have disclosed at the time he filed his 
 specification, and therefore there would be no mala fides on his 
 part in not describing it. 
 
 The remarks of Gibbs, C.J., in BoviU v. Moore {a), go to the 
 same extent; and in Crosslei/ v. Beverley {h), Bailey, J., said: 
 " It is the duty of the inventor if, between the period of taking 
 out the patent and enrolling the specification, he makes dis- 
 coveries which will enable him better to efi'ect the thing for 
 which the patent was obtained, not only that he is at liberty to 
 introduce them into his patent, but that it is his bounden duty so 
 to do, and it is not sufficient for him to communicate to the 
 public the knowledge which he had at the time he obtained the 
 patent, but he ought to communicate to the public the knowledge 
 he had obtained before the specification." In Morgan v. Seaivard (c), 
 Alderson, B., said : " If the patentee is acquainted with any 
 particular mode by which his invention may be most con- 
 veniently carried into efi'ect he ought to state it in his specifi- 
 cation : that was laid down in a case before Lord Mansfield ; 
 there the question arose on a patent for steel trusses. It appeared 
 that the patentee in some parts of his process used tallow to 
 facilitate the invention for which he had obtained a patent, and 
 in his specification he made no mention of the use of tallow. 
 The court held the specification to be bad, because they said: 
 * You ought not to put people to find out that tallow is useful in 
 carrying into efiect the invention of steel trusses. You ought to 
 tell the public so if that is the best mode of doing it, for you are 
 bound to make a bona fides full and candid disclosure.' " The 
 case referred to by the learned judge was the case of Liardet v. 
 Johnson (d). 
 
 In The Badische Anilin und Soda Fabrik v. Levenstein the 
 patentee in his specification described four processes whereby he 
 could produce sulpho-acids of oxyazo-naphthalinc applicable to 
 dveing and printing, varying in colour from brown to red. AU 
 these processes he claimed, although only one of them was proved 
 
 (a) Dav. r. C. 400. Siurtz v. De la Rue, 5 Russ. 322; 
 
 {h) 1 Web. P. C. 117. Coles v. Baylis, 3 P. 0. R. 180. 
 
 (c1 1 Web. P. C. 174 ; see also (rf) 1 Web. P. C. 53 ; and Bull, 
 
 Turner v. Wirvler, 1 Web. P. C. 81 ; N. P. 78. 
 
THE COMPLETE SPECIFICATION. 115 
 
 to have any practical value, and it was argued that the patent 
 was bad on the ground that no specific directions were disclosed 
 how to produce that particular shade of colour ; it was held by 
 the House of Lords, reversing the decision of the Court of 
 Appeal, that to require such discrimination was to insist upon 
 what was really impracticable ; for, in the words of Lord 
 Halsbury, L. C, " Upon the principle contended for, each shade 
 must not only be shown, but its excellence or popularity must be 
 distinguished separately by the patentee. This, as it appears to 
 me, reduces the obligation supposed to press upon the patentee to 
 an absurdity" (e). 
 
 In Tetk?/ V. Easton {/) Pollock, C. B., said : " A man has no 
 right to patent a principle and then give to the public the 
 humblest instrument that can be made from his principle, and 
 reserve to himself all the better part of it ; " and in Heath v. 
 Umvin (g) Coleridge, C. J., said : " If the inventor of an alleged 
 discovery, knowing two equivalent agents for efi'ecting the end, 
 could, by the disclosure of one, preclude the public from the 
 benefit of the other, he might, for his own profit, force upon the 
 public an expensive and difficult process, keeping back the 
 simple and cheap one, it would be directly contrary to the good 
 faith required from a patentee in his communication to the 
 public." 
 
 Upon the same ground of mala fides it has been held, in a large 
 number of cases, that if the patentee in his specification gives 
 details which are not necessary to the invention, which of them- 
 selves do not constitute an invention, and which are merely put 
 in for the purpose of misleading the public as to either what is the 
 nature of the invention or how it is to be carried into eff'ect, then 
 the patent will be void. Bailey, C.J., in Lewis v. Marling {h), 
 said : " If the party knew that it was unnecessary the patent 
 would be bad, on the ground that this was deception ; but if he 
 thought it was proper, and only by a subsequent discovery finds 
 out it is not necessar}^ I think that it forms no ground of 
 objection." 
 
 (c) 4 P. 0. R. 464 ; L. E. 12 App. (/) Mac. P. C. 76. 
 
 Cas. 716 ; Otto v. Linford, 46 L. T., {g) 2 Web. P. C. 243. 
 
 N. S. 35 ; Thomson v. Batty, 6 P. 0. R. {h) 1 Web. P. C. 496. 
 97. 
 
 I 2 
 
116 THE LAW OF PATENTS. 
 
 If the extraneous matter is put into the specification, bond fide 
 thinking that it was necessary, the patent will not be held to be 
 void ; if it was put in mold fide, with the intention of deceiving, 
 or knowing it was extraneous and useless, the patent would be 
 void. If the extraneous matter is in itself misleading, and 
 would prevent a skilled workman from successfully carrying out 
 the invention, whether it is put in iiuila fide or bond fide, the 
 patent will be void (/). It will be seen that in the latter case the 
 specification is insufficient, and in the former two cases the 
 question is one simply of bona fides on the part of the 
 inventor [k). 
 
 We now come to that portion of the specification which is 
 described as " the claim." By sect. 5, sub-sect. 5, of the Act of 
 1888, it is provided that " a speeifi'catioii, ichether 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!^ This is, perhaps, emphasizing, in a more distinct 
 manner than had been provided before the passing of this Act, 
 the necessity of the inventor making a distinct and unambiguous 
 claim. He must not claim too much, and yet he must claim 
 sufiB.cient to show a useful manufacture, and he must distinguish 
 in his claim what it is that is new in the process which he has 
 described and what is old. So far as this goes, there is no doubt 
 that the old law provided for similar declarations on the part of 
 the inventor. 
 
 In Bovill V. Moore if), Gibbs, C.J., said : "If the plaintiff 
 has in this specification asserted to himself a larger extent of 
 invention than belongs to him, if he states himself to have 
 invented that which was well known before, then the specifi- 
 cation will be bad, because that will affect to give him, through 
 the means of this patent, a larger privilege than could be legally 
 given to him." In the case of Gibson v. Brand {m), Tindall, G.J., 
 
 (i) Savory v. Price, Ry. & M, 1 ; 1 218 ; Neilson v. Harford, 8 M. & W. 
 
 Web. P. C, 83 ; Turner v. Winter, 1 806. 
 
 Web. P. C. 77 ; 1 T. R. 602. {I) Dav. P. C. 404. 
 
 {k) SimpnoH V. HoUidaij, 20 New- (m) 1 "Web. P. C. 634 ; see also 
 
 ton's Journal, N. S. 108. Cruvtptonv. Minter v. Mower, 6 A. & E. 735, 1 
 
 Ihhotsoii, 1 Web. P. C. 83 ; Dan. & L. Web. P. C. 138. 
 33 ; Bickford v. Hkewes, 1 Web. P. C. 
 
THE COMPLETE SPECIFTCATrON. Il7 
 
 said : " Looking at the specification in the case, it appears to me 
 that this patent cannot be supported at law, because the plaintiffs 
 have in the course of it claimed more than they are entitled 
 to." 
 
 The Court must be taken to distinguish between describing too 
 much and claiming too much. In the course of a well-drawn 
 specification it is frequently necessary to describe something which 
 is old, and if, provided the claim says that the old parts do not 
 constitute a portion of the invention, the description of the old 
 parts in the specification will not invalidate the patent. But if 
 two methods of doing a thing are described, one of which will 
 answer and the other will not, it will be interpreted, unless one 
 of them is specifically disclaimed, that both parts are claimed as 
 being new and useful, and one of them not being useful the 
 patent will be invalidated, because it is said there is a false 
 suggestion in the specification («). In Rushton v. Crawley {o), 
 Malins, V.-C, said : "The public must be told in very distinct 
 language in every specification what are the articles they may 
 use and what they may not use. Therefore, if a man makes a 
 discovery, and instead of limiting himself in his specification to 
 that which properly is a discovery (if it be one), makes his 
 specification too extensive, and claims more than he is entitled to 
 claim, that is calculated to embarrass the public ; that is, I 
 apprehend, a fatal objection to the patent." 
 
 In reading specifications, one frequently comes across a claim 
 in these words: " I claim as my invention the appliances and 
 combinations hereinbefore described." This claim is perfectly 
 good ( p) , provided there is nothing described in the patent 
 which is old. If there be anything old, the claim should 
 proceed : " I do not claim so-and-so, and so-and-so, as part of 
 my invention." 
 
 The object of the claim is to crystallize the invention as 
 described in the specification into one or more clauses, so as to 
 render it quite clear what is and what is not the object of the 
 patent. In Kai/ v. Ilarshall (q), Lord Cottenham, L.C., said : 
 
 {n) Simpson v. Holliday, 13 W. R. (o) L. R., 10 Eq. 527. 
 
 578; L. R., 1 H. L. 315, per Lord [p) Seed v. Higgins, 8 H. L. C. 650. 
 
 Westbury, affirmed in House of Lords. {q) 2 Web. P. C. 39 ; sea also 
 
118 THE LAW OF PATENTS. 
 
 "It is introduced (particularly in the case of a patent for an 
 improvement) lest the patentee should have inadvertently 
 described something which is not new, in order to render his 
 description of the improvement intelligible. The claim is not 
 intended to aid the description, but to ascertain the extent of 
 what is claimed as new." 
 
 If the invention be for an improvement upon an old process 
 very great care should be taken that the improvement alone is 
 made the subject of the claim ; so if it be for a combination of 
 well-known parts, care must be taken that it be clearly shown 
 that the patentee claims the combination, and not the parts. 
 James, Y.-C, in Parkes v. Stephens (r), said : " It is obvious 
 that a patentee does not comply as he ought to do with the 
 condition of his grant if the improvement is only to be found, 
 like a piece of gold, mixed up with a great quantity of alloy. 
 And if a person desiring to find out what was new would have to 
 get rid of a large portion of the specification, by eliminating from 
 it all that was old and commonplace, all that was the subject of 
 other patents, or of other improvements, bringing to the subject 
 not only the knowledge of an ordinary skilled artizan, but of a 
 patent lawyer or agent." 
 
 In Gandy v. Reddaioay (s), the claim was " constructing belts 
 or bands for driving machiuery of cotton canvas or duck ' woven 
 hard ' and stitched and saturated or soaked with oil, such as 
 linseed oil or any combination thereof, as herein described or set 
 forth, or any modification thereof." It was proved that cotton 
 canvas woven hard was in the trade divided into classes numbered 
 1 — 10. Of these, only 2, 3, and 4, would practically answer to 
 carry out the invention ; anyone attempting to use the other 
 numbers would fail ; certain numbers would crack if used on 
 small pulleys. Mr. Justice Pearson dismissed the action and was 
 afiirmed by the Court of Appeal on the ground that the claim 
 was too largo. And where a patent is taken out for a combina- 
 tion, it is not material to its validity that the specification should 
 point out what parts are old and what are new, though, if an 
 
 Plimpton V. Spillcr, L. R., 6 Ch. D. Miller, 2 P. 0. R. 155, 159. 
 
 426 ; Haste rbrook v. Greed Western (r) L. R., 8 Eq. 365. 
 
 Railway Co., 2 P. 0. R. 208 ; Lucas v. (s) 2 P. 0. R. 49 ; Griff. P. C. 101. 
 
THE COMPLETE SPECIFICATION. 119 
 
 alleged infringement consists only in taking part of the combina- 
 tion, it is necessary tliat the patentee should in his specification 
 have claimed the part so taken as new (t). If the whole com- 
 bination constitutes the novelty of the invention the whole com- 
 bination alone should be claimed, and subject to the substitution 
 of equivalents and evasion, there will be no infringement unless 
 the whole combination is taken ; but if there is merit and noreltij 
 in subordinate integers or subordinate combinations they should bo 
 specially claimed, otherwise there will be no infringement in 
 taking them. But in the case where there is novelti/ in the result 
 of using the whole combination, and only the whole combination 
 is claimed, then the Court will protect the patentee from infringe- 
 ment by taking the essence of the combination. Proctor v. 
 Bennis (supra). 
 
 In Harrison v. The Anderston Foundry Co. (u), it was finally 
 held by the House of Lords that if the combination and applica- 
 tion of old machinery be new and beneficial the invention of this 
 combination may be protected by a patent. The specification 
 commenced : " The invention consists of a new or improved 
 simple and most efficient mode of and arrangement of mechanism 
 for connecting the set or sets of compound or multiple shuttle - 
 boxes of looms for weaving stripe, check or other ornamental or 
 figured fabrics requiring two, three or more shuttle-boxes in each 
 set." The specification then described in detail and by reference 
 to drawings the arrangement of mechanism in question, and then 
 continued : *' What we beheve to be novel and original, and 
 therefore claim as the invention secured to us by letters patent, 
 is — (1) The construction and arrangement of the parts and 
 portion of the mechanism, and (2) a shuttle-box moving and 
 holding mechanism as herein distinguished generally for actuat- 
 ing the shuttle-boxes of power- looms, all substantially in the new 
 or improved manner herein described and shown in the drawings 
 or any mere modification thereof." A great number of the parts 
 of the machine were admittedly old, and one of the questions in 
 this case was, whether the first claim above set forth was a 
 sufficient claim to a combination. Lord Cairns, in giving judg- 
 es Proctor V. Bennis, 36 Ch. D. {u) L. R. ; 1 App. Gas. 574, 
 
 740, 
 
120 THE LAW OF PATENTS. 
 
 ment, said : " It is as I read it a claim for a combination, that is 
 to say, a combination of all tbe movements going to make up the 
 whole mechanism described ; it must, for the present at least, be 
 assumed that this combination, as a combination, is novel, that it 
 is, to use the words of the Lord President, a new combination of 
 old parts to produce a new result or to produce a known result in 
 a more useful and beneficial way ; it is not doubted that a com- 
 bination such as this is may be the subject of a patent. What, 
 then, are the objections to the first claim viewed as a claim for 
 the combination ? The first is an objection said to be founded 
 upon the case of Foxwell v. Bostock {x), decided by the late Lord 
 TVestbury. It is said to be determined in that case that where 
 there is a patent for a combination there must be a discovery or 
 explanation of the novelty, and the specification must show what 
 is the novelty and what the mei^it of the invention. I cannot 
 think that, as applied to a patent for a combination, this is or 
 was meant to be the effect of the decision in FoxxceU v. Bostock. 
 If there is a patent for a combination the combination itself is ex 
 necessitate the novelty, and the combination is also the merit, if it 
 be a merit, which remains to be proved by evidence." 
 
 In the same case Lord Hatherley said : "The judges extended 
 as it appears to me with great respect, the doctrine of Foxwell v. 
 Bostock in their application of it in this case ; it was there held, 
 and that I think was all that was held, that it is not competent 
 to a man to take a well-known existing machine, and, having 
 made some small improvement, to place that before the public 
 and say, ' I have made a better machine : there is this sewing- 
 machine invented by so-and-so, I have improved upon that. 
 That is mine ! it is a much better machine than his ; ' that will 
 not do ; you must state clearly and distinctly what it is in which 
 you say you have made an improvement. To use an illustration 
 which was adopted, I think, by Lord Justice James in another 
 case, * I think it will not do if you invented the gridiron pendulum 
 to say, I have invented a better clock than anybody else, not 
 telling the public what you have done to make it better than any 
 other clock which is known.' " 
 
 (cc) 4 De G. J. & S. 298. 
 
THE COMPLETE SPECIFICATION. 121 
 
 In Moore v. Bennett [y), Selborne, L.C., ia givingj udgment in 
 the House of Lords, said : " Your lordships have not at all to 
 consider whether in the case of Foxivell v. Bostock the decision 
 arrived at was correct or not ; nor have you to consider whether, 
 when interpreted with reference to the facts of that case, the 
 language used by the very eminent and able judge who decided 
 it may not be susceptible of an interpretation which would make 
 that language correct in point of law. But, my lords, I feel that 
 your lordships cannot refuse to regard the decision in Foxwell v. 
 Bostock in the light in which you have already explained, and 
 interpreted, and commented upon it by your own decision in the 
 case of Harrison v. The Anderston Foundry Co., and so explained, 
 it appears to me, to amount to no more than this : that when a 
 claim is made for a general combination and arrangement of the 
 different parts of a machine, if the Court sees that the combina- 
 tion is not new, but that there is some particular improvement in 
 some particular part, it will not do to claim the whole combina- 
 tion as new, but you must condescend upon that which is improved. 
 .... The case of Foxwell v. Bostock was qualified or explained 
 in Harrison v. The Anderston Foundry Co. It was treated as an 
 authority in such a way as to make it impossible to apply it to 
 the present case, where, looking at the specification and at the 
 evidence, it is perfectly clear that no such general combination 
 as this had been at any time used, and where the material and 
 important parts of the two arrangements and combinations, which 
 are described, are clearly, plainly and intelligibly described. It 
 would, in my judgment, be in direct contradiction to the decision 
 in Harrison v. The Anderston Foundry Co. to hold the specifica- 
 tion bad." 
 
 In Clark v. Adie (z), Lord Hatherley said, speaking of Fox- 
 icell V. Bostock : " You must in some way or other inform those 
 whom you are dealing with, by which I mean the general public, 
 who you wish to exclude for a certain limited number of years 
 from using your invention ; you must inform them in some mode 
 or other whether you have sub-divided, if I may so term it, your 
 machine into these separate parts and claim for each the merit of 
 
 {y) Griff. P. C. 158. {z) L. R., 2 App. Cas. 328. 
 
122 THE LAW OF PATENTS. 
 
 novelty, or wliether you are simply making a combination of 
 tilings per se old but which have never been used before in com- 
 bination, and which make up, as you say, your machine, for 
 which you claim protection, as a novel and useful machine." 
 
 A claim for every method of applying a principle is a claim for 
 the principle itself and will not be supported (a). 
 
 The claim will be construed with reference to the entire patent 
 and although at first sight there may be some appearance of 
 obscurity in it, if it can be made clear by the consideration of the 
 whole specification, the patent will not be thereby avoided {b). 
 
 As has been pointed out above each subordinate part of an 
 invention must be claimed specifically in order to be protected (c), 
 for everything that is not claimed is considered to be disclaimed, 
 and should a man describe ten inventions in his specification and 
 claim only one of them, he thereby presents to the public the 
 remaining nine (d). 
 
 Comprehensive words employed in a specification cannot have 
 the efiect of extending the scope of the patent beyond that which 
 is substantially described (e). 
 
 A claim to " The apparatus as fully set forth and described in 
 the above specification and drawings," has been held to be a 
 claim for the combination of the constituent parts of that 
 apparatus (/). 
 
 The fact that one of the claims is practically a repetition of 
 another will not vitiate a patent ; in the Wenham Gas Co. v. 
 The Champion Gas Lamp Co., Lindley, L. J., said : " I think the 
 true construction of the fourth claim is pointing out the import- 
 
 (a) Ncllson v. Harford, 1 Web. (c) Clark v. Adie, L. R., 2 App. 
 
 P. C. 355. Cas. 315, 321 ; Croj)pcr v. Smith, 1 
 
 (6) Beard v. Ecjerton, 8 C. B. 165, P. 0. R. 87. 
 
 215, 216; Arnolds. Bradbury, L. R., {d) Harrison v. Andcrston Foundry 
 
 6 Ch. 706, 712 ; Plimpton v. Spiller, Co., L. R., 1 App. Cas. 580 ; Hijiks v. 
 
 L. R., 6 Ch. D. 427 ; Nordenfelt v. Safety Lighting Co., L. R., 4 Ch. D. 
 
 Gardner, 1 P. 0. R. 61, 69 ; Edison v. 612. 
 
 Woodlwv^e, 4 P. 0. R. 107 ; Lead- (e) Binney v. Fcldtman, Griff. P. C. 
 
 heater v. KitcMn, 7 P. 0. R. 244 ; 52 ; Miller v. Clyde Bridge Steel Co., 
 
 Mias V. Grovesend Tin Plate Co., 1 9 P. 0. R. 480. 
 
 P. 0. R. 463 ; Edison v. Smith, 11 (/) Peckoverv.Roivland, 10 P. 0. R. 
 
 P. 0. R. 395 ; Parkinson v. Simon, 234, 237. 
 xl P. 0. R. 493, 507. 
 
THE COMPLETE SPECIFICATION. 123 
 
 ance of the perforated tube in claim 3 — a repetition in fact of 
 claim 3 — I do not think it is anything more. If so, it does not 
 vitiate the patent. It may be open to the criticism that it is 
 redundant ; but if it is nothing more than pointing out what is a 
 valuable operation, and what has been claimed in clause 3, it does 
 not thereby vitiate the patent " {g). 
 
 So too where one of the claims in a specification, although 
 strictly it may be for something old, is pui'ely subordinate to the 
 main invention and merely amounts to a declaration of one of the 
 merits and advantages of the contrivance disclosed in the specifi- 
 cation, it has been held that a patent is not void on that account. 
 
 In British Dynamite Co. v. Krebs, the specification concluded 
 thus : "I claim as the invention secured to me the mode herein 
 set forth of manufacturing the safety powder or dynamite herein 
 described, and also the modes of firing the same by special 
 ignition as herein set forth." Earl Cairns, L.C., after assuming 
 that the modes of firing by special ignition, or some of them, were 
 known before the date of the patent, said : " He does not, as it 
 seems to me, claim the means of explosion in gross, but only as 
 appendant to dynamite, and he would not be allowed under this 
 patent to claim them for any other purpose. In other words, he 
 claims in the first claim the dynamite, the substance itself, and in 
 the second claim the only mode of using the dynamite with which 
 he was at the time acquainted. It is possible that, having stated 
 the means by which the dynamite could be exploded, he might 
 have omitted his second claim and contented himself with the 
 first. But the second being, as it seems to me, merely a claim to 
 the user of that which is included in the first, I cannot think 
 that the patent should be avoided by the introduction of that 
 which is merely useless " {h). ^ 
 
 But the above must be carefully distinguished from the case of 
 a claim for something old which, although subordinate to the 
 main invention, tends to enlarge the scope of the patent. 
 
 In Tlimpton v. Bpiller, supra, Brett, L. J., said : " If this 
 
 ((/) 9 P. 0. R. 55. in United Tdcplionc Co, v. Harrison, 
 
 {h) Good, P. C. 88, 93 ; see also per L. R. 21 Ch. D. 741 ; also iV«7so?i v. 
 
 James, L. J., in PllvijAon v. S2)iUer, Beits, L. R., 5 H. L. 21. 
 
 L. R., 6 Ch. D. 427, 428 ; per y, J., 
 
124 THE LAW OF PATENTS. 
 
 second claim had been in a form which would have applied to the 
 runner of any other skate than that which is patented here, I 
 should have thought it would have been bad, and that therefore 
 the whole patent would have been bad, and that the plaintiff 
 could never recover" (i). 
 
 It has been decided in the House of Lords that the enactment 
 in sect. 5 of the Act of 1883, that a complete specification must 
 end with a distinct statement of the invention claimed is directory 
 only, and when letters patent have been granted, they will not 
 be invalid because it has not been complied with (A-), consequently 
 the same rules will apply in cases where no distinct claim is 
 appended to the specification as applied before the passing of that 
 Act. Under the old law if no claim was inserted the patentee 
 was taken to claim everything that was described in the specifica- 
 tion, although disclaimer was not necessary in matters which 
 manifestly formed no part of the invention (/) . 
 
 As has been noticed above, sect. 5, sub-sect. 4 of the Act of 
 1883, enacts that the complete specification must be accompanied 
 by drawings if required. 
 
 Before the Act, drawings were quite optional on the part of 
 patentee {m), and the above section opens up a question as to 
 how far absence of drawings will now affect a patent, it is sub- 
 mitted that the same interpretation should be placed upon it as 
 that which the House of Lords have placed upon sub-sect. 5 of 
 the same section (n), although the words of sect. 2 of the Act of 
 1886, by which the above sub-section of the principal Act is 
 amended — " no patent heretofore sealed shall be invalid by 
 reason only that the complete specification was not accompanied 
 by drawings, but referred to those which accompanied the pro- 
 visional specification " — would seem to imply that if drawings 
 accompanied neither the provisional nor the complete, the patent 
 might be held to be invalid on that account. 
 
 (i) See also British Dynamite Co. v. 
 Krebs, per Cainis, L. C. Good, P. C. 
 93 ; Cro2:>per v. Smith, 1 P. 0. R. 81, 
 88, 90, 91. 
 
 {k) Vickers v. Siddell, 7 P. 0. R. 
 292, 303, 306 ; L. R. 15 App. Cas. 496, 
 500, 505. 
 
 (I) Lister v. Leather, 8 E. 
 
 & 
 
 B. 
 
 1004 ; Tetley v. Easton, 2 C. B., 
 
 N. 
 
 S. 
 
 706. 
 
 
 
 {m) Boulton v. Bull, Dav. 
 
 P. 
 
 c. 
 
 188 ; In re Fox's Patent, 1 Web. 
 
 P. 
 
 c. 
 
 431, n. 
 
 
 
 {n) Vickers v. Siddcll, supra. 
 
 
 
THE COMPLETE SPECIFICATION. 125 
 
 The drawings are for the purpose of elucidating the text, and 
 are to be read in with the specification in order to obtain a correct 
 interpretation (o), but it is doubtful if drawings can be made use 
 of for the purpose of extending the scope of the patent beyond the 
 obvious meaning of the words used in the letter-press (7;). 
 
 (0) Bloxam v. Elsee, 1 Car. & P. Qy) Clarh v. Adie, L. R., 2 App. Cas. 
 
 558 ; Lawrence v. Ferry, 2 P. 0. R. 339 ; Fairhurn v. Household, 3 P. 0. R. 
 
 180, 186 ; Fickard v. Frescott, 7 P. 0. R. 267 ; but see Fickard v. Frescott. 7 
 
 365 ; Miller v. Scarle, 10 P. 0. R. 111. P. 0. R. 365, 
 
126 THE LAW OF PATENTS. 
 
 CHAPTER VITI. 
 
 APPLICATION AND ACCEPTANCE. 
 
 In a previous chapter the question as to who is entitled to 
 apply for a grant of letters patent has already been considered, 
 and in the present chapter it is proposed to deal with the law and 
 practice relating to the application for a grant, and the acceptance 
 of the complete specification by the Comptroller. 
 
 Sect. 5 of the Act of 1883, as amended by the Acts of 1885 and 
 1888, enacts : — 
 
 (1) '^ An application for a jintent must he made in the form set 
 forth in the First Schedule to this Act, or in such other form as may 
 he from time to time 2)rescrihed ; and must he left at, or sent hy post 
 to the Patent Office in the prescrihed manner ^ 
 
 Applications for patents for inventions made in Great Britain 
 and Ireland and Isle of Man must be made in Form A, for 
 inventions communicated from abroad in Form A 1, and applica- 
 tions for patent under International and Colonial arrangements 
 must be in Form A 2 (r/). Quaere, if the wrong form were 
 used, would the patent be thereby invalidated. The applicant 
 must himself sign the application, but for the purpose of all 
 other communications with, and all other attendances upon the 
 Comptroller he may employ an agent (&), such agent need not 
 be a " patent agent," but he must be an agent duly authorised to 
 the satisfaction of the Comptroller (c). In the case of an appli- 
 cation by two or more persons, the application must be signed by 
 all those persons, but it is not absolutely essential that complete 
 specification should be signed by more than one of them {d). 
 
 (a) See appendix p. 440. 9 P. 0. R. 164 ; for forms of authorisa- 
 
 (6) P. E. 1890, r. 8, p. 424, post. tion see appendix, p. 441. 
 
 (c) Ibid ; see also Graham v. Fanta, (d) McEvoy's patent, 7 P. 0. R. 151. 
 
APPLICATION AND ACCEPTANCE. 127 
 
 A document sent to the Patent Office by post is deemed to 
 have been left at the time when the letter containing the same 
 would be delivered in the ordinary course of post, and it is 
 sufficient to prove that the letter was properly addressed and 
 posted (e). 
 
 Rules 9 and 10 of Patent Rules, 1890, contain formal regula- 
 tions with regard to applications and other communications sent 
 to or left at the Patent Office (/). 
 
 If a person possessed of an invention dies without having made 
 an application for a patent, application may be made by, and a 
 patent for the invention granted to his legal representative, but 
 such application must be made within six months of the decease 
 of the inventor (r/) . 
 
 Sect. 5, sub-sect. 2 enacts : " An apj^Ucation must contain a 
 declaration to the effect that the applicant is in possession of an 
 invention, whereof he, or in the case of a joint application, one or 
 more of the applicants, claims or claim to he 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. 
 
 " The declaration may be either a statutory declaration under the 
 Statutory Declarations Act, 1835, or not, as may be from time to 
 time prescribed.^' 
 
 The form of such declaration and the manner in which it is to 
 be made is regulated by Rules 17 and 17a of the Patent Rules, 
 1890. Where the inventor is incapable, by reason of infancy, 
 lunacy, or other inability, of making any declaration or doing 
 anything required or permitted by the Act, such declarations 
 may be made and such things may be done on his behalf by the 
 guardian or committee of such incapable person, or by any person 
 appointed by the Court (h). 
 
 Statutory declarations made in conformity with this Act are 
 exempt from the stamp duty of two shillings and sixpence 
 charged on a statutory declaration made under the Statutory 
 Declarations Act, 1835, by the Stamp Act, 1870 (/). 
 
 (c) Sect. 97 of the Act of ] 883 ; see 20, p. 427, post, 
 also P. R. 1890, r. 16, a. {h) Sect. 99. 
 
 (/) See p. 424, post. (i) 47 & 48 Vict. c. 62, sect. 9. 
 
 {g) Sect. 34 ; see also P. R. 1890, r. 
 
128 THE LAW OF PATENTS. 
 
 Only one invention may be the subject of an application, but it 
 is not competent for any person in an action or other proceeding 
 to take any objection to a patent on the ground that it comprises 
 more than one invention (k). In Jones' Patent, Herschell, S.-Gr., 
 said (/) : — " I should always allow alternative devices for 
 producing a particular 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 distinct, then 
 there are six inventions. . . . You may get in one patent the 
 combination, and you may get all subordinate parts of that 
 combination, so far as you claim to use them for one main 
 purpose, but if you are going to claim a subordinate part, or one 
 of the elements of the combination for a purpose independent of 
 the purpose of the combination, then you have got an extra 
 invention, and it is not all one (?w)." 
 
 In Hearson's Application the provisional specification intimated 
 that the invention was applicable to " othe)- purposes " ; those 
 words were struck out by the Comj^troller on the ground that it 
 amoimted to more than one invention, and this decision was 
 afl&rmed by the Solicitor-General (n). 
 
 Where a person, by inadvertence or otherwise, includes in his 
 application more than one invention, he may, after the refusal of 
 the Comptroller to accept such application, apply for separate 
 patents for each of his inventions, which applications shall, if the 
 applicant notify his desire to that effect to the Comptroller, bear 
 the date of the first application (o). 
 
 The meaning of the words true and first inventor, and the 
 requisites of provisional and complete specifications, have already 
 been dealt with in previous chapters. 
 
 Sect. 6 of the Act of 1883 enacts that : — " The Comptroller 
 shall refer every application to an examiner, who shall ascertain and 
 report to the Comptroller ichether the nattire of the invention has 
 been fairly described, and the application, specification, and 
 draicings {if any) have been prepared in the prescribed manner, and 
 the title sufficiently indicates the subject matter of the invention.'" 
 
 {k) 46 & 47 Vict. c. 57, sect. 33. Griff. P. C. 267. 
 
 (Z) Giiff P. C. 265. {n) Griff. P. C. 26 
 
 (m) See also Heaisoii's Patent, (o) P. R., 1890, r. 19. 
 Griff. P. C. 266 ; Robinson's Patent, 
 
APPLICATION AND ACCEPTANCE. 129 
 
 Sect. 2 of the Act of 1888 repeals sect. 7 of the principal Act, 
 and enacts that : — 
 
 (1) " If the examiner reports that the nature of the invention is 
 not fairly described, or that the application, specif cation, or drawings 
 has not, or have not, been prepared in the prescribed manner, or that 
 the title does not sufficiently indicate the subject matter of the 
 invention, the comptroller may refuse to accept the application, or 
 require that the application, sjjecifcatlon, or draioings be amended 
 before he proceeds with the ap2olication ; 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) " Wliere the comptroller refuses to accept an application or 
 requires an amendment, the ap)p)licaM may appeal from his decision 
 to the law officer^ 
 
 (3) " The law officer shall, if required, hear the applicant and the 
 comptroller, and may make an order determining whether, and 
 subject to what conditions {if any) the application shall be accepted'^ 
 
 (4) " The comptroller shall, when an application has been 
 accepted, give notice thereof to the applicant.''^ 
 
 (5) " If, after an application for a patent has been made, but 
 before the patent thereon has been sealed, another application for a 
 patent is made, accompanied by a specification bearing the same or a 
 similar title, the comptroller, if he thinks fit, on the request of the 
 second applicant, or of his legal representative, may, within two 
 months of the grant of a patent on the first application, either 
 decline to proceed tcith the second application, or allow the surrender 
 of the patent, if any, granted thereon.^' 
 
 The report of the examiner is not to bind the judgment of the 
 comptroller, but merely to assist him in making his decision as 
 to whether the application and specifications fulfil the require- 
 ments of the Act [p). It is difficult to define exactly what is the 
 meaning of the words " whether the nature of the invention has 
 been fairly described," and there is no direct decision on the 
 point, but it is to be presumed that the duty of the comptroller 
 and examiner does not extend to a minute criticism of specifica- 
 tions, but amounts in fact to deciding whether on the face of it 
 
 (p) In re C,'s Application, 7 P. 0. R. 250. 
 T. K 
 
130 THE LAW OF PATENTS. 
 
 the specification appears to be for the invention for which the 
 application is made (f^). In Be 8 fniih's Patent (r), HerscheU, 
 S.-G., said : — " There is no power in the Patent Office to examine 
 into the conformity of the claims put forward by the patentee 
 with the description of the invention which he has given. I 
 should only guard myself by saying this, that if the statement of 
 the invention claimed were such as ' I claim the invention 
 described in the specification,' that would be regarded as a mere 
 colourable compliance with the terms of the statute, and not as a 
 distinct statement of the invention claimed, because it would 
 merely refer back to the previous description." 
 
 Sect. 9 expressly throws upon the comptroller the duty of 
 deciding whether the provisional and complete specifications 
 describe substantially the same invention, but this section can 
 hardly mean that the comptroller must go into fine questions of 
 construction, but must merely amount to a direction to the 
 comptroller that an application shall not be accepted if the two 
 specifications on the face of them describe inventions which are 
 substantially different (s), since it is always the rule in the Patent 
 Office and of the law officer in questions of doubt to accept an 
 application and leave the sufficiency of the specifications and the 
 other points that arise in that connection for the consideration of 
 the courts, should the question ever come before them (f). 
 
 Under the provisions of sect. 86, the comptroller may refuse 
 to grant a patent for an invention, of which the use would, in his 
 opinion, be contrary to law or morality. 
 
 Before exercising any discretionary power adversely to the 
 applicant, the comptroller must give him ten days' notice, so that 
 he may be heard personally or by his agent on the point in 
 question (ii). 
 
 The subject of appeal to the law officer from decisions of the 
 
 (q) In re C. 's Application, 7 P. 0. R. Vickers v. Siddell, 7 P. 0. R. 306. 
 
 250, {t) Re Chandler's Patent, GrifiF, P. C. 
 
 (r) Griff. P. C. 268. 274 ; Re Cumming's Patent, Griff. 
 
 {s) In re Anderson's Patent, TV. O-Vi,. P. C. 217 ; Edmunds' Patent, Griff. 
 
 323, 325 ; but see per Liudley, L.J. P. C. 283. 
 
 Gaddv. Mayor of Manchester, 9 P. 0. R. {u) Sect. 94 of tlie Act of 1883 ; see 
 
 527 ; also jier Lord Horscliell iu also P. R. 1890, r. 11. 
 
APPLICATION AND ACCEPTANCE. 131 
 
 comptroller will be dealt with in the chapter relating to 
 opposition to a grant of letters patent. 
 
 Sect. 8 of the Act of 1883, as amended by the sect. 3 of the 
 Act of 1885, enacts : — 
 
 " (1) // the applicant does not leave a complete specification 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 loitidn 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 he deemed to he abandoned." 
 
 The nine months allowed by this section for the filing of the 
 complete specification are calendar months {x), and are reckoned 
 exclusive of the day of application (y), and in the event of the 
 last day of such nine months falling on Christmas Day, Good 
 Friday, or on a Saturday or Sunday, or on any Bank Holiday or 
 day of public fast or thanksgiving, the specification may be filed 
 on the day succeeding such excluded day or days {z). 
 
 An application for enlargement of time for leaving a complete 
 specification must state in detail the grounds upon which such 
 extension is applied for, and the applicant must produce such 
 evidence in support of his application as the comptroller may 
 require {a) ; the prescribed fee is £2 (b) . 
 
 In the event of an application being abandoned, the specifica- 
 tions and drawings which were left in connection with the 
 application are not published, nor are they at any time open to 
 public inspection (c). 
 
 Sect. 9 of the Act of 1883, as amended by the Acts of 1885 
 and 1888, enacts : — 
 
 " (4). Unless a complete specification is accepted within twelve 
 months from the date of application, then (save in the case of an 
 appeal having been lodged against the refusal to accept) the applica- 
 
 {x) 13 & 14 Vict. c. 21, sect. 4. also P. R. 1890, r. 7. 
 
 [y) Rmsell v. Ledsam, 14 M. & W. (a) P. E. 1890, rr. 50, 51. 
 
 574, 582; Williams v. Nash, 28 (/)) P. R. 1892 ; schedule of fees. 
 
 Beav. 93 ; 1859, 5 Jur. N. S. 696. (c) 48 & 49 Vict. c. 63, s. 4 ; see 
 
 (z) Sect. 98 of the Act of 1883 ; see ante, Chap. V., p. 65. 
 
 K 2 
 
132 THE LAW OF PATENTS. 
 
 tion shall, at the ejrjjiration of those twelve tnonths, become void. A 
 complete specification may he accepted within such extended time, not 
 exceeding three months after the said twelve months, as the 
 comptroller may, on payment of the fr escribed fee, alloiv" (d). 
 
 " (5) Reports of examiners shall not in any case be published or 
 be open to public inspection, and shall not be liable to production or 
 inspection in any legal proceeding, unless the Court or officer having 
 power to order discovery in such legal proceeding shall certify that 
 such production or inspection is desirable in the interests of justice, 
 and ought to be allowed^ 
 
 Sect. 10 of the principal Act enacts: — 
 
 " On the acceptance of the complete specification the comptroller 
 shall advertise the acceptance ; and the application and specification 
 or specifications with the drawings (if any) shall be open to j^ublic 
 insjjection." 
 
 The advertisements are published in the Illustrated Official 
 Journal, which is issued every Wednesday (e). 
 
 Sect. 14 enacts : — " Where an application for a patent in res^Ject 
 of an invention has been accejjted, the invention may, during the 
 period beticeen 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." 
 
 Provisional protection exists for the purpose of enabling an 
 inventor to work at and improve his invention without thereby 
 avoiding the patent subsequently granted to him on the ground of 
 want of novelty (/') ; it does not afford him the perfect rights 
 which he obtains when his patent is sealed, since he cannot bring 
 an action in respect of any infringement committed before the 
 publication of his complete specification (g), and further he may 
 not style the invention which is provisionally protected as 
 " patent," but he may make use of such words as " patent applied 
 for" {h). 
 
 {(l) See schedule of fees. Appendix (g) Sect. 13 of tlie Act of 1883. 
 
 p. 453, post. {h) Sect. 105 ; see E. v. Wallis, 3 
 
 (e) P. R. 1890, rr. 21 & 22. P. 0. R. 1 ; R. v. Crampton, 3 P. 0. R. 
 
 (/) Per Earl Cairns, L.C., in In re 367. 
 Dering's Patent, L. R. 13 Ch. D. 395. 
 
APPLICATION AND ACCEPTANCE. 133 
 
 " The phrase ' to be granted for the same ' obviously means in 
 this section .... for the same invention, and cannot be 
 construed as referring to the application or petition " (^). 
 
 Sect. 15 enacts : — " After the aeeeptance of a eomplete speeifiea- 
 tion, and until the date of sealing a patent in resjject thereof, or the 
 expiration of the time for sealing, the applicant shall have the like 
 privileges and rights as if a patent for the invention had f)een sealed 
 on the date of the acceptance of the complete specification : Provided 
 that an applicant shall not be entitled to institute any proceeding for 
 infringement unless and until a patent for the invention has been 
 granted to him.^' 
 
 The effect of sects. 13, 14, and 15 is that no proceedings for 
 infringement may be taken before the patent is sealed, after 
 which time proceedings can only be taken with reference to 
 infringements committed after the acceptance and publication of 
 the complete specification. 
 
 It has been mentioned above that an inventor may not use the 
 word "patent" with reference to the subject of his invention 
 until his patent is sealed, but it is no offence under the Act to 
 continue to use the word " patent " after the period of protection 
 has expired (A-), unless such representation amounts to a 
 suggestion that it is an existing patent. 
 
 In Chearin v. Walker (/) tbe plaintiff's filters bore a tablet 
 which consisted of the words " G. Cheavin's Improved Patent 
 Gold Medal Self-cleaning Rapid Water Filter, Boston, England, '* 
 above which was a medallion containing the Royal Arms, sur- 
 rounded by the words " By Her Majesty's Royal Letters Patent." 
 This was held to amount to a representation that the filter was 
 the subject of an existing patent, and disentitled the plaintiff to 
 relief. 
 
 The effect of the provisions of the Patents, &c.. Acts to prevent 
 fraudulent applications, and also of those for the protection of 
 foreign inventors, has already been discussed in an earlier 
 chapter {>n), 
 
 {i) Per Chitty, J. in Lister v. Nor- (I) L. R. 5 Ch. D. 850, 863, 864 ; 
 
 ton, 3 P. 0. R. 207. see also Leather Cloth Co. v. American 
 
 {Jc) Cheavin v. Walker, L. R. 5 Ch. Leather Cloth Co., 11 H. L. Cas. 523. 
 D. 850, 862. {m) See Cap. III., ante. 
 
134 THE LAW OP PATENTS. 
 
 CHAPTER IX. 
 
 OPPOSITION. 
 
 Section 10 of the Act of 1883 provides that upon acceptance 
 of the complete specification, hut before sealing the patent, the 
 comptroller shall advertise the acceptance, and that then the 
 application and specifications, with the drawings, if any, shall be 
 open to public inspection. 
 
 Section 11, as amended by the Patents, &c., Act, 1888, is as 
 follows : — (1) " Any person may at any time within two months 
 from the date of the advertisement of the acceptance of a complete 
 specification, give notice to the Patent Office of opposition to the 
 grant of the patent on the ground of the applicant having obtained 
 the invention from him, 
 
 " Or from a person of whom he is the legal representative, 
 
 " Or on the ground that the invention has been patoited 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 i)ivention fortns the subject of an 
 application made by the op^jonent in the interval beticeen the leaving 
 of the provisional specification and the leaving of the complete 
 specification, but on no other ground." 
 
 Prior to the passing of this Act any ground was available for 
 the purpose of opposition which would have been available for the 
 purpose of destroying the validity of the patent. Prior user was 
 a frequent ground of opposition {In re Sainuda (a) ), so also was 
 an alleged dedication to the public by the inventor himself {In re 
 Adamson's Patent {b) ), but it was always considered necessary 
 
 (a) Hindmarch, at page 534. Cli. 456 ; 4 W. R. 473. 
 
 {h) 6 De G., M. k G. 420 ; 25 L. J., 
 
OPPOSITION. 135 
 
 that the ground of the opposition should be proved bej'ond the 
 shadow of a doubt {In re To/Iicmsen's Patent (c), and also In re 
 Vincent's Patent (d) ). If there was any doubt the patent ought 
 to be sealed, so as to give the inventor the benefit of an exhaus- 
 tive trial. These two latter cases indicate the course the law 
 officer should take, where the ground of opposition is an allegation 
 that the applicant has ohtained the invention from the opposing 
 party. Such a question might very frequently raise questions of 
 fact of great delicacy, and the question of the credibility of wit- 
 nesses. Such questions should be left for trial in open court, 
 more particularly as it "will be observed that any such opposing 
 party has an ample and unfettered remedy by petition to revoke 
 the patent under sect. 26. In Edmunds' Patent [e), Sir R. 
 Webster, A.-G., said : — " I am clearly of opinion that under the 
 circumstances the comptroller-general was right in declining to 
 stop the patent in the present case. Had he done so, or if I were 
 now to do so, there would be no means of reviewing our decision, 
 whereas if the patent is sealed the question can be raised either 
 in the proceedings to which I have already referred, or it may be 
 in proceedings for revocation, should the parties be advised to 
 institute any such proceedings." 
 
 In In re Stuart's Application (/), Sir E. Clarke, S.-G., said: 
 " I think that the law officer is only entitled to stop the issue of 
 a patent, having examined all the evidence given on one side or 
 the other, if he is so clearly of opinion that the opponent has 
 made out his case that he would, if a jury were to find in favour 
 of the applicant, refuse to accept it and overrule the decision on 
 the ground that it was perverse and contrary to the obvious 
 weight and effect of the evidence." 
 
 Under sect. 11, sub-sect. 1, there are three grounds upon which 
 a grant of letters patent may be opposed and three only, and pro- 
 vided that the opponent relies upon one or other of these three 
 grounds it does not appear upon the face of that sub-section that 
 the C. G. has any jurisdiction to inquire into the question as to 
 the right or title of the opponent to be heard in opposition, 
 
 (c) 14 W. R. 551. also Fletcher's PaUnt, Griff. P. C. 284 ; 
 
 {(i) L. R., 2 Ch. 341. In re Todd, 9 P. 0. R. 488. 
 
 (c) Griff. P. 0. at page :io<3 ; see (/) 9 P. 0. R. 452. 
 
136 THE LAW OF PATENTS. 
 
 although in In re Bell{g), the C. G. refused to hear the opponent 
 on that ground. 
 
 The notice of opposition must state the grounds upon which 
 the opponent intends to oppose the grant and must be signed by 
 him {h) ; a copy of such notice is delivered by the comptroller to 
 the applicant (/). Within 14 days after the expiration of two 
 months from the date of the advertisement of the acceptance of 
 the complete specification, the opponent may file statutory decla- 
 rations in support of his opposition, and must deliver to the 
 applicant a list thereof {h) ; within 14 days from the delivery 
 of such list the applicant may leave statutory declarations in 
 reply, a list of which must be sent to the opponent ; the opponent 
 may leave further declarations at the Patent Office, a list of which 
 must be delivered to the ajDplicant ; such last-mentioned declara- 
 tious must be confined to matters strictly in reply (/). No further 
 evidence may be left on either side except by leave of the comp- 
 troller {m). 
 
 In the case of an oj3position upon the first ground, it frequently 
 happens that the law officer is of opinion that both the applicant 
 and the opponent contributed materially to the invention. In 
 such case terms will be imposed giving both parties an interest 
 in the patent («)• 
 
 In David and Wodley (o), upon the question of workman and 
 master, Sir H. Davey said : — " I am of opinion that if a work- 
 man is employed by an inventor to make a model for the purpose 
 of carrying out his invention, and the workman suggests improve- 
 ments in detail of the machine, which are adopted in the machine 
 or model as completed, those suggestions are the property of his 
 employer, and the workman cannot afterwards take out a patent 
 for them." 
 
 The words " obtained the invention" do not necessarily imply 
 that the person from whom the invention had been obtained had 
 
 {(j) Griff. L. 0. C. 10. 589 ; Luke's Patent, Griff. P. C. 294 ; 
 
 {h) P. R. 1890, r. 34. Re Hatfield, Griff. P. C. 288 ; Re Eadie, 
 
 (z) Rule 35. Griff. P. C. 279 ; Evam v. Otway, 
 
 (k) Rule 37. Griff. P. C. 279 ; Re Garthwaite, 
 
 {1} Rule 38. Griff. P. 0. 284. 
 
 (rti) Rule 39. (o) Griff. L. 0. C. 26 ; see also Re 
 
 {n) RmselVs Patent, Good, P. C. HeaU, 8 P. 0. R. 429. 
 
OPPOSITION. 137 
 
 taken out or even intended to take out a patent for it ; it refers to 
 the identity of the invention, not the right of the person from 
 whom it was obtained to be regarded as the first and true 
 inventor (7;). 
 
 Where it appeared that a part of the subject of the application 
 had been obtained from the opponent, the law officer struck out 
 that portion and allowed the remainder to go on {q). 
 
 In In re Edmunds (r), the comptroller was of opinion that the 
 words "legal representative" in sect. 11 meant the executor or 
 administrator of a deceased person and would not include a person 
 holding a power of attorney. 
 
 In the case of inventions communicated from abroad neither 
 the comptroller nor the law officer will enquire into what 
 happened outside the United Kingdom, the importer is the true 
 and first inventor, and the means by which he may have obtained 
 the invention are of no importance and will not be considered 
 since the merit of the invention consists in its importation into 
 this country (s). 
 
 The other two grounds of opposition are such as can readily be 
 proved or disproved, hence the power of the law officer can be 
 exercised with less prejudice to the interests of justice. In 
 Cummings' Patent {f), Sir Henry James, although of opinion that 
 the applicant's invention and that which formed the ground of 
 opposition were very nearly the same, thought there was just 
 sufficient difierence (although a very slight difference) to justify 
 him in affirming the comptroller-general's decision. He felt, too, 
 that if he refused a patent his decision would be final. It will 
 make no difi'erence in the exercise of the discretion of the law 
 officer, upon the report of the comptroller, if the specification 
 appears to him to comprise the same invention as is comprised 
 in a previous application, that the validity of the first patent is 
 in dispute {u). 
 
 (p) Re Thwaitc's Application, 9 Re Lake, 5 P. 0. R. 415 ; Re Biggins, 
 
 P. 0. R. 515. 9 P. 0. R. 74. 
 
 (q) Re Thwaitc's Application, 9 (<) Griff. P. C. 277 ; see also Jones' 
 
 P. 0. R. 515. Pate7it, Griff. L. 0. C. 33. 
 
 (r) Griff. P. C. 281 ; see also Re- (ic) In re Manccauxs Patent, L. R. 
 
 Adoliih Sidel, 5 P. 0. R, 282. 6 Ch. 272. 
 
 (s) Re Edmunds, Griff. P. C. 281 ; 
 
138 THE LAW OF PATENTS. 
 
 " On the ground that the invention has been patented in this 
 country " will not give a locus standi for opposition where only 
 provisional protection has been granted for the previous inven- 
 tion {x) ; but it is otherwise where the opponent has brought 
 himself within the terms of sect. 15 [y). If the invention, the 
 subject-matter of applicant's specification, is fully described in 
 the specification relied on in opposition, the patent will not be 
 allowed to go, notwithstanding that it is not made the subject of 
 claim in the opposing specification (s). 
 
 In Stnbbs' Patent {a), Sir R. Webster said: — "As this is the 
 first case I have had to deal with, I should like to explain what 
 I mean to do in these cases. Of course I need not remind you 
 that stopping a patent is a very serious step, because there are 
 no means whatever of an applicant getting that which he applies 
 for if I stop it, and it must be distinctly understood that I shall 
 not stop the patent unless I am satisfied that the inventions are 
 identical. I shall not hesitate to stop it if I can see clearly they 
 are identical. ... I shall, as a rule, allow costs to follow the 
 event." 
 
 In Re Lorrain (b), Sir R. Webster, A.-G., said : " By allowing 
 a specification in any particular form no harm is done to persons 
 who have a prior patent ; but, on the other hand, the law officer 
 is bound to protect the public so that they may not be misled by 
 any specification which, upon the face of it, might be held to have 
 a wider scope or include a wider kind of invention than that to 
 which the patentee is, on the evidence, entitled. The patentee 
 of the later patent frames his specification at his peril." 
 
 Where it appears to the C. G. or law officer that the 
 applicant's specification is too general and calculated to de- 
 ceive the public, or appears to overlap the invention of the 
 opponent, the patent will only be granted on condition of the 
 
 {«) Bailey's Patent, Griff. P. C. 269 : also Pe Todd, 9 P. 0. R. 487 ; Be 
 
 Dundon's Patent, Grifl'. P. C. 278. Tattersall, 9 P. 0. R. 150 ; Re Griffin, 
 
 (y) L'Oiseau and Pierrard, Griff. 6 P. 0. R. 296 ; He Cumming, Griff. 
 
 L. 0. C. 36. P. 0. 277. 
 
 (2) Fon Buck's Application, Griff. {b) 5 P. 0. R. 142 ; see also Ee Guest 
 
 L. 0. C. 40. d; Barrow, 5 P. 0. R. 313. 
 
 {a) Be Stubbs, Griff. P. 0. 298 ; see 
 
OPPOSITION. 139 
 
 insertion of a disclaiming clause ; such clause may be general or 
 special, that is, either a general reference to common knowledge 
 or a special reference to the opponent's specification. 
 
 Sir R. Webster, in Ee Stell's Patent (c), said : " The principles 
 upon which the law officers have acted now for some years in 
 allowing disclaiming clauses are, first, if it appears clear that 
 upon the invention claimed by the prior patentee there will be a 
 repetition of the claim to the earlier invention in the later 
 patent ; and secondly, if it is clear that the public would be 
 misled by the later specification without disclaimer." 
 
 The law officer is always reluctant to allow the insertion of 
 special disclaimers, as disclaimers are considered to be made in 
 the interest of the public, and are inserted on the ground tliat 
 the public are entitled to know what a subsequent patentee may 
 claim, and to have a fair description of the existing state of 
 knowledge (d). 
 
 Sir R. "Webster, A.-G., in He Guest d; Barroiv [e), said : " I 
 have never considered that a prior patentee has any right to be 
 specially named, unless the applicants are willing to name him, 
 and unless it is clear there is no other publication except the one 
 that is mentioned." In re Welch'' s Patent (/), Sir R. Webster 
 said : "I do not think that a later patentee ought to be com- 
 pelled to insert a special reference to the earlier specification ot 
 the opponent, unless it is practically admitted by the later 
 applicant that the governing principle was, for the first time, 
 discovered or disclosed in the opponent's specification." 
 
 In an opposition on the second ground the law officer will take 
 into consideration the question of mechanical equivalents in com- 
 paring the applicant's specification with the specification relied 
 upon by the opponent {(j), but he will not consider the question 
 of disconformity between the opponent's provisional and complete 
 specifications (A). 
 
 (c) 8P. 0. R. 236; see also Re Guest TattersalVs Patent, 9 P. 0. R. 150, 
 
 (fc Barrow, 5 P. 0. R. 313. 152 ; Re Hoffman, 7 P. 0. R. 92. 
 
 {d) Per Sir R. Webster, in Re Guest (/) 8 P. 0. R. 443. 
 
 tfc Barroiv, 5 P. 0. R. 315 ; see also (g) Re Haythornthv)aite, 7 P. 0. R. 
 
 Re Sielaff; 5 P. 0. R. 484 ; Re Hill, 70. 
 5 P. 0. R. 599. {h) Ibid. 
 
 (e) 5 P. 0. R. 315 ; see also Re 
 
140 THE LAW OF PATENTS. 
 
 The law officer will not allow the question of fraud to be raised 
 for the first time upon appeal (^'). 
 
 Where the opponent's complete specification was filed between 
 the dates of the filing by the applicant of his provisional and 
 complete specifications, the opponent will not succeed in his 
 opposition unless his complete specification was clearly fore- 
 shadowed by his provisional and the invention described thereby, 
 identical with that described in the complete specification of the 
 applicant (/.•) . 
 
 Under this section it will make no difference whether the 
 patent upon which the opposition is founded has expired or 
 not (/). 
 
 A question has arisen as to whether, when a patent is ante- 
 dated, pursuant to the provisions of sect. 103, and when an 
 application is made for letters patent for the same invention by 
 another applicant, between the date to which such patent is ante- 
 dated and the actual date of application, such antedated patent 
 should, for the purpose of opposition, be treated as of the 
 antedated date or the actual date. Sir E.. Webster, on 
 January 17th, 1888, held in the matter of Everitfs Patent and 
 L'Oiseau and Pierrard's opposition (m), that although the op- 
 ponent's patent would override the applicant's by reason of the 
 antedating, still that for the purpose of opposition the opponents 
 had no locus standi. Sir R. Webster had, on December 7th, 
 1887, allowed L'Oiseau and Pierrard's patent to be amended by 
 antedating it, pursuant to the 103rd section and to the Conven- 
 tion, notwithstanding that such antedating would have the efiect 
 of overriding Erer'dt's Patent (n). 
 
 The third ground of opposition was introduced by sect. 4 of 
 the Act of 1888, for the purpose of preventing an applicant from 
 claiming in his complete specification an improvement on his 
 invention, which was contained in the provisional of the oppo- 
 nent filed after the date of the applicant's provisional specifica- 
 tion and thereby depriving the opponent of the benefit of his 
 
 (i) Ee Huth, Griff. P. C. 292. (I) Per Gorst, S.-G., in Lancaster's 
 
 {k) lie Bartktt's Ajir'Ucation, 9 Patent, Griff. P. G. 293. 
 
 P. O. R. 511 ; but see also Re Green, (m) Griff. L. 0. C. 28. 
 
 Griff. P. C. 286. (71) Griff. L. 0. C. 36 
 
OPPOSITION. 141 
 
 invention ; but an applicant is not thereby deprived of his old 
 right to include fair developments of his patent in his complete 
 specification (o). 
 
 The second sub-section provides : — " Where such notice is given, 
 the comptroller shall give notice of the opposition to the applicant, 
 and shall, on the expiration of those two months, after hearing the 
 applicant and the person so giving notice, if desirous of being heard, 
 decide on the case, but subject to appeal to the law officer. 
 
 (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 oj)position to the grant, and shall 
 determine ivhether the grant ought or ought not to be made.'''' 
 
 Notice of appeal must be filed within fourteen days from the 
 date of the decision appealed against {p), and must state the 
 nature of such decision (g) . The evidence used on appeal 
 to the law officer shall be the same as that used at the 
 hearing before the comptroller, save as to matters that have 
 occurred or come to the knowledge of either party in the mean- 
 while, except with the leave of the law officer (r) . The law 
 officer shall, at the request of either party, order the attendance 
 at the hearing of the appeal, for the purpose of being cross- 
 examined, of any person who has made a declaration in the 
 matter in question, unless, in the opinion of the law officer, there 
 is good ground for not making such an order (s). 
 
 In Heath and Frost's Patent (t). Sir E. Clarke said : " It 
 appears to me that by sect. 11 it is quite clear that the only class 
 of persons who are entitled to be heard in opposition before the 
 law officer, are persons who are interested with a real and 
 legitimate interest in the prior patent upon which an application 
 is opposed, or persons who, while they have not patented the 
 invention, have yet been the originators of it, from whom the 
 person seeking the patent has obtained it." 
 
 In that case the opponent was an agent for the patentee, and 
 although it had been common in opposition cases, for the sake 
 
 (o) Ee Edwards' Patent, 11 P. 0. R. (r) L. 0. Eules, r. 8. 
 
 461. (s) L, 0. Rules, r. 9. 
 
 (p) L. 0. Rules, IT. 1 and 5, (t) Griff. P. C. at p. 290. 
 
 {q) L. 0. Rules, rr. 2—4. 
 
142 THE LAW OF PATENTS. 
 
 of simplicity, for patent agents acting on behalf of clients, to 
 oppose grants of patents in their own names, the law officer 
 decided that the opponent had not such an interest as to be 
 entitled to be heard, and furthermore refused to grant leave to 
 amend the notice of opposition. 
 
 It is not sufficient that the opponent has manufactured under 
 the patent which he relies upon in opposition, he must have a 
 direct interest in that very patent {u). 
 
 Where the opponent dies before the day fixed for hearing the 
 opposition, the notice of opposition may be amended by inserting 
 the name of another opponent (.r) . 
 
 (4) " The law officer may, if he thinks fit, obtain the assistance 
 of an expert, who shall be paid such remuneration as the law ojfficer 
 ivith the consent of the treasury shall appoint.^' 
 
 Sect. 38 of the Act gives power to the law officers to examine 
 witnesses on oath, to make rules from time to time regulating 
 references and appeals, together with the practice and procedure 
 before them, and in such proceedings they may make such orders 
 as to costs as they may deem just, such orders to be enforceable 
 as rules of Court. 
 
 In the absence of opposition, or in the event of any opposition 
 being decided in favour of the patentee, the patent will be sealed. 
 (Sect. 12.) 
 
 (u) Re Macevm/s Patent, 5 P. 0. R. 32 ; Re Bairstow, 5 P. 0. R. 289. 
 286 ; see also Olossop's Patent, Griff. (x) Re Lake, Griff. L. 0. C 35. 
 
 P. C. 285 ; Re Hookham, Griff. L. 0. C. 
 
THE GRANT. 143 
 
 CHAPTER X. 
 
 THE GRANT. 
 
 Sect. 12 of the principal Act provides that : — 
 " (1) //' there is no opposition, or, in case of opposition, if the 
 deferuiinafion is in favour of the (jrant of a patent, the comptroller 
 shall cause a patent to he sealed itnth 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 he sealed as soon as may he, and not after 
 the expiration of fifteen months from the date of application, except 
 in the cases hereinafter mentioned, that is to soy : — 
 
 " (a) Where the sealing is delayed hy an appeal to the law 
 officer, or hy opposition to the grant of the patent, the 
 patent may he sealed at such time as the law officer may 
 direct. 
 " (6) If the person making the application dies hefore the 
 expiration of the fifteen months aforesaid, the patent 
 may he granted to his legal representative and sealed at 
 any time icithin twelve months after the death of the 
 applicant.''^ 
 Sect. 13 enacts that : — 
 
 " Every patent shall he dated, and sealed as of the day of the 
 application : Provided that no proceedings shall he taken in respect 
 of an infringement committed hefore the puhlication of the complete 
 specification : Provided also, that in case of more ihan one ap)plication 
 for a patent for the same invention, the sealing of a patent on one 
 of those applications shall not j} re vent the sealing of a patent on an 
 earlier cqjplication." 
 
 Prior to the Act of 1883 letters patent were issued under the 
 great seal of England, and, consequently, by the Lord Chancellor, 
 
144 THE LAW OF PATENTS. 
 
 as keeper of the great seal. The process of sealing a patent was 
 surrounded with all the formalities and expense which surrounds 
 an important Act of State. Letters patent derived their authority 
 from the fact that the great seal was attached to them, for " all 
 the king's subjects are bound to take notice of the king's great 
 seal " (a). Sect. 84 of the Act provides : " There shall be a seal 
 for the Patent Office, and inn^ressions thereof shall he judicially 
 noticed and admitted in evidence. ^^ 
 
 Form D in the first schedule to the Act gives the form in which 
 letters patent are to be issued [h). 
 
 Letters patent consist of six material parts : — 
 
 1st. The address. 
 
 2nd. The recitals. 
 
 3rd. The grant. 
 
 4th. The prohibition. 
 
 5th. The conditions. 
 
 6th. The construction of the grant. 
 
 THE ADDRESS. 
 
 The address is a public address from the sovereign to " all to 
 whom these presents shall come." Mr. Hindmarch gives the 
 reason for this as being, that it contains bargains made between 
 the public and patentee (c). 
 
 THE RECITALS. 
 
 The recitals are four in number. The first recites the patentee's 
 name and address, that he has made a declaration that he is in 
 possession of an invention and is followed by the title of the 
 invention. That he has declared that he is the true and first 
 inventor of the invention, and that the same is not in use by any 
 other person to the best of his knowledge and belief. 
 
 This recital contains the " suggestions " which have been made 
 to the sovereign prior to the patent being granted and the 
 representations upon which it has been granted. If either of 
 these suggestions or representations be untrue the patent is void. 
 We cannot do better to illustrate the exact meaning of a false 
 
 («) East India Co. v. Sandys, Skin. {h) See Appendix, p. 394, post. 
 
 225. (c) Page 40. 
 
THE GRANT. 145 
 
 suggestion than to quote the language of Parke, B. in Morgan v. 
 Seaicard [d). In that case the false suggestion complained of was 
 in the title of the specification, which it was alleged did not dis- 
 close the true nature of the invention. " This brings me to the 
 question," said the learned judge, " whether this patent, which 
 suggests that certain inventions are improvements, is avoided if 
 there be one which is not so ; and upon the authorities we feel 
 obliged to hold that the patent is void upon the ground of fraud 
 on the Crown, without entering into the question whether the 
 utility of each and every part of the invention is essential to a 
 patent, where such utility is not suggested in the patent itself as 
 the ground of the grant. That a false suggestion of the grantee 
 avoids an ordinary grant of lands or tenements from the Crown is 
 a maxim of the common law, and such a grant is void, not against 
 the Crown merely, but in a suit against a third person {e). It is 
 on the same principle that a patent for two or more inventions, 
 when one is not new, is void altogether, as in Hilly. Thompson {/) ; 
 Brunton v. Haickes {g) ; for, although the statute invalidates a 
 patent for want of novelty, and, consequently, by force of the 
 statute the patent would be void, so far as related to that which 
 was old, yet the principle on which the patent has been held to 
 be void altogether is, that the consideration for the grant is the 
 novelty of all, and the consideration failing, or in other words the 
 Crown being deceived in its grant, the patent is void, and no action 
 maintainable upon it. We cannot help seeing on the face of this 
 patent, as set out in the record, that an improvement in steam- 
 engines is suggested by the patentee, and is part of the considera- 
 tion for the grant, and we must reluctantly hold that the patent 
 is void for the falsity of that suggestion. In the case of Lewis v. 
 Marling (h), this view of the case, that the patent was void for a 
 false suggestion, does not appear by the report to have been 
 pressed on the attention of the Court or been considered by it. 
 The decision went upon the ground that the brush was not an 
 essential part of the machine, and that want of utility did not 
 
 {d) 2 M. & W. 544 ; 1 Web. P. C. (/) 8 Taun. 375. 
 
 187 ; 6 L. J. Ex. 153. {g) 4 B. & Aid. 541. 
 
 (e) Travell v. Carteret, 3 Levinz, (h) 10 B. & C. 22. 
 135 ; Alcock v. Cooke, 5 Bing. 340. 
 
 T. L 
 
146 THE LA.W OF PATENTS. 
 
 vitiate the patent, and besides, the improvement by the introduction 
 of the brush is not recited in the patent itself, as one of the sub- 
 jects of it which may make a difference." It will be observed 
 here that the learned judge draws a careful difference between an 
 insufficient description in the specification and a false suggestion. 
 In the cases cited below letters patent were held void for false 
 suggestion (?). And the following cases are illustrations of the 
 distinction drawn by Parke, B. : — Leivis v. Marling (supra) and 
 Haworth Y.Hardcastle (k). Also Bainhriclge v. Wigley [l) ; Hill 
 V. Thompson [m). 
 
 The second recital deals with the prayer of the application for 
 the grant. 
 
 The third recital recites that a complete specification has been 
 filed, particularly describing the nature of the invention. Here, 
 again, a false suggestion will avoid the patent, so that if the 
 complete specification is imperfect, the patent will be void upon 
 two grounds, the one being the failure of consideration, and the 
 other the false suggestion ; and a false suggestion is equally fatal 
 whether it is wilfully false or otherwise. 
 
 The fourth recital gives the common law motive for the grant, 
 which is the encouragement of inventions for the public good. 
 There will be something analogous to a false suggestion if the 
 subject-matter of the patent be immoral or illegal, and hence the 
 patent will at common law be void. By sect. 86 of the Act the 
 comptroller may refuse to grant a patent for an invention of 
 which the use would, in his opinion, be contrary to law or 
 morality. A serious oversight in the Act appears to be that there 
 is no appeal from the comptroller when he exercises the power 
 given by this section. 
 
 THE GRANT. 
 
 " Know ye, therefore, that we of our especial grace, certain 
 knowledge, and mere motion do by these presents, for us, &c., 
 give and grant unto the said patentee our especial licence, full 
 power, sole privilege, and authority, that the said patentee by 
 
 (i) Jessoij's Case, 2 H. Bl. 490 ; R. v. (k) 1 Biug. N, C. 182. 
 
 Wheeler, 2 B. & Aid. 345 ; Felton v. {I) 1 Carp. P. C. 270. 
 
 Greaves, 3 C. & P. 611. {m) 1 Web. P. C. 239. 
 
THE GRANT. 147 
 
 himself, his agents, or licensees, and no others, may at all times 
 hereafter during the term of years herein mentioned, make, use, 
 exercise and vend the said invention .... in such manner as to 
 him or them may seem meet, and that the said patentee shall 
 have and enjoy the whole profit and advantage from time to time 
 accruing by reason of the said invention, during the term of four- 
 teen years from the date hereunder M^ritten of these presents." 
 
 This language is intended to preserve intact the royal prerogative 
 to grant or withhold a patent — which right was by the common 
 law absolute and undoubted. We have seen that this prerogative 
 is carefully preserved by sect. 116 of the Act. 
 
 It is the granting portion of the letters patent which creates 
 the property in the invention. We have seen that this species of 
 property is purely artificial in its nature ; it is the most equitable 
 and natural method which the state can devise for the reward 
 and encouragement of inventors ; it is merely a right yielding 
 nothing until the invention is made practically useful to 
 humanity. A trade mark is also an exclusive right, but it 
 differs from a patent, insomuch that it has not merit and the 
 benefit of mankind as its consideration. Its object is to 
 indicate the source from which an article comes ; not to 
 restrain others from manufacturing such articles. It merely 
 prevents them from using the mark in connection with 
 particular goods. A patent prevents the public from making 
 the article or using the invention. There is no property 
 which partakes of the nature of an exclusive right save that of a 
 patent, copyright, or trade mark. There is no exclusive right in 
 a secret. A man may only use a secret to his own profit so long 
 as no one is in a position, by reason of knowing the secret, to use it. 
 But the original possessor of a secret cannot, by any process of law, 
 prevent a person from acquiring the knowledge of his secret, or, 
 having acquired it, from making such use of it, by publication or 
 otherwise, as he may think proper (ii). In Newhury v. JaiiiPs (o), 
 although an agreement had been made to preserve a secret, the Court 
 refused to grant an injunction on the ground that there was no 
 means of enforcing it. Lord Eldon, L.C., said in Williams v. 
 
 {») Canham v. Jones, 2 Ves. & B. (o) 2 Mer. 446, 
 
 218. 
 
 L 2 
 
148 THE LAW OF PATENTS. 
 
 Williams [p), "So far as the injunction goes to restrain the 
 defendant from communicating the secret upon general principles, 
 I do not think that the Court ought to struggle to protect this 
 sort of secret in medicine. The Court is bound indeed to protect 
 them in cases of patents to the full extent of what was intended 
 by the grant of the patent, because the patentee is a purchaser 
 from the public, and bound to communicate his secret to the public." 
 If the plaintiff's secret, however, be one which he intends 
 to patent, and the defendant has acquired the infor- 
 mation during the progress of experiments, or from the confidence 
 of the plaintiff, he will not be allowed to make such use of the 
 knowledge so acquired as to subsequently invalidate the plaintiff's 
 patent, or to take out a patent for the invention himself, and if he 
 do, he will be liable in damages to the plaintiff (g) . It will be 
 observed that the word " patentee " is used in the grant ; the old 
 form was, " to the said John Smith, his executors, administrators 
 or assigns ; " a " patentee " is, under the 46th section, construed 
 as being " the person for the time being entitled to the beneft of a 
 patent ; " we shall see presently that this includes assignees, 
 executors and administrators, together with receivers and trustees 
 in bankruptcy, but the subject of the devolution of patent rights 
 is too extensive and important to be dealt with under this head. 
 
 THE PROHIBITION. 
 
 The prohibition in the patent commands " all our subjects, 
 that they do not at any time during the continuance of the said 
 term of fourteen years either directly or indirectly make use or 
 put in practice the said invention, or any part of the same, nor in 
 anywise imitate the same, nor make or cause to be made any 
 addition thereto or subtraction therefrom, whereby to pretend 
 themselves the inventors thereof, without the consent, licence or 
 agreement of the said patentee in writing under his hand and 
 seal, on pain of incurring such penalties as may be justly inflicted 
 on such offenders for their contempt of this our royal command, 
 and of being answerable to the patentee according to law for his 
 damages thereby occasioned." 
 
 (p) 3 Mer. 157. {q) Smith v. Dickenson, 3 B & P. 630. 
 
THE GKANT. 149 
 
 It is very difficult to understand the form of letters patent 
 which is appended to the Act of 1883. It is presumed that the 
 Act was intended to amend, simplify and codify the law of 
 patents. The form above quoted is an imitation of forms 
 previously in use. It is not easy to understand what the 
 " penalties " referred to in the prohibition are, and how they are 
 to be put in force or recovered. The Act certainly does not 
 mention penalties as a form of punishment for infringers. 
 
 THE CONDITIONS. 
 
 We find in the " conditions " that the grant is to be avoided 
 "if it should aj)pear to us, &c., or six or more of our Privy 
 Council, that this our grant is contrary to law or prejudicial or 
 inconvenient to our subjects generally, or that the said invention 
 is not a new invention as to the public use and exercise thereof 
 within our United Kingdom of Great Britain and Ireland and 
 Isle of Man, or that the patentee is not the first and true 
 inventor thereof within this realm as aforesaid." This proviso 
 raises some questions of importance. The only proceedings 
 mentioned in the Act for the repeal of letters patent are proceed- 
 ings in the High Court of Justice. What is the proceeding before 
 " six of our Privy Council " ? It can scarcely be believed that 
 reference is here made in a new codifying Act to the old preroga- 
 tive claim of power to revoke, which has not been put in practice 
 for two hundred and fifty years. If it be intended to have such 
 a system of avoiding patents, surely it would be well to provide 
 for it in a more certain manner than merely to mention it as one 
 of the conditions in the patent itself. In the next place we find 
 here, for the first time, an intimation that " novelty " means 
 novelty within the kingdom ; in the recitals of the patent it is 
 recited as being novelty universally, and throughout the Act 
 itself we find that " novelty " is not limited to novelty within 
 the kingdom. Again, we find here for the first time the inventor 
 described as " the first and true inventor within this realm." 
 In the Act and in the recitals of the patent he is described as the 
 "first and true inventor." We have shown that the omission of 
 the words " within this realm " makes an immense difference not 
 only in the class of persons who may be grantees of letters patent, 
 
150 THE LAW OF PATENTS. 
 
 but also in the nature of the evidence of *' prior user " which 
 may be given in an action either for infringement or revocation. 
 The ambiguity of the form of letters patent which is given, and 
 the by no means clear provisions of the Act upon these matters, 
 will in all probability result in a plentiful crop of litigation (r). 
 
 The next proviso is one for the determination of the patent in 
 the event of the prescribed fees not being paid, and the last pro- 
 vides for the supply of the patented article for the use of the 
 public service on reasonable terms. This proviso in no way binds 
 the Crown if the patented article should be required for the 
 public service to purchase it from the patentee upon reasonable 
 terms and conditions. 
 
 Prior to the Act of 1883 letters patent did not operate as 
 against the Crown. The Crown might make use of the invention 
 without in any way recognising any rights of the inventor or 
 patentee (s) . But should the Crown have employed a contractor, 
 as distinguished from a servant, to manufacture the patented 
 ai'ticle, the usual proceedings for infringement might be brought 
 against the contractor, since he is the person using the patent, 
 and not the Crown. There are two methods of infringing ; first, 
 making and vending ; and secondly, using, consequently the con- 
 tractor infringes by doing the first, and it makes no difference 
 that the Crown also infringes by using the invention (t). 
 
 This case was subsequently affirmed in the House of Lords. 
 Lord Hatherley said, "The Crown has no right to authorize 
 others who are not their officers, servants, or agents, to use a 
 patented invention without a license from the patentee ; " and 
 Lord Selborne added, " I agree with the Court of Queen's Bench 
 that this decision (Feather v. H.) is not to be extended by any 
 reasoning from the convenience of the Crown, or of the public 
 service, or from any idea that it practically comes to the same 
 thing, whether the Crown manufactures itself or gives orders to 
 other manufacturers." 
 
 The right of the Crown to use a patented invention for the 
 
 (»•) See Marsden v. The S'aviUe (s) Feather v. H., 6 B. & S. 257. 
 
 Street Fmmdry Co., L. R., 3 Ex. D. (t) Dixmiv. The London Small Arms 
 
 203 ; Rolls w. Isaaes, L. R., 19 Gh. D. Co., L. R., 10 Q. B. 130 ; L. R., 1 
 
 268. App. Cas. 641. 
 
THE UliANT. 151 
 
 public service without being under any obligation to remunerate 
 the inventor has been abolished by sect. 27 of the Act of 1883. 
 
 (1) " A jjcdent shall have to all intents the like effects as against 
 her Majesty the Queen, her heirs and successors, as it has against a 
 subject. 
 
 (2) " But the officers or authorities administering any department 
 of the service of the Croivn may, by themselves, their agents, con- 
 tractors (u), or others, at any time after the application, use the 
 invention for the services of the Crown on terms to be before or 
 after the use thereof agreed on, ivith the approval of the Treasury, 
 between those officers or authorities and the patentee, or, in default 
 of such agreement, on such terms as may be settled by the Treasury 
 after hearing all parties interested." 
 
 Sect. 44 deals with the acquisition by the Secretary of State 
 for War of any inventions dealing with instruments or munitions 
 of war, and with the non-publication of specifications describing 
 such inventions, and generally with the preservation for the 
 public benefit of the secret of them. 
 
 THE CONSTRUCTION. 
 
 " And lastly, we do by these presents for us, our heirs and suc- 
 cessors, grant unto the said patentee that these our letters patent 
 shall be construed in the most beneficial sense for the advantage 
 of the said patentee." These words are inserted in the patent 
 for the purpose of preventing the common rule of construction of 
 grants of the Crown when founded upon a petition being read 
 most strongly against the grantee. This favourable construction 
 will not, however, in any way save the validity of the patent if it 
 can be shown to have been granted upon a false suggestion. 
 
 {it,) Dixon V. The London Small Arms Co., supra. 
 
152 THE LAW OF PATENTS. 
 
 CHAPTER XI. 
 
 AMENDMENT OF SPECIFICATIONS. 
 
 The Patents, &c., Act, 1883, provides for the amendment of 
 specifications in two ways, compulsorily and voluntarily. We 
 have seen that sect. 6 directs that the comptroller shall refer the 
 specification to an examiner. Sect. 7 as amended by sect. 2 of 
 the Patents, &c., Act, 1888, provides that (1), "//' the examiner 
 reports that the nature of the invention is not fairly described, or that 
 the ap2)lication, specif cation, or drawings has not or have not been 
 prepared in the prescribed manner, or that the title does not suffi- 
 ciently indicate the subject-matter of the invention, the comptroller 
 may refuse to accept the application or require that the ajjplication, 
 sjjccif cation, or drawings be amended before he p)roceeds with the 
 application, and in the latter case the application shall, if the comp- 
 troller so direct, bear date as from the time when the requirement 
 is conqilied with.'" Sub-sects. 2, 3, 4, provide for an appeal to 
 the law officer ; and sub-sect. 5 gives directions as to what should 
 be done when there are two applications for substantially the 
 same invention. 
 
 Sect. 9, sub-sect. 1, requires that the examiner shall report to 
 the comptroller as to " ichether the complete specification has been 
 prepared in the prescribed manner, and whether the invention par- 
 ticularly described in the complete specification is substantially the 
 same as that which is described in the provisional specificaiion.^^ If 
 the examiner reports that these conditions have not been complied 
 with, the comptroller may refuse to accept the complete specifica- 
 tion until it has been amended to his satisfaction, subject to appeal 
 to the law officer. 
 
 Sub- sect. 3 : The law officer shall, if required, hear the 
 applicant and the comptroller, and may make an order deter- 
 
AMENDMENT OF .SPECIFICATIONS. 153 
 
 mining whether, and subject to what conditions, if any, the 
 complete specification shall be accepted. By sub-sect. 4 the 
 application is rendered void, except in the case of an appeal, 
 unless a complete specification is '^accepted" within twelve 
 months from the date of application. Sect. 94 provides : " Where 
 any discretionary power is by t/iis Act given to the comptroller, he 
 shall not exercise that power adversely to the apjMcant for a patent, 
 or for amendment of a specification .... without {if so required 
 within the prescribed time by the appilicant) giving the applicant the 
 opportunity of being heard personally or by his agent {ci)^ 
 
 These provisions of the law were novel at the date of the Act 
 of 1883. It will be particularly observed that compulsory amend- 
 ment is strictly limited to matters of form. The comptroller has 
 no power to order an amendment on the ground that too much is 
 claimed, or that there is want of novelty, or that the invention is 
 not subject-matter for a patent. It is difiicult to predicate what 
 judicial interpretation will be put upon the words " that the 
 nature of the invention is not fairly described." Is the examiner 
 to be in the position of an expert witness, and to decide whether 
 or not the description is sufiicient to enable a skilled artizan to 
 carry the invention into efiect within the meaning of Jessel, 
 M.R., in Plimpton v. Malcolmson (b) ? or is he merely to see 
 that the language is correct, and that, without going technically 
 into the matter, the specification ajjj)ears to fairly describe the 
 invention ? If the former is his province, it is difficult to see 
 how it is to be carried into effect, since there is no machinery in 
 the Act for the receiving of skilled evidence, such as would be 
 necessary for the purpose of arriving at a satisfactory conclusion 
 upon such a point. The applicant or his agent are aloue to be 
 heard. It is true that by sect. 38, where the applicant appeals 
 he may call witnesses before the law officer, but surely the statute 
 does not contemplate that questions should be gone into which, it 
 is evident, can only be decided on appeal, and even then not 
 satisfactorily without the procedure and care of a regular formal 
 trial. 
 
 Under such circumstances, it may fairly be presumed that the 
 
 («) See also P. R. 1890, rr. 11—14. (h) L. R., 3 Ch. D. 568. 
 
154 THE LAW OF PATENTS. 
 
 meaning of the section is, that the examiner shall report whether 
 the specilication, on the face of it, appears to fairly describe the 
 invention (c). 
 
 In construing sect. 9, it will probably be held that a minute 
 and scientific inspection of the specification is not within the 
 contemplation of the statute. 
 
 It is the duty of the examiner to report whether the specifica- 
 tion contains a full and fair description of the invention, but it is 
 not within his province to decide what the amendment is to be, 
 in cases where amendment is necessary (d). 
 
 Sect. 18 provides for the amendment of the specification by the 
 applicant or patentee. There are several reported cases showing 
 that at common law mere clerical errors in a specification might 
 formerly be amended by the Master of the Rolls and the Lord 
 Chancellor upon petition, but these amendments were strictly 
 limited to verbal or clerical errors arising from mistake or 
 inadvertence (e). In re Gare's Patent in 1884 (/), Brett, M.R., 
 allowed amendments of clerical errors in a specification filed 
 under sects. 27 and 28 of the Patents, &c., Act, 1852, and said : 
 " The Master of the Rolls is of opinion that sect. 18 of the 
 Patents, &c., Act, 1883, does not afi'ect the power of the Master 
 of the Rolls to allow amendments in a patent specification filed 
 in pursuance of sects. 27 and 28 of the Patent Act, 1852, or 
 which is otherwise to be considered as a record under the authority 
 of the Master of the Rolls. So long as the specification is in the 
 Patent Office, and before the patent is sealed, the Master of the 
 Rolls considers that the proceedings of sect. 18 should be the 
 only proceedings taken by anyone asking for amendment under 
 that section." 
 
 It would appear from the words printed in italics that the 
 jurisdiction of the Master of the Rolls is still intact with reference 
 to amendments after sealing. 
 
 (c) Brown's Patent, Griff. L. 0. C. 1. TVJiitehouse's Patent, 1 Web. P. C. 
 
 (rf) In re C.'s aiipUcation, 7 P. 0. R. 649, note {m) ; In re Ruhery's Patent, 
 
 250. 1 Web. P. C. 649 {n) ; In re Dismore's 
 
 (c) In re Sharp's Patent, 1 Web. Patent, 18 Beav. 538 ; In re Adams' 
 
 P. C. 641 ; In re NickeVs Patent, 1 Patent, 21 L. T. 38 ; Re Joh'iison's 
 
 Web. P. C. 650 ; In re Redmund's Patent, L. R., 5 Ch. D, 503. 
 
 Patent, 1 Web. P. C. 649 {n) ; In re (/) L. R., 26 Ch. D. 105. 
 
AMENDMENT OF SPECIFICATIONS. 155 
 
 In re Berdau's Patent (g), it was held that where a disclaimer 
 had been filed without the consent of the patentee, the Master 
 of the Eolls had jurisdiction without bill filed, to order it to be 
 taken off the file. 
 
 Sect. 91 gives to the comptroller power to correct any clerical 
 error in or in connection with an application for a patent on 
 payment of the prescribed fee (h). 
 
 We have seen that a patent for a very meritorious invention 
 may be utterly vitiated by the patentee claiming something 
 which is not new ; so, also, a patent might be rendered void by 
 reason of innocent misdescription or misrepresentation. 
 
 The common law power of amendment being found insuffi- 
 cient for the purposes of justice in such cases, the Act 5 & 6 
 Will. IV. c. 83, was passed, enabhng " ani/ person icho as grantee, 
 assignee, or otherwise, hath obtained, or shall hereafter obtain, 
 letters patent, &c.," with the leave of the law of&cer, might 
 disclaim any part of the " title of the invention or of the 
 specification, stating the reason for such disclaimer ; " or might, 
 with such leave as aforesaid, " enter a memorandum of any 
 alteration in such title or specification (not being such disclaimer 
 or such alteration as shall extend the exclusive right granted by 
 the said letters patent), &c., &c." The case of Spilsburi/ v. 
 Clough (i) having very much limited the meaning of the M'ords 
 of the statute, printed above in italics, the Act 7 & 8 Yict. c. 69, 
 was passed, giving power to the original patentee, or his assignees, 
 or both jointly, in the event of any interest in the patent 
 remaining in the original patentee, to file a disclaimer or memo- 
 randum of alteration. 
 
 It will be observed that prior to the Act of 1883 any 
 disclaimer or amendment made by the patentee was entii-ely 
 at his own peril, and that in any subsequent action involving the 
 validity of the patent objection might be taken to the disclaimer 
 or amendment on the ground that it really extended the patent 
 beyond its original limits. 
 
 The provisions of sect. 18 of the Act of 1883, as amended so 
 
 ((/) L. R., 20 Eq. 346. d) 2 Q. B. 466. 
 
 (7;,) See also P. R. 1890, r. 16. 
 
156 THE LAW OF PATENTS. 
 
 far as sub-sect. 10 is concerned by sect. 5 of the Patents, &c., 
 Act, 1886, are as follows : — 
 
 " (1) An applicant or a pafenfee may from time to time, hy 
 request in ivriting left at the Patent Office, seek leave to amend his 
 specification, including draivings forming part thereof, hy ivay of 
 disclaimer, correction, or explanation, stating the nature of such 
 amendment and his reasons for the same." 
 
 When the comptroller- general has not required an amend- 
 ment, all amendments by the applicant or patentee from the date 
 of lodging the complete specification must be made under section 18. 
 
 " The patentee," as has been pointed out in a previous 
 chapter, means the person for the time being entitled to the 
 benefit of the patent, while " the applicant " means the person 
 whose patent has not yet been sealed, but whose complete 
 specification has been lodged. 
 
 In Jones' Patent {k), an application to amend was made 
 subsequent to filing the complete specification, but prior to its 
 acceptance by the Patent Office, and the point whether the 
 application was rightly made under sect. 18 of the Act was taken 
 before the Attorney- General, Sir K. "Webster, who, in his 
 decision, said : " The language of sect. 18 of the Act is some- 
 what obscure ; but I am of opinion, having regard to the earlier 
 sections, particularly 7 and 9, that section 18 was intended to 
 apply to the amendment of specifications after they had become 
 public property. Any other amendments must, in my opinion, 
 be dealt with under sects. 7 and 9, and not under sect. 18. 
 Under these circumstances, I am of opinion that the fact that the 
 office had not signified its acceptance of the complete specification 
 as lodged is immaterial, and that any proceedings for amendment 
 must be taken in pursuance of sect. 18." 
 
 The words " public property " in this decision clearly mean 
 the date of lodging the specification in a public office ; it cannot 
 mean open to the public, as in this case that time had not 
 arrived ; in that case the comptroller-general did not require 
 the application for leave to amend, and the nature of the 
 amendment to bo advertised, on the ground that the specification 
 
 {k) Griff. P. C. 313. 
 
AMENDMENT OF SPECIFICATIONS. 157 
 
 was not open to public inspection, and it does not appear clear, 
 from the decision of the Attorney- General, whether, in pro- 
 ceedings for amendment before the acceptance of a complete 
 specification taken under sect. 18, the application should be 
 advertised in accordance with the provisions of sub-sect. 2, in 
 spite of the fact that the complete specification is not open to 
 public inspection at that time. 
 
 " Correction or explanation " does not include amendment by 
 the insertion of subsequently ascertained knowledge ; it is 
 only allowed for the purpose of explaining more clearly the 
 meaning of the patentee at the time when he patented his 
 invention, that is to correct and explain the enunciation of his 
 invention as he intended originally to give it (/). 
 
 Under this section there is power neither to amend the title 
 nor the provisional specification. "When a complete specification 
 is filed with a narrower title than the provisional, the proper 
 course for the 0. G. to adopt is to amend the title of the pro- 
 visional under sect. 7, or to give the applicant liberty to insert 
 a disclaiming clause in the complete specification and assimilate 
 the title of the complete to that of the provisional (m) (this 
 latter course, it appears to the author, would be dangerous). 
 
 Under the Act of Will. lY., when a patentee sought to 
 disclaim it was necessary that he should give his reasons for the 
 proposed disclaimer, but he was not compelled to state reasons for 
 a proposed alteration. Under the present statute he must give 
 his reasons for any amendment whatever the form of the amend- 
 ment may be. The reasons will, of course, vary with each case — 
 either that the patentee has discovered that parts of the invention 
 claimed are not new, or are useless, or are not sufficiently 
 described, or that they will not work. 
 
 The reasons for an amendment form no part of the amendment 
 itself (n). 
 
 If the reasons do not disclose any ground on which the amend- 
 ment ought to be allowed, the application will be dismissed (o), 
 
 {I) Per Sir R. Webster, in Beck v. (n) Cannington v. Nuttall, L. R., 
 
 Justice, Griff. L. 0. C. 10. 5 H. L. 205, 227, 228. 
 
 {in) Per Sir R. Webster, in Dart's (o) Re NordenfeWs Patent, Griff. 
 
 Patent, Griff. P. C. 307, L. 0. C. 18. 
 
158 THE LAW OF PATENTS. 
 
 but the amendment will not be refused merely on the ground 
 that the reasons given for it are insufficient (p). 
 
 Sir E. Clarke, S.-G., in Re Lang^s Patent (q), summed up the 
 jurisdiction of the L. 0. under the 18th section in the 
 following words : "I do not doubt that I have power to allow 
 any amendments, whether of the letterpress of the specification, 
 or of the drawings, or by way of adding drawings, if drawings 
 have not in the first instance been appended to the specification, 
 necessary to define the disclaimer which it is desired to make." 
 
 Prohibition will not lie to the law officer in the exercise of his 
 discretion under this section : Mp parte Simon, Times, Aug. 6, 
 1888, C. A. (/■). 
 
 " (2) The request, and the nature of such proposed amendment, 
 shall be advertised in the prescribed manner, and at any time within 
 one month from its first advertisement any person may give notice 
 at the Patent Office of opposition to the amendment" 
 
 In Ashu-orth's Patent, Sir H. Davey, S.-G., said: "The 
 sect. 18 (2) does not in terms say the reasons are to be adver- 
 tised, but probably the reasons are a part of the request " (s). 
 
 This sub-sect, enacts that any person may oppose ; wherefore it 
 would appear that the C. G. has no power to consider the title of 
 the opponent, although the C. G. decided against an opponent on 
 the ground that he was not entitled to be heard in the case of 
 BelVs Patent (t). 
 
 Rule 53 of the Patent Eules of 1890, provides that : 
 
 " 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 amend- 
 ment, and must be signed by him (u). Such notice shall state 
 his address for service in the United Kingdom, and shall be 
 accompanied by an unstamped copy." 
 
 Rule 54. " On receipt of such notice the copy thereof shall be 
 transmitted by the comptroller to the applicant." 
 
 (p) Per Sir H. Davey, S.-G., Re (s) Griff. L. 0. C. 7. 
 
 Ashiuorth's Patent, Griff, L. 0. C. 7. (0 Griff. L. 0. C. 10. 
 
 {q) 7 P. 0. R. 469, 471. {u) For form of notice of opposition, 
 
 (r) In re Van Ocldcr's Patent, 6 see Appendix, p. 445, post. 
 
 P. 0. R. 22, 27. 
 
AMENDMENT OF SPECIFICATIONS. 159 
 
 Rule 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 declara- 
 tions in support of his opposition, and on so leaving shall deliver 
 to the applicant a list thereof." 
 
 Rule 56. " Upon such declarations being left, and such list 
 being delivered, the provisions of Rules 38, 39, 40, 41 and 44 
 shall apply to the case, and the further proceedings therein shall 
 be regulated in accordance with such provisions as if they were 
 here repeated." 
 
 " (3) Where such notice is given the comptroller shall give notice 
 of the opposition to the pcrso)i making the request, and shall hear 
 and decide the case subject to an appeal to the law officer.'" 
 
 The comptroller exercises the power to impose conditions 
 given in express terms to the law officer under sub-s. 4 (x). In 
 Codd's Patent (//), he ordered as a condition of allowing an 
 amendment (1), that no proceedings be taken against opponent 
 A. in respect of infringements committed prior to the 1st January, 
 1884 ; (2), that the applicant pay to opponent A, 10 guineas as 
 and for his costs of and incident to his opposition to the abortive 
 application of 10th July, 1884. It is however clear that the 
 C. G. has no power to give costs as a condition of amendment (s). 
 
 In Cochra)ie's Patent (a), the opposition to the amendment 
 and the opposition to the grant were fixed for hearing before the 
 C. Gr. on the same day ; the C. Gr. elected to hear the amendment 
 case first on the ground that if the application were successful, 
 the sting would be taken out of the opposition to the grant. 
 
 " (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 allou-ed." 
 
 Any person who would be injuriously affected by a void patent 
 becoming valid is a person entitled to be heard {b). 
 
 {x) Peitsclimann s Patent, GritF. {z) PietscMiann's Patent, Griff. P. C. 
 
 P. C. 314 ; Hearson's Patent, Griff. 314. 
 
 P. C. 309 ; Andreiv v. Crossley, 9 {a) Griff. P. C. 304. 
 
 P. 0. R. 168. (h) See the conditions imposed in 
 
 [ij) Griff. P. C. at p. 307. Ec Mecllock's Patent, Newton's London 
 
inO THE LAW OF PATENTS. 
 
 In AUen^s Patent (r), application was made to amend a specifi- 
 cation dated 1885. The opponents asked that a condition 
 should be imposed that Allen should not bring any action or 
 bring any proceedings whatever against them or any of their 
 customers, &c., in respect of any pipes which had been sold or 
 contracted to be sold prior to the amendment. Sir E. Clarke, 
 S.-G., having consulted Sir R. Webster, A.-G., gave the following 
 decision : " I have carefully considered the question whether in 
 allowing this amendment I ought to impose any condition as to 
 the bringing of actions for infringement prior to the date of the 
 amendment. This appears to be the first case in which that 
 question has come up for decision in respect of patents issued 
 since the passing of the Act of 1883. In several cases which 
 came before the law ofiicer shortly after the passing of this 
 Act, I find that they imposed, as a condition of the amendment, 
 that no action should be brought for infringements prior to 
 1st January, 1884. An examination of these cases, as reported 
 in Griffin's P. C, shows that the reason for their so doing, and 
 in each case (whatever its date) referring back to the 1st January, 
 1884, was, that they doubted whether sect. 20 would avail to 
 protect persons who were sued for infringements alleged to have 
 been committed prior to the passing of the Act [d). No such 
 question arises here. This patent was dated 20th October, 1885, 
 and if after amendment an action is brought for a prior infringe- 
 ment, it is clear that the Court will have to decide whether the 
 matters referred to in sect. 20 have been established to its satis- 
 faction. I do not think that I am entitled to substitute my 
 opinion for that of the Court. Again, I do not think that I 
 could in strictness attach this as a condition to the allowance of 
 this amendment. I could only require an undertaking from the 
 applicant as was required by Sir H. James, A.-G., in the Westing- 
 house Case. If he were to refuse to give such an undertaking, I 
 
 Journal, new series, vol. 22, p. 69 ; [c) Griff. L. 0. C. 3. 
 
 also Re Smith's Patent, Macr. P. C. {d) Re Hearson, 1 P. 0. R. 213 ; Re 
 
 232, in which cases great care was Haddan, Griff. L. 0. C. 12; Re Checse- 
 
 taken to i^rotect the vested interests of hrough, Griff. P. C. 303 ; Re Westing- 
 
 persons who had acquired rights by house, Griff. P. C. 315 ; Andrew v. 
 
 reason of the imperfect condition of Crossley, 9 P. O. R. 168. 
 
 the original specification. 
 
AMENDMENT OB^ SPECIFICATIONS. 161 
 
 do not feel myself entitled by that refusal to deprive liiiu ot ihe 
 opportunity of protecting the real invention described in his 
 specification, by a disclaimer of that which I am satisfied he does 
 not mean to claim. I therefore do not think I can properly 
 impose this condition." 
 
 In Cheesehorough' s Patent (e), the conditions were that no 
 action should be brought with reference to any lamps made sold 
 or used before the date of the amendment, and that any lamps so 
 made might be used or sold after the date of the amendment 
 without infringing. In the case of a second disclaimer the law 
 ofiicer will be disinclined to give costs to the patentee even if 
 successful (_/') . 
 
 In the case of applications for leave to amend patents granted 
 under the Act of 1883, the law ofiicer on allowing the applica- 
 tion will not impose any conditions except under special circum- 
 stances. In Ashworth's Patent (g), Sir H. Davey, S.-G., said : 
 " If I saw or if there was any evidence before me that the patent 
 had been used for the purpose of endeavouring to obtain a 
 monopoly larger than that which the specification as amended 
 claims, I should consider that a special circumstance. If, for 
 example, the patentees had been threatening persons and 
 endeavouring to prevent persons from making or selling wire 
 hardened and tempered in a mode diff'erent from that which is 
 claimed, I should consider that a special circumstance, and 
 under those circumstances, as far as I am personally concerned, 
 I should impose the condition that no action should be brough<". 
 for anything done at any time before the amendment " (h). 
 
 The specification is considered to be amended from the moment 
 that leave to amend is given, and the conditions imposed, if any, 
 agreed to (/), no written undertaking by the applicant is necessary 
 although it is the practice in the patent office to require some 
 such undertaking as conclusive evidence of the agreement (A-), 
 
 (c) Griff. P. C. 303 ; see also the (h) See also lie Allen's Patent, Griff, 
 
 terms imposed in Wcstinghousc' s L. 0. C. 3 ; Re Haddan, Griff. L. 0. C. 
 
 Patent, Griff. P. C. 315. 13. 
 
 (/) Haddan s Patent, Griff. L. 0. C. {i) Aiulrew v. Crossley, 9 P. 0. R. 
 
 12. 165. 
 
 ((/) Griff. L. 0. C. 9. (^•) Ibid, at p. 168. 
 
 T. M 
 
162 THE LAW OP PAT?]NTS. 
 
 since the written assent precludes the patentee from alleging that 
 he did not accept the condition (l). 
 
 The power of the law officer to grant costs is expressly con- 
 ferred by the 38th sect, of the Act of 1883 {m). 
 
 In )-e Ashuvrth's Patent (n), the law officer refused to grant 
 costs to the applicant although successful, on the ground that 
 the specification was so loosely framed it was natural that rival 
 traders should oppose an application for leave to amend. 
 
 In re Lalce^s Patent (o), which was an unopposed applica- 
 tion for leave to amend, the applicants appealed to the law 
 officer against the decision of the C. Gr., Sir R. Webster, A.-G., 
 allowed the appeal on the ground that a doubtful amendment 
 ought to be allowed, but refused to give costs. " In fact," he 
 said, " I may say that I think it would be better, as a matter of 
 practice, that in the absence of very special circumstances the 
 C. G. should neither give nor receive costs." 
 
 In re Morgan's Patent (p), which was a successful appeal to 
 the law officer from the decision of the C. G., appKcation was 
 made for the return of the stamp on the notice of appeal. Sir R. 
 Webster, A.-G., refused this application on the ground that he 
 considered the case to be one in which the C. G. was quite right 
 in declining to allow the amendment in the first instance and to 
 leave it to the law officer. 
 
 " (5) When no notice of 02)positiou is given, or the person so 
 giving notice does not appear, the comptroller shall determine 
 whether, and subject to what conditions, if any, the amendment 
 ought to lie allowed.'" 
 
 The exercise of discretionary power vested in the C. G. by the 
 Patents and Trade Marks Acts is regulated by sect. 94, of the Act 
 of 1883, and Patent Office Rules, 1890, rr. 11—14. 
 
 " (6) When leave to amend is refused by the comptroller, the 
 person making the request may appeal from his decision to the law 
 officer. '' 
 
 A notice of appeal must be filed in the Patent Office within 
 
 {I) And.rev: v. Crossley, 9 P. 0. R. at Appendix C. 
 
 .. 169 ; see also Re Berdan, L. R., 20 {n) Griff. L. 0. C. 9. 
 
 Eq. 346. {o) Griff. L. 0. C. 17. 
 
 !;;i) Stc iiLso L. (). 1!. r. xi. (;^) Griff. L. 0. C. 17. 
 
AMENDMENT OF SPECIFICATIONS. 1G3 
 
 14 days from the date of the decision appealed against, in every 
 case where appeal to the law officer from a decision of the C. G. 
 is allowed under the Acts (q) ; the practice on appeal is regulated 
 by the Law Officers' Rules. 
 
 " (7) T//e law officer shall, if required, hear the person mahiiig 
 the request and the comptroller, and may mahe an order determumni 
 whether and subject to what conditions, if any, the amendment 
 ought to lie allowed. 
 
 " (8) No amendment shall he allowed that wonld mahe the 
 specification as amended, claim an invention suhstantially larger 
 than or suhstantially different from the invention claimed hy the 
 specification as it stood hefore amendment." 
 
 It will he observed that the amendments under the new Act 
 are to be by disclaimer, correction or explanation, provided the 
 amendment does not cause the specification to claim an invention 
 substantially larger or different. The Act of Will. lY., after 
 using the words " disclaimer " and " alteration," provided that 
 no extension should take place in the " exclusive right " granted 
 by the letters patent. 
 
 It was always a question of great difficulty whether or not a 
 disclaimer or alteration extended the "exclusive right" of the 
 patentee. For instance, if in his original specification, after 
 describing several improvements in a process of manufacture, he 
 proceeded to claim them all, and it should turn out that one of 
 his improvements was old, the whole patent was bad and the 
 patentee had no exclusive right at all ; if he then disclaimed the 
 objectionable portion, his patent became good as to all the rest. 
 There was clearly, therefore, an extension of the exclusive right, 
 notwithstanding that this was the very case the statute was 
 passed to meet. Mr. Justice Maule's view of the Act of 
 Will. IV. was : " Whereas there were previously many small 
 and trifling objections by which, if they were sustained against 
 any one of many important inventions, the whole was avoided. 
 In such cases amendments may now be made by means of a 
 disclaimer" (r). 
 
 Romilly, M.R., in the same case (s), at the Rolls, said : " It is 
 
 (g) L. 0. Rules, r. i. ; p. 455, post. page 24 ; 10 C. B. 379 ; 15 Jur. 59 
 (r) R. V. Mill, 20 L. J., C. P. at (s) 14 Beavaii, at page 315. 
 
 M 2 
 
164 THE LAW OF PATENTS. 
 
 proper they (patentees) should be allowed to correct errors in 
 their patents by removing from the specification parts which are 
 not material or substantial, or which they have since discovered 
 not to be new inventions ; but this power ought to be exercised 
 with great care and discretion." There is a case reported in 
 Macrory's Patent Cases at page 116, where Sir Richard Beth ell, 
 when Solicitor-General, allowed a patentee to enter a disclaimer, 
 the effect of which was to enable him to claim for a combination, 
 the original claim being for the several parts of the described 
 invention. When afterwards he became Lord Westbury he 
 described the words of this statute as vague and indefinite, and 
 said : " Possibly they mean that the patent must not, by the 
 operation of the disclaimer, be made to include or comprehend 
 something which was not originally contained in the patent. 
 The invention claimed may be reduced or diminished, but it 
 must not be extended or enlarged " (f). 
 
 The case of Ralston v. Smith (u), shows the difficulty which 
 the Courts had in reconciling a disclaimer which might make a 
 patent valid which was void ab initio, with the prohibition 
 against extending the exclusive right. The judgment of Lord 
 Chelmsford, as reported, is remarkable for its cautious vague- 
 ness, and the care which seems to have been exercised not to lay 
 down anything approaching to a general principle. Under the 
 Act of 1883 it is not the exclusive right which must not be 
 extended, but the invention must not be substantially larger or 
 different. 
 
 The decision of the law officer is final, and cannot be appealed 
 against (.r), consequently in cases of doubt leave to amend will be 
 granted (y) since if the amendment is bad under sub-sect. 8 it 
 can bo questioned when the point comes before the Court (s). 
 Although no one case upon this subject can well be authority for 
 the decision of another, a consideration of a few of the decided 
 
 (t) Foxwell V. Bostock, 4 De G. J. & Grifl'. L. 0. C. 16. 
 
 S. at page 306 ; 12 W. R. 723 ; 10 [y) Re Lakes Patent, Griff. L. 0. C. 
 
 L. T., N. S. 144. 16 ; In re Bateman d: Moore's Patent, 
 
 (u) 11 H. L. C. 2*3; 20 C. B., Macr. P.O. 116. 
 
 N. S. 28 ; 13 L. T., N. S. 1. (z) Be Van Gclder's Patent, 6 
 
 {x) Bateman <£• Moore's disclaimer, P. 0. R. 22. 
 M CI. P. C. 116 ; Be Lakes Patmt, 
 
AMENDMENT OF SPECIFICATIONS. 165 
 
 cases will show the lines upon which the law officers go in 
 granting or refusing leave to amend a specification. 
 
 Where no reason was shown by the patentee for requiring the 
 amendment, in the case of a specification which on the face of it 
 was sufficient without it, the law officer refused the applica- 
 tion (a). 
 
 In Hampton 8^' Facer {h) the applicants desired to insert a 
 statement in their specification imputing disadvantage to former 
 patents, the Solicitor- General refused the application on the 
 ground that he was not at all satisfied that the faults imputed 
 to those patents did in reality exist. 
 
 In Beck $f Justice {h b) Sir R. Webster, A.-G., said : " My idea 
 of the function of an explanation within sect. 18 is to explain 
 more clearly what is necessary to understand the meaning of the 
 patentee at the time he patented the invention. I do not think 
 it is intended that he should put in subsequently ascertained 
 knowledge." 
 
 An amendment which in effect amounts practically to the re- 
 writing of the whole specification will not be allowed {c), nor 
 an amendment which abandons the original substantive claim 
 and limits the invention to a subordinate and unimportant 
 alternative (rf). 
 
 The law officer will allow an amendment which upon a fair 
 interpretation tends to limit the scope of the original specifica- 
 tion {e), and where a specification is clearly capable of two con- 
 structions the patentee by amendment can limit himself to one of 
 them (/). 
 
 In Re Bateman 4' Moore's Patent (g) there was evidence upon 
 the face of the specification that the patentees intended their 
 invention to comprise an entire apparatus, at the end of the 
 specification they claimed the several parts of the apparatus, 
 
 {a) Re Morgan, Griff. L. 0, C. 17 ; (c) Re NordenfcU, Griff. L. 0. C. 20 ; 
 
 Re Nordenfelt, Griff. L. O. 0. 18. Cochrane's Patent, Griff. P. C.304. 
 
 (6) Griff. L. 0. C. 15. (/) Re Rylands, 5 P. 0. R. 665 ; see 
 
 {hb) Griff. L. 0. C. 10. also other instances, R. v. MUl, 10 
 
 (') Re Nairn, 8 P. 0. R. 444. C. B. 379 ; Seed v. Higgins, 8 H. L. 0. 
 
 (d) Re Heath d: Frost's Patent, Griff. 550. 
 
 P. C. 311 ; Re Serrell, 6 P. 0. R. 101. {g) Macr, P. C. IIP. 
 
166 THE LAW OF PATENTS. 
 
 Bethell, S.-Gr., allowed the disclaimer the effect of which was to 
 convert tho claim into one for the combination. 
 
 The law officer will not in the absence of satisfactory explana- 
 tion permit repeated applications to be made for the same pro- 
 posed amendment {h). 
 
 (9) " Leave to amend shall he conclusive as to the right of the 
 partf/ to make the amendment allowed, except in the case of fraud {i), 
 and tJte amendment shall in all Courts and for all purposes be 
 deemed toformjMri of the specification." 
 
 Leave to amend, although conclusive as to the right of the 
 party to make the amendment, will not give validity to an 
 amendment which is invalid by reason of the provisions of sub- 
 sect. 8. 
 
 In Foxicell v. Bostock (k), which arose under the similar pro- 
 visions of 5 & 6 Will. lY. c. 83, the amended specification 
 claimed an invention substantially different from that described 
 in the original specification for which the patent was granted. 
 Lord Westbury, L.C., in his judgment, said : " The question 
 then arises, Is the patent void or is the disclaimer void ? And 
 to this question it is not easy to find an answer. There is no 
 express enactment in statute 5 & 6 Will. IV. c. 83, that the 
 disclaimer, if it transgresses the statutory limit, by extending the 
 exclusive right, shall be void to all intents and purposes ; and 
 unless it be so, it must remain enrolled with and always ac- 
 company the letters patent in the specification. It might be 
 proper to hold that the disclaimer is inoperative for the excess 
 only, where that excess is clearly distinguishable ; and this is the 
 course which I have been most anxious to take in the present 
 case." 
 
 In Dudgeon v. Thomson, liord Blackburn, in his judgment in 
 the House of Lords, said : " But when we take, as I apprehend 
 we are entitled to take, the old specification before the disclaimer 
 in order to see what it means, that becomes still clearer. I say 
 we are entitled to take it, for the object of a disclaimer is merely 
 to take out and renounce part of what had been claimed before, 
 and it would vitiate the new specification if by striking out that 
 
 {h) Arnold's Patent, Griff. L. 0. C. 5. (^■) 4 De J. G, & S. 298. 
 
 (i) Jle Berdan, L, 11. 20 Ecj. 346. 
 
AMENDMENT OF SPECIFICATIONS. 167 
 
 part you gave an extended and larger sense to what is left so 
 as to make it embrace something which it did not embrace 
 before "(/). 
 
 In the Matter of Van Geider's Patent (ni), which was a petition 
 for a writ of prohibition to issue against the law officer on the 
 ground that he had allowed a disclaimer which extended the 
 scope of the patent and consequently n/tra vires under sub- 
 sect. 8, Lord Esher, M.R., in his judgment in the Court of 
 Appeal, said : " In my judgment these two sub-sections have 
 not altered the law in the least. The Attorney-General cannot 
 make a valid amendment if it is to substantially enlarge the 
 invention, or make it a substantially different invention. He 
 cannot do it effectively. That is by virtue of sub-sect. 8. Then, 
 if that be so, sub-sect. 9 has not the effect of making that which 
 he has done invalidly, conclusive, and if what he has done is 
 invalid by reason of sub-sect. 8, whenever anybody attempts to 
 put in force that amendment for any purpose, the Court could 
 say that what the Attorney-General has done has not really 
 altered the original specification. Then the matter must be 
 determined according to the original specifie :ition. The amend- 
 ment would be held to be invalid (^0-" Lord Justice Lindley in 
 the same case said : " The amendment referred to (in sub- sect. 9) 
 is not only an amendment made, but an amendment which could 
 be properly made under the Act — an amendment which complies 
 with sub-sect. 8 — 'such an amendment.' If such an amendment 
 as that is made, then such an amendment becomes, in the 
 language of sub-sect 9, for all purposes, part of the specification. 
 It does not mean any amendment whether authorised by the Act 
 or unauthorised by the Act ; that is not the scope of the legisla- 
 tion " (o). 
 
 The above cited cases all lead to the conclusion that where an 
 amendment substantially enlarges the patent or makes the specifi- 
 cation as amended substantially different from the original specifi- 
 cation, the defence of disconformity between provisional specifica- 
 tion and complete as amended, cannot be relied on in an action 
 
 {I) L. R., 3 App. Gas. 55. (o) At p. 28 ; see also In re Sharp's 
 
 {m) 6 P. 6. R. 22. Patent, 1 Web. P. C. 643 ; In re Bate- 
 
 {n) At p. 27. man <& Moore's Patent, Macr. P. C. 116. 
 
168 THE LAW OF PATENTS. 
 
 for infringement, since the amendment is void and the complete 
 specification mnst be read as it stood prior to amendment. 
 
 But in GauJard 8f Gibbs Patent, Lord Justice Lindley said : 
 " We are satisfied that no other construction is worth contending 
 for, and it is, in our opinion, the true construction of the specifi- 
 cation as amended But this construction of the amended 
 
 specification renders the patent hopelessly bad in law, for (1) on 
 this construction the invention is not the same as that described 
 in the provisional specification, but an entirely different inven- 
 tion ; and (2) on this construction the amendment of the com- 
 plete specification has greatly extended the scope of the patent. 
 As already shown, the essence of the invention, as described in 
 the complete specification in its original shape, and as set forth 
 in the provisional specification, lay in the use in combination of 
 a specially-constructed electrical generator which the patentees 
 believed to be superior to all others, and, in fact to have magical 
 powers ; and if they throw this over, they so far depart from 
 their invention as described in those documents as to render the 
 patent they have obtained for it worthless and incapable of being 
 supported " (])). 
 
 In Moser v. Marsden the same Lord Justice said : " An 
 ambiguity of expression is cleared up, but still, if the claim is 
 thereby enlarged so as to make that to be an infringement which 
 would not have been so before, the amendment icill avoid the 
 patent " [q). 
 
 In The Farhenfabriken v. Boiclier (/•),the defendants raised the 
 objections, that the comptroller had allowed certain amendments 
 of the specification which had not been properly advertised, and 
 further that when the application was made for amendment there 
 was an action for infringement pending, and that therefore under 
 sect. .18, sub-sect. 10 of the Act of 1883, no amendment ought to 
 have been allowed, Mr. Justice Romer refused to go behind the 
 order of the comptroller. 
 
 From the above cases it would seem that it is not yet clearly 
 
 [p) 6 P. 0. R. 225 ; see also the Fox v. Kensington and Knighishridge 
 
 same case in the House of Lords, 7 Electric Lighting Co., 9 P. 0. R. 221, 
 
 P. 0. R. 367, 387. 239, 413, 419, 421. 
 
 {g) 10 P. 0. R. 359 ; see also Lane (r) 8 P. 0. R. 389, 397. 
 
AMENDMENT OF SPECIFICATIONS. 169 
 
 settled, wliether, when an amendment extends the scope of the 
 patent, the amendment alone is bad, or whether the whole 
 patent is thereby rendered invalid. 
 
 The fact of an amendment being required by the patentee does 
 not necessarily imply that the original patent was void (s), and 
 Lord Cairns, L.C., in Dudgeon v. TJiojmon, said : " The original 
 specification may have complied with all the exigencies of the 
 law, and been such as is requisite in the case of every patent, but 
 the amended specification may be wanting in all those qualities 
 which are required by the statute " {t). 
 
 (10) " The foregoing provisions of this section do not apply wheriy 
 and so long as any action for infringement or j^roceeding for revoca- 
 tion of a patent is pending.^' 
 
 In Cropper v. Smith (u) the comptroller having declined leave 
 to amend a specification by reason of the 10th sub-sect, of sect. 18 
 on the ground that an appeal was pending to the House of Lords 
 from a decision of the Court of Appeal, declaring the patent in 
 question invalid, and that such appeal was "an action for 
 infringement or other legal proceeding." Application was made 
 to the Court under sect. 19. Chitty, J., held that the words 
 " other legal proceedings " applied to a petition for revocation, 
 and that the words " action for infringement " referred to an 
 action before judgment, and consequently that the appeal to the 
 House of Lords did not deprive the comptroller of the power 
 of amending the specification under sect. 18. 
 
 In Codd V. Bratby {x), liberty to amend under sect. 19 was 
 given upon terms by the Court after a previous refusal by the 
 comptroller under sect. 18, but the applicant was ordered to pay 
 the costs of the application to the comptroller. 
 
 Should a petition for revocation he instituted while an applica- 
 tion for leave to amend is pending, the proceedings before the Comp- 
 troller General are thereupon suspended by virtue of the sub-sect., 
 and can only be revived by leave of the Court under sect. 19 (^). 
 
 (s) Per Tindal, C. J., in Stacker y. 2 P. 0. R. 179, 188. 
 Warner, 1 C. B. 165 ; 9 Jur. 138. (x) Griff. P. C. 56 ; 1 P. 0. R. 209. 
 
 (0 L. R., 3 App. Gas. 38. (y) Re Deeley s Patent, 11 P. O. R. 
 
 {u) 1 P. 0. R. 254 ; L. R., 28 Ch. 72, 76. 
 D. 148 ; see also Lawrence v. Ferry, 
 
170 THE LAW OB' PATENTS. 
 
 Sect. 19. " In an action for infringement of a patent, and in a 
 proceeding for revocation of a patent, the Court or a judge may at 
 any time order that the patentee shall, subject to such terms as to 
 costs or otherwise as the Court or a Judge may impose, he at liberty 
 to apply at the Patent Office for leave to amend his specification by 
 way of disclaimer, and may direct that in the meantime the trial or 
 hearing of the action shall be postponed^ 
 
 Where more than one action is pending, the leave of the Court 
 must be obtained under this section in each action, otherwise the 
 amendment will not be allowed, and each order must be filed 
 under rule 58 {infra) (2) . 
 
 " The Court " as defined by sect. 117 of the Act, means the 
 High Court of Justice, so would not include the House of 
 Lords {a), and " a judge," of a Court, which, though not a High 
 Court, has jurisdiction to try actions for infringement of a patent, 
 can grant leave under this section, consequently the Vice- 
 Chancellor of the Palatine Court can grant leave under this 
 section while an action is pending within his jurisdiction {b). 
 
 It is to be noticed that while an action is pending the amend- 
 ments made with the sanction of the Court are limited to dis- 
 claimer. 
 
 Sect. 19 acts as a limitation upon the general words of sub- 
 sect. 10 of sect. 18, and when permission to apply has been 
 granted under sect. 19 ih.Q provisions of sub-sect. 10 cease to 
 have effect (c), and the procedure in such application is governed 
 by the remaining provisions of sect. 18 {d). 
 
 Sect. 19 gives an absolute discretion to the Court or judge in 
 imposing conditions upon which leave to apply to amend will be 
 granted and the Court of Appeal "will not interfere with the 
 exercise of that discretion unless they can clearly come to the 
 opinion that in their view that discretion was exercised absolutely 
 wrongly " {e). 
 
 {z) Codec s Patent, Griff. P. C. 305. 312. 
 
 (a) Croiyper v. Smith, 1 P. 0. R. (rf) 1% re Hall, 5 P. 0. R. 310 ; 
 256, Lang v. Tlie Whitecross Co., 7 P. 0. R. 
 
 (b) Winter v. Baybui, 1 P. 0. R. 392. 
 
 76 ; see also p. 316, post. (c) Per Lord Esher, M.R., in Allen 
 
 (c) Singer v. Stassen, 1 P. 0. R. v. Doulton, 4 P. 0. R. 384 ; see also 
 121, 123, 124 ; In re Hall, 5 P. 0. R. Bray v. Gardner, 4 P. 0. R. 40 ; Lang 
 
AMENDMENT OF SPECIFICATIONS. l7l 
 
 In Braif v. Gardner Lord Justice Lindley said (_/). " I do not 
 understand that there is any form of order which is invariably to 
 be followed in all cases when application is made under sect. 19. 
 It appears to me that whenever leave is given to amend under 
 sect. 19 of this Act, care ought to be taken that no injustice is 
 done to the defendant by reason of the amendment, if amendment 
 is made, or if leave to apply for it is granted. Adequate protec- 
 tion may be given to the defendant in various cases in various 
 forms." 
 
 It is usually one of the terms upon which the Court grants 
 applications under this section, that the amended specification 
 should not be used as evidence in the action {g), but the words at 
 the end of the section — " and may direct that in the meantime 
 the trial or hearing of the action shall be postponed " — clearly 
 suggest the possibility of cases arising in which the Court would 
 consider it right that the amended specification should be received 
 in evidence at the trial {h). 
 
 In Codd V. Brathy (?), in giving liberty to amend under this 
 section, Chitty, J., said, " It is conceded for the applicant, 
 first, that the amended specification is not to be put in evidence 
 at the trial ; secondly, that no evidence is to be given of any 
 infringement prior to the amendment of the specification. 
 Besides that, it is conceded that the applicant must pay the 
 costs of this application and all the costs that have been thrown 
 away in the action ; " then as to the contention that a condition 
 should be imposed on the plaintiff that he should not sue the 
 defendants on tlie amended specification for future infringements, 
 his Lordship said, " The result of my acceding to this part of the 
 argument would be, that I should be giving to the defendants 
 practically and substantially a licence to infringe the plaintiff's 
 patent when amended .... in the circumstances of this case, 
 
 V. JVhitecross Wire and Iron Co., 6 P. 0. R. 196; see also Za?i(/ v. White- 
 
 P. 0. R. 570, 574; 7 P. 0. K. 389, cross, Co., 7 P. 0. R. 393. 
 
 394. (7i) Bray v. Gardner, 4 P. 0. R. 42 ; 
 
 (/) 4 P. 0. R. at p. 44 ; see also Fusee Vesta Co. v. Bryant <i- May, i 
 
 Lang v. Whitecross Co., 6 P. 0. R. 570, P. 0. R. 71 ; Re Hearson's Patent, 1 
 
 575 ; Meyer v, Sherioood, 7 P. O. R. P. 0. R. 213. 
 283, 285. (i) Gritf. P. C. 56 ; 1 P. 0. R. 209. 
 
 {g) Gaulard <£■ G-ibbs v. Lindsay, 5 
 
172 THE LAW OF PATENTS. 
 
 that would be going too far There may be eases in which 
 
 it would be right to impose such a term. I am not satisfied in 
 the case before me on the evidence, that the defendants are right 
 in their attempt to impute knowledge to the plaintiff many years 
 ago of the invalidity of his patent ; if that point were made out, 
 I think the case might stand on a different footing, because 
 then I should have the case of a patentee with knowledge of a 
 defect in his patent, lying by until a very few months of the 
 expiration of his patent ; and I should have on the other side the 
 defendants saying that they were aware of the invalidity of the 
 patent, that they were advised that the patent was invalid, and 
 that they set up a trade and incurred great expenditure on the 
 faith that the patent was invalid " (k). 
 
 Liberty to apply under this section will not be given after 
 judgment (/). 
 
 Sect. 20. " Where an amendment, hj way of disclaimer, 
 correction or exjjlanation, has been allowed under this Act no 
 damages shall be given in any action in respect of the use of the 
 invention before the disclaimer, correction or explanation, unless the 
 patentee establishes to the satisfaction of the Court that his original 
 claim was framed in good faith and loith reasonable skill and 
 knowledge.'" 
 
 Under the Statute of Will. lY., no disclaimer or amendment 
 could be given in evidence in any action or suit (save and except 
 in any proceeding by scire facias) pending at the time the dis- 
 claimer or amendment was enrolled. The object of this was 
 obvious. It would have been unjust that a defendant should be 
 held guilty of infringing a patent when at the time the action 
 was brought against him the patent was void. The saving 
 clause relating to scire facias was always exercised subject to just 
 provision as to costs, and was inserted with a view to prevent a 
 
 {k) See also as to terms imposed 4 P. 0, R. 40 ; Haslam Foundry Co. 
 
 under this section : dinger v. Stassen, v. Goodfellow, L. R., 37 Ch. D. at p. 
 
 1 P. 0. R. 121 ; 50 L. T. 326 ; Griff. 121 ; Gaulard v. Lindsay, 5 P. 0. R. 
 
 P. C. 207 ; Fusee Vesta Co. v. Brxjant 192 ; Lang v. WUtecross Co., 6 P. 0. 
 
 d;May, L. R. 34 Ch. D. 458 ; 56 L. J., K. 570. 
 
 Ch. 187 ; 56 L. T. 110 ; 4 P. 0. R. 71 ; (l) Lawrence v. Perry, Griff. P. C. 
 
 Bray v. Gardner, L. R., 34 Ch. D. at p. 148. 
 668 ; 56 L. J., Ch. 497 ; 56 L. T, 292 ; 
 
AMENDMENT OF SPECIFICATIONS. 173 
 
 patent being repealed on account of some trifling error which 
 might have been cured by disclaimer or alteration. The entry of 
 a disclaimer under the old Act did not make a void patent valid 
 ah initio, " so as to make any person a wrongdoer by relation," 
 and in Ferry v. Skinner {m) it was held, that the words " from 
 thenceforth " must be read into the specification. Proceedings 
 by scire facias are abolished by sect. 26 of the Act of 1883, and 
 a petition to the Court is substituted, the grounds for the petition 
 being the same as heretofore in scire facias. Although we have 
 seen that sub-s. 10 of sect. 18 prohibits any amendment under 
 that section pending legal proceedings (including proceedings by 
 way of revocation), sect. 19 provides machinery for saving a 
 patent in the event of the Court or judge being of opinion that 
 a disclaimer should be allowed upon such terms as may appear 
 just (»). It will be observed that the Court or judge have no 
 power to permit amendment by " correction or explanation " 
 under this section. 
 
 (Sects. 19 & 20 must be read together (o), and if an applica- 
 tion under sect. 18 or 19 is granted without the imposition of 
 terms, the amendment on being made will be retrospective only, 
 if the patentee can show that his original claim was framed 
 in good faith and with reasonable skill and knowledge (p). 
 
 In IfopIxi)ison v. St. James and Pall MaN Electric Light Co. (q), 
 judgment was given for plaintiff with the usual relief, the 
 defendants referred to sect. 20, and asked that the account of 
 profits should be kept only from the date of the amended speci- 
 fication; Romer, J. refused the application and said that "he 
 thought it was clear from the evidence which was before him, 
 that the plaintiff's onginal claim was framed in good faith and 
 with reasonable skill and knowledge." 
 
 (m) Hiudmarcli, p. 207 ; 2 M. & W. (o) Lang v. Whitccross, 7 P. 0. R. 
 
 471 ; 1 Web. P. C. 250 ; 6 L. J., Ex. 391. 
 
 124. (p) Wenliam v. Carpenter, 5 P. 0. R. 
 
 {n) As to what are just terms, see 68 ; see also Lucas' Patent, Macr. P. C 
 
 supra, and In re Smith's Patent, Macr. 235. 
 
 P. 0. 232 ; In re Mcdlock's Patent, (q) 10 P. 0. R. 46, 62 ; see also 
 
 Newton Loudon Journal, new series, Meyer v. Sherwood, 7 P. 0. R. 283, 
 
 vol. 22, p. 69. 286. 
 
174 THE LAW OF PATENTS. 
 
 In Dudgeon v. Thomson (r), an interdict granted prior to the 
 amendment was refused to be enforced after the amendment, 
 on the ground that the amendment materially altered the patent, 
 and that it was quite possible that there was no infringement of 
 the j^atent as altered. 
 
 Section 21. " Every amendment of a specijication shall he 
 adrerfised in the prescribed manner." 
 
 P. R. 1890, r. 59, provides that such advertisement shall be 
 in the official journal of the Patent Office, and in such other 
 manner (if any) as the comptroller may direct. 
 
 The effect of sections 18 — 20 of the Act is summed up in the 
 judgment of A. L. Smith, J,, in JRe Hall and Others (s) : 
 " Sect. 18 gives power to a patentee, when he finds out the 
 blunder in the specification himself, to seek leave to amend his 
 specification by way of disclaimer, correction or explanation, and 
 he can go propria motn, to the comptroller, and say, * I want to 
 amend the blunder I have got in my specification as regards 
 disclaimer, correction, or explanation.' Then there are a series 
 of sub-sects, showing what the comptroller is to do ; how notice 
 is to be given ; what has to be done, and how other parties may 
 come in and object ; and the last sub-sect, it seems to me, is most 
 natural : ' The foregoing provisions of this section do not apply 
 when and so long as any action for infringement or other legal 
 proceeding in relation to a patent is pending' (t). That means 
 this, that where a patent is in litigation, he should not go behind 
 the back of the other party and get these amendments and set 
 
 himself quite right What would happen if that 
 
 had remained there ? After litigation had been commenced, if 
 there had been no sect. 19, the patentee, as soon as the writ 
 was issued, would be fixed, no matter what small technical 
 blunder there might be in his specification. But what the 
 Legislature says is this — and I read sect. 19 as a proviso to sect. 
 18 : — ' Provided always that a judge or the Court may give 
 liberty,' but only liberty .... to the patentee to apply 
 
 (r) L. R., 3 App. Cas. 34. {t) This sub-sect, is amended b 
 
 (s) 5 P. 0. R. at p. 312. sect. 5 of Act of 1885. 
 
AMENDMENT OF SPECIFICATIONS. 175 
 
 at the Patent Office for leave to amend his specification by way 
 of disclaimer." 
 
 It has already been noticed that where leave to apply has been 
 granted and the amendment allowed, without a term being 
 imposed that the amendment shall not be retrospective, then the 
 specification must be tested by the provisions of sect. 20, and the 
 amendment will only be retrospective in its action if it can be 
 clearly shown that the original claim was framed in good faith 
 and with reasonable knowledge. 
 
176 THE LAW OF PATENTS. 
 
 CHAPTER XIL 
 
 THE DEVOLUTION OF A PATENT. 
 
 "We have seen that a "patentee " is " the person for the time 
 being entitled to the benefit of a patent." This includes the 
 first inventor and any person or persons in whom the patent may 
 have become vested by operation of law or by assigment. 
 
 The property of a patent passes, by operation of law, when 
 the patentee dies or becomes a bankrupt. Upon the death of a 
 patentee his interest in the property passes to his executors or 
 administrators as the case may be in the like manner to the rest 
 of his personal estate. Any step which in the Act is required 
 to be taken by the patentee, may be taken by the executor or 
 administrator, and sect. 34 of the Act provides that — " (1) If a 
 person, 2)ossessed of an invention, dies ivithout making application 
 for a patent for the invention, application may be made by, and a 
 patent for the invention granted to, his legal representative." This 
 undoubtedly, seeing the terms of the grant itself, will mean his 
 legal personal representative (a). Some letters patent of the 
 Crown (not for inventions) have a limitation to heirs or heirs 
 male, such, for instance, as patents of nobility. 
 
 If the patentee becomes bankrupt the property in the patent 
 will pass to his receiver, trustee or assignee in bankruptcy (b). 
 It is doubtful whether the doctrine of apparent possession can be 
 said to affect a patent right. The Lord Chancellor, in 1812, 
 seems to have thought that it did (c). This, however, can hardly 
 be quoted as an authority. The persons in whom the patent 
 
 {a) See Ee Edmund's Patent, Griff. R. 215 ; McAlpine v. Mangnall, 15 
 
 P. C. 281. L.J., C. P. 298. 
 
 {b) Hesse V. atevcnson, 3 B & P. (c) ^ee Ex parte Granger, Godson on 
 
 565 ; see also Bloxam v. Elsce, 9 D. & Patents, 2nd ed. p. 225. 
 
THE DEVOLUTION OF A PATENT. 177 
 
 vests, by reason of bankruptcy, are placed in all respects iu the 
 position of the original patentee, and may sue in respect of 
 infringements (d). 
 
 The second method of devolution is by assignment inter vivos. 
 This may be done either by absolute assignment of the whole 
 of the patent, or by absolute assignment of the patent right for 
 a limited area, or by assignment by way of mortgage, or by the 
 grant of licences. 
 
 The right of the original inventor to assign the exclusive right 
 which has been granted to him is recognised in the patent itself, 
 which is granted to the said A. B., his executors, administrators 
 or assigns. "Without these words of limitation the property in 
 the patent right would be merely personal, attaching to the 
 person of the first inventor and becoming extinguished by his 
 his death. 
 
 By sect. 36 of the Act, " a patentee may assign his patent for 
 any place in or part of the United Kingdom or Isle of Man, as 
 effectually as if the patent were originally granted to extend to that 
 place or piart only." 
 
 The patent itself being a deed the assignment must also be by 
 deed (e) ; but a parol agreement to assign will operate as an 
 equitable assignment of the patent ( /'), and specific performance 
 of such an agreement will be enforced [g). 
 
 Assignment may be made to any person, or to any two or more 
 persons as tenants in common, or to a body corporate. 
 
 Executors may assign a patent after the grant, but prior to 
 registration of the probate {h). 
 
 The assignment of a patent with no express warranty incor- 
 porated in the contract, like the assignment of an ascertained 
 chattel, carries with it no implied warranty of its quality (^), and 
 the question to be decided in each case is : " Did the defendants 
 buy a good and indefeasible patent right, or was the contract 
 
 (d) Bloxam v. Elsee, supra. N. S. 1079. 
 
 (e) Co. Lit. 9 b, 172 a ; Stewart v. {i) Hall v. Cornier, 26 L. J., C. P. 
 Casey, 9 P. 0. R. 9, 13. 138, 142 ; kmith \. Neale, 26 L. J., 
 
 (/) Stewart v. Casey, 9 P. 0. R. 9. C. P. 143, 148 ; see also 56 & 57 Vict. 
 [g) Lewin v. Broivn, 14 W. R. 640. c. 71, sect. 14, ss. 1. 
 {h) Ellivood V. Christy, 10 Jur., 
 
 T. N 
 
178 THE LAW OF PATENTS. 
 
 merely to place the defendants in the same situation as the 
 plaintiff was in, with reference to the alleged patent ? " (k). 
 
 "NVhere the plaintiff purports to assign the exclusive right of 
 selling certain things for the manufacture of which a patent had 
 been obtained, there is in such case an implied warranty that the 
 patent is a valid one, since otherwise it would be impossible to 
 assign such exclusive right (/). 
 
 Upon assignment of a patent without a warranty the assignee 
 may not, in an action upon the contract of assignment, set up 
 the invalidity of the patent as a defence ; the cases and considera- 
 tions which arise upon this point will be left to be dealt with in 
 the succeeding chapter under the head of " Estoppel." 
 
 In Re Raihcay and Elect vie Appliances Co. {m), the patentees 
 made an absolute assignment of their patent to the company on 
 the terms that the company should pay to them a royalty upon 
 every article " which should be manufactured or sold by the 
 company" under the patent "while subsisting," and also a share 
 of the profits ; through inadvertence the renewal fee at the end 
 of five years from the date of the patent was not paid by the 
 assignors, and it was held by Kay, J., that there was no 
 term in the contract, express or implied, whereby the assignees 
 could be held liable on account of the lapse of the patent and 
 consequent loss of royalties to the assignors. 
 
 An assignee of a distinct part of a patent is entitled to sue 
 for an infringement of that part without joining the persons who 
 are interested in the remaining part or parts (n). 
 
 Where an assignee of a patent covenants with the assignor for 
 himself and his assigns that he will work the patent and pay 
 certain royalties thereon to the assignor, a subsequent assignee 
 with notice takes the patent subject to those covenants (o) ; so 
 too an assignee can maintain a suit against subsequent licensees 
 of the assignor with notice of the assignment, to restrain them 
 from using the patent (p). 
 
 (k) Per Cre.sswell, J., in Hall v. {n) Dunnicliff v. Mallett, 7 C. B., 
 
 C'ondxr, 26 L. J., G. P. 143. N. S. 209 ; 29 L. J., C. P. 70. 
 
 (I) CJuDiter V. L'-csc, 5 M. cV W. (o) JVerderman v. SocUte Genemle 
 
 6;iS; IMl V. Coiuler, 26 L. J., C. P. D' Electridte, L. R., 19 Ch. D. 246. 
 
 143. ) Hcissall v Wright lit, L. R., 10 Eq. 
 
 (mj L. 1!., 38 CIi. D. ,^)97. 
 
THE DEVOLUTION OF A PATENT. 179 
 
 An agreement by the vendor of a patent to assign to tlic pur- 
 chaser, all patent rights that he may subsequently acquire of a 
 like nature to the patent then sold, is not contrary to public 
 policy and will be upheld (q) ; so too a covenant by a licensee for 
 the residue of a term of 14 years, of patented improvements in 
 machinery for slubbing fibrous substances, not to make or vend 
 any slubbing frames whatever without the invention applied to 
 them, was held not to be void as a covenant in restraint of trade, 
 and although the licensee subsequently discovered that the patent 
 was useless and no one could be induced to purchase frames to 
 which it was applied, the Court held that this was no answer to 
 the action (r). 
 
 "Where a grant of letters patent has been made to two or more 
 persons, or has been assigned by the original patentee to two or 
 more persons, each of the co-grantees or co-assignees, has the 
 right to put the invention into practice mthout incurring the 
 liability to account to his co-owners for the profits which he may 
 make. In Steers v. Rogers, Lord Herschell, in delivering the 
 judgment of the House of Lords, said (s) : " Letters patent do not 
 give the patentee any right to use the invention; they do not 
 confer a right to manufacture according to his invention. That 
 is a right which he would have equally effectually if there were 
 no letters patent at all ; only in that case all the world would 
 equally have the right. What the letters patent confer is the 
 right to exclude others from manufacturing in a particular way . 
 and using a particular invention. When that is borne in mind 
 it appears to me impossible to hold, under these circumstances, 
 that where there are several patentees, either of them, if he uses 
 the patent, can be called upon by the others to pay to them 
 a portion of the profits which he makes by that manufacture, 
 because they are all of them entitled, or perhaps any of them 
 entitled, to prevent the rest of the world from using it " (t). 
 
 The rights of co-owners infer se are summed up by Lindley, 
 
 (5) Printing & Numerical Regis- H. & N. 189 ; 2 Jur., N. S. 645. 
 tering Co. v. Sampson, L. R., 19 Eq. (s) 10 P. 0. R. 261 ; L. R., 1893, 
 
 462 ; 44 L. J., Ch. 705 ; 32 L. T. 354 ; A. C. 235. 
 23 "W. R. 463. (0 See also Mathers v. Green, L. R., 
 
 (r) Jones v. Lees, 26 L. J., Ex. 9 : 1 1 Ch. 29. 
 
 N 2 
 
180 THE LAW OF PATENTS. 
 
 L.J., in his book on Partnership (w) : " In the case of a patent 
 belonging to several persons in common, each co-owner can 
 assign his share, and sue for an infringement (x) ; and can also 
 work the patent himself, and give licences to work it, and sue for 
 royalties payable to him for its use (y) ; and it is now settled that 
 he is entitled to retain for his own benefit whatever profit he 
 may derive from the working, although it is perhaps still open 
 to question whether he is not liable to account for what he 
 receives in respect of the licences "(z). 
 
 The grounds upon which one co-owner can sue for infringe- 
 ment of the patent without joining the other co-owners are 
 clearly set out in the judgment of Page-Wood, V.-C, in Dent v. 
 Turpin {a) ; the law as therein expressed is that although he may 
 sue alone, the Court will not grant a decree for further relief 
 than that which is purely personal to himself, that is to say, he 
 may have an injunction against the infringer, but he will only 
 receive that portion of the damages to which the Court may 
 think he is entitled ; this would seem to show that he is only 
 entitled to such portion of the damages as bear a relation to his 
 interest in the patent. 
 
 In Smith v. L. i^- N. W. Ry. Co. (b), it was decided that the 
 right of co-owners to damages for infringement was a joint right 
 and on the death of one the survivor was entitled to recover the 
 whole. 
 
 Where a sole patentee worked the patent in partnership with 
 another for some years during which time they were extensively 
 advertised as joint patentees, it was held that the partner of the 
 sole patentee thereby acquired such an interest in the patent as 
 to enable him to work it independently after the partnership had 
 expired (c), but this would not be the case if it were a term of the 
 
 (m) 5th ed. p. 62. 29 ; RussclVs Patent, 2 De G. & J. 
 
 (x) Dunnicliffe v. Mallett, 7 C. B., 130. 
 
 N. S. 209 ; Dent v. Turpin, 2 J. & H. (a) 2 J. & H. 139 ; 30 L. J., Ch. 
 
 139; 30 L. J., Ch. 495 ; Sheehan v. 495, 496. 
 
 Great Eastern Raihoay, L. R., 16 Ch. (b) 2 El. & Bl. 69, 74 ; 17 Jur. 
 
 D. 59, 63. 1071 ; Macr. P. C. 188, 207. 
 
 (y) Sheehan v. Great Eastern Rail- (c) Kenny's Patent Button- Holeing 
 
 way, L. R., 16 Ch. D. 59. Co. v. Somervell, 38 L. T. 878; 26 
 
 (ri Mathers v. dnui, L. R., 1 Ch. W. K. 786. 
 
THE DEVOLUTION OF A PATENT. 181 
 
 partnership that the patent rights in the invention should belong 
 exclusively to one of them {d). 
 
 A mortgagee registered as such at the Patent Office has not 
 such an interest in the patent as to be a necessary party to an 
 action for infringement, since the mortgagor and not the mort- 
 gagee is the person for the time being entitled to the benefit of 
 the patent, and consequently in the same position as the mort- 
 gagor of any other property whether real or personal (e). 
 
 Fraudulent agreements for the assignment of patents, such, for 
 instance, as bubble patents, will be set aside (/). But in the 
 absence of fraud the agreement will be enforced, and it is no 
 defence to the action that the plaintiff has not invented the 
 alleged invention (g). 
 
 Licences diflFer from assignments, in that the patentee granting 
 a licence does not part with his whole interest, but grants merely 
 a right to use the patent for the whole term or any portion of the 
 whole term, that is merely a right to do that which without 
 a licence could not be done except by violating the monopoly 
 granted to and still vested in the licensor (h) . 
 
 Sect. 22 of the Act of 1883 provides for the granting of 
 compulsory licences. 
 
 " If on the petition of any jie^'son interested it is proved to the 
 Board of Trade that by reason of the default of a patentee to grant 
 licences on reasonable terms — 
 
 " (a) The patent is ?iot being worked in the United Kingdom ; 
 or, 
 
 " (6) The reasonable requirements of the public ivith respect to 
 the invention cannot be supplied ; or 
 
 ** (c) Any person is pirevented from working or using to the best 
 advantage an invention of which he is jiossessed, the Board ?Hay 
 order the patentee to grant licences on such terms as to the amount 
 of royalties, security for payment or otherwise, as the Board, having 
 
 (d) Axmann v. Lund, L. R,, 18 Eq. ig) Smith v. Buckingham, 18 W. R. 
 330, 336. 314. 
 
 (e) Van Oelder Apsimon <& Co. v. (A) Heap y. Hartley, 6 P. 0. R. 495, 
 The Sowerby Bridge Flour Society, 7 500 ; see also Mttskett v. Hill, 5 Bing. 
 P. 0. R. 208 ; Fairclough v. Marshall, N. C. 694, 707 ; Thomas v. Sorrell, 
 L. R. 4 Ex. D. 37. Vaii^li. Rt'p. 351 ; Newhy v. Harrison, 
 
 (/) Lovell V, Hicks, 2 Y. & C. 46. IJ. & H. 393 ; 3 Do G. F. & J. 287. 
 
182 THE LAW OF PATENTS. 
 
 regard to the nature of the invention and the circumstances of the 
 case, may deem just, and any such order may he enforced hy 
 mandamus." 
 
 These provisions are entirely novel ; (a) and (b) are capable of 
 being reasonably construed ; as to " (c) " it is difficult to under- 
 stand how the Board of Trade will come to a decision as to 
 whether " a person is prevented from working or using, to the 
 best ad\antage, an invention of which he is possessed." The 
 "invention" must be protected by letters patent (see the con- 
 struction given in sect. 46). 
 
 The proceedings under sect. 22 are regulated by Patent Rules, 
 1890, rr. 60—66. 
 
 A licence granted by the patentee may be exclusive or other- 
 wise, that is, it may be a grant of the sole right to put the 
 invention into practice, or of a right limited in time or in area, or 
 of a right only to be exercised in conjunction with others ; but as 
 has been pointed out above, a licence, even though it may be 
 exclusive, does not convey such an interest in the patent as to 
 amount to an assignment of it. 
 
 Licences should be under seal, the prohibition in the grant 
 itself being " without the consent, licence or agreement of the 
 said patentee in writing under his hand and seal." 
 
 A licence granted by a patentee, but not under seal, is, how- 
 ever, not void in the sense that the licensee, having used the 
 patent, is not bound to pay the royalties contracted for. In 
 Chanter v. Dewhurst (^), it was held that the defendants, having 
 obtained the licence they had bargained for, and kept it, were 
 bound to pay for it ; and secondly, that the licence was not void 
 as not being under seal. Baron Alderson said : " The defendants, 
 in making the machine in question, are merely acting as agents 
 for the patentee .... in my opinion a licence for this purpose 
 need not be under seal." 
 
 Although the words of the grant are " under his hand and 
 seal," the document is not a deed, since it need not be delivered 
 as a deed, nor need it be stamped as such {k). 
 
 In the absence of fraud money paid by a licensee for royalties 
 
 (i) 12 M. & W. 823. 408. 
 
 {k) Chanter v, Johnson, 14 M. & W. 
 
THE DEVOLUTION OF A PATENT. 183 
 
 cannot be recovered when it is ascertained that the patent was 
 void ab initio (/). And if the licensees have kept the licence and 
 used it, the licensor can recover from them the agreed royalties, 
 although the patent may have been void and the licence not under 
 seal {»}) ; but otherwise, if the licensor knew from the first that 
 the patent was void {n). But if the consideration for the money 
 paid is that an application for a patent should be made and a 
 licence to use the patent granted, no application being made for 
 the patent, there is a total failure of consideration, and the price 
 paid may be recovered (o) . A licence is not assignable {j)). A 
 licence to a man and his assigns moans a licence with power to 
 licensee to sub-license {idem). A licensee may covenant not to 
 manufacture without applying the patented invention ; such a 
 covenant is not in restraint of trade {q). A patentee having 
 granted a licence cannot prevent anyone vending the articles 
 which have been made in pursuance of the licence (r). And an 
 inventor selling the patented article abroad cannot restrain its 
 importation and sale in this country, although an assignee of 
 the patent in this country might restrain the importation of an 
 article made by the original inventor or his assignee abroad (s). 
 
 An exclusive licensee of an invention for a district cannot 
 maintain an action against one who, having purchased a thing 
 which was the subject-matter of the invention, should bring his 
 purchase within such district without notice of the licence [t) ; 
 registration at the Patent Office does not amount to notice to the 
 whole world {ibid.) . A latent ambiguity in a licence by deed 
 may be explained by parol evidence in the same manner as other 
 deeds {it). A licensor may in the licence deed stipulate for a 
 
 (J) Taylor v. Hare, 1 B. & P. (N.R.) (/•) Thomas v. Hunt, 17 C. B., N. S. 
 
 260. 183. 
 
 (m) Chanter v. Dewhurst, 12 M. & (s) Betts v. Willmott, L. R., 6 Ch. 
 
 W. 823. 239 ; see also SocUU Anonyme v. 
 
 (n) Chanter v. Leese, 4 M. & W. Tilghman, L. R., 25 Ch. D. 1 ; 53 
 
 295. L. J., Ch. 1 ; 49 L. T. 451 ; 32 W. R. 
 
 (o) Knowles v. BoviU, 22 L. T., 71 ; Heap v. Hartley, 5 P. 0. R. 610. 
 N S. 70. (0 Hea2^ v. Hartley, 5 P. 0. R. 603 ; 
 
 {p) Per Maule, J., in Boiver v. 6 P. 0. R. 495. 
 Hodges, 22 L. J., C. P. 198. {ii) Roden v. Thr London Small 
 
 (j) Jones V. Lees, 1 H. & N. 189 Arms Co., 46 L. J., Q. B. 21 
 
184 THE LAW OV PATENTS. 
 
 forfeiture in the event of royalties not being paid {x), but sucb 
 forfeiture may be waived (y). The licensor may also agree that 
 he will take all necessary steps to support the validity of the 
 patent (z) . 
 
 A licence may be created by parol (a), but whether by parol or 
 under seal, if there is no time fixed for its duration (b), and no 
 term in the licence which would necessitate a different construc- 
 tion (c), it may be determined at will by either party. In Mills 
 V. Carson (d), the patentee granted by deed an exclusive licence 
 to the defendant for the remainder of the term of the patent, in 
 consideration of which the defendant agreed to pay 100/. per 
 annum for the remainder of that term, such a condition was held 
 to be totally inconsistent with a licence revocable at will. Express 
 notice to revoke must be given, and the mere plea that the 
 licence has been abandoned is not in itself sufficient (e) . 
 
 A licensee cannot sue alone for infringement of the patent, and 
 this would appear to be so even in the case of an exclusive 
 licensee (/), who must sue either in the name of the patentee (g), 
 or be joined with the patentee as co-plaintiff. 
 
 In Renard v. Levinstein {h), the licensees and the owners of 
 the patent were joined as co-plaintiffs ; while the action was 
 pending, the owners parted with their interest to a third party ; 
 under these circumstances Wood, V.-C, overruled the objection 
 that the plaintiffs did not show sufficient interest to maintain the 
 action. 
 
 {x) Tidens v. Hooper, 5 Exch. 830. Leadbilter, 13 M. & W. 838 ; 9 Jur. 
 
 (y) JFanvick v. Roojier, 3 M. & G. 187 ; 14 L. J. Ex. 161. 
 
 60. (c) JFard v. Livesay, 5 P. 0. R. 
 
 {z) Henderson y. Mostijn Cop2Kr Co., 102, 106; Guyot v. Thomson, 11 
 
 L. R., 3 C. P. 202. P. 0. R. 541, 554. 
 
 (a) Crossley v. Dixon, 10 H. L. Cas. {d) 9 P. O. R. 338 ; 10 P. 0. R. 9. 
 
 293; L. J., 32 Ch. 617, H. L. ; {e) Cheethamw. Kuthall, 10?. 0. R. 
 
 Chanter v. Dewhurst, 12 M. & W. 823 ; 321, 333. 
 
 13 L. J., Ex. 198; Post Card Auto- (/) Heap v. Hartley,6 ?. 0. R. i95, 
 
 matic Supply Co. v. Samuel, 6 P. 0. R. 500 ; Renard v. Levinstein, 2 H. & M. 
 
 560. 628; Barnett v. Barrett, 1 P. 0. R. 
 
 {b) Crossley v. Dixon, 10 H. L. Cas. 9 ; see also }Voolley v. Broad, 9 
 
 293 ; Redges v. Mulliner, 10 P. 0. R. P. 0. R. 208. 
 
 21, 27; Cheetham v. Nuthall, 10 {g) Heap \. Hartley, -^i -^d^ge bO\. 
 
 P. 0. R. 321, 333 ; see also Wood v. {h) 2 H. & M. 628. 
 
THE DEVOLUTION OF A PATENT. 185 
 
 In Cheetham v. Nuthall (^), it was provided that the licence 
 should determine if the patent was declared invalid ; in an action 
 brought by the licensor against a third party for infringement, 
 the patent was ^eld to be invalid, but this judgment was reversed 
 by consent ; the defendant after due notice continued to work 
 under his licence, and it was held that he was still liable to pay 
 royalties for the use of the invention. 
 
 An assignee of a share of the profits is entitled to an account 
 of the profit from the person by whom they are payable ; but the 
 account should be taken once for all in the presence of all the 
 persons interested {j). 
 
 Sect. 23 of the Act provides : — " (1) There shall he kept at the 
 Patent Office a hook called the Register of Patents, wherein shall he 
 entered the names and addresses of grantees of patenis, notif cations 
 of assignments and of transmissions of patents, of licences under 
 patents and of amendments, extensions and revocations of patents, 
 and siich other matters affecting the validity or proprietorship of 
 patents as may from time to time he p)t'escrihed ; (2) the register of 
 patents shall he prima facie evidence of any matters hy this Act 
 directed or authorized to he inserted therein ; (3) cop)ies of deeds, 
 licences and any other documents affecting the proprietorship in any 
 letters patent or in any licence thereunder, must he supplied to the 
 comp)troller in the prescrihed nuoiner for filing in the Patent 
 Officer 
 
 By sect. 85, " There shall not be entered in any register kept 
 under this Act, or he receivahle hy the comptroller, any notice of any 
 trust, express, implied, or constructive''' Sect. 87, as amended by 
 sect. 21 of the Patents, &c.. Act, 1888, provides for the entry in 
 the register, at the request of the person becoming entitled, of any 
 assignment or transmission of interest. The person registered 
 shall have power to deal with such interest as he has registered, 
 absolutely : " Provided that any equities in respect of such patent, 
 ^c, may he enforced in like manner, as in respect of any other per- 
 sonal property .'' Sect. 88, as amended by sect. 22 of the Patents, 
 &c.. Act, 1888, deals with the inspection of registers, and the 
 
 (i) 10 P. 0. R. 321. 17 Ch. D. 423. 
 
 {j) Bergmann v. Macmillan, L. R., 
 
186 THE LAW OF PATENTS. 
 
 obtaining of certified copies. By sect. 89 sealed copies are to be 
 received in evidence. 
 
 The effect of these sections is to prohibit the entry upon the 
 register of simple notices of trusts, but any other documents 
 aflfecting the proprietorship of the patent, whether by creating 
 trusts or otherwise, are not to be excluded (k) ; it has been 
 already noticed that an assignment of a patent should be by deed, 
 but an agreement to assign is an equitable assignment, and con- 
 sequently may be entered on the register under section 23 (/), 
 but the documents containing the agreement and entered on the 
 register must be complete, and upon which specific performance 
 of the agreement could be enforced, since otherwise no legal or 
 equitable interest in the patent or proprietorship thereof would 
 pass {m). 
 
 Sect. 90, as amended by sect. 23 of the Patents, &c.. Act, 
 1888, empowers the Court (High Court of Justice) to order the 
 alteration of the registers, upon the application of persons 
 aggrieved, and upon sufficient cause shown. The comptroller 
 may himself correct errors in registers which are merely of a 
 clerical nature, sect. 91. 
 
 The comptroller may refuse to enter upon the register of 
 patents a document dated before the patent, upon the ground 
 that it does not contain a sufficient proof of title (n). 
 
 The regulations affecting registration under the above sections 
 are contained in Patents Eules, 1890, rules 67 — 79. 
 
 Sect. 35 of the Act of 1852, after providing for the registration 
 of proprietors, assignments, &c., of patents, proceeded : " Pro- 
 vided always, that, until such entries shall have been made, the 
 grantee or grantees of letters patent shall be deemed and taken 
 to be the sole and exclusive proprietor or proprietors of such 
 letters patent, and of all licences and privileges thereby given or 
 granted." 
 
 It will be observed that the Act of 1883, quoted above, 
 
 {k) Stewart v. Casey, 9 P. 0. R. 9, P. 0. R. 252, 255 ; Raslett v. Hutchin- 
 
 11, 15. son, 8 P. 0. R. 457, 466. 
 
 (Z) Ibid., at p. 15 ; see also In re {n) In re ParneU's Patent, 5 P. 0. R. 
 
 Fletcher's Patent, 10 P. 0. R. 252. 126. 
 
 (m) In re FJ etcher'' s Patent, 10 
 
THE DEVOLUTION OF A PATENT. 187 
 
 materially differs from this enactment. Hence ChoUett v. So^ff'- 
 man (o), and Hassall v. Wrig/tt (p), will not now ajDply. 
 
 Prior to the Act of 1883, the High Court of Justice exercised 
 jurisdiction to alter and amend the register of patents (q). 
 
 The register should be amended whenever a fraudulent entry 
 has been made. A patentee assigned half a patent to A., and 
 afterwards he assigned the whole to B. by deed, reciting that he 
 had already granted a licence to work and use to A. B.'s assign- 
 ment was first registered : — Held, that B. had constructive notice 
 of A.'s rights, and an entry was ordered to be made in the 
 register that the licence referred to in B.'s assignment was the 
 deed of assignment to A. subsequently entered (/•). 
 
 Registration does not amount to notice to the whole world, so 
 where the grant of an exclusive licence for a district had been 
 entered on the register, it was held that this did not amount to 
 notice so as to affect an innocent purchaser outside of that district 
 bringing his purchase within the district in violation of the rights 
 of the licensee (s). 
 
 A co-owner of a patent has no right to cause an entry to be 
 made in the register, which purports to affect or prejudice the 
 rights of the other, and should he do so, the entry will be 
 expunged at the instance of the injured party (f). 
 
 (o) 7 Ell. & B. 686. 581. 
 
 {p) L. R., 10 Eq. 509; 40 L. J., (s) Heap \. Hartley, hV. 0. R. 603; 
 
 Ch. 145. 6 P. 0. R. 495. 
 
 {q) In re Morgan^ s Patent, 24 "W. R. (r) In re Horsley d; Knighton's 
 
 245. Patent, L. R., 8 Eq. 475. 
 
 (»•) In re Mosey's Patent, 25 Beav. 
 
THE LAW OF PATENTS, 
 
 CHAPTER XIII. 
 
 ESTOPPEL. 
 
 Having assigned a patent, the original patentee cannot manu- 
 facture the patented article ; should he do so and an action for 
 infringement be brought against him by his assignee, he may not 
 set up the defence that the patent is invalid ; he is estopped by 
 his deed (a), that is, by the deed of assignment, but when the 
 assignment is by operation of law there is no such estoppel. In 
 Cropper v. Smith (b), in 1873, letters patent for improvements in 
 lace machines were granted to H., who in 1877 went into liquida- 
 tion and the patent was sold by the trustee to the plaintiffs. H. 
 afterwards entered into partnership with S., and this action was 
 brought against S. and H. to restrain them from infringing the 
 patent ; held that H. was not estopped from disputing the validity 
 of the patent either by matter of record, on the ground that the 
 letters patent were of record ; or by deed, by reason of the 
 specification being under his seal ; or by matter in p)ais, on the 
 ground of the statements in his petition to the Crown, there 
 being nothing to show that the plaintiffs bought on the faith of 
 those statements. (But see Bankruptcy Act, 1883, sect. 50, 
 sub-sect. 5.) It is probable that there is estoppel by record 
 between the Crown and the grantee of letters patent {c), but this 
 M^ould only be against the subject, since no estoppel operates 
 against the Crown. In an action brought by the assignor to 
 enforce an agreement for an assignment of letters patent, it is 
 
 (a) Oldham v. Langmead, cit. in App. Cas. 249 ; 1 P. 0. R. 81 ; 2 P. 
 
 Hayne v. Maltby, 3 T. R. 438 ; Lainson 0. R. 17. 
 
 V. Tremere, 1 A. & E. 792 ; Chambers (c) Per Fry, L.J., L. R., 26 Ch. D 
 
 V. Crichley, 33 Beav. 374. at p. 712. 
 
 (6) L. R., 26 Ch. D. 700; L. R., 10 
 
ESTOPPEL. 189 
 
 not open to the assignee to challenge the validity of the 
 patent {d). 
 
 An assignment of patent rights in a partnership dissolution 
 deed will estop the retiring partner from subsequently setting up 
 the invalidity of the patent by way of defence to an action 
 brought by his late partners (e). But where the plaintiff and 
 defendant had been partners, and had worked as such the 
 defendant's patent, there being no deed between the plaintiff and 
 defendant which inferred the validity of the patent, held that 
 plaintiff was not estopped from denying the validity of the 
 patent (/). And where partners are joined as defendants in an 
 action for infringement, and one is assignor of the patent, the 
 other is not debarred from setting up the pleas of invalidity {g) . 
 
 In Bowman v. Taylor and others (h) the plaintiff sued the 
 defendants for the non-payment of certain royalties due from the 
 defendants to the plaintiff under a licence under seal for the use 
 of the plaintiff's patent. The defendants defended on the 
 grounds (1) that the iuvention was not a new invention, (2) that 
 the plaintiff was not the first and true inventor, (3) that the 
 specification was not sufficient — pleas which in effect endeavoured 
 to put in issue the validity of the plaintiff's title. Upon 
 demurrer, Taunton, J., said, "The law of estoppel is not so 
 unjust or absurd as it has been too much the custom to represent. 
 The principle is, that where a man has entered into a solemn 
 engagement by deed under his hand and seal as to certain facts, 
 he shall not be permitted to deny any matter which he has so 
 asserted. The question here is, whether there is a matter so 
 asserted by the defendant under his hand and seal that he shall 
 not be permitted to deny it in pleading. It is said that the 
 allegation in the deed is made by way of recital, but I do not see 
 that a statement such as this is the less positive because it is 
 introduced by a * whereas.' Then the defendant has pleaded 
 
 {d) Smith V. Buckingham, 21 L. T. 374. 
 
 819 ; 18 W. R. 314 ; Liariht v. Ham- (/) Axmann v. Lund, L. R., 18 Eq. 
 
 mond Ehrfric Light Co., 31 W. R. 330; 22 W. R. 789. 
 
 710 ; HaH v. Condcr, 26 L. J., C. P., (rj) Heugh v. Chamberlain, 25 W. 
 
 138 ; 3 Jur. N. S. 366 ; 2 C. B., N. S. R. 742. 
 
 22. {h) 2 A. & E. 278. 
 
 [e) Chambers v. Crichlcy, 33 Beav. 
 
190 THE LAW OF PATENTS. 
 
 that the supposed invention in the declaration and letters patent 
 mentioned was not nor is a new invention. These words ' was 
 not nor is a new invention ' must he understood in the same sense 
 as the words ' had invented ' in the recital of the deed set out in 
 the declaration, and must refer to the time of granting the 
 patent, and if the invention could not then he termed a new 
 invention, it could not, I think, have heen truly said in the deed, 
 that the plaintiff * had invented ' the improvements in the sense 
 in which the deed uses the words. Then the plea directly 
 negatives the deed, and comes within the rule that a party shall 
 not deny what he has asserted hy his solemn instrument under 
 hand and seal." The learned judge then proceeds to distinguish 
 HaijneY. Malthy (i), but for some reason does not refer to the 
 element of fraud in that case, which certainly would take it out 
 of the operation of the doctrine of estoppel. 
 
 Besseman v. Wright {k) was decided on the ground of partial 
 as against total failure of consideration, and has no reference to 
 the doctrine of estoppel, although it seems sometimes to have 
 been thought that it had. 
 
 In Adie v. Clark (/), James, L. J., said, " A licensee cannot 
 under any pretence whatever bring his licensor into litigation as 
 to the novelty of any part of the patent." This case was 
 afterwards affirmed in the House of Lords {m) . But it appears 
 that if the licence has been determined prior to the expiration of 
 the term of the patent the ex-licensees may contest the validity 
 of the patent, notwithstanding the covenants or recitals in 
 the licence («). In giving judgment. Lord Cottenham 
 said, " That is exactly coming to the point which I put, whether, 
 at law, the party was estopped from disputing the patentee's 
 right, after having once dealt with him as the proprietor of that 
 right. And it appears from the authority of that case {Hayne v. 
 Malthy (o) ), and from the other cases, that from the time of the 
 last payment (i.e. expiration of licence), if the manufacturer can 
 successfully resist the patent right of the party claiming the rent, 
 
 (i) 3 T. R. 438. (n) Neilson v. FothcrgiU, 1 Web. P. 
 
 (/.-) 6 W. R. 719. C. 287. 
 
 {I) L. R., 3 Ch. D. 144. (o) 3 T. R. 438. 
 
 (m) L. R., 2 A pp. Cas. 423. 
 
ESTOPPEL. 191 
 
 that he may do so in answer to an action for the rent for the use of 
 the patent during that year." The language is not clearly reported, 
 but this appears to mean — to an action for the use and occu- 
 pation, so to speak, of the patent after the expiration of the 
 licence. 
 
 The following cases have been decided uniformly, and show 
 that parties to a deed of assignment or licence are estopped from 
 denying the validity of the patent, and that there is no implied 
 warranty on the part of the assignor or licensor. Cutler v. 
 Bower (/;), Smith v. Scott (q), Walton v. Lamter {>•), Norton v. 
 Brooks (s), Crossley v. Dixon {t). 
 
 An assignor of a patent cannot be restrained from giving 
 evidence in an action for infringement brought by the assignee 
 against a third party, although such evidence should tend to 
 prove that the patent is in fact bad (u). 
 
 If a patentee in granting a licence should expressly warrant 
 the validity of the patent, and thereby confer upon the licensee 
 the right to dispute its validity, the licensee will not be estopped 
 from relying on this defence in an action brought against him by 
 the licensor (x). 
 
 Mi/Is V. Carson (//) was an action for royalties due under an 
 indenture made between the patentee W. Notleij of the one part, 
 and the defendants J. A. Carson and B. Coleman Defries of the 
 other part, whereby an exclusive licence to use the invention was 
 granted to the defendants. One of the terms of the agreement 
 was that the patentee or his assigns would at the request of the 
 defendants, take proceedings against any person infringing the 
 patent, and it was further agreed that "if the said W. Notley 
 should at any time omit or refuse to take such proceedings as 
 aforesaid, and if the said letters patent should become void or 
 ineffectual by reason of any such omission or refusal on the part 
 of the said W. Notley, or by reason of the said invention not being 
 
 (p) 11 Q. B. 973. (i«) London and Leicester Hosiery Co. 
 
 (q) 6 C. B., N. S. 771, and 28 L. J., v. Griswold, 3 P. 0. E. 251. 
 
 C. P. 325. (x) Wilson v. Union Oil Mills Co., 
 
 (r) 8 C. B., N. S. 162. 9 P. 0. R. 57; Mills v. Carson, 10 
 
 (s) 7 H. & N. 499. P. 0. R. 17. 
 
 (0 10 H. L. Cas. 293. (y) 9 P. O. R. 338 ; 10 P. 0. R. 9. 
 
192 THE LAW OF PATENTS. 
 
 novel, or being an infringement of other letters patent, then the 
 payment of the said annual sum under the indenture should 
 cease and determine." Relying upon this condition the defen- 
 dants set up the defence that the invention was not new ; it was 
 held that they were estopped from doing so, and that the 
 words, "by reason of the said invention not being novel," 
 meant, if it was proved not to be novel in an action brought 
 for infringement by the patentee at the instigation of the 
 defendants (z). 
 
 But where the defendant took a licence from the plaintiff to 
 work his invention " subject to the result of an enquiry into the 
 validity of the patent," and after the expiration of six months 
 refused to continue to work the plaintiff's process on the ground 
 that the patent was bad, it was held, in an action for royalties 
 under the agreement, that it was open to the defendant to 
 contest the validity of the plaintiff's patent {a). 
 
 The licensee may refer to the state of public knowledge at the 
 date of the patent for the purpose of showing what is the true 
 ambit of the specification (5), and he may, following the analogy 
 of lessor and lessee, show that the patent in question has in fact 
 expired (c). 
 
 Fraud is practically the only plea which a licensee can put 
 forward in an action brought against him for the recovery of 
 royalties, but this must be distinctly pleaded {d), beyond that the 
 only reply that is left to the licensee is that he has not worked the 
 patent in question {e). 
 
 Where the plaintiff, fraudulently asserting that he had 
 a right to a patent, induced the defendant to come to terms 
 with him for a licence to use that patent, the defendant, in 
 an action upon that agreement, is not estopped from alleging the 
 want of title in the plaintiff as a defence (/). But it would be 
 
 (2) 10 P. 0. R. 17, 18. Co., 11 P. 0. E. 317. 
 
 {a) Wilson v. Union Oil Mills Co. , (d) McDoiu)all v. Partington, 7 P. 
 
 9 P. 0. R. 57. 0. R. 223 ; Ashworth y. Laiv, 7 P. 0. 
 
 {b) Young v. Hermand, 9 P. 0. R. R. 234. 
 
 373; see also Crosthwaitev. Steel, 6 P. (c) Clarke v. Adic, L. R., 2 App. 
 
 0. R. 190. Cas. 423, 435. 
 
 (c) Muirhcad v. Commercial Cable (/) Hayne v. Maltby, 3 T. R. 438. 
 
ESTOPPEL. 193 
 
 otlierwise in the absence of fraud and where both parties are 
 innocent, in that case neither the assignee nor licensee would be 
 allowed to set up as a defence the bad title of the assignor or 
 licensor (g). 
 
 After the termination of the license, the licensee is no longer 
 estopped from denying the validity of the patent (h). 
 
 Judgment having been recovered against the defendant in an 
 action for infringement, such defendant cannot plead the 
 invalidity of the patent as a defence to a subsequent action 
 brought against him for an infringement of the same patent, he is 
 estopped by the first judgment, and this is so, even though the 
 first judgment was entered by consent (/) ; but where the defend- 
 ants in the second action are not the same as those in the first, 
 there will be no estoppel (A-), though in such a case, if the patent 
 had been previously upheld by a court of co-ordinate or superior 
 jurisdiction, strong additional evidence will be required in order 
 to reverse the previous finding [1). 
 
 The Act of 1883 abolished proceedings by scire facias to repeal 
 a patent, and substituted therefor petition to the Court. It was 
 at one time thought that since the Crown had ceased to be a 
 party to proceedings to revoke a patent, estoppel would operate 
 as regards question of fact which had been decided in a previous 
 action between the same parties, this point has now been decided 
 by the Court of Appeal in He Deeley's Patent (not yet reported). 
 An action for infringement of that patent had been previously 
 brought by the patentee against the present petitioner {m), in 
 which it was held that the first claim had been anticipated by 
 Perkes' patent of 1878 ; this claim was again attacked on the 
 same grounds in the petition for revocation, in which the parties 
 
 (g) Tmjlor v. Hare, 1 Wei). P. C. (/) Bovill v. Goodicr, 35 Beav. 427 ; 
 
 292, 293. Otto v. Steel, 3 P. 0. R. 109, 114 ; 
 
 {h) Axmannv. Lund, L. R., 18 Eq. Slazenger v. Feltham, 6 P. 0. R. 130; 
 
 337 ; Goucher v. Clayton, 11 Jur., N. S. Automatic Weighing Machine Co. v. 
 
 107 ; 34 L. J., Ch. 239. Combined Co., 6 P. 0. R. 120, 367 ; 
 
 {i) Thomson v. Moore, 6 P. O. R. Edison v. Holland, 6 P. 0. R. 243 ; 
 
 426, 431, 441 ; 7 P. 0. R. 325. Shaiv v. Day, 11 P. 0. R. 189. 
 
 {k) Goucher v. Clayton, 11 Jur., {m) Westley Richards v. Perkes, 10 
 
 N. S. 107 ; 34 L. J., Ch. 239 ; Otto v. P. 0. R. 181, 190. 
 Steel, 3 P. 0. R. 109, 114. 
 
 T. O 
 
194 THE LAW OF PATENTS. 
 
 were the same as in the action for infringement, the Court of 
 Appeal held that there was no estoppel, on the grounds that a 
 petition for revocation is a petition presented on behalf of the 
 public, and it is immaterial that the person so representing the 
 public should happen to have been a party to a previous action 
 when the same facts were in dispute. 
 
 " An estoppel must be certain to every intent and not be taken 
 by argument or inference " {n) ; so where a question of infringe- 
 ment was submitted to an arbitrator, who, in his award found 
 that the letters patent were not illegal or void, in a subsequent 
 action for infringement against the same defendant, it was held 
 that the arbitrator's award was not such a decision as to make 
 an estoppel within the above cited rule (o). 
 
 A licensee cannot take advantage of a judgment obtained by 
 third parties against the patentee declaring the patent bad (js). 
 But a licensee, in an action by the patentee, may claim to place 
 the most favourable construction on the specification, which will 
 support the validity of the patent, if another construction would 
 make it bad (q). 
 
 (n) Com. Dig. tit. Estoppel (E 4). Machine Co. v. Millard, 8 Jur., N. S. 
 
 (o) Newall v. Elliot, 32 L. J., Ex. 713. 
 120. {q) Trotman v. Wood, 16 C. B., 
 
 {ji) The Grover <L- Baker Sewing N. S. 479. 
 
( 195 ) 
 
 CHAPTER XIV. 
 
 EXTENSION OF TERM OF PATENT. 
 
 Sect. 25 of the Act of 1883 provides : 
 
 '* (1) A patentee may, after advertising in manner directed by 
 any rules made under this section his intention to do so, present 
 a petition to her Majesty in Council, praying that his patent 
 may be extended for a further time ; but such petition mvst be 
 presented at least six months before the time limited for the expi- 
 ration of the patent. ^^ 
 
 The period of six months limited by this sub-section will not 
 apply to patents granted before the 1st January, 1884. With 
 regard to such patents, the provisions of 5 & 6 Will. IV. c. 83, 
 will apply, and applications for extension may be made at any 
 time prior to the expiration of the patent ; this is by reason of 
 the 113th section of the Act of 1883 [a). But once a patent is 
 extended it becomes a new patent, and the whole of the Act of 
 1883 applies to it (ft). 
 
 " (2) Any person may enter a caveat addressed to the Registrar 
 of the Council at the Council Office, against the extension. 
 
 " (3) // her Majesty shall be pleased to refer any such petition 
 to the Judicial Committee of the Privy Council, the said Committee 
 shall proceed to consider the same, and the petitio)ier and any 
 person ivho has entered a caveat shall be entitled to be heard by 
 himself or by counsel on the petition. 
 
 " (4) The Judicial Committee shall, in considering their decision, 
 have regard to the nature and merits of the invention in relation to 
 the public, to the p)rofits made by the patentee as such, and to all the 
 circumstances of the case. 
 
 {a) Brandons Patent, L. R., 9 App. 154 
 Cas. 589 ; 53 L. J., P. C. 84 ; 1 P. 0. R. {b) Cockim/s Patent, 2 P. 0. R. 151. 
 
 o 2 
 
196 THE LAW OF PATENTS. 
 
 " (5) If the Judicial Committee report that the patentee has been 
 inadequately remunerated by his patent, it shall be lawful for her 
 Majesty in Council to extend the term of the jmtent for a further 
 term, not exceeding seven, or, in exceptional cases, fourteen years ; 
 or to order the grant of a neiv patent for the term therein men- 
 tioned, and containing any restrictions, conditions, and provisions 
 that the Judicial Committee may think fit. ^' 
 
 It is the practice to grant a new patent, such new patent 
 being subject to the conditions in the Act of 1883 (c). 
 
 " (6) It shall be lawful for her Majesty in Council to make from 
 time to time rules of procedure and practice for regulating proceedings 
 on such petitions, and subject thereto such proceedings shall be regulated 
 according to the existing procedure and practice in patent matters of 
 the Judicial Committee. 
 
 " (7) The costs of all parties of and incident to such proceedings 
 shall be in the discretion of the Judicial Committee ; and the orders 
 of the Committee respecting costs shall be enforceable as if they 
 were orders of a division of the High Court of Justice." 
 
 These provisions have made no substantial alteration in the 
 law. Prior to the Act 5 & 6 WiU. IV. c. 83, there was no 
 power in the Crown to extend the duration of letters patent, and 
 should an inventor have desired to apply for an extension of the 
 term of his grant, he could only do so by applying for and 
 obtaining a special Act of Parliament in his favour. The Act of 
 Will. IV., and the amending Act of 2 & 3 Vict. c. 67, introduced 
 the method of petitioning and obtaining an extension to the 
 Privy Council. 
 
 It had been found that the procedure to obtain an Act upon 
 each occasion, when an extension was sought, was too costly and 
 cumbrous, hence the modern course of procedure was devised. 
 
 This being shortly the origin of the jurisdiction of the Privy 
 Council, at first an impression gained ground that the Privy 
 Council were to put themselves in the position of Parliament, and 
 not in that of a court of law, in considering the claims of appli- 
 cants who appeared before them ; that they were to weigh the 
 claims of the public interest very heavily in the balance as 
 against the inventor. In Re Soarne's Patent (d). Lord Brougham 
 (c) Smith's Patent, Griff. P. C. 263. {d) 1 Web. P. C. 729. 
 
EXTENSION OF TERM OF PATENT. 197 
 
 said : " If this case were to be disposed of upon the ground 
 which, in arguing such cases, has sometimes been assumed to be 
 the fit one, that there must not only be merit and benefit to the 
 public, and (which is essential) a want of sufficient remuneration 
 in the course of using the patent ; but that, moreover, the case is 
 to be tried here as on a bill in parliament introduced to prolong 
 the patent ; then, I apprehend, there can really be no doubt 
 whatever that in this case no bill would ever have passed through 
 the two houses of parliament." 
 
 The true construction is, however, not so severe as that, 
 although still sufficiently severe. In Re Morgans Pateitt (c), 
 Lord Brougham said : " It is by no means their (the Privy 
 Council) course to put themselves precisely in the situation of the 
 Legislature, and never to grant an extension where an Act of 
 Parliament would not have been obtained. At the same time 
 there are some limits to this. They are to look to a certain 
 degree at the position in which they are placed, and to consider 
 that they here represent the Legislature, and that they are 
 invested with somewhat similar powers of discretion to those 
 exercised formerly by the whole three branches of parliament." 
 
 Such is the spirit in which the Privy Council will approach 
 the subject of an extension, not benevolently to the applicant, 
 but still with not so stern a regard to the interests of the public 
 as parliament would entertain. 
 
 In considering tbeir decision the Privy Council will consider : — 
 
 1. The nature and merits of the invention in relation to the public. 
 
 2. The adequacy or inadequacy of the profits made by the 
 inventor as such, 
 
 3. The circumstances of the case. 
 
 In He ErarcVs Patent (/), Lord Lyndhurst said : " In cases 
 of this kind we expect a very strong case of hardship to be made 
 out as well as a strong case upon the utility of the invention ; " 
 and the same privy councillor in Soame's case {g) said : " We 
 consider the invention as very meritorious, the result of a great 
 deal of labour, care, and science, and that it is extremely useful 
 in its efiects. We are satisfied by reasonable evidence that t)ie 
 
 (c) 1 Web. P. C. 737. ((/) 1 Weli. P C. 729. 
 
 (/) 1 Web. ]'. C. 557. 
 
198 THE LAW OF PATENTS. 
 
 party has sustained very considerate loss, and under these 
 circumstances we think that the period ought to he extended." 
 
 It will be observed that the three considerations for the Privy 
 Council laid down by the Act of 1883 are almost identical to the 
 grounds of extension as given by Lord Brougham in Re Derosne's 
 Patent (//) : " The parties must show in the first place some 
 invention, in the next place a benefit to the public, and in the 
 third place that they have not had adequate remuneration." 
 
 It is immaterial whether or not the application is opposed. The 
 Privy Council will require every necessary ground for extension 
 to be strictly proved before they advise an extension (i), and this 
 even though the Crown through the attorney-general consents (A-). 
 
 " The merit of an importer is less than of an inventor. We 
 are sitting judicially, and it is an argument against the patent 
 that it is imported and not invented. I do not say it takes 
 away the merit, but it makes it much smaller " (/). 
 
 Where it appeared that the imported invention had great com- 
 mercial value, and that the petitioners had embarked a large capital 
 in bringing the patent into use, whereby they had sustained a loss 
 of nearly £10,000, an extension for six years was granted [m). 
 
 Extension of the term will be granted to assignees, as they 
 have, so to speak, purchased the merit of the original inventor, 
 but the argument against importers will apply with equal force 
 against assignees (w). 
 
 In Whitehouse's Patent (o), the inventor was a mechanic in the 
 employ of the petitioner, the petitioner was the assignee of the 
 patent, and had expended large sums of money on the necessary 
 plant and machinery ; an extension was granted for six years, on 
 condition that the petitioner secured to Whitehouse an annuity of 
 iloOO during the term of the patent. 
 
 {h) 2 Web. P. C. 4. 187. 
 
 (i) In re Perkm's Patent, 2 Web. {n) See In re Napier's Patent, 13 
 
 P. C. 6. Moo. P. C. C. 543. See also Norton's 
 
 {k) In re CardwelVs Patent, 10 Moo. Patent, 1 Moo. P. C, N. S. 339 ; Pit- 
 
 P. C. C. 488 ; see also Darby's Patent, man's Patent, L. R., 4 P. C. S4 ; 8 Moo. 
 
 8 P. 0. R. 380, 383. P. C, N. S. 293. 
 
 (Z) Per Lord Brougham, In re (o) 1 Web. P. C. 473 ; see also 
 
 Soanu's Patent, 1 Web. P. C. 729. Hardy's Patent, 6 Moo. P. C. C. 441. 
 
 {m) Berry's Patent, 7 Moo. P. C. C. 
 
EXTENSION OF TERM OF PATENT. 190 
 
 " Merit " l)ere means the consideration which has been given 
 to the state for the patent ; it does not mean the merit of the 
 inventor, but the merit of the consideration which he has given. 
 An inventor may have diligently worked for years in a most 
 deserving manner, and yet have produced an improvement of the 
 most trifling nature — the merit of the person in this case will not 
 be considered. On the other hand, the invention, although 
 a great one, may have been handed to him from abroad without 
 thought or trouble on his part. This is what Lord Brougbam 
 contemplates when he says that the merit of an importer is less 
 than that of an inventor. Again, the invention may have been a 
 very simple one, produced by an inventor with a moment of 
 thought, and yet of great importance to the world. This latter 
 case would be one of merit — simplicity of an invention being an 
 element of its value {j)). 
 
 In Bailey's Patent {q), Lord Blackburn said : " What the 
 statute says is that the judicial committee shall, in considering 
 their decision, have regard to the nature and merits of the invention 
 before that evidence has been called which shows what can 
 hardly be disputed, viz., that the invention which is the subject of 
 the patent is a beneficial invention ; but as to the petitioner 
 showing that there was any special or peculiar advantage in the 
 invention in relation to the public to entitle the patentee to the 
 large reward of an extension of his patent, their lordships are of 
 opinion that he has totally failed to do so." 
 
 To sustain a petition for prolongation, a greater degree of merit 
 must be shown, than that which would be sufficient to support the 
 patent in a court of law (/■). 
 
 The Privy Council will not inquire into the novelty or utility 
 of a patent, except in so far as such novelty or utility may form 
 elements in the consideration of the merit of the invention (.s)^ 
 unless the patent is clearly invalid (f). 
 
 ip) In re Chintz's Patent, 2 Web. (s) In re Saxhy's Patent, L. K, 3 
 
 P. C. 113. P. C. 292 ; Stewart's Patent, 3 P. 0. R. 
 
 {q) Griff. P. C, at p. 254. 7 ; Kaifs Patent, 1 Web. P. C. 568 ; 
 
 (r) Per Sir W. Grove, In re Stoney's 3 Moo. P. C. C. 24. 
 
 Patent, 5 P. 0. R. 520 ; see also (t) Erard's Patent, 1 Web. P. C. 
 
 Saxbi/s Patent, L. R., 3 P. C. 292, 557; Woodcraft's Patent, 2^eh. V. C. 
 294. 18. 
 
200 THE LAW OF PATENTS. 
 
 Non-user of the patent creates a strong presumption against 
 the merit of an invention, which presumption can only be rebutted 
 by the strongest evidence ((f). But the same objection being 
 raised in Be Hnglies' Patent (,r), the application was granted after 
 strong and unanswered evidence of merit, though the patent had 
 not been used in England during the whole term (//). 
 
 In Re Betts' Patent {z) Lord Chelmsford said: "Dobbs' 
 specification may have given the petitioner the idea of the possi- 
 bility 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, however, who 
 followed out his suggestion, and after repeated experiments gave 
 it a practical application, is the real benefactor to the public, and 
 is entitled to claim that description of merit which constitutes one 
 of the grounds for extending the term of a patent " (a). 
 
 Where the applicants are a company who have purchased the 
 patent for the purpose of trading with it, and not at all with the 
 view of encouraging or rewarding the inventor, and an extension 
 of the term of the patent would confer no benefit upon the latter 
 at all, the application will be refused (/;), but otherwise, if the 
 inventor will reap a profit from the extension (<?). 
 
 Where part of the invention is sufficiently meritorious and 
 part not so, an extension of the term will be granted for the 
 meritorious part only {d). 
 
 Merit is a vague term. Different persons have different ideas 
 as to wherein it consists. Each case that comes before the Privy 
 Council must of necessity, therefore, be decided upon the facts of 
 that particular case. It is otherwise with the other necessary 
 condition for an extension, viz., the inadequacy of the remune- 
 
 (u) In re Allan's Patent, L. R., 1 (a) See also In re EilVs Patent, 
 
 P. C. -507 ; 4 Moo. P. C, K S. 443 ; 1 Moo. P. C, N. S, 258, at p. 265. 
 
 BakewelVs Patent, 15 Moo. P. C. C. (i) Norton's Patent, 1 Moo. P. C. 
 
 385. N. S., 339; Sillars Patent, Good 
 
 [x) L. R., 4 App. Cas. 174. P. C. 581, 582. 
 
 (y) See also In re Wright's Patent, (c) Houghton's Patent, L. R., 3 P. C. 
 
 1 Web. P. C. 575 ; In re Herbert's 461 ; 7 Moo. P. C, N. S. 309. 
 
 Patent, L. R., 1 P. C. 399 ; 4 Moo- {d) Bodmer's Patent, 8 Moo. P. C. C. 
 
 P. C, N. S. 300 ; Southby's Patent, 282 ; Lee's Patent, 10 Moo. P. C. C. 
 
 8 P. 0. R. 433. 226 ; Church's Patent, 3 P. 0. R. 95 5 
 
 (z) 1 Moo. P. C, N. S. 49. Joy's Patent, 10 P. 0. R. 89. 
 
EXTENSION OF TERM OF PATENT. 201 
 
 ration of the inventor. Here figures can be dealt with, and 
 a nearer approach to uniformity of decision obtained. It is 
 possible, therefore, to gather from the various decisions a 
 reasonably accurate set of rules for the guidance of the applicant 
 for an extension on the ground of the inadequacy of the 
 remuneration. 
 
 The sufficiency of the remuneration will bo estimated with a 
 view to the importance of the invention and the benefit the public 
 have derived from it. That which would be ample remuneration 
 for one patent would be considered inadequate for another. 
 Refining sugar by filtering it through animal charcoal was an 
 invention of great value and importance. The patent was 
 extended for six years on the ground that although there had 
 been a considerable pi'ofit it bore no relation to the great merit of 
 the invention (e). So in Me JVeicton's Patent (/) the Privy 
 Council granted an extension on the ground that there had not 
 been sufficient remuneration considering the value of the 
 invention. 
 
 If the patentee is a manufacturer of the patented article, the 
 Privy Council will not endeavour to distinguish accurately his 
 profits as a patentee from his profits as a manufacturer, but will 
 consider the gross amount of profits {g). In this case Lord 
 Brougham said : " We cannot weigh in golden scales the 
 proportions between manufacturers' profits and patentees, but we 
 must take it in the gross, and apply our minds as men of the 
 world, men of business — neither unfairly towards the inventor, 
 nor extravagantly and romantically towards him in his favour — 
 neither against him pressing, nor in his favour straining. We 
 must ascertain whether he has, in the eyes of men of ordinary but 
 enlightened understandings, judging fairly between him and the 
 public, had a sufficient remuneration." 
 
 The ground of this view of the case appears to be that the 
 possession of the patent has placed the manufacturer in an 
 advantageous position in obtaining orders (A). 
 
 (e) In re Dcrosne's Patent, 2 Web. {h) In re Johnsons Patent, 8 Moo. 
 
 P. C. 1. P. C, N. S. 282 ; also Saxbi/s Patent, 
 
 (/) 14 Moo. P. C. C. 156. L. R., 3 P. C. 292 ; 7 Moo. P. C, 
 
 {g) In re Mimtz's Patent, 2 Web. N. S. 82. 
 P. C. n:j. 
 
202 THE LAW OF PATENTS. 
 
 lu the accounts which the patentee must file upon an appli- 
 cation for an extension, when he is a manufacturer of the patented 
 article he should, so far as possible, distinguish profits as a 
 manufacturer from profits as a patentee («) ; and in cases 
 where it can be shown that the reasoning in Johnson's case 
 (sKpra) does not apply, he will be allowed to deduct his profits as 
 a manufacturer before an estimate is taken of his profits as a 
 patentee (/.•). 
 
 But where he ascribed two-thirds of the profits to the manu- 
 facturer, and only one-third to the patent, it was held to be 
 unreasonable (/). 
 
 It w^ill be observed that the cases quoted above appear to 
 conflict with the principles laid down by Lord Brougham in 
 Muntz' case (m). These words cannot be read as meaning that 
 no regard whatever will be paid to the fact, that a great portion 
 of the patentees' plant, expenditure, or time, is devoted to the 
 business of an ordinary manufacture, from which some profits 
 would be derived, even if no patent were in existence, but that 
 no attempt will be made to go into minute details of figures. 
 The profits will be treated in gross, and then their lordships will 
 apply their general knowledge, as men of the world, in coming to 
 a conclusion as to how much the patentee has received from the 
 profits of his invention. 
 
 In estimating profits, a deduction wiU be allowed for the 
 expenses of experiments in bringing the invention to per- 
 fectiou (n). And also in respect of the costs of litigation necessary 
 to maintain the validity of the patent, and to restrain 
 infringers (o). But not where actions have been compromised, 
 improvidently, and costs abandoned without sufficient reason (p). 
 The expenses of taking out the patent will be allowed as a 
 deduction (q). So also will the expenses incurred in bringing the 
 
 (z) In re Belts' Patent, 1 Moo. P. C, 739 ; also In re Kmfs Patent, 1 "Web. 
 
 N. S. 49. P. C. 568. 
 
 {k) lb. (o) In re Galloioay's Patent, 1 Web. 
 
 [1) In re HilVs Patent, 1 Moo. P. C. , P. C. 724. 
 
 N. S. 258; also Duncan & Wihons {p) Lore HilVs Patent, IMoo. P. C, 
 
 Patent, 1 P. 0. R. 257. N. S. 258. 
 
 (m) 2 Web. P. C. at p. 120. {q) In re Roberts' Patent, 1 Web. 
 
 (9i) In re Bate's Patent, 1 Wub. P. C. P. 0. 573. 
 
EXTENSION OF TERM OP PATENT. 203 
 
 invention in general puWic use (r). And a deduction will be 
 allowed in respect of the personal expenses of the patentee, and by 
 way of salary for the exclusive devotion of his time in bringing 
 the patent into practical operation and public notice (.s). A 
 patentee residing in America, for the purpose of getting the 
 patented article into general use in England, employed an agent and 
 allowed him half profits. This half was allowed to be deducted (/). 
 
 But, on the other hand, the patentee must add to his profits 
 the profits arising out of the manufacture of the patented article, 
 even though intended for exportation (u). 
 
 So also he must add the profits which have been made by any 
 other persons interested in the patent, such as his licensees (.r) or 
 the assignees of a part, with free right to use the invention {>/) . 
 
 And in Be Jo/inson's patent Lord Justice James said : " Their 
 lordships are of opinion, that where the question to be considered 
 is, whether an invention has been sufficiently remunerated or not, 
 in taking into consideration the remuneration received, they must 
 have regard to the remuneration which the invention has brought 
 in to the patentee, or the person who claims the right of the 
 patentee, ichether it he in one country or another " (s). 
 
 "We have seen by sub-section 6 of the section of the Act of 
 1883, now under consideration, the rules of the Privy Council, 
 which have been heretofore in force, are to continue until 
 amended or altered. 
 
 Rule 9 is as follows : — " A party applying for an extension of 
 a patent .... must lodge at the council office six printed 
 copies of the specification, and also four copies of the balance 
 sheet of expenditure and receipts relating to the patent in 
 question, which accounts are to be proved on oath before the 
 lords of the committee at the hearing." This must be done 
 within one week of the hearing : rule 10. 
 
 (r) In re Gallowm/s Patejit, supra. 1 P. C. 118 ; 3 Moo. P. C, N. S. 488 ; 
 
 (s) In re Carr'' s Patent, L. R., 4 P. C. but see Thomas' Patents, 9 P. 0. R. 
 
 539. 367, 373. 
 
 (0 In re Poole's Patent, 4 Moo. P. C, (y) Thomas' Patents, 9 P. 0. R. 367. 
 
 N. S. 452. (2) L. R., 4 P. C. 75 ; 8 Moo. P. C. 
 
 (m) In re Hardy's Patent, 6 Moo. N. S. 282 ; see also Hardy's Patent, 6 
 
 P. C. C. 441. Moo. P. C. C. 441. 
 
 (x) In re Trotman's Patent, L. R., 
 
204 THE LAW OF PATENTS. 
 
 The judicial committee will not enter into the accounts in a 
 case for extension unless they have been filed in accordance with 
 this rule (a). 
 
 But in exceptional cases, the filing of perfect accounts may be 
 excused (b). Where the estate of a deceased patentee was of 
 little value, and no accounts had ever been kept, the petitioner, 
 the administratrix and widow of the patentee, was examined to 
 prove an allegation in the petition, to the effect that not only had 
 there been no profits, but a considerable loss (c). 
 
 And where the invention was of exceptional merit and it was 
 clear that a loss of about ^68,000 had been incurred, it was held 
 that extreme accuracy in the accounts was unnecessary (d). 
 
 The account of profit and loss ought to be clear and precise (e). 
 The application will be refused if the petitioner's accounts are 
 unsatisfactory (/). The accounts furnished by the petitioner not 
 containing sufficiently full and accurate information in respect of 
 the patent, or the remuneration received by him, the judicial 
 committee declined to recommend a prolongation of the term (g). 
 In one case, the accounts being prima facie unsatisfactory, the 
 judicial committee directed the question of accounts to be taken 
 before considering the merits of the invention (h). And where 
 the accounts were prima facie satisfactory, the petitioners were 
 allowed to prove the merits of the invention before going into the 
 accounts (^). The books of the petitioner in respect to profits 
 arising from his patent having been lost during his bankruptcy, 
 the account of profit and loss was taken upon his own evidence (k). 
 This was an exception to the general rule, which is, that 
 evidence will not be received from the petitioner ; but in the 
 
 (a) In re Johnson's <£; Atkinson's 8 P. 0. R. 227 ; but see In re Deacon's 
 
 Tatenl, L. R., 5 P. C 87 ; and see Patent, 4 P. 0. R, 119, 122. 
 In re Yates' & Kellett's Patent, L. R., (/) In re Trotman's Patent, 3 Moo. 
 
 12 App. Cas. 147. P. C, N. S. 488. 
 
 (6) In re Lowe's Patent, 10 Jur. 363. {g) In re Clark's Patent, 7 Moo. P. C, 
 
 (c) In re Heath's Patcrit, 8 Moo. N. S. 255. 
 
 P. C. C. 217. [h) In re Wield' s Patent, L. R,, 4 
 
 (d) In re Darby's Patent, 8 P. 0. R. P. C. 89. 
 
 380, 384. [i) In re Houghton's Patent, L. R., 
 
 (e) In re Bett^' Patent, 1 Moo. P. C, 3 P. C. 461 ; 7 Moo. P. C, N. S. 309. 
 N. S. 49 ; In re Saxby's Patent, 7 Moo. {k) In re Hutchinson's Patent, 14 
 P, C, N. S. 82 ; In re Lake's Patent, Moo. P. C. C. 364. 
 
EXTENSION OF TEEM OP PATENT. 205 
 
 absence of tlie books, without reasonable excuse, everything will 
 be taken most strongly against the petitioner (/). 
 
 Where a patentee, whether English or foreign, has obtained 
 foreign patents, they should be stated in a petition for prolonga- 
 tion, and the fullest information afforded as to the profits 
 thereof (m). A patentee should preserve the clearest evidence of 
 everything which has been paid or received on account of the 
 patent. Whether or not his remuneration has been adequate, 
 his furnishing a satisfactory account is a condition precedent to 
 his obtaining an extension of his term (n), and no alteration has 
 been made in this respect by sect. 25, sub-sect. 4 of the Act of 
 1883 (o). 
 
 Should the accounts filed in the first instance be unsatisfactory, 
 an adjournment of the hearing will sometimes be granted to allow 
 the petitioner to amend (p), but good reason must be disclosed, as 
 otherwise the petition will be dismissed (q). 
 
 The third head of subjects to be inquired into, upon an 
 application for prolongation, consist of the various grounds of 
 objections to an extension which have been allowed hitherto by 
 the committee, and which are included in the general term used 
 in sub-sect. 4, viz., " All the circumstances of the case." 
 
 That the invention has not been brought into public use is a 
 good ground of objection (r), but if the invention is shown to be 
 exceedingly meritorious, and the fact of non-user by the public 
 satisfactorily explained, this will amount to a special circum- 
 stance which will be taken into consideration by the committee in 
 support of the petition for extension (s). Negligence on the part 
 of the patentee in restraining infringement is a good ground of 
 objection (t). So also that the invention was practically useless 
 
 (1) In re Latvrence's Patent, 9 P. 0. R. 5 P. C. 87. 
 
 85 ; see also Yates' <£• Kelletfs Patent, [q) Neioton's Patent, 1 P. 0. R. 177 ; 
 
 L. R., 12 App. Cas. 147 ; 4 P. 0. R. L. R., 9 App. Cas. 592 ; also Yates' d: 
 
 150. KeUett's Patent, L. R., 12 App. Cas. 
 
 {m) Neivton's Patent, 1 P. 0. R. 177. 147 ; 4 P. 0. R. 150. 
 
 (n) In re Adair's Patent, L. R., 6 (r) In re Pinkus' Patent, 12Jur. 233. 
 
 App. Cas. 176. [s) Roper's Patent, 4 P. 0. R. 201. 
 
 (o) Newton's Patent, L. ;R. , 9 App. [t) In re Simisters Patent, 1 "Web. 
 
 Cas. 592. P. C. 721 ; also In re Pinkus' Patent, 
 
 (p) Perkms' Patent, 2 Web. P. C. 6 ; supra. 
 Johnson's & Atkinson's Patents, L. R. , 
 
206 THE LAW OF PATENTS 
 
 as originally described in the specification, but was subsequently 
 made practicable by subsequent improvements, introduced from 
 abroad (u). But, otherwise, where the invention was useful and 
 meritorious, in its original form, subsequent improvements form 
 no ground in support of objection (.r). When the non-profitable 
 use of the patent has been caused by the fault of the patentee 
 himself, objection will be allowed (t/). So also where a patentee 
 has delayed, intentionally, putting his invention into practice, 
 unless he can show that shortness of funds, or other reasons, 
 placed it out of his power to avoid the delay (s). 
 
 False statements made as to profits in the prospectus of a 
 company floated for the purpose of manufacturing under the 
 patent will be taken into consideration by the committee (a). 
 Insufficiency of the specification with regard to disclosure of the 
 method of putting the invention into practice is an objection (b). 
 Where the patentee had an accident, through the efiects of which 
 he was incapacitated for eight years from pushing his invention, 
 the committee considered this to be a special circumstance, and 
 having regard to the other facts of the case granted an extension 
 for a period of seven years (c). 
 
 A grant by the patentee of an exclusive license to work his 
 invention, together with a covenant to continue such exclusive 
 license in the event of a renewal being granted, is a good ground 
 of objection (d), but where the licensee had no rights to the 
 exclusive use of the patent during any period of prolongation 
 that might be granted, and it did not appear that the interest of 
 the public had been in any way aifected by the grant of the 
 exclusive license, it was held that this was no objection to the 
 petition for extension (e), and in Shone's Patent {/) an extension 
 
 (w) III re Woodcraft's Patent, 1 Web. 85. 
 
 P. C. 740. (^) In re LivcCs Patent, 9 P. 0. R. 
 
 (x) In re Galloway's Patent, 1 Web. 332. 
 
 P. C. 724 ; In re SoxUhhy's Patent, 8 (c) In re Roper's Patent, 4 P. 0. R. 
 
 P. 0. R. 433 ; but see Nussey d- Leach- 201. 
 
 man's Patent, 7 P. 0. R. 22. (d) CardwclVs Patent, 10 Moo. 
 
 {xj) In re Patterson's Patent, 6 Moo. P. C. C. 488. 
 
 P. C. C. 469. ifi) In re Darby's Patent, 8 P. 0. R. 
 
 (2) In re Norton's Patent, 1 Moo. 380. 
 
 P. C, N. S. 339. (/) 9 P. 0. R. 438. 
 
 (a) In re Lawrence's Patent, 9 P. 0. R. 
 
EXTENSION OF TERM OF PATENT. 207 
 
 was granted subject to the condition that the exclusive licensee 
 abandoned all right and benefit under the license. 
 
 We have seen that the novelty or utility of a patent wiU not 
 be inquired into, except so far as they bear upon the merit of the 
 invention. Nor vdll the validity of the patent be inquired into, 
 excepting in cases where it is obvious the patent is invalid. In 
 Re HilVs Patent (g), Sir J. T. Coleridge said : " Their lordships 
 have not in these cases been in the habit of trying the validity of 
 patents. They will not, of course, recommend the extension of 
 a patent which is manifestly bad ; but, on the other hand, they 
 will not generally enter into questions of doubtful validity. They 
 lay aside, therefore, the questions of want of novelty and want 
 of utility, so far as they affect the validity of the patent. Indeed 
 the learned counsel for the opponents disclaimed, and very 
 properly, any intention of impeaching its validity directly ; but 
 they contended that, both with respect to the novelty and tlie 
 utility of the invention, the degree of merit to be attributed to 
 the petitioner ought to be taken into account ; and in their 
 lordships' judgment they are right in that contention. Unless 
 the patent be very clearly invalid, so that it would be altogether 
 nugatory to prolong that patent, the court usually has been rather 
 inclined to assume that the patent may be a good patent, and so 
 leave the question to any legal consideration that may arise in a 
 contest between the parties who are interested in it " (h). 
 
 An illustration of what is meant by the patent being clearly 
 bad is given in Re M^ Lines' Patent (i). The patent was for a 
 metallic soap to be used for the purpose of preserving metals 
 from rust. The specification was very widely worded. Sir W. 
 Earle said, " Their lordships taking into consideration with 
 reference to the public interest that the individual substance for 
 the application of which the patent is sought to be prolonged is 
 not specially defined, every kind of metallic soap being within 
 the limits of the specification, are of opinion that many questions 
 affecting the patent might be raised if any metallic soap was used 
 by the public in ignorance of the specification being as wide as it 
 
 {g) 1 Moo. p. C, N. S. 258. ' (i) 5 Moo. P. C, N. S. at p. 78 ; see 
 
 {h) Per Lord Langdale, M.R., In re also Sillar's Fatent, Good. P. C. 581. 
 Pinkus' Patent, 12 Jur. 233. 
 
208 THE LAW OF PATENTS. 
 
 is. On the whole, therefore, their lordships are of opinion that 
 they ought not to recommend her Majesty under such cir- 
 cumstances to grant a prolongation." 
 
 In He Lane Fox's Patent, a Court of First Instance held the 
 patent invalid ; while an appeal from that decision was pending, 
 a petition for prolongation was brought, the committee decided to 
 hear the petition on the ground that it was not their duty to look 
 into the validity of the patent, and the decision of the Court was 
 one which might not be upheld and therefore in no way 
 binding {k). 
 
 Sect. 25 of the Patent Law Amendment Act, 1852, provided 
 that letters patent obtained in the United Kingdom for patented 
 foreign inventions should not continue in force after the expira- 
 tion of the foreign patent, and that any prolongation of letters 
 patent should be made subject to that condition, consequently 
 an inquiry into foreign patents and their duration was always an 
 essentia] element of the proceedings before the Privy Council (/) . 
 The lapse of a foreign patent the date of which was subsequent 
 to the date of protection obtained in England for the same 
 invention did not affect the English patent, and was no objection 
 to its prolongation {m). 
 
 This Act however is specifically repealed, and by sect. 45, 
 subsects. 2 and 3 of the Act of 1883, it is provided : — 
 
 " Every pate)d granted before the commencement of this Act, or 
 on an application then pending, shall remain unaffected hy the 
 provisions of this Act relating to patents binding the Crown, and to 
 compulsory licenses. In all other respects {including the amount 
 and time of payment of fees) this Act shall extend to all patents 
 granted before the commencement of this Act, or on applications 
 then pending, in substitution for such enactments as would have 
 applied thereto if this Act had not been passed." 
 
 (k) 9 P. 0. K. 411 ; see also In re K S. 282. 
 Kay's Patent, 1 Web. P. C. 568 ; 3 Moo. (»i) In re Betts' Patent, 1 Moo. P. C, 
 
 P. C. C. 24. N. S. 49 ; In re Poole's Patent, 4 Moo. 
 
 (Z) In re Bodmers Patent, 8 Moo. P. C, N. S. 452; Irt, re Adair' s Patent, 
 
 P. C. C. 282; In re Newton's Patent, L. R., 6 App. Cas. 176; 50 L. J., 
 
 15 Moo. P. C. C. 176 ; In re Betts' P. C. 68 ; but see In re Blake's Patent, 
 
 Patent, 1 Moo. P. C, N. S. 49 ; In L. R., 4 P. C. 535; 9 Moo. P. C, 
 
 re Johnson's Patent, 8 Moo. P. C, N. S. 373. 
 
EXTENSION OF TERM OE PATENT. 209 
 
 Thus it will be seen that after the commencement of the Act 
 any prolongation of letters patent will be made regardless of 
 foreign patents or their duration, saving with regard to the profits 
 thereof as has been noticed above {)>). 
 
 The Act of 1883 gives a patentee the right to petition, and, 
 bearing in mind that the definition of the word patentee is by- 
 sect. 46, " Ani/ jjerson for iJie time being entitled to the benefit of 
 a patent," it will be observed that the greatest latitude is given 
 as to persons who may petition. 
 
 Prior to the Act of 1883 it had been held, in a series of cases, 
 that executors and administrators of a grantee of letters patent 
 might petition for an extension (o). So 'might the assignee of 
 a patent, even though a public company [p). So might the 
 executor of an assignee {q), so also any person having merely an 
 equitable interest in the patent (r), an unpaid mortgagee should 
 be joined as a party («). 
 
 In Herbert's Patent (/) the petition was presented by the 
 patentee and the assignees of a part share conjointly, while the 
 petition was pending the patentee died, the committee permitted 
 the hearing to proceed without adding a representation of the 
 deceased patentee as a party, and granted an extension subject to 
 a condition that the assignees should hold a moiety on behalf of 
 the representative of the patentee. 
 
 In He Norton^ s Patent {it), Sir John Romilly, then Master of the 
 Rolls, said, " Under the late statute, 7 & 8 Yict. c. 69, s. 4, a 
 person is not excluded from applying for an extension of a patent 
 upon the ground of his being the assignee of the patent ; but it 
 must always be borne in mind that the assignee of a patent does 
 not, unless under peculiar circumstances, apply on the same 
 favourable footing that the original inventor does. The ground 
 that the merits of the inventor ought to be properly rewarded, in 
 
 (n) But note In re Jahlochkoff' s (q) In re Bodme/s Patent, 6 Moo. 
 
 Patent, 8 P. 0. R. 281 ; In re Livct's P. C. C. 469. 
 
 Patent, 9 P. 0. R. 327, 332 ; Re Sevict's (r) In re Nohle's Patent, 7 Moo. 
 
 Patent, 12 P. 0. R. 10. P. C. C. 191. 
 
 {o) In re Heath's Potent, 8 Moo. (s) In reChurch'sPatent,SY. 0.R.9',. 
 
 P. C. G. 217. (t) L. R., 1 P. ('. 399 ; 4 Moo. P. C, 
 
 (2)) In re Norton's Patent, 1 Jloo, N. S., 300. 
 
 P. C, N. S. 339. («) 1 Moo. P. C, N. S. 339. 
 
 T. r 
 
210 THE LAW OF PATENTS. 
 
 dealing with an invention which has proved useful and beneficial 
 to the public, does not exist in the case of an assignee, unless 
 the assignee be a person who has assisted the patentee with funds 
 to enable him to perfect and bring out his invention, and has 
 thus enabled him to bring it into use." 
 
 And in Re Pitman's Patent {x) Sir J. W. Colvile said : " There 
 are no doubt cases in which their lordships have granted applica- 
 tions by the assignees of the patentee for extension of the term, 
 and have also considered, in some respects, the expenses incurred 
 by the assignee in bringing the patent into notice, and for the 
 merit as it may be said of the assignee in patronizing the 
 patentee, and in pushing the patent into notice ; but the general 
 rule which their lordships entertain in applications on the part of 
 assignees is, as was stated by Lord Broughan in Re Morgan's 
 Patent (p), that by so doing ' they are, though not directly yet 
 mediately and consequentially, as it were, giving a benefit to the 
 inventor, because, if the assignee is not remunerated at all, it 
 might be said that the chance of the patentee of making an 
 advantageous conveyance to the assignee would be materiall}- 
 diminished, and consequently his interest damnified. For this 
 reason consideration has been given to the claims of the assignee 
 who has an interest in the patent.' " 
 
 It is difficult to estimate the effect of sect. 36 of the Act of 
 1883 upon this branch of the subject. Sect. 36 provides that : 
 *' A patentee may assign Ms patent for any place in or part of the 
 United Kingdom or Isle of 3Ian, as effectually as if the patent 
 icere originally granted to extend to that place or part only.'" 
 
 Will the Privy Council, on the application of an assignee for 
 a portion of the kingdom, extend the patent for that portion, or 
 must all parties to the patent join in the petition ? 
 
 It is evident that whilst one district assignee of an electric 
 light patent, for example, may have been amply remunerated, 
 another may not have been remunerated at all, owing to the 
 action of local authorities or other matters entirely beyond the 
 assignee's control. How could the committee in justice refuse 
 the latter an extension ? On the other hand, how could they 
 grant it to the other ? 
 
 (a) 8 Moo. P. C, N. S. 293. {y) 1 Web. P. C. 737. 
 
EXTENSION OF TERM OF PATENT. 211 
 
 Then again, if a patent may bo extended for one district and 
 not for another, we shall have the enormous practical difficulties 
 and public inconveniences of an article being patented in one 
 county and free in another, a state of affairs which, we venture 
 to say, would be intolerable to the public. 
 
 The advertisement of the intention of the patentee to present 
 a petition must be made in the manner prescribed by sect, 4 of 
 5 & 6 Will. IV. c. 83, that is to say, the petitioner must advertise 
 in the London Gazette three times, and in three London papers, 
 and three times in some country paper published in the town 
 where or near to which he carries on any manufacture of anything 
 made according to his specification, or near to or in which he 
 resides, in case he carries on no such manufacture, or published 
 in the county where he carries on such manufacture, or 
 where he lives, in case there shall not be any paper published 
 in such town (s). 
 
 Where the petitioner resided in France but had granted 
 licenses to persons resident and carrying on business in London 
 and Liverpool, advertisements inserted in the Gazette and news- 
 papers published in those places were held to be sufficient {a) . 
 
 The names of all the parties who join in presenting the petition 
 must be inserted in the advertisements {h). 
 
 The advertisements must notify the day on which the peti- 
 tioner intends to apply for a time to be fixed for hearing the 
 matter of his petition, which day must be not less than four 
 weeks from the date of the last of the advertisements inserted in 
 the London Gazette (c), and the petition must be presented within 
 one week from the insertion of such last advertisement {d), and 
 must be accompanied by affidavits of advertisements having been 
 inserted in accordance with tbe above provisions {c). 
 
 The petition must contain full disclosure, as "a petitioner 
 seeking the grace and favour of the Crown is bound to strict 
 
 [z) For form of advertisement, see (c) Priv. Conn. Rules, r. 2. 
 
 Appendix D. {d) Ibid. r. 3 ; see In re Hutchinson s 
 
 (a) Derosne's Patent, 4 Moo. P. 0. C. Patent, 14 Moo. P. C. C. 364 ; for form 
 
 416 ; 2 Web. P. C. 1. of petition, see Appendix D. 
 
 {b) Nobles Patent, 7 Moo. P. C. C. (e) Ibid. r. 4. 
 191. 
 
 p 2 
 
212 THE LAW OF PATKNT.S. 
 
 truth, aud to the utmost candour and frankness, to uberrima fides, 
 in his statement" (/). 
 
 Two or more patents if of a similar nature may be the subject 
 of one petition [g). 
 
 Any person may enter a caveat against the extension, and 
 may be heard at the bar in support of their opposition (/?) ; and 
 where unreasonable opposition is offered, they will be ordered to 
 pay the petitioner's costs (?'). But where the opposition is well 
 founded and successful, costs will be allowed to the opposing 
 party (/.). If the petition be abandoned, costs will be given to 
 opposers, and they need not give the petitioner notice of their 
 intended application for the same (/). Where the petitioner had 
 fairly and honestly stated his case, both the things against and 
 the things for him in his petition, and the inquiry had been pro- 
 longed by the opposition, the costs of the opposition refused, 
 although the petition had been dismissed on the ground of 
 sufficient remuneration [m). 
 
 Where two or more parties have opposed the petition sepa- 
 rately and successfully, the committee will sometimes order a 
 fixed sum to be paid by the petitioner to the opponents, to be 
 apportioned between them in lieu of saddling him with several 
 separate sets of taxed costs {n). We thus see that, whilst on the 
 one hand an unwarranted application for an extension may be 
 very costly, unreasonable opposition may be equally so, although 
 costs are given upon the principle that persons should not be 
 discouraged from coming forward to protect the interests of the 
 public (o). 
 
 (/) Per James, L.J., In re Clark's Patent, 1 Web. P. C. 554. 
 
 Patent, L. R., 3 P. C. 421, 426. {I) In re Bridson''s Patent, 7 Moo. 
 
 (g) In re Clark's Patent, L. R., 3 P. C. C. 499. See, however, In re 
 
 P. 0; 421 ; In re Johnson's d- Atkin- Milner's Patent, 9 Moo. P. C. C. 39. 
 
 son's Patent, L. K.; 5 P. C. 87 ; In re (m) In re Muntz's Patent, 2 Web. 
 
 Church's Patent, 3 P. 0. R. 95. P. C. 122. 
 
 (Ji) In re Lowe's Patent, 8 Moo. {n) In re Jones' Patent, 9 Moo. 
 
 P. 0. C. 1 ; In re Schlumhergcr's P. C. C. 41 ; also In re Hill's Patent, 
 
 Patent, 2 Eq. R. 1. 1 Moo. P. C, N. S. 258 ; In re ^Field's 
 
 {{) In re Domiton's Patent, 1 Web. Patent, 8 Moo. P. C, N. S. 300; 
 
 P. C. 565 ; In re IlonibalVs Patent, Newton's Patent, L. R., 9 App. Cas. 
 
 9 Moo. P. ('. C. 394. 592. 
 
 {k) In re Westrwp'p <L- Gibhins' (o) Wcstrapp d: Gibbins'' Patent, 1 
 
EXTENSION OF TERM OF PATENT. 213 
 
 The Attorney-General always appears in the interest of the 
 Crown {p). 
 
 The advertisements should be proved before the case is 
 heard (17) ; if the advertisements have not been made in the 
 prescribed manner, no extension will be granted. " If the 
 statute requires anything to be done Avhich is not done, the 
 Crown has no power to grant a prolongation " {)•). 
 
 The Attorney-General can at the hearing adduce prior specifi- 
 cations for the purpose of showing want of no\'elty in the invention 
 of the petitioner, without having previously given notice of his 
 intention to do so [s), and it would seem that it is open for any 
 opponent to do the same, since it is the duty of the petitioner to 
 call attention to every fact whether in favour of or against his 
 petition, and therefore he cannot complain of the introduction at 
 the hearing of any objection to the extension of his patent which 
 he ought to have drawn attention to himself {t). 
 
 The practice on petition for prolongation is governed by the 
 Privy Council Rules which were made to regulate the procedure 
 under 5 & 6 Will. IV. c. 83, and are set out at length in the 
 Appendix {u). 
 
 An extension of a patent having once been granted, the Privy 
 Council have no jurisdiction to entertahi a petition for a further 
 prolongation, their power being exhausted ; and this objection 
 may be taken by an opposing party, even though omitted from 
 the objections filed by them {x). 
 
 When an order has been made by the Privy Council for an 
 extension of the term of a patent, the person in whose favour 
 such order has been made must leave a copy at the Patent Office, 
 and the order shall thereupon be entered upon the register of 
 patents (;?/). 
 
 Web. P. C. 554 ; In re Jones' Patent, Patent, 7 Moo. P. C. C. at p. 194. 
 
 9 Moo. P. 0. 0. 41; In re WicIcVs {$) In re BalVs Patent, L.'R., i Ai)-p. 
 
 Patent, 8 Moo. P.O., N. S. 300 ; L. E., Gas. 171 ; In re SteivarVs Patent, 3 
 
 4 P. C. 89. P. 0. R. 7 ; In re LiveVs Patent, 9 
 
 {p) In re Erard's Patent, 1 Web. P. 0. R. 327. 
 
 P. C. 557 ; In re Smith's Patent, 7 Moo. {t) Ibid. 
 
 P. C. C. 133. («) See p. 457, post. 
 
 (g) In re Perkins' Patent, 2 Web. [x) In re Goucher's Patent, 2 IMoo- 
 
 P. C. 8. P. C, N. S., 532. 
 
 (r) Per Lord Brougham in Noble's (//) P. R. 1890, r. 74. 
 
214 THE LAW OF PATENTS. 
 
 CHAPTER XV. 
 
 CONFIRMATION. 
 
 The statute 5 & 6 Will. IV. c, 83, provided a remedy for 
 cases of hardship, such as, where an invention had been invented 
 or used and subsequently abandoned before the date of the patent 
 in a manner unknown to the patentee at the time of his applica- 
 tion. There would bo a sufficient prior user to invalidate the 
 patent, and yet there would be great merit probably in the 
 patentee, and a great benefit to the public. The patentee might 
 petition the Privy Council to confirm the patent, that is, to declare 
 it valid, notwithstanding such prior user. The proceedings on 
 such a petition were similar to those upon a petition for 
 extension. 
 
 The Act of 1883 repeals the statute 5 & 6 Will. IV. c. 83, and 
 with it all proceedings for confirmation ; and this method of 
 clothing an invalid patent with validity is abolished. In Re 
 JahlocJtl-qff^s Patent the Privy Council seemed to be of opinion 
 that the right to confirmation was retained in the case of patents 
 granted prior to the date of the Act of 1883, by virtue of 
 sect. 113 {a). 
 
 It is not strictly the purpose of a law work to criticise the 
 enactments of the legislature, saving in their construction and 
 application from an administrative point of view, otherwise a 
 great deal might be said as to the advisability of abolishing that 
 which was intended for and operated merely as a relief under 
 very hard and exceptional circumstances. 
 
 {a) 8 P. 0. R. 281, 284; see also remarks of Bowen, L.J., in Singer v. 
 Stasscn, 1 P. 0. K. at ]>. 125. 
 
( 215 ) 
 
 CHAPTER XVI. 
 
 REMEDIES OF THE PATENTEE AND OF THE TUBLIC ACTION FOR 
 
 INFRINGEMENT. 
 
 An action for infringement is the remedy which the patentee 
 has, and the means which is given to him for enforcing his patent 
 privileges. 
 
 The courts are bound to take notice of the patent, and are 
 bound to give legal effect to it, provided it cannot be shown to 
 have been granted contrary to law. 
 
 PARTIES TO THE ACTION. 
 
 The Act of 1883 gives no directions as to what persons may 
 be plaintiffs or defendants in an action for infringement, and 
 therefore leaves the question of the parties to the action as it was 
 before the passing of the Act. 
 
 The original grantee, it is obvious, so long as he has not parted 
 with the whole of his interest in the patent, may be a plaintiff. 
 And so may the assignee of a patent {a), even though he has 
 acquired the right by assignment of two separate moieties, and 
 the party sued is the original grantee (b). 
 
 The assignee of a portion of a patent may sue for an infringe- 
 ment of that part. Erie, C.J., in giving judgment in Dunnicliff 
 V. MaJlett (c), said : " The question is whether an assignment of 
 part of a patent is valid. I incline to think that it is. It is 
 every day's practice for the sake of economy to include in one 
 patent several things which are in their nature perfectly distinct 
 and severable. . . . Being therefore inclined to think that 
 
 (a) Electric Telegraph Co. v. Brett, N. S. 162 ; 29 L. J., C. P. 275. 
 10 C. B. 838 ; 20 L. J., C. P. 123. (c) 7 C. B., N. S. 209 ; 29 L. 
 
 {h) IFaltm v. Lavatcr, 8 C. B., 0. P. 70, 73. 
 
216 THE LAW OF PATENTS. 
 
 a patent severable in its nature may be severed by the assignment 
 of a part, I see no reason for holding that the assignee of a 
 separate part -which is the subject of infringement may not 
 maintain an action," The plaintiff in such an action would not 
 be allowed to sever his part from the rest of the patent, and he 
 would be liable to be defeated if it could be shown that the 
 patent in any of its parts was void. But, on the other hand, he 
 would have to show that his part alone would have been sufficient 
 to support a patent, i.e., that it contains a new and useful inven- 
 tion. Sect. 33, however, of the Act of 1883, provides, " Every 
 2}atent .... shall he granted for one invention only, but 
 may contain more than one claim; hat it shall not he competent for 
 any person in an action or oth'-r proceeding to take any objection to 
 a patent on the ground that it comprises more than one invention.'' 
 
 By sect. 36, " A patentee may assign his patent for any place in 
 or part of the United Kingdom, or Isle of Man, as effectually as if 
 the patent were originally granted to extend to that place or part 
 only.'' The assignee for a district will be in a position to bring 
 an action for infringement, but it is obvious that the infringement 
 must be within his district, otherwise he will be unable to prove 
 damage. 
 
 One of several joint owners of a patent may bring an action in 
 his own name to restrain infringement, or for damages, without 
 joining his other co-owners ((/), and he may sue alone for an 
 account of profits, and for payment to the plaintiff of such part of 
 such profits as the plaintiff should be entitled to. 
 
 Abinger, C.B., in Derosne v. Fairie (e), said that " a mere 
 licensee could maintain no action against anyone else for the 
 infringement of a patent." He might, however, use the name of 
 the grantor of the license for the purpose provided he were an 
 exclusive licensee (/). 
 
 A mere licensee would have no exclusive right to use the 
 invention ; he is only a person who is permitted to use it. The 
 grantor of such a license might grant a dozen other such licenses 
 
 (d) Shecha/t v. Grraf, Eastern Rail- (c) 1 Web. P. C. 154; see also Heap 
 
 way Co., L. R., 16 Ch. D. 59 ; Dent v. v. Hartley, 6 P. 0. E. 495. 
 
 Turpin, 2 J. & H. 139 ; see ante, (/) Renard v. Levinstein, 2 Hem. & 
 
 Chap. XII. M. 628, 
 
PARTIES TO THE ACTION. 217 
 
 without prejudicing the rights of the license ; but an exclusive 
 licensee has a right of property in the monopoly, and stands very 
 much in the same position as an assignee for a district. The term 
 exclusive, as applied to a licensee, meaning exclusive within an 
 area. 
 
 When the exclusive licensee finds it necessary to protect his 
 rights by bringing an action in the name of the licensor he is 
 liable to give the licensor security for the costs {g) which, in the 
 event of defeat, the licensor would have to pay. The right, 
 however, to assign for particular districts will make this branch 
 of the subject unimportant, since exclusive licenses were only a 
 scheme for the purpose of, in effect, assigning for districts. 
 
 The assignees or trustees in bankruptcy of a patentee may 
 maintain action for infringement in their own name {h), and so 
 may the executors or administrators of a patentee. 
 
 A mortgagee of a patent is not a necessary party in an action 
 for infringement of that patent (/), although, as we have seen, he 
 should be joined on a petition for prolongation {k). 
 
 A mere agent to introduce, sell, and grant licenses for the use 
 of a foreign patent in this country is not entitled to take proceed- 
 ings to restrain infringement (/). 
 
 As defendants, a person physically using a patented invention 
 is liable, such as a contractor i^ni). When a person in the 
 position of a servant uses a patented invention, the master, in 
 law. is the person who physically uses the invention as well as 
 the servant, and the master may be sued. If a servant uses an 
 invention in the course of his employment the master is liable, 
 even though the master has told the servant to avoid infringing 
 the patent (m). The directors of a company whose servants 
 infringe an invention are personally liable (o) . 
 
 ig) Evam v. Rces, 2 Q. B. 334 ; 224. 
 
 Spiccr V. Todd, 1 D. P. R. 306. {n) Belts v. De Vitre, L. R., 3 Ch. 
 
 {h) Bloxain v. Elsee, 6 B. & C. 169. 429 ; Sykes v. Howarth, L. R., 12 
 
 (t) Van Odder v. Soiverhy Bridge Ch. D. 826 ; Whatman v. Pearson, 
 
 Flour Co., 7 P. 0. R. 208. L. R., 3 C. P. 422. 
 
 (^•) Church's Patent, 3 P. 0. R. 9r.. (<>) Betts v. De Vitrc. L. 1!., 3 Ch. 
 
 (Z) Adams r. North British Railway 429, 441 ; Spciiccr v. Ajieontx Rnbher 
 
 Co., 29 L. T., N. S. 367. Co., 6 P. 0. R. 46. 
 (»i) Denley v. Blore, 38 Loncl Jour. 
 
218 THE LAW OF PATENTS. 
 
 An architect specifying the use of a patented invention is not 
 liable (p). 
 
 Aliens infringing a patent in this country by vending or 
 otherwise are liable if they come within the jurisdiction of the 
 courts (q). A person ordering goods to be made in England 
 which are an infringement of a patent, although intended for 
 exportation to him abroad, infringes the patent. " He that 
 causes or procures to be made may be well said to have made 
 himself." Per Tindal, C.J. (r). 
 
 A company, to whom the business of the defendants was 
 assigned while an action for infringement of a patent was pending 
 against them, cannot be joined as co-defendants in that 
 action (.s). 
 
 But where an indemnity was given by a third party to the 
 defendants after the commencement of the action, it was held that 
 the person giving such an indemnity should be joined as a party 
 under E.S.C. Order XYI. r. 48 (t), but such third party will only 
 be bound by the decision of the Court so far as such decision falls 
 within the terms of the order by which he was directed to 
 appear (u). 
 
 An action is properly brought by the patentee against a com- 
 pany who are innocent carriers of infringing articles, to restrain 
 them from dealing with or handing over such articles to other 
 persons, and on the discovery of the name of the consignee, such 
 consignee should be joined as a co-defendant in the action (x). 
 
 The manufacturer and patentee of a machine, the use of which 
 is claimed to be an infringement of another patent, cannot compel 
 the plaintiff to join him as a co-defendant with the person by 
 whom the machine was used and against whom the action for 
 infringement was brought {//). 
 
 {p) Denley v. Blore, 38 Lond. Jour. {u) Edison v. Holland, 6 P. 0. R. 
 
 224. 243, 286. 
 
 (q) Caldiccll v. VanvUssengcn, 9 {x) Washburn and 3loenManufactur - 
 
 Hare, 415. ing Co. v. Cunard Stenmship Co., 6 
 
 (r) Gibson y. Brand, 11 L. J., C. P. P. 0. R. 398, 403. 
 
 177, 183. (v/) Moscr v. Marsden, 9 P. 0. R. 
 
 (s) Briggs v. Lardcur, 2 P. 0. K. 13. 214. 
 
 (0 Edison V. Holland, 3 P. 0. R. 395. 
 
( 219 ) 
 
 CHAPTER XVII. 
 
 THE CAUSE OF ACTION INFRINGEMENT. 
 
 The infringement of a patent is the doing that which the 
 patent prohibits from being done (a). The words of the lloyal 
 Command are as follows : " We do by these presents for us, our 
 heirs and successors, strictly command all our subjects whatsoever 
 within our United Kingdom of Great Britain and Ireland and 
 the Isle of Man, that they do not at any time during the con- 
 tinuance of the said term of fourteen years, either directly or 
 indirectly make use of or put in practice the said invention, or 
 any part of the same, nor in anywise imitate the same, nor make 
 or cause to be made any addition thereto or subtraction therefrom, 
 whereby to pretend themselves the inventors thereof, without the 
 consent, license or agreement of the said patentee in writing under 
 his hand and seal, on pain, &c." 
 
 There is no duty cast upon a patentee to inform persons that 
 what they are doing amounts to an infringement of his patent, 
 and he is not estopped by omitting to give such information, 
 although he knew of the infringement, from subsequently bringing 
 his action (b). 
 
 The question of infringement or no infringement is one of fact, 
 and therefore is for the jury (c). But this refers to the mere 
 infringement alone within the meaning of Tindal, C.J., in 
 Muntz V. Foster (d), when he told the jury that "for the purpose 
 of inquiring whether the defendants have infringed the patent or 
 not, we are to assume that it is a good patent, that no objection 
 
 (a) Walton v. Batetnan, 1 Web. (c) Walton v. Potter, 1 Web. P. C. 
 
 P. C. 613. 585 ; Dc la Rue v. Dkkanson, 7 E. & 
 
 (&) Proctor V. Beniiis, L. R., 36 B. 738, 
 Ch. D. 740. {d) 2 Web. P. C. 99. 
 
220 THE LAW OF PATENTS. 
 
 arises either to the nature of the grant or the specification which 
 has been enrolled by the plaintiff." 
 
 If the patent is invalid there can be no infringement in the 
 sense that a patent which has no legal existence cannot l)e 
 infringed. But assuming that it has a legal existence, the ques- 
 tion is for the jury. This explains the apparently contradictory 
 decision in Curtis v. Piatt (e), in the House of Lords. The 
 question of infringement was there taken as involving the validity 
 of the patent. 
 
 It is equally an infringement whether the defendant acted in 
 ignorance of the plaintiff's patent or not. In Heath v. Unu-in (/), 
 Parke, B., delivering the judgment of the Court, said : — " There 
 was therefore no intention to imitate the patentee's invention, 
 and we do not think the defendant can be considered to be guilty 
 of any indirect infringement if he did not intend to imitate at all." 
 This judgment certainly gives an erroneous impression of the 
 law, and Shad well, Y.-C, when the same case came before 
 him {g), said : — " The party complaining of the act is not the less 
 prejudiced by it because it was committed unintentionally ; and 
 my opinion is that, if a party has done an act that is injurious to 
 the rights of another (though without any intention of doing him 
 an injury) he is answerable for the consequences. In Stevens v. 
 Keating (//) the Lord Chancellor disapproved of the case in the 
 Court of Exchequer ; and I must decline to act upon the 
 principle which it lays down." 
 
 Subsequently, when Heath v. Umvin came before the House of 
 Lords, the opinion of the judges being taken, Parke, B. (/), 
 acknowledged the error into which the Court had fallen, and 
 approved oi Stevens v. Keating, 
 
 In Stead v. Anderson (A-), Wilde, C. J., tersely puts it : — "The 
 question of infringement depends not on what the defendant 
 intends, but on what he does." 
 
 So it is immaterial whether the defendant was aware that the 
 thing was patented or not, since in law every person in the realm 
 
 (c) L. K, 1 H. L. 337 ; 35 L. J., (A) 2 Web. P. C. 176. 
 
 Ch. 852. (i) 25 L. J., C. P. at p. 19 ; 5 H. L. 
 
 (/) 14 L. J., Ex. at ].. 156. Cas. 505. 
 
 {g) 15 Sim. 553. {k) 2 Web. P. C. 156. 
 
THE CAUSE OF ACTION INFEINGEMENT. 221 
 
 is taken to have notice of a patent in the same way that he is 
 taken to be aware of the law (/) . 
 
 And the converse is also sound — if a person intending to 
 infringe a patent does not in fact do so, he will not be taken to 
 have infringed (m). 
 
 In M'Cormick v. Grai/ (n) the specification, after describing 
 several parts of reaping machines, including some cutting blades 
 of peculiar construction, claimed : " The construction of reaping 
 machines according to the improvements before described — that is 
 to say, the constructing and placing of holding fingers, cutting 
 blades, and gathering reels, respectively, as before described, and 
 the embodiment of those parts as so constructed and placed, 
 all or any of them in machines for reaping purposes, whether 
 such machines are constructed in other respects as before 
 described, or however else the same may in other respects 
 be constructed." 
 
 The defendant made and sold cutting blades similar to those 
 described by the plaintiff's patent, which were capable of heing 
 used in the plaintiff's reaping machine. Bramwell, B., in giving 
 judgment, said : — " A man could not make the blade of a knife 
 without infringing this person's patent, because you may intend 
 to put it into a machine, or you may not. I think it is a very 
 clear case, and I am satisfied there is no difference between 
 making a thing with one intent and making it with anothei", 
 because I always understood that if a man may do a thing, he may 
 do it with whatever intent he pleases." It will be observed, that in 
 this case, to make the knives was no infringement, and there was 
 no evidence of the defendant having applied them to reaping 
 machines (o). 
 
 Thus we see that infringement, as taken apart from the 
 question of validity, is a matter of fact, and that intention is not 
 material to the conclusion {p). 
 
 To prove infringement, it must be shown that there is a 
 
 {I) Walton V. Lavater, 29 L. J., (n) 31 L. J., Ex. 42. 
 
 C. P. 275 ; Curtis v. PJatt, 11 L. T., (o) See, however, Bancroft y. War- 
 
 N. S. 245. den, Romilly's Notes of Cases, 103. 
 
 {m) NcwaUv. Elliott, 10 Jur., N. S. (p) See also You) g v. Rosenthal, 
 
 954. 1 P. 0. R. 29, 39. 
 
222 THE LAW OF PATENTS. 
 
 substantial resemWance (q). The infringement must be of a part 
 for which the patent was granted, and not merely of a part 
 described in the specification (r). 
 
 The question as to what will or what will not amount to 
 infringement, hke many other points which arise in the law of 
 letters patent, must depend upon the facts of each particular case, 
 and the decision in one case cannot possibly bind the decision in 
 another ; consequently the consideration of decided cases is only 
 useful as showing the principles which underlie the judgments in 
 those cases. 
 
 In NoheVs Exjiloskes Co. v. Anderson, Romer, J., said (s) : 
 " Several cases were cited to show the canons of construction on 
 which the Courts have acted in different cases relating to infringe- 
 ments. But it is not necessary for me to deal with these cases in 
 detail, for I desire emphatically to state that, in my view, one 
 principle only governs all the cases, whether they relate to 
 so-called ' master ' patents, or patents dealing with discoveries in 
 matter of principle, or to any other kind of patent ; and that 
 principle is this : In order to make out infringement, it must be 
 established, to the satisfaction of the Court, that the alleged 
 infringer, dealing with what he is doing as a matter of substance, 
 is taking the invention claimed by the patent ; not the invention 
 which the patentee might have claimed if he had been well 
 advised or bolder, but that which he has in fact and substance 
 claimed on a fair construction of the specification." 
 
 In the same case, in the Court of Appeal, Kay, L.J,, in his 
 judgment, said {t) : " I think the law now is reasonably well 
 settled. There are two classes of cases ; one where a patentee 
 has invented a new method of producing a known result, the 
 other where he has invented a new result, and has described one 
 method of producing it. According to the dictum of Baron 
 Aldcrson in Jupe v. Pratt (ii), which, as has been pointed out in 
 subsequent cases, was a dictum during the argument addressed to 
 some argument of counsel which he was then considering, if a 
 
 {q) Stead v. Anderson, 1 Web. P. C. («) 11 P. 0. R. 115, 127. 
 
 151. (0 11 P. 0. E. 519, 527. 
 
 (r) Croll V. Edijc, 19 L. J., C. P. at («) 1 Web. P. C. 145. 
 
 p. 261. 
 
THE CAUSE OF ACTION — INFRIKGEMENT. 223 
 
 patentee has invented a new result, and has described one method 
 of obtaining that result, he may prevent anybody else from 
 obtaining the same result by any other method. In my opinion 
 that went much too far, and I need not refer to any authority 
 which more clearly shows that than the subsequent judgment of 
 Baron Alderson in Neilson v. Harford (,r), where he pointed 
 out that if that were the law the result of such a patent would be 
 a patent of the principle itself, because when you had discovered a 
 new result, if, by showing one method of producing that result, 
 your patent covers every other method of producing that result, 
 in point of fact you patent the principle which leads to that 
 result ; and that is perfectly good criticism upon the earlier dictum 
 of Baron Alderson, which I cannot help thinking was only put 
 arguendo^ and is the proper limitation of the generality of that 
 first dictmn. Mr. Justice Pearson, in the Badische Anilin case (y), 
 seems to have adopted the earlier dictum of Baron Alderson, 
 without observing the limit put upon it by his subsequent 
 judgment, and respectfully I differ from the statements of the 
 law as stated by Mr. Justice Pearson in that case. The true 
 result, I think, is stated very well by the late I^ord Justice 
 Cotton in the case of the Automatic Wcighi>ig Ilachine Co. v. 
 Knight [z). He observes the dictum in Jupe v. Pratt, and he 
 says : — ' Those were the expressions used by Baron Alderson 
 during the discussion, probably to meet something that was 
 said by counsel, and did not express his full opinion. You 
 can prevent anyone from using the same method of carrying that 
 principle into effect, and you can prevent anyone from using only 
 the same thing, with a colourable difference. That is what we had 
 to consider in Proctor v. Pcniiis (a). AVhere there is a principle 
 first applied in a machine capable of carrying it into effect, the 
 Court looks more narrowly at those who carry out the same 
 principle, and say they do it by a different mode, and looks to see 
 whether, in effect, although the mode is not exactly the same, it is 
 only a colourable difference, a mechanical equivalent for a 
 substantial part of the patentee's invention being looked upon as / 
 
 {x) 1 Web. P. C. 295, 355 ; 8 M. & (:) 6 P. 0. R. 29", 304. 
 
 W. 806, 820. («) 4 P. 0. R, 333. 
 
 (y) 2 P. 0. R. 91. 
 
224 THE LAW OF PATENTS. 
 
 ti mere colourable difference, and, therefore, lie being entitled to 
 an injunction against that mode of carrying out his principle, 
 which is only the same in substance as that which he patented, 
 though there are colourable differences.' I take the law as to be 
 clearly settled thus, that if the result of the patent is entirely 
 new, and one method of arriving at that result is described on the 
 face of the patent, the patentee cannot say ' that enables me to 
 treat every other method of arriving at that result as an infringe- 
 ment,' but the question is in every case whether the method 
 which he says is an infringement is so like to the method which 
 he has himself described as to be substantially the same, or, in 
 other words, only colourably different." 
 
 In Curtis V. Piatt {h), Wood, V.-C, said :— " Where the thing 
 is wholly novel and one which has never been achieved before, 
 the machine itself which is invented necessarily contains a great 
 amount of novelty in all its parts, and one looks very narrowly 
 and very jealously upon any other machine for effecting the same 
 object, to see whether or not they are merely colourable con- 
 trivances for evading that which has been before done. When 
 the object itself is one which is not new, but the means only are 
 new, one is not inclined to say that a person who invents a 
 particular means of doing something that has been known to all 
 the world long before has a right to extend very largely the 
 interpretation of those means which he has adopted for carrying it 
 into effect. Because otherwise that would be to say that the whole 
 world is to be precluded from achieving some desirable and well- 
 known object which everybody has had in view for years. In 
 such a case it may be said that the means taken are simply 
 mechanical equivalents for the means previously adopted for 
 arriving at the same object." 
 
 The result of the decided cases clearly shows that a man will 
 be held to have infringed if he has taken the pith and essence of 
 the invention (c), and that when the invention is merely for an 
 improved mode of attaining an old object the pith of his invention 
 
 {h) L. R., 3 Oil. D. 130, u. v. Champion Gas Co., 9 P. 0. R. 55, 
 
 (c) Clarke v. Adie, L. R., 2 App. 56 ; Bcnno Jafft v. Richardson, 11 
 
 Cas. 315, 320; Prodor v. Bennis, 4 P. 0. R. 112. 
 
 P. 0. R. 333, 345 ; Wenham. Gas Co. 
 
THE CAUSE OP ACTION — INFRINGEMENT. 225 
 
 is that particular improved method, and only by making use of 
 that particular method will a man be held to have infringed [d), 
 but when the invention is for a new method of attaining a new 
 result, the novelty of the result itself is part of the merit of the 
 invention and of the consideration given by the patentee m 
 return for the grant {e) ; and, consequently, a man will be held to 
 have infringed if he should have arrived at the same result by 
 means of a process substantially the same as, or only colourably 
 different from, that disclosed in the specification of the original 
 invention (,/'). 
 
 If a man has taken the pith of an invention, the fact that he 
 has improved upon it is immaterial (g). 
 
 The amount of prior user which will be sufficient to invalidate 
 a patent differs considerably from the amount of user which will 
 be held to infringe a patent : — " these are different questions, 
 depending on wholly different considerations, the one upon the 
 extent of previous knowledge, the other upon the eflPect of the 
 grant" (h). 
 
 In Barlow v. Baylis (i) the patent was for " improvements in 
 manufacturing metal nuts, and in machinery for stamping, 
 forging, and rolling the same." Action for infringement ; defence 
 
 {d) Curtis V. Piatt, L. R., 3 Ch. D. Weighing Machine Co. v. Knight, 6 
 
 135, 136 ; Nordenfelt v. Gardner, 1 P. 0. R. 297, 304 ; Automatic Weigh- 
 
 P. 0. R. 61; Proctor v. Bennis, 4 ing Machine Co. w. National Exhibitions 
 
 P. 0. R. 333 ; Thomson v. Moore, 6 Association, 8 P. 0. R. 345 ; 9 P. 0. R. 
 
 P. 0. R. 426 ; Vorwerk v. Evans, 41 ; Tweedale v. Ashworth, 9 P. 0. R. 
 
 7 P. 0. R. 265 ; Twedalev. Ashworth, 121, 126 ; Foung v. Hermand Oil Co., 
 
 7 P. 0. R. 426 ; 8 P. 0. R. 49 ; 9 9 P. R. 373 ; NoheVs Explosives Co. 
 
 P. 0. R. 121 ; Miller v. The Clyde v. Anderson, 11 P. 0. R. 519, 527 ; 
 
 Bridge Steel Co., 8 P. 0. R. 198 ; Benno Jaffi v. Richardson, 11 P. 0. R, 
 
 9 P. 0. R. 470 ; Ashioorth v. Roberts, 93. 
 
 9 P. 0. R. 309 ; Nettlefolds v . Reynolds, (;/) Ehrlich v. Uilee, 5 P.'O. R. 454 ; 
 
 9 P. 0. R. 270 ; Preston Davies v. Thomson v. Moore, 6 P. 0. R. 426 ; 
 
 Black, 11 P. 0. R. 299, 574. Wenham Gas Co. v. Champion Gas Co., 
 
 (e) Proctor v. Bennis, 4 P. 0. R. 9 P. 0. R. 49, 55. 
 359. (70 FevTnrner, Y.-C, in Caldwell V. 
 
 (/) Curtis V. Piatt, L. R., 3 Ch. D. Vanvlissengen, 9 Hare, 428; Newton \. 
 
 135, 136 ; Proctor v. Bennis, 4 P. 0. R. Grand Junctioii Railway Co., 5 Excli. 
 
 333 ; Ehrlich v. Ihlee, 5 P. 0. R. 437, 331. 
 
 453 ; Thomson v. Moore, 6 P. 0. R. (t) Griffin, P. C, at p. 44. 
 
 426 ; 7 P. O. R. 325 ; Automatic 
 
 T. Q 
 
226 THE LAW OF PATENTS. 
 
 anticipated by Berry. It was contended by the plaintifi' that 
 Berry's machine would not work. Brett, J., in summing up to 
 the jury, said : — " Now, the first question about Berry's machine 
 which I will ask you is this : Was Berry's ever a machine or 
 invention in this sense, that a workman could, from his specifi- 
 cation and drawings, make the machine described by him so that 
 it would, more or less badly, do the work required of it? 
 because in my opinion, if it would not, I do not say perfectly, 
 but if it would not do the work required of it, it was not 
 an invention at all, or a machine in a business sense. ... I 
 put the words ' more or less badly,' because I do not think that 
 if the only defect in the machine was some defect in the levers 
 which any workman could find out at once, if it would make 
 a nut, though badly, that would not prevent it from being a 
 machine." 
 
 The jury found that Berry's machine would not do the work 
 more or less badly. Judgment for plaintiffs. Judgment upheld 
 by the Court of Common Pleas. 
 
 In Brcreton v. Richankon (k) infringement of a patent for " a 
 new and improved tricycle," alleged prior user by Jackson and 
 his family ; reply, that this was merely an experimental user. 
 Field, J., said : — "Their driving to Cheam, Worcester Park, and 
 Maiden, going about on business night and day, and for pleasure ; 
 and the public notoriety which the thing had excited in the 
 neighbourhood, so that it was called ' Jackson's patent threshing 
 machine,' all satisfy me that, provided I am right in holding that 
 the thing was substantially the same, it was publicly used. A 
 question of difficulty occurred to my mind as to what degree of 
 public user is enough when you have to deal with a thing like 
 that. I quite understand that if there were at this moment an 
 axle running under an omnibus which I could not see, it might or 
 might not be a public user. I think it would be a public user." 
 Action dismissed with costs. 
 
 We have seen that by sect. 33 of the Act of 1883, a patent 
 may still contain more than one claim, and in such a case, 
 provided every claim which is made is valid, a patent may be 
 infringed by infringing any one claim. In Gillett v. Wilby (/) 
 
 {k) 1 P. U. P. 1G6. [1) 9 C. & P. 336. 
 
THE CAUSE OF ACTION — INFRINGEMENT. 22/ 
 
 Coltmaii, J., said : — " If they are all new (the purts claimed), and 
 the defendant has infringed any one of them, it will be sufficient 
 to support the action, and it is not necessary that he should have 
 infringed them all." In Newton v. The Grand Junction Rail 
 Co. (m), Pollock, C.B., said :—" But in considering the question 
 of infringement, all that is to be looked at is, whether the 
 defendant has pirated a part of that to which the patent applies ; 
 and if he has used that part for the purposes for which the 
 patentee adapted his invention, and for which he has taken out 
 his patent, and the jury are of opinion that the difference is 
 merely colourable, it is an infringement ; " and in Sel/ers v. 
 Dickenson {n) the same Judge said : — " There may be an infringe- 
 ment by using so much of a combination as is material . . . 
 if a portion of a patent for a new arrangement of machinery is in 
 itself new and useful, and another person, fur the purpose of 
 producing the same effect, uses that portion of the arrangement, 
 and substitutes for the other matters combined with it another 
 mechanical equivalent, that would be an infringement of the patent." 
 
 " Where a patent is for a combination of two, three, or more 
 old inventions, a user of any of them would not be an infringe- 
 ment of the patent ; but where there is an invention consisting of 
 several parts, the imitation or pirating of any part of the inven- 
 tion is an infringement of the patent " (o). 
 
 Speaking of this case in Clark v. Adie {p), James, L.J., said : — 
 " Upon the authority of Smith v. L. ^ N. W. Raihcay Co., it has 
 been strongly contended before us that whenever there is a patent 
 for a combination, that patent gives protection, not indeed to 
 every distinct thing that enters into the combination, but to every 
 combination, arrangement, and aggregate of two or more of those 
 distinct things, even although such subordinate combination is not 
 expressly or impliedly claimed in the specification. This, in our 
 opinion, is so startling a violation of every principle of patent 
 law, that we doubt whether we could follow any authority, short 
 of the House of Lords, in applying such a doctrine. If a patent 
 for a combination of several parts is in reality a patent, and gives 
 
 (m) 5 Exch. 331. 2 E. & B. 76 ; The Patent Bottle Co. 
 
 {n) 5 Exch. 324. v. Seyvier, 5 C. B. N. S. 172. 
 (o) Per Campbell, C.J., in Smithy. { p) L. R., 10 Cb. 674. 
 
 London & North IVcstcrn Railway Co., 
 
 <i 2 
 
228 THE LAW OV PATENTS. 
 
 really a monopoly for every combination of any two or more of 
 those parts, then it follows, from the very first principle of patent 
 law, that if any conceivable combination of any two or more parts 
 was old, the patent would be bad. On the other hand, if the 
 patentees say, * No, we do not claim to protect every combination 
 of those parts, but only those subordinate combinations, or parts 
 of the combination, which are new and useful,' then such a claim 
 would be entirely inconsistent with the leading case of Foxicell v. 
 Bostock (q), which, we may be permitted to say, is as good sense 
 as it is sound and intelligible law ... I will state what we 
 conceive to be the real principle which underlies the case of 
 Lister v. Leather (r), and which reconciles it with the other cases 
 and with general principles, and common sense. A patent for a 
 new combination or arrangement is to be entitled to the same 
 protection, and on the same principles, as every other patent. In 
 fact, every, or almost every patent, is a patent for a new combi- 
 nation. The patent is for the entire combination, but there is, or 
 may be, an essence or substance of the invention underlpng the 
 mere accident of form, and that invention, like every other 
 invention, may be pirated by a theft in a disguised or mutilated 
 f orm, and it will be in every case a question of fact, whether the 
 alleged piracy is the same in substance and effect, or is a sub- 
 stantially new or different combination." 
 
 In Norclenfelt v. Gardner {s), Brett, M.R., said :—" The 
 machine which is challenged may have that combination actually 
 without any variance at all. If so, it is obvious that the chal- 
 lenged machine is an infringement, or it may have that combi- 
 nation with some alteration. The alteration of a combination, as 
 it seems to me, may be by addition, or subtraction, or substitution 
 of parts. Any one of these alters the combination. If the 
 alteration, whether it be by addition, or subtraction, or substi- 
 tution, be merely colourable, then the two machines are sub- 
 stantially the same ; although not mathematically exactly the 
 same, they are substantially the same ; and in any case, notwith- 
 standing such colourable alteration, there may be an infringe- 
 
 {q) 12 W. R. 723 ; see aho Harrison (r) 8 E. k B. 1C04. 
 
 V. Aiiderston Foundry Co., L. R. , 1 (s) 1 P. O. R. 65. 
 
 App. Cas. 574. 
 
THE CAUSE OF ACTION INFRINGEMENT. 229 
 
 ment (t). An a If era f ion hij addition may be an improvement, but 
 then that will leave the whole of the original combination, and 
 add something to it. If such an alteration of the combination be 
 made, it seems to me that no good patent can be made with 
 regard to the new machine except by claiming the invention as an 
 improvement, and by showing distinctly what the addition is, so 
 as to show what the improvement is. An alteraiion b// 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 things ; and 
 if the combination were altered by a material subtraction, I should 
 think that it was a new combination. But an alteration by substi- 
 tution, that is, by substitution of one of the material elements of 
 the original combination, must to my mind be a new combination. 
 The second combination, then, is a combination of diiferent things 
 from the first. There is a taking away t)f one of the elements, 
 and a material element of the old combination, and a putting in 
 of a now material element which is different from any of the 
 elements of the former." 
 
 Where, however, the application by the defendant of a portion 
 of the invention of the plaintiff is for a different object, and with a 
 view of carrying out a principle totally newly discovered by the 
 defendant, and which was unknown to the plaintiff, there is no 
 infringement, although at first sight there appears to be some 
 similarity of process {u), but if a man, in the course of producing 
 an improved combination, substantially uses a combination which 
 already forms the subject of a patent, he thereby infringes the 
 patent, notwithstanding that the combination he is making has a 
 different end in view than that which has been patented {x). 
 
 But, on the other hand, where a patent is for a combination, a 
 person who takes a new and material part of the combination, 
 but not for a similar or analogous purpose to that to which it 
 was applied in the patent, does not infringe tbe patent (y). 
 
 {t) See also Murray v. Clayton, 859 ; see also Morewood v. Tupper, 
 
 L. R., 7Ch. 570, 585; Badische AniUn 3 C. L. Rep. 718; Preston Davits v. 
 
 tind Soda Fabrik v. Levinstein, L. R., Black, 11 P. 0. R. 299, 574. 
 
 24 Ch. D. 156, 175 ; 2 P. 0. R. 9-3 ; (.>•) Cannington v. Niatall, L. R., 
 
 Kayf. V. Chiihh, 5 P. 0. R. 641 ; 5 H. L. 205, 230. 
 
 Thomson v. JJoun, (i 1'. O. R. 426. (y) Lister v. Eastwood, 9 L. T. 
 
 (u) Newton y, Vaucher, 6 Excli. N. S. 766. 
 
230 THE LAW OF PATENTS. 
 
 TVe have seen that sect. 5, sub-s. 5, provides that a complete 
 specification must conclude with a distinct statement of the 
 invention claimed ; so that, if the invention be a combination, it 
 must be so stated ; if for parts, they must be claimed. There is 
 no infringement if the defendant cannot be shown to have 
 infringed, directly or indirectly, a part or parts of the claim (z). 
 In Lister v. Leather [a) it was held that a valid patent for an 
 entire combination, or for a process, gives protection to every 
 part that is new and material, for the purpose of eifecting that 
 particular combination or process, without any express claim of 
 particular parts, and notwithstanding that parts of the combi- 
 nation are old. In future, if any parts are desired to be pro- 
 tected, as well as the combination or process, the claim will have 
 to be so drawn as to include those parts. 
 
 The jury will always have to consider whether the infringing 
 machine, process, or combination is a substantial imitation {l>). 
 No fine lines can be drawn as to what amounts to substantial 
 imitation. In Clark v. Adie (c), in the House of Lords. Lord 
 Blackburn said : — " I incline to agree with what was said in the 
 Exchequer Chamber in the case oi Lister v. Leather (d), that you 
 cannot decide in the abstract whether the using of two parts, A 
 and B, of a combination of A, B, and C is or is not using part of 
 that invention, nor can you decide in the abstract the other 
 question, which was somewhat discussed in the case of the sewing 
 machine [Foxwell v. Bostock) (e), whether or not the specification 
 shows that A or B is sufficiently claimed as a part of the inven- 
 tion or not. I do not think that either of those questions can be 
 decided in the abstract. I would wish, like the Exchequer Chamber 
 in Lister v. Leather, before deciding it, to have before me the 
 nature of the machine, in order that I may see what A, B, and 
 C are, and what is their relation to each other." 
 
 . In Parkes v. Stevens (/), James, V.-C, said : — " The 
 authority of that case (Lister v. Leather) has been pressed 
 upon me as if it really established this, which would be a most 
 
 (z) Jackson v. Wolstenhulmes, Griff. (c) L. K, 2 App. Cas. 335. 
 
 P. C. 134. {d) 8 E. & B. 1004. 
 
 (a) 8 E. & B. 1004. (e) 12 W. K. 723. 
 
 {b) Thomas v. Foxwell, 5 Jur., N. S. (/) L. R., 8 Eq. 358, 366. 
 39. 
 
THE CAUSE OF ACTION — [NFRTNTCEMENT. 231 
 
 startling proposition, that a patent for a combination or arrange- 
 ment would be a distinct patent for everything that was new and 
 material and that went to make up the combination .... 
 the judgment, if read well, will be found to give no warrant 
 whatever for such, I must call it, baseless notion. The law is 
 summed up thus. The cases establish that a valid patent for an 
 entire combination for a process gives protection to each part 
 thereof that is new and material for that process, which is really 
 nothing more than stating in other words that you not only have 
 no right to steal the whole, but you have no right to steal any 
 part of a man's invention ; and the question in every case is a 
 question of fact — is it really and substantially a part of the 
 invention? " ig). This judgment was affirmed on appeal {Ji). 
 
 If the invention be for a combination or process whereby an 
 already well-known object is produced, it will be no infringement 
 to make another combination, even of the same materials (provided 
 they be also old and well-known), for the purpose of attaining the 
 same object, for the patent is for the means of attaining the 
 object, and if other means are employed there is no infringement. 
 The patent is also for the method of combining the old and well- 
 known materials, and if another method is adopted there is no 
 infringement (/). 
 
 When the defendant has set himself to work to evade the 
 plaintiflPs patent by fraudulently making a colourable imitation, or 
 substituting a mechanical or chemical equivalent, the cases show 
 that the Courts will look strictly at what he has done, and will 
 take care that he does not overstep the line which he is 
 endeavouring to keep within. 
 
 The question of fraudulent evasion is, as we have shown, one of 
 fact. " A slight departure from the specification, for the purpose 
 of evasion only, would, of course, be a fraud upon the patent ; 
 
 ((/) See also IVright v. Hitchcock, Fenn, 15 W. R. 348; Garrard \. Edge, 
 
 L. R., 5 Ex. 37 ; Automatic Weighing 6 P, 0. R, 563. 
 Machine Go. v. National Exhibitions (h) L. R., 5 Cli. 36. 
 
 Co., 8 P. 0. R. 345, 350 ; 9 P. 0. li. («) Gurtis v. Piatt, in the House of 
 
 41 ; Miller v. Clijde Bridge Steel Co., Lords, 35 L. J., Ch. 852 ; L. R., I 
 
 9 P. 0. R. 470 ; Peckover v. Eoivland, H. L. 337. 
 
 10 P. 0. R, 234 ; see also JFhite v. 
 
232 THE LAW OF PATENTS. 
 
 and therefore the question will he, whether the mode of working 
 hy the defendant has or has not been essentially or substantially 
 different (k). 
 
 In Dudgeon v. Thompson (/) Lord Cairns makes strong 
 objection to the use of the term colourable imitation, in connec- 
 tion with the infringement of patents, and proceeds : — " If there 
 is a patented invention, and if you, the defendant, are found to 
 have taken that invention, it will not save you from the punish- 
 ment or from the restraint of the Court, that you have, at the 
 same time that you have taken the invention, dressed it up 
 colourably, added something to it ; taken, it may be, something 
 away from it, so that 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. But underlying all 
 that there must be a taking of the invention of the plaintiff. 
 There used to be a theory in this country, that persons might 
 infringe upon the equity of a statute, if it could not be shown that 
 they had infringed the words of the statute ; it was said that they 
 had infringed the equity of the statute, and I know there is, by 
 some confusion of ideas, a notion sometimes entertained that there 
 may be something like an infringement of the equity of a patent. 
 My lords, I cannot think that there is any sound principle of that 
 kind in our law ; that which is protected is that which is specified, 
 and that which is held to be an infringement must be an infringe- 
 ment of that which is specified. But I agree it will not be the 
 less an infringement because it has been coloured or disguised by 
 additions or subtractions, w^hich additions or subtractions may 
 exist, and yet the thing protected by the specification be taken 
 notwithstanding. ' ' 
 
 Summing up the cases, therefore, we come to this. Strictly 
 speaking, there is no such thing as a colourable imitation : either 
 the defendant has infringed the thing specified or he has not. At 
 the same time there is an essence or substance to every invention 
 underlying the mere accident of form or words. If the defendant 
 has imitated and adopted the essence of the invention, he will not 
 
 [k) Per Dallas,' J., in Hill v. Thomjp- [I) L. R., 3 App. Cas. at p. 44. 
 
 5071. 1 Web. P. C. 242. 
 
THE CAUSE OF ACTION — INFRIXGEMENT. 233 
 
 be allowed to escape because he has not adopted the form or words 
 in which the essence of the invention is clothed (ni). 
 
 There is a description of imitation which is produced by the 
 substitution of chemical or mechanical equivalents. To the 
 unscientific eye there is a totaldissimilarity between the infringing 
 machine or process and the original ; but, none the less, it is a 
 mere imitation — it is a robbery of the ideas and ntentions of the 
 first inventor, but a robbery conducted in a scientific manner. 
 
 We have seen that a patent cannot be granted for the discovery 
 of a mere principle («), but that, if the principle when discovered 
 is at the same time applied, a valid grant may be made for the 
 application of the principle. The essence of the patent is the fact 
 of applying the newly-discovered principle to a particular end. 
 Now, a mechanical or chemical equivalent is another method of 
 producing the same result, a method which a skilled mechanic or 
 chemist, having once seen the original invention, could at once 
 suggest and apply without the necessity of any inventive power 
 whatever. Equivalents may be substituted for parts as well as 
 for the whole invention, so that it may happen that a patent is 
 taken out which consists of three parts. An equivalent may be 
 substituted for each part, so that in effect the whole invention may 
 be changed and yet there may be a most flagrant infringement. 
 
 Take, for instance, the case of Stevens v. Keating (o). Here 
 the patent was for the manufacture of cement. The cement was 
 made from gypsum (sulphate of lime) by admixing it with pearl- 
 ash (carbonate of potash) and sulphuric acid. Chemically, the 
 
 (m) Thorn v. The Worthing Skating 1 Web. P. C. 616 ; Muntz v. Foster, 
 
 Rink Co., L. R.,6 Ch. D. 415 ; Floioer per Tiudal, C.J., 2 Web. P. C. 101 ; 
 
 V. Lloyd, W. N. 1877, p. 132 ; Barrett Easscll v. Ledsam, 14 M. & W. 580 ; 
 
 V. Vernon, 45 L. T., N. S. 755 ; Bailey Gamble v. Kurtz, 3 C. B. 425 ; Stead 
 
 V. Rohcrton, L. P., 3 App. Gas. 1055. v. Anderson, 2 Web. P. C. 156 ; 
 
 And the older cases, Bovill v. Moore, Unicin v. Heath, 25 L. J., C. P. 8 ; 
 
 Dav. P. 0. 405 ; Forsyth v. Riviere, Curtis v. Flatt, 35 L. J., Oh. 852 ; 
 
 1 Web. P. G. 97 ; R. v. Lister, Web. Murray v. Clayton, L. R. , 7 Ch. App. 
 
 P. L. 80 ; Minter v. Wells, 1 Web. Gas. 585 ; also Proctor v. Bennis, L. R., 
 
 P. C. 130 ; Morgan v. Seaward, per 36 Ch. D. 740, 754 ; 4 P. 0. R. 333, 
 
 Alderson, B., 1 Web. P. C. 171 ; 352 ; Thomson v. Moore, 6 P. 0. R. 
 
 Walton V. Potter, 1 Web. P. C. 586 ; 426. 
 
 Neilson v. Harford, 1 Web. P. C. 310 ; (n) Ante, p. 26. 
 
 Walton V. Bateman, per Cresswell, J., (o) 2 Web. P. C. 181. 
 
224 THE LAW OF PATENTS. 
 
 effect was this : Sulphate of potash was produced ; this, combined 
 with the sulphate of lime, produced a double salt, which, when 
 submitted to a high temperature and subsequently ground to a fine 
 powder, constituted the cement. The principle of this discovery- 
 was that sulphate of lime combined with salts of potash or soda, 
 and when so combined, produced a substance which set very hard. 
 The defendant substituted for the pearlash and sulphuric acid a 
 chemical equivalent, borate of soda (borax), and heated that with 
 gypsum, producing in the same manner a double salt, and with 
 the same resulting property of setting. This was properly held 
 to be an infringement. 
 
 In Russell v. Cowley (p) the invention claimed was that of 
 bringing to a welding heat a long piece of iron of the proper 
 quality, after having turned up its edges, and drawing it through 
 a hole of the size of the intended tube, so as to compress 
 together the edges and give it a complete circular form. The 
 defendants turned up the skelp, and, after heating it in the 
 furnace, passed it through two rollers with grooves : — Held, that 
 the two rollers with grooves were a mere mechanical equivalent 
 for the hole through which the iron was passed under the 
 patent (q). 
 
 But if such other substance or mechanical device have a 
 different or better effect than that which is claimed in the 
 specification, although to a certain extent it may be similar, and 
 was not known to persons familiar with such things at the date of 
 the patent as an equivalent, it will not be treated as an equivalent 
 so as to come within the scope of the patent. 
 
 In Nobel's Explosives Co. v. Anderson {>•), the object of the 
 invention was the production of an explosive suitable for 
 propelling projectiles, in the use of which perfect combustion was 
 obtained. The patentee in his specification confined his claim to 
 
 (p) I Web. P. C. 463. United Telephone Co. v. Harrison, L, 
 
 [q] See also JiqK v. Pratt, 1 Web. R., 21 Ch. D. 720; Winhy v. Man- 
 
 P. C. 146 ; The Electric Telegra'ph Co. Chester Steam Tramways Co., 6 P. 0. R. 
 
 V. Brett, 10 C. B. 838 ; Hancock v. 359, 365 ; 8 P. 0. R. 61, 68 ; Mxirch- 
 
 Moulton, Johnson's Patentees' Annual, land v. Nicholson, 10 P. 0. R. 417, 
 
 3rd 6(1. 208 ; Bateman v. Gray, Mac. 427. 
 
 P. C. 102 ; Simpson v. Holliday, 20 (r) 11 P. 0, R. 115, affirmed by 
 
 Newton's Lond. Joum. N. S. Ill; House of Lords. 
 
THE CAUSE OF ACTION — INFRINGEMENT. 285 
 
 powder made from soluble nitro- cellulose and nitro-glycerine. It 
 was not known at the date of the patent that insoluble nitro- 
 cellulose could be used in the place of the soluble to effect the 
 same object in a similar manner, and, in fact, anyone reading the 
 specification of the patentee would be led to the conclusion that he 
 was to avoid the use of insoluble nitro- cellulose. It was held by 
 Romer, J., whose decision was confirmed in the Court of Appeal, 
 that the use of the insoluble nitro- cellulose, although in a similar 
 way and to eff'ect a similar result to that attained by the soluble 
 nitro-cellulose, did not amount to an infringement of the patent. 
 In his judgment he said (s) : — " The soluble and insoluble are, in 
 my opinion, distinct substances, having, as I pointed out above, 
 distinct properties, and the insoluble cannot, for the purposes of 
 the plaintift^'s patent, be regarded as merely the chemical 
 equivalent of the soluble. The plaintiff's patent and claim show 
 that the patentee regarded the two as distinct for the purposes of 
 his invention." 
 
 " Equivalents which are not known at the time of the patent 
 as equivalents and afterwards are found to answer the same 
 purpose, are not included in the specification. They are new 
 inventions." Per Baron Parke (f). 
 
 Taking out a patent for a process or machine that infringes a 
 prior patent does not in itself amount to infringement (?<) ; infringe- 
 ment depends upon what the alleged infringer has done. There 
 are three ways in which a patent may be infringed : — 
 
 1. By making the patented article or working the process. 
 
 2. By using. 
 
 3. By selling. 
 
 BY MAKING. 
 
 A person may infringe a patent by making the article himself, 
 or by his agent, or by his servants. The agent and servants, it is 
 true, will be considered as equally infringing the patent, and 
 actions may be brought against them individually, but that in no 
 way absolves the person who employs them for that purpose. 
 
 (s) At p. 127. (m) Tweedale v. Ashworth, 7 P. 0. 
 
 (i) Unw'm v. Heath, 2 Web. P. C. R. 431. 
 314. 
 
236 THE LAW OF PATENTS. 
 
 In Si/kes v. Howai'th (x) a patent consisted of the application of 
 cards or strips of leather covered with wire to rollers at " wide 
 distances." A person who contracted to clothe rollers and 
 supplied to a "nailer" cards of such width that when applied 
 to the rollers they must of necessity leave wide spaces, and who 
 himself paid the nailer, was held to have infringed the patent, 
 though he alleged that his business was that of a card-maker 
 only, and did not include the nailer's work. In giving judgment. 
 Fry, J., said : — " I have come to the conclusion that the nailer 
 must be deemed to have been the agent, for the purpose of 
 nailing on, of the defendant .... there is a contract to 
 clothe in the manner prescribed by the particulars given to the 
 defendant, and that contract was carried into effect by a person 
 paid by the defendant — the defendant himself receiving the total 
 amount for which he contracted. The consequence is that in my 
 judgment all the defences fail." 
 
 AVe have seen that it is an infringement to colour ably imitate 
 an invention. It is no infringement to make, use, or vend the 
 elements which afterwards enter into the combination. In 
 Townsend v, Hmvorth {y), Jessel, M.R., said: — "The chief of 
 these chemical substances are substances which are perfectly well 
 known, and most of them are common substances ; they are all 
 old chemical compounds, and there is no claim in the patent at 
 all except for the peculiar use of these chemical compounds for the 
 purpose of preserving the cloth from mildew. No judge has ever 
 said that the vendor of an ordinary ingredient does a wrong if the 
 purchaser, coming to him, says, ' I want your compound because I 
 want to preserve my cloth from mildew. I wish to try the 
 question with the patentee.' No one would doubt that that sale 
 would be perfectly legal. You cannot make out the proposition 
 that any person selling any article, either organic or inorganic, 
 either produced by nature or produced by art, which could in any 
 way be used in the making of a patented article, can be sued as 
 an infringer, because he knows that the purchaser intends to 
 make use of it for that purpose." 
 
 (a;) L. K., 12 Ch. D. 826. 25 ; 31 L. J., Ex. 42 ; Sykes t. 
 
 (j/) L. R., 12 Ch. D. 831, ii. ; see Ilowarth, L. R., 12 Ch. D. 826, 833. 
 also McCornikk v. Gray, 7 H. & N. 
 
THE CAUSE OF ACTION — INFRINGEMENT. 237 
 
 But making and selling all tlie constituent parts of a machine, 
 so that they could be easily put together, would probably amount 
 to an infringement of a patent which had been granted for that 
 machine (z). 
 
 In Gibson v. Brand (a) it was held that an order given by the 
 defendant for the making of silk by a process which infringed the 
 plaintiff's patent, which order was executed in England, was 
 sufficient to satisfy the allegation that the defendant made, used, 
 and put in practice the plaintiff's invention, though the silk was 
 in fact made through the agency of others. 
 
 In Iliggs v. Godwin (b) the plaintiff's patent was for the pre- 
 cipitation of animal and vegetable matter from sewage water by 
 means of hydrate of lime, with the object of obtaining a product 
 suitable for agricultural purposes. It was held that the use of the 
 same process for the purpose of deodorizing and purifying sewage 
 water and not fur the purpose of commercial profit, did not amount 
 to infringement of the plaintiff's patent. 
 
 In Kell// V. Bafc/ielar (c) the plaintiff's patent was for a 
 telescopic ladder, being two ladders joined together, the inner 
 being raised or lowered by means of an endless cord. The plaintiflf, 
 for the purpose of adducing evidence of infringement, instructed an 
 agent to order from the defendant an adjustable ladder with an 
 endless cord. The defendant made a ladder to this order, but 
 without a cord. The agent of the plaintiff said that it would not 
 do, but must have a cord with pulleys, whereupon the defendant 
 added the cord as instructed. In the action for infringement 
 brought against the defendant, North, J., held that the defendant 
 acted upon the express instructions of the plaintiff's agent, who 
 had power and authority to give such instructions, and, conse- 
 quently, that making this ladder did not amount to an infringe- 
 ment of the plaintiff's patent. 
 
 The working and making must be by way of using the 
 invention, as distinguished from experimenting with it, so as to 
 operate as an infringement. In Jones v. Pearce {d) Patteson, J., 
 
 {z) United Teleplwne Co. v. Dale, 529; 5 Jur., N. S. 97. 
 L. R., 25 Ch. D. 778. (c) 10 P. 0. R. 289 ; also Hcnscr v. 
 
 {a) 4 M. & G. 179. Hardie, 11 P. 0. R. 421. 
 {h) 27 L. J., Q. B. 421 ; E. B. & E. (rf) 1 Web. P. C. 124. 
 
238 THE LAW OF PATENTS. 
 
 said : — " Now, if he did actually make these wheels, his making 
 them would be a sufficient infringement of the patent, unless he 
 merely made them for his own amusement or as a model. In 
 Frearson v. Loe (e), Jessel, M.R., adverting to this branch of the 
 subject, said : — " The other point raised was^a curious one, and by 
 no means free from difficulty, and what occurred with regard to 
 that was this : that the defendant at various times made screw 
 blanks, as he said, not in all more than 2 lbs., by various con- 
 trivances, by which no doubt screw blanks were made according 
 to the plaintiff's patent of 1870, as well as that of 1875, they 
 seem to have been an infringement of both. He said he did this 
 merely by way of experiment, and no doubt if a man makes things 
 merely by way of bond fide experiment, and not with the inten- 
 tion of selling and making use of the thing so made for the 
 purpose of which a patent has been granted, but with the view of 
 improving upon the invention, the subject of the patent, or with 
 a view of seeing whether an improvement can be made or not, 
 that is not an invasion of the exclusive rights granted by the 
 patent. Patent rights were never granted to prevent persons of 
 ingenuity exercising their talents in a fair way. But if there be 
 neither using nor vending of the invention for profit, the mere 
 making for the purpose of experiment and not for a fraudulent 
 purpose ought not to be considered within the meaning of the 
 prohibition, and if it were, it is certainly not the subject for an 
 injunction." 
 
 To purchase infringing articles for the purpose of instructing 
 pupils and to enable them to pull them to pieces and put them 
 together again, is not mere experimental user, and amounts to 
 infringement (/). 
 
 It will be remembered that prior to the Act of 1883 letters 
 patent did not operate as against the Crown ; questions some- 
 times arose as to whether persons acting in the service of the 
 Crown might manufacture a patented article or use a patented 
 process. 
 
 When the persons using the invention were servants of the 
 
 (e) L, R,, 9 Ch. D. 48 ; see also 109, 
 Munlz V. Foatcr, 2 Web. P. C. 101; (/) Unibd Telephone Co. x. Sharpies, 
 
 rrudur v. Barley, G P. U. P. K.fJ, L. R., 29 Ch. D. 16i ; -1 P. 0. R. 2S. 
 
THE CAUSE OP ACTION — INFRINGEMENT. 239 
 
 Crown, and acting in pursuance of their duty as servants, they 
 were protected ; but if they wore contractors contracting with the 
 Crown, they were not protected, but stood in exactly the same 
 position as other subjects {<j). 
 
 Sect. 27 of the Act of 1883 provides that a patent should bind 
 the Crown, but that the Crown may use the invention "by 
 agents or contractors " on terms to be before or after the use 
 agreed upon. 
 
 BY USING. 
 
 It frequently occurs that very fine questions arise as to what 
 constitutes using a patented invention. The general rule may be 
 thus stated : That if the defendant has put the invention to the 
 purpose for which it was intended ho has used it in this country. 
 In the case of Neilson v. Betfs (h), in the House of Lords, the 
 facts were as follows : Betts, the plaintiff in the suit, was the 
 patentee of an invention for the manufacture of capsules for the 
 purpose of covering bottles of liquid (wine, beer, or otherwise), 
 and protecting them from the action of the atmosphere. Betts' 
 patent did not extend to Scotland. Nielsen and his co- appellants, 
 defendants in the suit, were persons who bottled beer in Glasgow 
 for the Indian market. They bottled the beer and covered it 
 with capsules, which were made in Germany in pursuance of 
 Betts' specification. The beer was shipped by the appellants in 
 vessels which called at Liverpool to complete their cargoes ; on 
 some occasions the beer was transhipped in England, but no 
 cases of beer were opened, nor was any of the beer sold in this 
 country. Held, by the House of Lords, that, inasmuch as the 
 object of Betts' invention was to make a capsule that would 
 preserve the beer, whilst the beer was in England it was being 
 preserved by the use of Betts' invention, and consequently that 
 there was an infringement of the patent. Lord Chelmsford, in 
 giving judgment in the Court below, said : — " It is the employ- 
 ment of the machine or article for the purpose for which it was 
 
 (g) Dixon v. The Lomlon Small 1 Q. B. D. 384; also Feather v. R., 6 
 
 Arms Co., L. R., 10 Q. B. 130, and B. & S. 257. 
 
 L. R., 1 App. Cas. 632, reversing (A) L. R., 5 H. L. 1. 
 decision of the Court of Appeal, L. R., 
 
240 THE LAW OF PATENTS. 
 
 designed which constitutes its active use, and whether the 
 capsules were intended for ornament, or for protection of the 
 contents of the bottles upon which they were placed, the whole 
 time they were in England they may be correctly said to be in 
 active use for the very objects for which they were placed upon 
 the bottles by the vendors. If the beer, after being purchased in 
 Glasgow, had been sent to England, and had been afterwards 
 sold here, there can be no doubt, I suppose, that this would have 
 been an infringement, because it would have been a profitable 
 user of the invention, and I cannot see how it can cease to be a 
 user because England is not the final destination of the beer." 
 
 The case of Nobel's Explosives Co. v. Jozies, Scott 8f Co. (i) is 
 instructive upon the question of user. The subject of the 
 plaintiff's patent, dynamite, is a mechanical compound of nitro- 
 glycerine and infusorial earth. The compounding of nitro- 
 glycerine in this manner is done for and effects the purpose of 
 rendering it less liable to explosion from concussion. The object 
 of the patent was, therefore, to enable nitro-glycerine to be kept 
 and handled with safety. Held, by Bacon, V.-C, that the mere 
 storage of dynamite made abroad, and only landed in this country 
 for the purpose of transhipment, amounted to an infringement of 
 the plaintiff's patent. This decision was reversed in the Court of 
 Appeal, but upon another point, to be mentioned presently, and 
 without in any manner impugning the correctness of the Yice- 
 Chancellor's decision on this question. 
 
 In the case of Caldicell v. Vanvlissengen (k), it was held by 
 Turner, V.-C, that foreign ships coming into British ports, fitted 
 with screw propellers, which were made in pursuance of the 
 specification of an English patent, thereby infringed the patent. 
 If the injunction which was granted be carefully read, it will be 
 found to amount to a restraint from propelling the vessels with 
 the propellers, not from having the ships merely fitted with them. 
 Legally speaking, the user of propellers differs from that of 
 capsules or dynamite in this important respect, that the one is in 
 use only when in motion ; the others are at use, the one when 
 
 {i) L. i;., 17 C'li. D. 721 ; see also bridge v. Richardson, 6 Yea. 689. 
 The UnivemUics of Oxford and Cam- {/c) 21 L. J., Ch. 97. 
 
THE CAUSE OF ACTION — INFRINOKMENT. 241 
 
 merely affixed to the bottles, and the other when merely in 
 possession. Subject to the applicability of the arguments 
 adduced in the case of dynamite, it is submitted that mere 
 possession, unaccompanied with user, does not constitute an 
 infringement of letters patent, unless the possession is of such a 
 character as to import a threat to use. But in The United Tele- 
 phone Co. v. The London Globe Telephone Co. (/), Bacon, V.-C, 
 said : — " That the defendants are in possession of instruments 
 made in infringement of the plaintiff's patent is confessed by them 
 and placed beyond the possibility of question, and that of itself 
 gives to the plaintifis a right to ask for an injunction to restrain 
 the defendants from making use of that which by their own con- 
 fession is an unlawful possession, and would be, if used, I presume, 
 an unlawful use .... the defendants excuse themselves 
 . . . next on the ground that it is not their intention to 
 use them. If it is not their intention to use the instruments 
 then the injunction asked for can do them no harm. That would 
 not be enough to dispose of the case, but it is the right of the 
 plaintiffs to have an injunction against the defendants who have 
 the means to the extent of 800 machines of injuring their patent 
 rights." 
 
 In the case of Adair v. Young (ni), certain pumps, which were 
 an infringement of the plaintiff's patent, were fitted on board a 
 British ship. There was no evidence of their having been used. 
 Held, by the Court of Appeal, that there had been no in- 
 fringement, but as there was evidence of an intention to use the 
 pumps, an injunction would be granted against the use of the 
 pumps. 
 
 But where the user complained of occurred six years before, 
 and there was no ground for apprehending a repetition of 
 the wrongful act, the Court of Appeal, reversing the decision 
 of the Vice- Chancellor of the Palatine Court, held that it 
 was not a proper case in which an injunction should be 
 granted (n). 
 
 The use of an invention for a different purpose from that dis- 
 closed in the specification, will amount to an infringement of the 
 
 (7) L. R., 26 Ch. D. 766. {n) Proctor v. Baylcy, 6 P. 0. R. 538. 
 
 {m) L. R., ]2 Ch. D. 13. 
 
 T. R 
 
24-2 THE LAW OF PATENTS. 
 
 patent wliicli has been granted for that invention (o), but if the 
 patent is for anew way of effecting an old object, and the patentee 
 is in consequence strictly tied down to his particular method of 
 performing it, in such a case the application of the invention to 
 an entirely different object with slight variations will not amount 
 to an infringement of the patent (j)). 
 
 Sect. 43 of the Act of 1883 provides :— " (1) A 2yafeuf nhall 
 iwt prevent the use of on invention for the purposes of the navi- 
 gation of a foreign vessel within the jurisdiction of any of Her 
 Majesty's Courts in the United Kingdom or Isle of Man, or the 
 vse of an invention in a foreign vessel icithin that jurisdiction, pro- 
 vided it is not used therein for or in connection with the manufacture 
 or preparation of anything intended to he sold in or exported from 
 the United Kingdom or Isle of Man. (2) But this section shall 
 not extend to vessels of any foreign state of which the la us authorize 
 subjects of such foreign state, having patents or like privileges, for 
 the exclusive use or exercise of invottions witJiin its territories, to 
 2)rcvent or interfere with the use of such inventions in British 
 vessels tchile 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 he 
 sold or exported from the territories of such foreign state T 
 
 A patent is not infringed by being used on board an English 
 vessel abroad {q). 
 
 In the case of NoheVs Explosives Co. v. Jones 8^ Scott (r), 
 mentioned above, the Court of Appeal reversed the decision of 
 Vice- Chancellor Bacon, on the grounds that the defendants had 
 not infringed the plaintiff's patent, they having merely acted as 
 Custom House agents for the transhipment of the dpiamite, and 
 their functions being confined to obtaining papers necessary for 
 such transhipment, and that they never had any ownership in or 
 exercised any control over the dynamite. 
 
 This decision shows that the Courts will not recognize that a 
 
 (o) Edison v. Holland, 5 P. 0. E. v. Black, 11 P. 0. R. 299, 574. 
 459, 482 ; also Cannington v. Nuttall, (r/) NcvaU v. Elliot, 10 Jur., N. S. 
 
 L. R., 5 H. L. 205, 230. 954. 
 
 (p) Fletcher \. Glas(joi() Gas Commis- (/•) L. R., 17 Ch. D. 721. Affirmed 
 
 sioners, 4 P. 0, ]i. 386 ; Preston JJaiics by H, L., L. 11., 8 Ai^p Cas 5. 
 
THE CAUSE OF ACTION INFRINGEMENT. 243 
 
 person infringes a patent by aiding and abetting, so to speak, 
 another to do so. There must be some actual infringement on the 
 part of the defendant (s). 
 
 An action may properly be brought against innocent carriers 
 of infringing articles for an injunction to restrain them from 
 dealing with or disposing of such articles in any way (t). 
 
 SELLING. 
 
 A person infringes letters patent who sells the patented article 
 within this realm. It is a putting in practice of the invention 
 within the terms of the grant. 
 
 Lending is not selling (u). 
 
 The purchase of the patented article is not of itself an 
 infringement of the patent, nor is the mere possession, since these 
 do not come within the prohibition in the grant, which is against 
 making use of, or putting in practice, the said invention {.r). 
 
 This is always Avith exceptions such as in the case of dynamite, 
 where the mere possession involves ex necessitate the use ; and the 
 importation of the patented article will not of itself amount to an 
 infringement. 
 
 The possession of the patented article, combined with exposure 
 for sale, if no sale is in fact effected, is no infringement {>/). 
 
 But the making of the patented article, as we have seen, is an 
 infringement, whether a sale was effected, or attempted or not (z). 
 
 Where the patent is for a process the manufacture of an article 
 by the process abroad and sale in this country is an infringement. 
 In Elmslie v. Boursier (a), Sir W. M. James, V.-C, said : — " It is 
 said that tinfoil can be made by the plaintiff's process at less cost 
 than by the old method ; and it is conceded that nohody in 
 England can use the plaintiff's process of making cast tinfoil as 
 
 (s) See also Ton-nscnd v. Havorth, {v) United Telephone Co. v. Henry, 
 
 L. R., 12 Ch. D. 831, n. ; Si/kes v. 2 P. 0. R. 11, Griff. P. C. 228. 
 
 Eowarth, L. R., 12 Ch. D. 826 ; (,r) See Mintcr v. Williams, 1 AVeb. 
 
 TivecdaJe v. Aslucorth, 7 P. 0. R. 426, P. C. 135. 
 
 432. ill) Ibid. 
 
 (<) Washburn tfc Moen Manvfadur- (z) Muntz v. Foster, 2 Web. P. C. 
 
 ing Co. v. Cimard Steamship Co., 6 101; Oxlcy v. Holden, 8 C. B., N. S. 
 
 P. O. R. 398, 403 ; see also Up7nann 666. 
 
 V. Ellrni, L. R., 7 Ch. 130. (a) L. R., 9 Eq. at p. 222. 
 
 K 2 
 
244 THE LAW OF PATENTS. 
 
 distinguished from rolled tinfoil without a licence from the 
 plaintiff. If that cannot be done in England, it would be a very 
 strange thing if a person in England could send an order to some 
 one in France, get the same thing manufactured there in exactly 
 the same way, and bring it here so as to compete with the person 
 to whom the Crown has granted ' the whole profit, benefit, com- 
 modity, and advantage ' arising from the patent. It would be a 
 short mode of destroying ' every profit, benefit, commodity, and 
 advantage ' which a patentee could have from such a thing, if all 
 that the man had to do was to get the thing made abroad, import 
 it into this country, and then sell it here in competition with the 
 English patentee." 
 
 In Walton v. Lavater (b) Erie, C. J., said: — "But it appears 
 to me that the main purpose of the patent is to give the profit to 
 the patentee, and that the main mode of defeating that purpose 
 would be by selling the patented article ; and it seems to me that 
 without proof of the making of the article by the infringer, 
 evidence that he sold the patented article for profit would be good 
 evidence upon which a jury might find that he had infringed the 
 patent. With respect to the defendant not being liable, because 
 the articles were imported from abroad, I should say that, even if 
 it was a simple case of importation, without any proof of know- 
 ledge of the article being patented, or of the infringement, it 
 would be sufficient evidence of infringement that the defendant 
 had imported and sold " (e). 
 
 In The United Telephone Co. v. Sharpies (d), Kay, J., said: — 
 " It is admitted by counsel for the defendant that if a man buys 
 an instrument which he knows would, if made, sold, or used in 
 this country, be an infringement of a patent in this country, if 
 he buys it abroad, imports it into this country, has it in his 
 possessif)n, and sells it, although to a foreign customer, that would 
 be a user which would be an infringement of the patent. I 
 confess, as at present advised, I should have very little hesi- 
 tation in saying that that would be so." 
 
 (b) 29 L. J., C. P. 275, 279. 14 Cli. D. 230 ; The Cartsburn Sugar 
 
 (c) See also Wrif/Jd v. Hitchcock, Rnfinincj Co. v. Shaiji, 1 P. 0. R. ISl. 
 L. R., 5 Ex. 37; 39 L. J., Y.x. 97; 186. 
 
 also Yun Ucydcn v. Ncicstadt, L. R., (r/) 2 P. 0. P. 28, ^1. 
 
THE CAUSE OF ACTION —INFRINGEMENT. 245 
 
 Where the defendant has used and sold articles alleged to 
 have been made by the patented process, the onus of proving 
 that they were in fact made by that process is on the plaintiff, but 
 where such articles were made abroad, and the plaintiffs, in conse- 
 quence, could not be afforded full opportunity of inspecting the 
 machinery by which they were made, it has been held that it lies 
 with the defendants to rebut a prhmi facie case made out by the 
 plaintiffs (e). 
 
 In The Cartsburn Sugar Refining Co. v. Sharp (./') the 
 alleged infringement consisted in the sale in England of cube 
 sugar manufactured in America by a machine made in accordance 
 with the specification of the plaintiffs' patent, Lord Kinnear, in 
 his judgment, said : " No witness has been examined of sufficient 
 skill as a mechanic to give a detailed description of the machine 
 in question. All that is proved is that it does not correspond in 
 all 'respects, though in some respects it does correspond, to the 
 description in Sersei/8 patent. It is said that as the manufacture 
 complained of had taken place in America, it was incumbent on 
 the respondents, upon the principle which received effect, in the 
 case of Neilson v. Betts (supra), to prove by negative evidence 
 that it was not manufactured according to the specified process. 
 I think no such onus lies upon the respondents in the present case, 
 because there can be no question on the evidence that such 
 articles as were sold by the respondents may have been produced 
 by machinery which involved no infringement of the complainer's 
 patent. That being so, it lay upon the complainers to prove their 
 case, and as they took a commission to America for the purpose 
 of proving it, there could have been no difficulty in their obtaining 
 a sufficient description of the machine to which it is alleged they 
 have traced the cubes of sugar sold by the respondents, to enable 
 them to establish the infringement, if infringement there was." 
 
 Selling known chemical substances with knowledge of and 
 with a view to their being used for the purpose of infringing a 
 patent is no offence, provided the vendor takes no actual personal 
 part in the infringement {g). 
 
 (e) Neilson v. Belts, L. R., 5 II. L. 12 Cli. D. 831 ; Stjkcs v. Howarlh, L. 
 
 1, 11. R., 12 Ch. D. 826 ; but note United 
 
 (/) 1 P. 0. R., 181, 186. Tdcplwnc Co. v. Dale, L. R., 25 Ch. 
 
 ig) I'oimiseiid v. Ilawortli, L. R., U. 778. 
 
246 THE LAW OF PATENTS. 
 
 A patentee selling the patented article sells with it the right 
 of free disposition as to that article, and if he sells the article in 
 France, the purchaser may import and sell it in England. Lord 
 Hatherley, in Betts v. WiUmott (h), said : — " Inasmuch as he 
 has the right of vending the goods in France, or Belgium, or 
 England, or in any other quarter of the glob?, he transfers with 
 the goods necessarily the licence to use them wherever the 
 purchaser pleases. When a man has purchased an article he 
 expects to have the control of it, and there must be some clear 
 and explicit agreement to the contrary to justify the vendor in 
 saying that he has not given the purchaser his licence to sell the 
 article, or to use it wherever he pleases as against himself." 
 
 Where the defendants, being owners of patents in Belgium and 
 England for an invention for making glass lamp globes, by a 
 deed executed in Belgium, granted a licence to the plaintiffs to 
 manufacture under their invention in Belgium but not elsewhere, 
 and the plaintiffs under this licence manufactured articles in 
 Belgium and sold them in England, it was held by the Court of 
 Appeal, affirming Pearson, J., that the grant of the licence to use 
 the patent in Belgium did not imply permission to sell the manu- 
 factured article in England in violation of the defendants' 
 English patent (i). 
 
 And when the patentee has assigned his patent in France and 
 kept it to himself in England, the French assignee may not, nor 
 \ \ may a purchaser from him import and^x^nd or use the goods 
 made in France in England (k). In this case the sale of the 
 article can only imply such licence as the vendor himself has, and 
 the vendor has no right to sell in England. 
 
 Conversely, if the patentee had assigned his patent rights in 
 England, he could not manufacture in France and sell in 
 England, and the sale of an article in France would carry with it 
 no implied right to import into or sell in England. But if the 
 rights under the patent are vested in one and the same person for 
 both France and J^^ngland, or if there are no monopoly rights in 
 France, but only in England, the patentee could not make and 
 
 (/() L. K., 6 Ch. uL \>. -lio. Sand Blast Co., L. K., 25 Ch. D. 1. 
 
 (i) Societe Aimiujim des Manafac- (k) See the rule laid down iu CaW- 
 
 tnrcs dc Oluocs v. Tilyhman's Patent well v. Vanvlissengen, 9 Hare, 415. 
 
THE (JAUSE UF ACTION —INFRINGEMENT. 247 
 
 sell in France and restrain the purchaser from selling or using 
 the article in England, unless, indeed, there was a special agree- 
 ment for that purpose ; and then such agreement could not be 
 held to attach to the article so as to prevent any person in whose 
 hands it might come from importing it (/). 
 
 A vendee of a licensee, without an agreement to the contrary, 
 has the same right of disposition with regard to things purchased 
 as was vested in the licensee before (m), and where the licensee 
 is restricted in his use of the patented article {mm), a purchaser 
 from such licensee will not be affected by the restrictive covenant, 
 unless he has due notice of its existence. 
 
 So, in Hecq) v. Hartley {n), the patentee granted to the 
 plaintiff an exclusive licence for a district ; subsequently he sold a 
 machine made in accordance with the patent to the defendant, 
 who brought this machine within the prohibited area. It was 
 held by Bristowe, V.-C, and his decision was affirmed in the 
 Court of Appeal, that the defendants were not affected by the 
 exclusive licence for that district, since they had no notice of its 
 existence. 
 
 In the course of his judgment Bristowe, V.-C, said (o) : — 
 " Where a patentee sells that which he has a perfect right to do 
 abroad to a person who has a perfect right to buy a machine 
 abroad, and to use in England the thing so sold, you must, 
 before you can attach the conscience of any sub-purchaser from 
 that man, have something in the form of notice to that man that 
 there is a restrictive user attachable to the particular machine so 
 bought." 
 
 But ignorance in the absence of an implied licence, as in the 
 case we have been discussing, is no excuse, since, as has been 
 pointed out above, infringement does not depend upon what a 
 man intends, but upon what he does. 
 
 (/) Belts V. Wihiiott, L. R., 6 Ch. licence accompcauyiug the sale of a 
 
 239. patented article, see The Incandescent 
 
 {m) Thomas v. Hunt, 17 C. B., N. Co. v. Cantclo, 12 P. 0. R. 262. 
 
 S. 183. (;0 5 P. 0. R. 603 ; 6 P. 0. R. 495. 
 
 {mm) For an instance of a limited (o) 5 P. 0. R. 610. 
 
248 THE LAW OF PATENTS. 
 
 CHAPTER XVIll. 
 
 THE REMEDY — INJUNCTION. 
 
 The remedy sought or granted in an action for infringement 
 may consist of an injunction, together with an account of sales 
 and profits, or damages. 
 
 The Judicature Acts and the Rules which have been made for 
 the governing of the practice of the courts have introduced great 
 changes in the method of procedure. The old practice of moving 
 for an injunction by a suit in the Court of Chancery, and of 
 trying the validity of the patent at common law, has disappeared ; 
 and in its place the patentee seeking to enforce his rights com- 
 mences but one action in which he claims, and if entitled to, 
 obtains every remedy which was formerly granted to him by the 
 dual process. 
 
 Every patentee proceeding against an infringer must prove the 
 validity of his patent and his title to an injunction ; that being 
 so, and the right to the injunction hanging so completely upon 
 the question of validity, it is obvious that the new procedure and 
 the new power of both divisions of the High Court of Justice 
 to grant complete and sufficient remedies and to try every 
 question is of great advantage to persons in possession of patent 
 rights, 
 r- The basis of an injunction is the threat actual or implied on 
 the part of the defendant, that he is about to do an act which is 
 in violation of the plaintiff's rights ; so that not only must it be 
 clear that the plaintiff lias rights, but also that the defendant has 
 done something which induces the Court to believe that he is 
 about to infringe those rights. 
 
 The fact that he has been guilty of an infringement of the 
 \ patent rights will, under circumstances, be evidence that he 
 
THE REMEDY INJUNCTION. 249 
 
 intends to continue his infringement, but whether he has actually- 
 infringed the patent or not, it will be sufficient if he has threatened 
 to infringe it. Actual infringement is merely evidence upon 
 which the Court implies an intention to continue in the same 
 course. 
 
 In FrcarsoH v. Loe (a), Jessel, M.E,., said : — "I am not aware 
 of any suit or action in the Court of Chancery which has been 
 successful on the part of a patentee, without infringement having 
 been proved ; but, in my opinion, on principle there is no reason 
 why a patentee should not succeed in obtaining an injunction 
 without proving actual infringement. I think for this reason : 
 where the defendant alleges an intention to infringe, and claims 
 the right to infringe, the mischief done by the threatened 
 infringement of the patent is very great, and I see no reason why 
 a patentee should not be entitled to the same protection as every 
 other person is entitled to claim from the Court from tlireatened 
 injury, where that threatened injury will be very serious. No 
 part of the jurisdiction of the old Court of Chancery was con- 
 sidered more valuable than that exercise of jurisdiction which 
 prevented material injury being inflicted, and no subject was more 
 frequently the cause of bills for injunction than the class of cases 
 which were brought to restrain threatened injury, as distinguished 
 from injury which was already accomplished. It seems to me, 
 when you consider the nature of a patent right, that where there 
 is a deliberate intention expressed, and about to be carried into 
 execution, to infringe certain letters patent under the claim of a 
 right to use the invention patented, the plaintiff is entitled to 
 come to this Court to restrain that threatened injury. Of course 
 it must be plain that what is threatened to be done is an infringe- 
 ment." 
 
 So in Dowliny v. BiUington (b), two acts of infringement of the 
 plaintiffs patent were proved, the first of which took place prior 
 to the acceptance of the complete specification by the Comp- 
 troller, while the second was committed a few days after the com- 
 mencement of the action, it was held by Chatterton, V.-C, whose 
 decision was affirmed by the Court of Appeal, that neither of 
 these acts constituted an actionable infringement ; but inasmuch 
 (a) L. R., 9 Ch. D. at p. 65. (//) 7 P 0. K. 191. 
 
250 THE LAW OF PATENTS. 
 
 as the conduct of tlie defendant showed a deliberate intention to 
 infringe, the plaintiffs were entitled to an injunction upon the 
 principle laid down by Jessel, M.R., in Frearson v. Loe (supra). 
 
 The actual infiingement of the patent is taken by the Court to 
 imply an intention to continue the infringement, notwithstanding 
 any promises not to do so, and an injunction will be granted. 
 Yice- Chancellor Shadwell, in Losh v. Hague (c), said: "If a 
 threat had been used, and the defendant revokes the threat, 
 that I can understand as making the plaintiff satisfied ; but if 
 once the thing complained of has been done, I apprehend this 
 Court interferes, notwithstanding any promise the defendant may 
 make not to do the same thing again." 
 
 If the fact of actual infringement is relied upon, and not a 
 mere threat, it will be necessary to show very clearly that what 
 has been done amounts to an infringement. In Hancock v. 
 Moulton (d), it was held that the evidence must be so perfect, 
 that if it were a motion to commit for the breach of an injunction, 
 the Court would commit upon it. If the evidence of infringement 
 is conflicting, either by reason that it is denied that the acts com- 
 plained of were done, or that such acts as were done did not 
 amount to an infringement of the patent, the Court should not 
 grant an interim injunction before the hearing of the action (e). 
 
 If the evidence relied upon for the injunction is the sale by the 
 defendant of the patented article, and not the manufacture, the 
 plaintiff must show that such patented article was not made by 
 himself or his licensees (/). 
 
 In the case of Adair v. Young (g), the defendant was the 
 captain of a ship which was fitted with certain pumps which were 
 an infringement of the plaintiff's patent. No act of using the 
 pumps was proved ; but it was shown that the ship was not 
 supplied with other pumps. It was held that the possession of 
 the pumps under such circumstances, although not of itself 
 amounting to an infringement, was evidence upon which the 
 Court would act that the defendant intended to use the pumps, 
 
 (c) 1 Web. r. C. 2U0. (/) Betts v. Wilhnott, L. R., 6 Ch. 
 
 (d) M. Dig. 506. 239. 
 
 (c) The Electric rdnjraph Co. v. {g) L. R., 12 Cli. D. V6. 
 
 Notl, 2 Coop. Ch. Cas. 41. 
 
THE REMEDY INJUNCTION. 251 
 
 should occasion require. And the Court, Brett and Cotton, 
 L.JJ., James, Ij.J., dissenting, granted an injunction. 
 
 Lord Justice James, in giving his reasons for dissenting, said : 
 "I think that an injunction ought not to be granted against a 
 man unless he has done something which he ought not to have 
 done, or permitted something which he ought to have prevented. 
 Now, a master who comes on board ought not to be answerable 
 on the ground that, w'hen he takes command, there is on board a 
 pump which infringes the patent. He does not, owing to his 
 qualified possession, become at once an infringer. He had no 
 power to take a pump out of the ship ; he had nothing to do with 
 putting it there, and he was not wrong in allowing it to remain 
 there, for he could not lawfully remove it. An injunction, there- 
 fore, can only be granted on the principle of quia timet, and in 
 applying that principle I think that it would be a right exercise 
 of the discretion of the Court not to grant an injunction against a 
 master who has done nothing wrong when there is no difficulty in 
 finding and suing the OMmer of the ship." 
 
 The Court, however, seem to have been of opinion that the 
 ground upon which an injunction should be granted is not whether 
 the defendant has done anything wrong or not, but whether there 
 was evidence of an intention to use the patented invention. The 
 Court held that the circumstances of the case showed an intention 
 in the cajjtain to use the invention. 
 
 The principle upon which the Court grants an injunction was 
 clearly demonstrated in Proctor v. Bayley (h). In that case the 
 infringement complained of took place six years before the trial 
 of the action. It was proved that the user continued only for a 
 few months, after which the machines were abandoned as unsatis- 
 factory. It was held by the Court of Appeal, reversing the 
 decision of Bristowe, V.-C, that it was clear that the defendants 
 had no intention whatever of continuing the wrongful act, and 
 consequently that it was not a proper case in which an injunction 
 should be granted. Cotton, L.J., in his judgment, said (/) • 
 " There is no doubt that it was a good patent, and we must also 
 take it that the defendants have infringed ; but the point is this : 
 Is there any ground here which would justify the Court in 
 (h) 6 P. 0. E. 538. (i) Pp. ',n, 542. 
 
252 THE LAW OF PATENTS. 
 
 exercising the extraordinary jurisdiction of the Court of Chancery 
 in granting an injunction ? That, I think, has been a good 
 deal lost sight of in the argument. It is not because a man 
 has done a wrong that an injunction will be granted against him. 
 If a man has done a wrong which will not be continued, at 
 common law damages may be obtained for the v/rong done, which 
 the common law says is sufiicient indemnity for that wrong ; but 
 then the Court of Chancery says this, in the exercise of its extra- 
 urdinary jurisdiction: 'We will n<jt be satisfied with that; we 
 will grant an injunction, because a wrongful act has been d(jne, 
 in order to prevent that wrongful act ' ; and they grant an in- 
 junction where a wrongful act has been done and the Court is 
 satisfied of the probability of the continuance of the wrongful act. 
 .... But here, although the defendants did infringe the 
 plaintiff's patent, we must consider all the circumstances of the 
 case in order to guide us in the consideration of this : Ought 
 the Court to draw the inference that there will be a continuance 
 of the wrongful act so as to justify the Court in granting the 
 extraordinary interference and the protection which is exercised 
 by the Court of Equity ? " (/.•). 
 
 On the same principle an action for an injunction may be 
 brought against innocent carriers of infringing articles, in 
 Upmann v. Elkan (/), which was a trade mark case, Lord 
 Hatherley, L.C., in his judgment, said : " It has been argued that 
 the plaintiffs were not entitled to an injunction against the 
 defendants, who had been guilty of no offence, being merely 
 carriers receiving goods, which, though fraudulently marked, were 
 not for their own use, nor to be sold by them for • their own 
 benefit, but were received merely for the purpose of transmitting 
 them to the persons to whom they were consigned. I cannot 
 conceive a doctrine more dangerous or mischievous, or more fatal 
 to the authority of the Court with respect to trade marks. If 
 that argument prevailed, any persons being abroad, as was the 
 case in this instance, and minded to commit frauds upon an 
 
 {k) Note also Millington v. Fox, 3 Washburn <k Moen Manufacluriiui Co. 
 
 Jl. &Cr. 338 ; Geary V. Norton, 1 De G. v. Ctcnard Stea'insliip Co., 6 P. 0. R. 
 
 & S. 9. 398, 403. 
 
 [l) L. K., 7 (Jh. 130, 132 ; see also 
 
THE REMEDY — INJUNCTION. 253 
 
 English trade mark, could easily do so by sending their different 
 consignments together to persons in the position of the defendants, 
 who appear to be respectable agents and warehousemen, thereby 
 committing an injury in a manner most convenient to themselves, 
 and very mischievous to the person entitled to the benefit of 
 the trade marks." 
 
 The above reasoning would apply equally well to infringements 
 of letters patent. The carriers, however, will be absolved from 
 all liability if they make full disclosure of the names of the con- 
 signors and consignees of the goods complained of (/;?). 
 
 No injunction will be granted where the patentee has not pro- 
 ceeded with reasonable speed to prosecute infringers (ii). But in 
 cases where there are several infringers he is not justified in com- 
 mencing a vast multitude of actions and applying for injunctions 
 in each (o). His proper course is to "select that which he 
 thought the best in order to try the question fairly, and proceed 
 in tbat case to obtain his interlocutory injunction. He might 
 write at the same time to all the others who were in simili casu, 
 and say to them, ' Are you willing to take this as a notice to you 
 that the present case is to determine yours ? Otherwise I shall 
 proceed against you by way of interlocutory injunction ; and if 
 you will not object on the ground of delay, I do not mean to file 
 bills against all of you at once. Am I to understand that you 
 make no objection of that kind '? If you do not object I shall 
 file a bill against only one of you.' I do not think any court 
 could complain of a patentee for taking the course I am sug- 
 gesting" {p). 
 
 There are two forms of injunction, the interlocutory injunction 
 and the perpetual injunction. 
 
 The interlocutory injunction stands very much upon the same 
 footing, and will be granted for similar reasons and upon the same 
 conditions that an injunction was formerly awarded by the Court 
 
 {m) Ibid. at p. ISO. 
 
 (n) Losh V. Hague, 1 Web. P. C. {p) Per Sir AV. Page-Wood, Y.C., 
 
 201 ; Bacon v. Jones, 4 My. & Cr. 438, Bovill v. Crate, L. E., 1 Etj. at p. 391. 
 
 439 ; Bridson v. Benccke, 12 Beav. 1 ; See nlso Hancock v. Moulton, M. Dig. 
 
 Baxter v. Comhe, 1 Ir. Cb. R. 284 ; 506 ; Smith v. L. 1- S. IV. PmU. Co., 
 
 Hancock V. Moulton, M. Dig. 506. Kay, 408. 
 
 (o) Foxwdl V. Webster, 3 N. R. 103, 
 
254 THE LAW OF PATENTS. 
 
 of Chancery wlien an action was directed to be tried at common 
 law. 
 
 The perpetual injunction is granted after trial, and binds the 
 parties against whom it is granted during the continuation of the 
 term of the patent. 
 
 An interlocutory injunction may be granted ex parte, after the 
 issue of the writ, and before service. An ex parte injunction will 
 only be granted when it can be shown that great injury will accrue 
 to the plaintiff by delay, and when he can clearly establish his 
 title and the fact of infringement (q). 
 
 Notice of motion having been given, an interlocutory injunction 
 will be granted after appearance, or with leave, upon notice of 
 motion to be served with the writ. 
 
 By sect. 25 of the Judicature Act, 1871, sub-sect. 8 : " A 
 mandamus or an injunction may be granted, or a receiver 
 appointed by an interlocutory order of the Court, in all cases in 
 which it shall appear to the Court to be just or convenient that 
 such order should be made; and any such order may be made 
 either unconditionally or upon such terms and conditions as the 
 Court shall think just ; and if an injunction is asked either before, 
 or at, or after the hearing of any cause or matter to prevent any 
 threatened or apprehended waste or trespass, such injunction may 
 be granted if the Court shall think fit, whether the person against 
 whom such injunction is sought is or is not in possession under 
 any claim of title or otherwise, or (if out of possession) does or 
 does not claim a right to do the act sought to be restrained under 
 any colour of title ; and whether the estates claimed by both or 
 either of the parties are legal or equitable." 
 
 It will be observed that this section confers upon the Court 
 very wide limits within which, in its discretion, it may grant in- 
 junctions. It sweeps away a great deal of the technical rules 
 which had been from time to time laid down by the Court of 
 Chancery for the granting of injunctions, and it practically sub- 
 stitutes for them the opinion of the judge trying each particular 
 action as to the balance of convenience upon a consideration of 
 the facts of the case. 
 
 {q) Gardner V. Jiivadhrnl, 2 Jur., N. S, 1041. 
 
THE REMEDY — INJUNCTIOiSr. 255 
 
 Order L, rule 6, directs that : " An application for an order 
 under sect. 25, sub-sect. 8, or under rules 2 or 3 of this Order, 
 may be made to the Court or a judge by any party. If the 
 application be by tbe plaintiff for an order under the said sub- 
 sect. 8, it may be made either ex parte or with notice " 
 
 A master of the Queen's Bench Division has no power to grant 
 an injunction. Order LIV. rule 12. 
 
 An interlocutory injunction will be granted whenever there has 
 been such working, user and enjoyment of the patent rights by 
 the patentee as will satisfy the Court that there are strong j^rw^a 
 facie reasons for acting on the supposition that the patent is valid. 
 
 Lord Eldon, in the case of the Universities of Oxford and 
 Cambridge v. Richardson (r), said : " It is then said in cases of 
 this sort the universal rule is that if the title is not clear at law 
 the Court will not grant or sustain an injunction until it is made 
 clear at law. With all deference to Lord Mansfield, I cannot 
 accede to that proposition so unqualified. There are many 
 instances in my own memory in which this Court has granted or 
 continued an injunction to the hearing under such circumstances. 
 In the case of patent rights, if the party gets his patent and puts 
 his invention in execution and has proceeded to a sale, that may 
 be called possession under it ; however doubtful it may be whether 
 tbe patent can be sustained, this Court has lately said possession 
 under a colour of title is ground enough to enjoin, and to con- 
 tinue the injunction, till it shall be proved at law that it is only 
 colour and not real title." 
 
 And in Gardner v. Broadhent (s). Sir J. Stuart, Y.-C, said : 
 " I wish it to be understood that the law of the Court is that laid 
 down by Lord Eldon in the Vnicersities of Oxford and Cambridge 
 V. Richardson.^' 
 
 There having been a trial as to the validity of the patent, which 
 has terminated in favour of the patentee, will be considered by 
 the Court sufficient reason for granting an interlocutory in- 
 junction {t) ; and where the patentee has worked and enjoyed the 
 
 (/■) 6 Ves. 689, 706. Coide.y, 2 Coop. Ch. Ca. 59, ii. ; United 
 
 {s) 2 Jur., N. S. 1041. Tcleplione Co. v. St. George, 3 P. 0. R. 
 
 (0 Dudijeon v. Thompson, 30 L. T., 33 ; Moser \. Sewell 10 P, 0. R. 365. 
 
 ■ F. S. 244 ; 22 W. U. 464 ; Russell v. 
 
25 G THE LAW OF PATENTS. 
 
 patent for nin: y years without dispute, an interlocutory in- 
 junction will be granted {u) ; so also where the defendant has 
 admitted the validity of the patent (x), or is so placed in his 
 relationship to the patentee as to be estopped from denying its 
 validity (//). 
 
 In Dudgeon v. TJwinpson (z), Jessel, ]\r.E., said : " The Court 
 can grant an injunction befoi-e the hearing where the patent is an 
 old one and the patentee has been in long and undisturbed enjoy- 
 ment of it, or where its validity has been established elsewhere, 
 and the Court sees no reason to doubt the propriety of the result, 
 or where the conduct of the defendant is such as to enable the 
 Court to say that, as against the defendant himself, there is no 
 reason to doubt the validity of the patent." 
 
 So in Betls Y. Menzies {a), Wood, V.-C, said : — "The law of 
 this Court is, that where the patentee has had long enjoyment, 
 then he shall have an injunction to protect his rights until trial, 
 even although his rights under his patent be doubtful." 
 
 What amounts to long enjoyment is difficult to define, but 
 decided cases would appear to suggest that undisturbed enjoyment 
 for six years would be sufficient [h) ; but the user of the invention 
 during that time must be active. The mere possession of a patent 
 for a long period does not of itself give rise to a presumption of 
 its validity (c). 
 
 An intci locutory injunction is seldom granted in the case of a 
 new patent (//), unless very strong evidence in support of the 
 motion be adduced {e), or where the validity of the patent has 
 
 (w) Btidgcon v. Thompson, 30 L. T., (a) 3 Jur., K S. at p. 358. 
 
 N. S. 244 ; Curtis v. Cutts, 2 Coop. {b) BlcJcford v. Skcivcs, 1 Web. P. C. 
 
 Ch. Ca. 60, n. ; Davenport v. Goldberg, 211 ; EothivcU v. Khig, 3 P. 0. K: 
 
 2 H. & M. 282 ; Pen7i v. Bibby, L. R. 379. 
 
 3 Eq. 308 ; Mimtz v. Foster, 2 Web. (c) Plimpton y. Malcolmson, 44 L. J., 
 P. C. 95 ; Bickford v. Skcwes, 1 Web. Ch. 257. 
 
 P. C. 211 ; Plimjiton v. Malcolmson, [d) Caldwell v. Vanvlissengen, 9 
 
 44 L. J., Ch. 257 ; Rothwell v. King, Hare, 415, 424 ; Px^nard v. Levinstein, 
 
 3 P. 0. R. 379 ; Haywardv. Pavement 10 L. T., N. S. 177 ; Lister v. Norton, 
 
 Light Co., Griff. P. C. 124. 1 P 0. R. 114 ; Jackson v. Needle, 1 
 
 (,7) Zlircks V. Mcllor, 26 Loii. Journ. P. O. R. 1 74 ; British Tanning Co. v. 
 
 268. Groth, 7 P. O. R. 1. 
 
 (y) Clarkev.FergussojijlGUWiSi. (e) Gardner v. Broadbent, 2 Jur., 
 
 (z) 30 L. T., N. S. 244. N. S. 1041. 
 
THE EEMEDY — INJUNCTION. 257 
 
 been tried and upheld (/), though where the plaintiffs made out 
 a prwict facie case, and no substantial defence was put forward, 
 the Court granted an interlocutory injunction (g). The usual 
 practice in such cases is to order the motion to stand over to the 
 trial without prejudice to any question, the defendants under- 
 taking to keep an account. 
 
 An interlocutory injunction will not be granted in cases where 
 the plaintiff is guilty of delay in making his motion (A). 
 
 The principle which may be gleaned from the decisions in 
 motions for interlocutory injunctions is that the Court will 
 consider the balance of convenience in each particular case («') . 
 
 If it should appear that irremediable injury will be sustained 
 by the defendant if an injunction goes which may afterwards 
 appear unfounded, the Court will require a very strong case to be 
 made out by the plaintiff before granting such an injunction {k), 
 and the converse would equally appear. 
 
 In Bickford v. Skewes (1), ShadweU, V.-C, said: "I have 
 nothing to do with any other case than the case before me." 
 
 The Court will not infrequently grant or refuse the injunction 
 until the hearing upon terms ; the terms on the plaintiff being 
 that he shall be answerable in damages, or on the defendant that 
 he shall keep an account of the material manufactured, or of the 
 articles sold, in pursuance of the patent process, but it is open to 
 the plaintiff to show that if he succeeds the defendant's position 
 is such that he will be unable to pay the damages or the amount 
 of the account (m). In considering which course should be 
 adopted, the Court will be influenced chiefly by the balance of 
 convenience and the probability of injury to either side (w). 
 
 (/) The Farbcn Fahriken, vorm. F. 420 ; Kensington, d:c., Eleciric Lighting 
 
 Bayer d: Co. v. Dawson, 8 P. 0. E. 397. Co. v. Lane Fox, 8 P. 0. R. 277 ; 
 
 ig) Coles V. Baylis, 3 P. 0. R. 178. Moser v. Sewell, 10 P. 0. R. 365, 367. 
 
 (h) Bovill V. Crate, L. R., 1 Eq. (k) Ncilson v. Forman, 2 Coop. Ch. 
 
 388 ; Greer v. Bristol Tanning Co., 2 Ca. 61, n. 
 
 P. 0. R. 268 ; but note United Tele- (I) 1 Web. P. C. 213. 
 
 phone Co. v. Equitahle Telephone Co., {in) Newall v. Wilson, 2 De G. M. & 
 
 5 P. 0. R. 233. G. 282 ; Bracher v. Bracher, 7 P. 0. 
 
 (i) Walker v. Clarke, 4 P. 0. R. R. 420. 
 
 Ill ; CJiallcnder v. Royle, 4 P. O. R. (n) Neilson v. Thompson, 1 Web. 
 
 363 ; Thomson v. Huglies, 7 P. 0. R. P. C. 278 ; Bridson v. AF Alpine, 8 
 
 71 ; Bracher v. Bracher, 7 P. 0. R. Beav. 229 ; and cases supra. 
 
 T. :> 
 
258 THK LAW OF PATENTS. 
 
 In Plimpton y. Spiller (o), James, L.J., said: — "The Court, 
 not forming an opinion very strongly either one way or the other 
 whether there is an infringement or not, but considering it is as 
 a fairly open question to be determined at the hearing, and not 
 to be prejudiced by any observations in the first instance, reserves 
 the question of infringement as one which will have to be tried 
 at the hearing and which it will then have to consider. There 
 will always be, no doubt, the greatest possible difficulty in 
 determining what is the best mode of keeping things in statu quo 
 — for that is really what the Court has to do, to keep things in 
 statu quo — until the final decision of the question ; and then, of 
 course, the Court says, * We will not stop a going trade. We 
 will not adopt a course which will result in a very great difficulty 
 in giving compensation on the one side or on the other. We 
 have to deal with it as a practical question, in the best way we 
 can.' I think, on the whole, that the Master of the Rolls has 
 made the right order, viz., by granting the injunction and putting 
 the plain tifi" upon an undertaking to abide by such order (if any) 
 as to damages as the Court may think fit to make if he should 
 ultimately turn out to be in the wrong, and that it would not be 
 right in this case merely to put the defendant upon the terms of 
 keeping an account which, I conceive, might be a very clumsy 
 and inefficient mode of recompensing the plaintift' if he should 
 turn out ultimately to be in the right." In the same case the 
 present Master of the Rolls, Sir W. B. Brett, said (p) : — " There 
 will be a hardship on the one side or on the other, and the question 
 is on which side does the balance appear to lie ? Now, if the 
 trade of a defendant be an old and established trade, I should 
 say that the hardship upon him would be too great if any 
 injunction were granted. But where, as here, the trade of the 
 defendant is a new trade, and he is the seller of goods to a 
 vast number of people, it seems to me to be less inconvenient 
 and less likely to pi'oduce irreparable damage to stop him from 
 selling, than it would be to allow him to sell and merely keep an 
 account, thus forcing the plaintiff to commence a multitude of 
 actions against the purchasers." 
 
 (o) L. K., 4 Ch. D. -189. (p) At p. 292. 
 
THE REMEDY — INJUNCTION. 259 
 
 The evidence to be used upon an application for an interlocutory 
 
 injunction is upon affidavit. 
 
 The affidavit should clearly point out in what the alleged 
 infringement consists (q). If the plaintiff is the first inventor, 
 he must distinctly swear to the fact, as also to the novelty and 
 utility of the invention, and to the due filing of a sufficient 
 specification (r). If the plaintifi" is an assignee he must swear to 
 the best of his belief (s). The affidavits in either case must state 
 the facts as at the time of swearing, and it is not sufficient to 
 swear that the invention was believed to be new when the patent 
 was granted (t). An injunction granted prior to statement of 
 claim will be dissolved if the statement of claim when delivered 
 does not agree with the affidavits upon which the injunction was 
 granted (u). 
 
 In the Chancery Division it is the practice to hear applications 
 for interlocutory injunctions as motions in Court. In the Queen's 
 Bench Division the application is heard by the Judge in Cham- 
 bers upon a summons. 
 
 Forms of injunction upon undertaking as to damages (x), and 
 of order refusing injunction upon terms (y), will be found in the 
 Appendix. 
 
 After trial and judgment, and upon application for a perpetual 
 injunction, when the nature of the infringing matter will permit 
 of it, an order will be made that the articles (machinery or 
 otherwise) be delivered up to the plaintiff or destroyed (»). 
 This was done in Plimpton v. Malcobnson (supra) ; the reference 
 to this cause is M.R., 28th Jan., 1876, B. 881. An inquiry will, 
 when necessary, be directed as to the articles manufactured 
 which are in the defendant's possession, and that they be 
 destroyed, Betts v. De Vitre, V.-C. W., 1865, A. 119. The 
 
 (g) Hill V. Thompson, 3 Mer. 624 ; (w) Stocking v. Llewelhjn, 3 L. T. 
 
 Betts V. Willmott, L. R., 6 Ch. 239. 33. 
 
 (r) Hill V. Thompson, 3 Mer. 624 ; (x) Form 4, p. 472, post. 
 
 Sturtz V. De la Pace (per Lord Lj'iid- [y) Form 5, p. 473, post, 
 
 hurst), 5 Kuss. 329 ; Whitton v. (2) Frearson v. Loe, L. R., 9 Ch. D. 
 
 Jennings, 1 Dr. k S. 110. at p. 67 ; but see also United Telephone 
 
 (s) Gardner v. Broadbcnl, 2 Jur., Co. v. London <£• Globe Telephone Co., 
 
 N. S. 1041. L. R., 26 Ch. D. at p. 776 ; Siddell v. 
 
 ^t) Hill V. Thuinpsun, 3 Mer. 624. Vickers, P. 0. R. at p. 101. 
 
260 THE LAW OF PATENTS. 
 
 defendant will also be ordered to make discovery upon oath of 
 the articles or machinery which he may have in his possession, 
 and which infringe the plaintiff's patent, so that they may be 
 delivered up and destroyed ; this was done in Tangye v. Stott, 
 V.-C. W., 12th Feb., 1866, B. 461. The right of property in 
 the articles which infringe the patent remains in the infringer, 
 although the Court may order the articles to be destroyed {a). 
 
 These mandatory orders are never made except after trial, and 
 when the plaintiff" has fully established to the satisfaction of the 
 Court the validity of his patent and the fact of the defendant's 
 infringement. 
 
 An injunction having been granted to restrain the defendant 
 from infringing a patent for the manufacture of telephones : It 
 was held to be a breach of the injunction to sell the separate 
 parts of the patented telephones which anyone might put 
 together {h). 
 
 The injunction falls with the expiration of the patent {c), but 
 where machines have been manufactured or articles made in 
 infringement of patent rights, an injunction will be granted to 
 prevent their use or sale, even after the patent has expired {d). 
 
 A person against whom an injunction has been granted is 
 liable to be committed should he be guilty of a breach of such 
 injunction, but an application for committal, involving as it does 
 the liberty of the subject, will require the strictest proof in its 
 support (e). 
 
 In Hopkinson v. St. Ja)7ies and Pall Mall Electric Light Co. (/), 
 an injunction was granted but was suspended for six months, the 
 defendants agreeing to keep an account on the ground that 
 great inconvenience would be caused to the public by suddenly 
 stopping the use of the three wire system. 
 
 {a) Vavasseur v. Krupp, L. R., 9 C. 119 ; Crossley v. The Derby Gas 
 
 Ch. D. 351. Light Co., 4 L. J., Ch. 25 ; see also 
 
 (b) United Telephone Co. v. Dale, Frice^s Patent Candle Co. v, Bauwen's 
 L. K., 25 Ch. D. 778. Patent Candle Co., 4 K. & J. 727. 
 
 (c) Daw V. Eley, L. R., 3 Eq. 496. (c) Dick v. Haslam, 8 P. 0. R. 196. 
 
 (d) Crossley v. Beverley, 1 Web. P. (/) 10 P. 0. R. at p. 62. 
 
THE REMEDY — DAMAGES. 261 
 
 DAMAGES. 
 
 In addition to an injunction, the defendant may be entitled, 
 when there has been actual infringement as distinguished from 
 an intention to infringe, to either damages or an account of sales 
 and profits. 
 
 He is not entitled to both damages and an account, but he must 
 elect which he will take {(j). An account of sales and profits 
 amounts to a condonation of the infringement (//). 
 
 The measure of damage is not the profit made by the infringer, 
 but is the loss which the plaintiff has actually sustained (/). 
 The question of damages is not synonymous with an account of 
 profits, the basis of calculation being entirely different. 
 
 "The loss must be the natural and direct consequence of the 
 respondent's acts" (A-), consequently the damages will be the 
 estimated loss of profit incurred by the plaintiff by reason of the 
 sale by the defendant of articles which infringed the plaintiff's 
 patent ; such a question must be one of considerable difficulty, 
 and can only be decided by a fair businesslike view of all the 
 circumstances of the case. 
 
 A probable result of the sale by the defendant, of articles 
 which infringe the plaintiff 's patent, is a reduction in price owing 
 to the commercial competition, and a consequent loss of profit to 
 the plaintiff; whether this source of damage may or may not be 
 taken into consideration will depend upon the circumstances of 
 the case. 
 
 In The United Horse-shoe and Nail Co. v. Stewart (l), loss of 
 profit arising from such competition was not allowed. In that case 
 the patent in question was one for a machine to produce horse- 
 shoe nails more cheaply than had been done before ; consequently 
 anyone else could make nails in competition with the plaintiffs, 
 they were only restrained from making them by means of that 
 
 {g) De Vitrc v. Belts, L. R., 6 H. L. 267 ; Petman v. Bull, 3 P. 0. R. at 
 
 319 ; Neilson v. Belts, L. R., 5 H. L. p. 393. 
 1; Needhamy. Oxley, 11 W. E. 852. {k) Per Lord Macnaghten, United 
 
 (A) Per Lord Westbuiy, Neilson v. Horsenail Co, v. Steivarl, 5 P. 0. R. 
 
 Belts, supra ; also United Horseriail at p. 268 ; see also American Braided 
 
 Co. V. Stewart, 3 P. 0. R. at p. 143. Wire Co. v. Thomson, 7 P. 0. R. 152. 
 
 (i) United Horsenail Co. v. Stewart, (I) 3 P. 0. R. 139 ; 4 P. 0. R. 130 ; 
 
 8 P. 0. R. at p. 143 ; 5 P. 0. R. at p. 5 P. 0. R. 260, 
 
262 THE LAW OF PATENTS. 
 
 particular description of machine, and further the plaintiffs had 
 always gone a little before the defendants in reducing their 
 prices, and so continually kept the prices lower than that quoted 
 by the defendants. 
 
 In The American Braided Wire Co. v. Thomson {m), the patent 
 infringed was one for the manufacture of a particular form of 
 bustle ; no one else being able to put a similar bustle on the 
 market without infringing that patent, the plaintiffs did not 
 reduce their prices until compelled to do so by the defen- 
 dants, and then only reduced them to the level quoted by the 
 defendants ; the official referee in his finding said : " But for the 
 defendants' competition and their selling at lower prices the plain- 
 tiffs would, subject to the allowances mentioned in paragraphs 2, 
 3, and 4, have made the sales made by the plaintiffs, and also 
 those made by the defendants at the plaintiffs' original prices." 
 Taking all these circumstances into consideration, the Court of 
 Appeal held that tbe finding of the official referee was reasonable 
 and fair, and that the plaintiffs were entitled to the fuU amount 
 so found, including the loss of profit arising from the competition 
 of the defendants. 
 
 In estimating damages, the Court will inquire into the extent 
 of infringement and the amount of goods manufactured by the 
 defendant, cai-e being taken to distinguish this inquiry from that 
 as to sales and profits. 
 
 In the United Horse-nail Co. v. Steirart (;?), a Scotch ease, tbe 
 Lord Ordinary (Kinnear) said : — " It appears to me to be a fair 
 enough ground for estimating their damages to take the whole 
 profits which they would have made upon the sales actually made 
 by the defenders, if the defenders had not interfered so as to 
 prevent the pursuers effecting those sales themselves. That 
 would mean the difference between the cost of manufacture and 
 the prices at which they were selling at the time to their agent." 
 In Ungar v. Sugg (o), Wright, J., said : "No one can 
 doubt that in this case there was substantial damage, and the 
 difficulty and impossibility of stating the precise ground for 
 assessing it at any particular figure, does not seem to be a 
 
 (r/i) 7 P. 0. R. 152. Tootal Broadhurst Co., 11 P. 0. R. 176. 
 
 (71) 3 P. 0. R. 143 ; see also Soyce v. (o) 8 P. 0. R. 385, 388. 
 
THE EEMRDY — DAMAGES. 263 
 
 sufficient reason for giving only a nominal sum," and Lord 
 Esher, M.R., in the Court of Appeal, said (^;) : "They were 
 problematical damages, and had to be what is called guessed at : 
 that is, not a mere guess, as if you were tossing up for the thing, 
 but it must come to a mere question of what, in the mind of the 
 person who has to estimate them, was a fair sum." 
 
 The fact that only part of the machine is an infringement 
 is immaterial, since each thing produced by the assistance of such 
 part is itself an infringement of the plaintiff's patent, and to that 
 extent occasions damage by interfering with the plaintiff's 
 trade (q). 
 
 Where bills to restrain the infringement of a patent have been 
 filed against both the person who manufactures, and the person 
 who uses the article, and issues of fact have been found for the 
 plaintiff, it is the right of the plaintiff to have, not only an 
 account against the manufacturer, but also damages against the 
 person using the article, wherever it be found (r) . 
 
 The fact that a patentee has recovered judgment and damages 
 against a manufacturer of infringing articles, does not preclude 
 him from taking further proceedings against the purchasers of 
 infringing articles from such manufacturer (s). 
 
 Where licences have been granted, no account will be taken of 
 profits which have been lost by reason of competition (t). 
 
 In Penii v. Jack (u) the plaintiff was not in the habit of 
 manufacturing himself under his patent, but granted licences for 
 the use of the invention. Sir W, Page-Wood, Y.-C, fixed the 
 amount of damage at the amount which would have been 
 received had the defendant been working under a licence. 
 
 In aid of the inquiry as to damages, directed by the judgment 
 for a perpetual injunction, the defendant must give full discovery, 
 and will be required to set out the names and addresses of the 
 persons to whom machines, made in infringement of the patent, 
 
 {2}) 9 P. 0. E. 113, 117. 4 P. 0. R. at p. C6. 
 
 (q) United Horse-shoe and Nail Co. (t) Penn v. Jack, L. P., 5 Eq. at 
 
 V. Stevxirt, 5 P. 0. R. 264. p. 85. 
 
 ('/■) Headnote to Penn v. Bilby, L. («) Ibid. ; see also United Telephone 
 
 R., 3 Eq. 308. Co. v. Walker, 4 P. 0. R. 63. 
 
 is) United Teleflioni' Co. v. Walker, 
 
264 THE LAW OF PATEXTS. 
 
 have been sold ; but not the names of the agents concerned in 
 the transaction (x). 
 
 ACCOr>'T OF SALES A>T) PROFITS. 
 
 In cases ■where it is deemed to the advantage of the plaintiff, 
 he may elect, in lieu of damages, to take an account of sales and 
 profits ; that is, to condone the infringement upon the footing 
 that the defendant has been acting as the plaintiff's agent in 
 selliog or using the invention (y). 
 
 An inquiry as to profits is one which involves many questions 
 of great difficulty (s), and in consequence is usually attended by 
 a great expenditure, both of time and money, " therefore, although 
 the law is that a patentee has a right to elect which course he 
 will take, as a matter of business he would generally be inclined 
 to take an inquiry as to damages, rather than launch upon an 
 inquiry as to profits " (a). 
 
 The plaintiff will not be allowed to claim an account if he has 
 tacitly permitted the defendant to infringe his patent, relying 
 upon an ultimate account of profits. In Crosski/ v. The Derby 
 Gas Light Co. [h , Lord Brougham said : — "It is a principle of 
 equity, that a party who claims a right should not lie by, and by his 
 silence or acquiescence induce another to go on spending his money 
 and incurring risk, and afterwards, if profit has been made, come 
 and claim a share in that profilt without having ever been 
 exposed to share in the losses which might have been sustained. 
 Upon this the defendants rely ; but it was to be considered, on 
 the other hand, whether the plaintiff did not explain the delay 
 which has taken place, and whether the conduct of the defen- 
 dants has not been such as to lull the plaintiff's suspicions to 
 sleep." 
 
 Where it appears at the trial that the defendant has made no 
 profit, although the plaintiff may be entitled to damages, he will 
 not be entitled to an account (c). 
 
 {x) Murray v. Clayton, L. Pw., 15 464, 467; 9 P. 0. R. 152. 
 
 Eq. 115. (a) Per Lindley, L.J., in Siddell v. 
 
 (y) Beits v. De Yitre, L. R., 6 H. L. Vickers, 9 P. 0. R. at p. 163. 
 
 319 ; Vnited Horsenail Co. v. Stewart, {b) 1 Web. P. C. 120. 
 
 3 P. 0. R. 143. (c) Bacon v. Spottiswoode, 1 Beav. 
 
 (2) Siddell V. Tickers, 6 P. 0. R. 387. 
 
THE REMEDY — ACCOUNT. 265 
 
 Where the defendant has acted in ignorance of the patent, 
 and before action has offered to submit to an account and to pay 
 to the plaintiff the amount of profits, the Court should exercise 
 its discretion in disallowing costs (d), although it may grant the 
 injunction. In such a case the plaintiff will proceed to an 
 account at his peril, running the risk of nothing being found due. 
 
 Prior to the Judicature Acts it was held a rule in Courts of 
 Equity, that in consequence of the terms of 21 & 22 Yict. c, 27, 
 no relief could be awarded for damages or an account, unless an 
 injunction could be granted at the same time ; all other relief 
 being merely incidental to the injunction (e). Thus, where a 
 patent had expired after bill filed, but before an injunction could 
 be granted, the Court declined to consider the question of 
 damages (/). But now, in pursuance of sect. 24, sub-sect. 6, of 
 the Judicature Act, 1873, a Court of Equity may give full relief; 
 and so, wherever a court of law would, prior to the passing of the 
 Act, have granted damages or an account, similar orders will be 
 made by either branch of the High Court of Justice, irrespective 
 of the question of injunction. 
 
 (d) Minnv. D'Albu,qur^rque,SiBea.v. BauwerCs Patent Candle Co., 4 K. & 
 595 ; Fiedges v. Mulliner, 10 P. 0. R. J. 727. 
 
 21, 28. (/) Beits v. Gallais, L. R, 10 Eq. 
 
 (e) Prices Patent Candle Co. v. 392. 
 
266 THE LAW OF PATENTS. 
 
 CHAPTER XIX. 
 
 REVOCATION. 
 
 "We have seen that the patentee has his remedy in an action 
 for infringement. The public has also a remedy by petition 
 for revocation. 
 
 Sect. 26 of the Act of 1883 provides :— 
 
 " (1) The proceeding hy scire facias to repeal a patent is hereby 
 abolished. 
 
 " (2) Revocation of a patent may he obtained on petition to 
 the Court. 
 
 " (3) Every ground on which a patent might, at the commence- 
 ment of this Act, be repealed by scire facias shall be available by 
 way of defence to an action for infringement^ and shall also be a 
 ground of revocation. 
 
 " (4) A petition for revocation of a patent may be presented 
 by : — 
 
 "{a) The Attorney-General in England or Ireland, or the 
 
 Lord Advocate in Scotland. 
 " (b) Any 2ierson authorised hy the Attorney- General in England 
 
 or Ireland, or the Lord Advocate in Scotland. 
 " (c) Any person alleging that the jxitent icas obtained in fraud 
 of his rights, or of the rights of any ^wrson under or 
 through whom he claims. 
 " (d) Any person alleging that he, or any person under or 
 through whom he claims, was the true inventor of any 
 invention included in the claim of the patentee. 
 " (e) Any person alleging that he, or any 2)erson under or 
 through whom he claims an interest in any trade, busi- 
 ness, or manufacture, had publicly manufactured, used 
 or sold within this realm before the date of the patent 
 anything claimed by the patentee as his invention. 
 
REVOCATION. 267 
 
 " (5) The plcdntiff mmt deliver with his petition particulars 
 of the objections on which he means to rely, and no evidence 
 shall, except hij leave of the Court or a judge, he admitted in 
 proof of any objection of ichich particulars are not so delivered. 
 
 " (6) Particulars delivered may be from time to time amended 
 by leave of the Court or a judge. 
 
 " (7) The defendant shall be entitled to begin and give evidence 
 in support of the patent, and if the plaintiff gives evidence im- 
 peaching the validity of the patent the defendant shall be entitled 
 to reply. 
 
 " (8) Where a patent has been revoked on the ground of fraud 
 the comptroller may on the application of the true inventor, made 
 in accordance with the provisions of this Act, grant to him a 
 patent in lieu of and bearing the same date as the date of re- 
 vocation of the patent so revoked, but the patent so granted shall 
 cease on the expiration of the term for which the revoked patent 
 was granted." 
 
 Practically speaking, scire facias had fallen into desuetude 
 before the passing of this Act ; other methods of disputing the 
 validity of patents were found, or thought to be, more to the 
 advantage of persons opposing them. It is presumed, however, 
 that the new procedure will find more favour, being simpler, 
 more speedy, and more similar to the ordinary action for in- 
 fringement than the old action of scire facias. 
 
 The grounds upon which a patent may be revoked are similar to 
 those upon which it might have been cancelled by scire facias (a) . 
 These are in the Fourth Institute said to be : " Firstly, when 
 the king by his letters patent doth grant by several letters 
 patent one and the selfsame thing to several persons, the former 
 patentee shall have a scire facias to repeal the second patent ; 
 secondly, when the king granteth anything that is grantable 
 upon a false suggestion, the king by his prerogative jure regio 
 may have a scire facias to repeal his own grant. When the king 
 doth grant anything, which by law he cannot grant, he jure regio 
 (for the advancement of justice and right) may have a scire facias 
 to repeal his own letters patent." 
 
 And it was held in Sir Oliver Butler's case (b), that "where a 
 
 (a) 4 Inst. 88. {b) 2 Vent. 344. 
 
268 THE LAW OF PATENTS. 
 
 patent is granted to the prejudice of the subject, the king, of 
 right, is to permit him on his petition to use his name for the 
 repeal of it in a scire facias at the king's suit, and to hinder mul- 
 tiplicity of actions upon the case." 
 
 Thus it will be seen that formerly any person might, on behalf 
 of the public, proceed by scire facias to repeal a patent, although 
 security for costs was required. Sub-sect. 4 of sect. 26 has very 
 considerably narrowed and limited this general right. 
 
 Practically speaking, any ground which may be set up as a 
 defence to an action for infringement may be employed as a ground 
 for revocation — such as that the person to whom the letters patent 
 were granted was not the first and true inventor, or that the in- 
 vention was not new or useful, or that it was not true that the 
 invention had not been practised before, or that the said inven- 
 tion did not come within the meaning of the words " a new 
 manufacture," or that the specification was insufiicient and did 
 not disclose the nature of the invention. 
 
 The petition is to be presented to the High Court of Justice in 
 England or in Ireland. By sect. 109 it is provided : (1) " Proceed- 
 ings 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 he given on just cause shown only.'' And 
 in respect to Ireland we find that, by sect. 110, ** All parties 
 shall, notivithstanding anything in this Act, have in Ireland their 
 remedies tender or in respect of a patent as if the same had been 
 granted to extend to Ireland only." 
 
 Only persons who come within the provisions of clauses c, d, 
 and e, of sect. 26, sub-sect. 4, are entitled to present a petition 
 for revocation as a matter of right ; care, however, must be 
 exercised to frame the petition under the proper clause. 
 
 In re Avery's Patent (c) was a petition for revocation pre- 
 sented under clause c; it was held by Stirling, J., and the 
 Court of Appeal, that this applied only to cases of actual fraud, 
 and would not be extended to questions of mistake, though the 
 consequences might be to deprive the inventor of his patent 
 rights. Cotton, L. J., said : — " If it is made out that the 
 (c) L. R., 36 Ch. D. 807. 
 
REVOCATION. 269 
 
 present petitioner Avery is a person who brings himself within 
 that clause, and satisfies the Court that the patent was obtained 
 in frand of his rights, then we should have to go into the other 
 question, namely, whether the patent is or is not good " . 
 
 (at p. 325), " an act, to be ' in fraud of his rights,' to my 
 mind must involve an attempt by the agent to deprive the prin- 
 cipal of something, or to gain for himself something at the ex- 
 pense of his principal." The petition consequently was dismissed, 
 but without prejudice to the right of the petitioner to present a 
 fresh petition framed under clause d. 
 
 A person who is entitled to present a petition for revocation 
 without the necessity of first obtaining the fiat of the Attorney- 
 General, may rely upon any lawful ground whereby to impeach 
 the validity of the patent in question, and is not confined to the 
 ground upon which his title to present the petition is based {d). 
 
 Where a patent is revoked on the ground that it was obtained 
 in fraud of the rights of the petitioner, the Court will decree 
 that a fresh patent for the invention should be granted to the 
 petitioner (<?). 
 
 All persons beneficially interested in the patent must be made 
 parties to the petition (/). 
 
 No petition for revocation will lie in respect of a patent granted 
 for an invention which the Secretary of State has certified should 
 be kept secret in the interest of the public service {g). 
 
 Should a person desire to present a petition for revocation, not 
 being entitled to do so under clauses c, d, or e, he must first obtain 
 the fiat of the Attorney-General ; in order to obtain the fiat the 
 following documents must be lodged with the Attorney-General's 
 clerk : — 
 
 1. A memorial drawn up on judicature paper setting out the 
 history of the case and the grounds upon which the application is 
 based; where there have been proceedings taken for infringe- 
 ment, these and their result must be mentioned. This memorial 
 
 (rf) In re Morgan's Patent, 5 P. 0. (/) In re Avery's Patent, 4 P. 0. R. 
 
 R. 186. 159. 
 
 (e) In re Gale's Patent, 8 P. 0. K. {g) 46 & 47 Vict. c. 57, s. 44, 
 
 438 ; In re Avery's Patent, L. R., 36 sub-s. 9. 
 Ch. D. 326. 
 
270 THE LAW Oh' PATENTS. 
 
 must be accompanied by all specifications and documents 
 referred to. 
 
 2. A declaration by the petitioner verifying the statements 
 in the memorial ; this also should be upon judicature paper. 
 
 3. Two copies of the proposed petition on brief paper. 
 
 4. Two copies of the particulars of objections. 
 
 5. A certificate by counsel on foolscap, that in his opinion the 
 petition is a proper one for the grant of the fiat of the Attorney- 
 General. 
 
 6. A certificate by a solicitor that the applicant is a proper 
 person to present the petition, and that he is competent to 
 answer the costs of all proceedings in connection with the 
 petition. 
 
 7. A declaration by the applicant that the questions proposed 
 to be raised by the petition, are not, and cannot be raised in any 
 legal proceedings then pending in the United Kingdom (h). 
 
 The fees payable on lodging these documents amount to 
 21. 13s. id. 
 
 It is submitted that the seventh of the above-mentioned 
 documents, is one which ought not to be insisted upon by the 
 Attorney- General, since if the fiat is to be refused when an action 
 for infringement is pending and the questions proposed to be raised 
 will in consequence be then considered, the public may be de- 
 prived of one of the greatest benefits which arise from the pro- 
 visions of the legislature for the revocation of patents, for although 
 the defendant may be successful in the action brought against 
 him for infringement, it will still remain open to the patentee 
 to amend his specification by abandoning a portion of his claim, 
 and subsequently to bring a fresh action against the same de- 
 fendant for infringement of the patent as amended ; thus if the 
 public are to be deprived of the power to revoke a patent 
 simply because an action for infringement may be pending, in 
 such a case as that stated above, a man against whom the 
 action is brought either will be liable to a succession of actions 
 or at the least will have to incur the expense of two actions, 
 first as defendant in the infringement action, and secondly as 
 
 (A) For tonus of tliefic documents see Appendix D. 
 
REVOCATION. 27l 
 
 petitioner for revocation, to enable him to carry on his business 
 in security (t), whereas by replying to an action brought against 
 him by presenting a petition for revocation, the two actions would 
 be consolidated into one, as was done in the recent case of Weir 
 V. Denny (k), and the validity of the patent would be decided 
 once and for all. 
 
 The Attorney-General has absolute discretion in granting or 
 refusing his fiat ; if the applicant shows sufficient interest, and 
 makes out a good case, the Attorney- General will grant his fiat 
 without hearing the patentee (/), but in some cases he will direct 
 notice to be given to the persons interested in the patent, and will 
 hear both parties and give his decision in the ordinary way (w) ; 
 Sir H. James, A.-G., decided that he had no power under sect. 
 38 to give costs in these cases (n). 
 
 The form of the fiat of the Attorney- General will be found in 
 the Appendix of Forms. 
 
 There are no provisions in the Patents Acts or elsewhere re- 
 gulating the procedure in a petition for revocation, not even for 
 filing an answer on the part of the patentee. 
 
 The practice is to take out a summons for directions, nominally 
 for hearing, whereby the respondent is compelled to appear ; a 
 patent may be revoked at this stage when a clear case is made 
 out (o), but the usual course is for the judge to give directions as 
 to the filing of an answer, and also as to interrogatories, in- 
 spection, discovery, etc., and the manner of trial, after which the 
 petition stands adjourned. 
 
 Where the patentee or other person interested in the patent is 
 out of the jurisdiction, notice must be given to such person that 
 
 (i) This occurred in Re Deeleifs {I) Goulard and Gihbs Patent, Griff. 
 
 Patent; for report of the infringement P. C. 320; RothicelVs Patent, Griff, 
 
 action see Westley Richards v. Perkes, P. C. 320. 
 
 10 P. O. R. 181, 382 ; for proceedings (m) Bell dj Coleman's Patent, Gritf, 
 
 on application for leave to amend the P. C. 320 ; Martin's Patent, Griff. P. C. 
 
 patent, Deeley's Patent, 11 P. 0. R. 72. 320 ; SiddclVs Patent, Griff. P. C. 320 ; 
 
 The petition for revocation was heard JFatling's Patent, Griff. P. C. 320. 
 
 in December, 1894, before Romcr, J., (;!■) Martin's Patent, Griff. P. C. 320. 
 
 in wliich judgment was given for the {o) Vaisey's Patent, 11 P. 0, R. 
 
 petitioner, 12 P. 0. R. 65. 591. 
 
 {k) 11 P. 0. K. 657. 
 
272 THE LAW OF PATENTS. 
 
 the petition has heen presented {p), as the Court will not decree 
 the revocation of a patent without giving all interested parties an 
 opportunity of being heard, but the mere fact that the patentee 
 is out of the jurisdiction will not prevent the institution of pro- 
 ceedings for revocation {q), 
 
 A respondent residing out of the jurisdiction will not be 
 ordered to give security for costs (r). 
 
 The practice as to particulars is precisely similar to that in 
 an action for infringement. It will, however, be observed that 
 the judge has no power of certifying under sect. 31 that the 
 validity of the patent came in question, nor will a certificate 
 granted in a previous action for infringement affect the question 
 of costs in proceedings for revocation, the words of sect. 31 being 
 " in any subsequent action for infringement." 
 
 Section 100 of the Judicature Act defines " pleading " as in- 
 cluding any petition or summons, and also as including the state- 
 ments, in writing, of the claims or demand of any plaintiff, and 
 of the defence of any defendant thereto, and of the reply of the 
 plaintiff to any counter-claim of a defendant. 
 
 Order XXXI. r. 1 of the rules of the Supreme Court, gives 
 power to the Court, or a judge, to permit interrogatories " in any 
 cause or matter,'" to be delivered by either party to the other. 
 It is presumed that leave will be given to the respondent (called 
 defendant in the Patent Act, 1883) to deliver interrogatories to 
 the petitioner, and circumstances may arise when it would be 
 just to permit the petitioner to examine the respondent. The 
 rules as to interrogatories will be similar to those in an action for 
 infringement. 
 
 Section 28, sub-sect. (1), provides that the mode of trial of a 
 petition for revocation shall be similar to that of an action for 
 infringement. 
 
 (;;) DrummoncV s Patent, Q ?. 0. R. 1892, 2 Ch. 462; Kay's Patent, 11 
 
 576 ; L. R., 43 Ch. D. 80 ; La Com- P. O. R. 279. 
 
 pagnie Ginerale d'Eaux Minerales {q) lb. 
 
 Trade Marks, 8 P. 0. R. 446 ; L. R., (r) La Society Anonyme Trade Mark, 
 
 1891, 3 Ch. 451; F. King d- Co.'s 10 P. 0. R. 290; Miller's PaUnt, 11 
 
 Trade Mark, 9 P. 0. R. 350 ; L. R., P. 0. R. 55. 
 
REVOCATION. 273 
 
 And the parties are entitled to have the petition heard as vkd 
 voce evidence (s) . 
 
 The evidence which will be required of the respondent (defend- 
 ant), in the first instance, will be very slight, and will be similar 
 to that which he would give as to the validity of the patent were 
 he plaintiff in an action for infringement. The petitioner will 
 then have to prove the case he alleges in his petition and par- 
 ticulars, and the respondent has the right of reply. It is merely 
 to preserve this right to reply, that the respondent is made 
 practically plaintiff at the trial. 
 
 By virtue of section 19 of the Act of 188'3, in a proceeding for 
 revocation of a patent, the patentee may at any time by leave of 
 the Court apply to amend his specification by disclaimer, conse- 
 quently after a decision has been given in favour of the petitioner 
 in the Court of First Instance, the patentee may, pending 
 appeal, obtain leave of the Court of Appeal to apply at the 
 patent office for leave to strike out any portion of his claim 
 which the judgment of the Court below may have convinced 
 him to be incapable of being supported. But after judgment has 
 been given by the Court of Appeal revoking the patent their 
 power to give leave under section 19 is gone, and in consequence, 
 it is sabmitted that, although only one claim may have been held 
 invalid, the patent is ipso facto revoked and can only be revived 
 by a successful appeal to the House of Lords, who, as we have 
 noticed above, have no jurisdiction to give leave to apply to 
 amend, not being included in the term Court in section 19 of the 
 Act of 1883. 
 
 (s) Gaulardd; Gibhs' Patent, L. R., 34 Ch. D. 396 ; 56 L. J., Ch. 606; 56 
 L. T. 284. 
 
 T. 
 
274 THE LAW OF PATENTS. 
 
 CHAPTER XX. 
 
 ACTION TO RESTRAIN THREATS. 
 
 Sect. 32 of the Patents Act, 1883, provides, " Where any 
 person claiming to he 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, ivas 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." 
 
 Prior to the Act of 1883, the proprietor of a patent might issue 
 threats of proceediags for infringement broadcast without render- 
 ing himself liable to account for any of the damage which he 
 might occasion thereby, provided such threats were made bond 
 fide (a), in such a case the only remedy open to an injured person 
 was to apply for an injunction to restrain the patentee from con- 
 tinuing to threaten him, and in this he could only be successful 
 after showing that the statements made were in fact untrue (b). 
 
 In the case of malicious threats an action for damages lay 
 similar to that of slander of title, when the plaintiff would have 
 to show til at the threat made amounted to a " malicious attempt 
 
 («) Halsey v. Brotherhood, L. R. , {b) Halseyv. Brotherhood, L. E., 15 
 
 15 Ch. D. 514, 517 ; Wren v. Weild, Ch. D. 520. 
 L. R., 4 Q. B 730. 
 
ACTION TO TtESTRATN THREATS. 275 
 
 to injure the plaintiffs by assorting a claim of right against his 
 own knowledge that it was without any foundation (c)." 
 
 The object of sect. 32 was to remedy the hardship we have 
 described, namely that of a man whose business is paralysed by 
 the threats of the proprietor of a patent, without any opportunity 
 being afforded him of putting the question to the test, the section 
 is addressed to the case " of a patentee who causes damage by 
 disseminating threats which he dare not or will not justify by an 
 action, who is willing to wound but yet afi-aid to strike (d)." 
 
 It is immaterial that the threat was made bond fide, the 
 question to be considered is what the defendant said or did, and 
 not what he intended, and if damage is occasioned by the circula- 
 tion of a threat, it is no reply to an action to say that damage 
 was not intended if the threatener does not bring himself within 
 the shelter of the proviso at the end of the section [e). 
 
 " By circulars, advertisements, or otherwise : " — These words 
 have been held to include any document whatever, which either 
 actually or merely by implication contains a threat of legal pro- 
 ceedings (/), whether written by the defendant himself (j/) or his 
 solicitors {h), or in answer to an inquiry made by the plaintiffs (?") ; 
 and the addition of the words " without prejudice" to the docu- 
 ment containing the threat will not absolve the j^erson threatening 
 from liability (A-) ; it would seem that the word " otherwise " 
 includes verbal threats (/). 
 
 The publication of a general warning to the whole world such 
 as, " I have a patent for such and such a machine, proceedings 
 
 (c) Per Blackburn, J., in ]VrcH v. Ill ; Kensington, d-c, Electric Lighting 
 
 Weild, L. R., 4 Q. 15. . at p. 737 ; Co. v. Lane-Fox Co., 8 P. 0. R. 277. 
 Halseyv. Brotherhood, L. H., 15 Ch. (Ji) DrifficM v. Waterloo, d-c. Co., 3 
 
 D. 519. P. 0. R. 46 ; L. R., 31 Ch. D. 638 ; 
 
 {(I) Per North, J., in Day v. Foster, Combined, d-c. Co. v. Automatic, die. 
 
 7 P. 0. R. 60 ; see also Challendcr v. Co., 6 P. 0. R. 502 ; Bay v. Foster, 7 
 
 Boyle, L. P., 36 Ch. D. 439, 440 : P. O. R. 54, 59 ; Johnson v. Edge, 9 
 
 Skinner v. Pernj, 10 P. 0. R. 5, 6. P. 0. R. 142. 
 
 (e) Day v. Foster, 7 P. 0. R. 58; (0 Skinner v. Perry, 10 P. 0. R. 1, 
 
 Skinner v. Perry, 10 P. 0. R. 8. 7 ; also Challender v. lioyle, L. R., 36 
 
 (/) Skinner v. Perry, 10 P. 0. R. Ch. D. 425. 
 1 ; also Crampton v. Patents Invest- C/^ Kurtz v. Spenee, 5 P. 0. K. 161, 
 
 mentCo., 5 P. 0. R. 393. 173. 
 
 [g) Walker v. Clarke, 4 P. 0. R. (/) Ungar v. Sugg, 6 P. 0. R. 337. 
 
276 THE LAW OF PATENTS. 
 
 will be taken against any person who infringes it " — will not be 
 actionable (m), but should such warning amount by implication 
 to a suggestion that the manufactures of a certain person are 
 infringements of the patent referred to, and be circulated in the 
 trade to the detriment of such manufacturer, an action will lie 
 under the 32nd section. 
 
 In ChaUender v. Royle, Bowen, L. J., said : — " Suppose that a 
 manufacturer is making and issuing machines which the patentee 
 considers to be infringements of his patent, and the patentee 
 issued a threat really directed against the manufacture and sale 
 of those machines, I do not think he could escape from the 
 section by wording his notice in such terms that according to 
 the letter it was only a general warning to all persons not to 
 infringe his patent (>0-" 
 
 In the same case the same Lord Justice in his judgment 
 suggested that the language of sect. 32 would not apply to 
 threats relating to future infringements. Commenting upon that 
 portion of the Lord Justice's judgment in Johnson v. Edge, 
 Lindley, L.J., said : " I should like to qualify tliat a little by 
 sajdng that I think upon the true construction of this section, the 
 section might apply to an intended infringement, provided that 
 you could make out that the intended infringement, if carried 
 out, would be an actual infringement (o)," and Kay, L.J., in the 
 same case said : " I can easily conceive one case of future 
 infringement which would come entirely within the mischief 
 which this section was intended to provide against. For 
 instance, take this case ; suppose a man issued a circular sapng : 
 ' I have a patent for such and such an article, I understand 
 that Messrs. A. & Co. have recently erected a large manufactory 
 for the purpose of manufacturing articles which, when made, will 
 be an infringement of my patent.' Can it be said that a case 
 like that would not come within the mischief intended to be 
 provided against by this section {j)) ? " 
 
 (m) Johnson v. Edge, 9 P. 0. R. 149 ; The Fusee Vesta Co. v. Bryant <fc 
 
 149 ; also ChaUender v. Eoyle, L. R., May, 4 P. 0. R. 191. 
 36 Ch. D. 441 ; Vwjar v. Sugg, 8 P. (o) 9 P. 0. R., at p. 148. 
 
 0. R. 388. {p) lb., at p. 149 ; see also Kurtz w. 
 
 (w) L. R., 36 Ch. D. 441 ; see also Spence, 5 P. 0. R., at p. 171. 
 Johnson v. Edge, 9 P. O. R. 142, 148, 
 
ACTION TO RESTRAIN THREATS. 277 
 
 " Any person or persons aggrieved : " — The right of action 
 under the section is not limited merely to the person threatened, 
 hut any person to whom damage is occasioned by the issue of the 
 threats is entitled to relief ; so where circulars were issued to the 
 trade intimating that the articles manufactured and sold by the 
 plaintiff were infringements of the defendants' patent and that 
 proceedings would be taken against any person dealing with such 
 articles, and in consequence injury was done to the plaintiff's 
 business, it was held that the plaintiff was a person aggrieved 
 and could maintain an action although no threats were made to 
 him personally (q). 
 
 " If the alleged manufacture, &c. : " — In an action brought 
 under this section the validity of the patent may be put in issue. 
 In Challender v. Roijle, Cotton, L.J., said ; " In my opinion 
 .... the question whether the patent of the person making the 
 threats is a valid patent must come into consideration if the 
 plaintiff in the action seeks it, because I cannot see how, if a 
 patent is invalid, there can be any act done in infringement of a 
 legal right when the legal right depends only on the validity of 
 that patent (r)." 
 
 To constitute a defence to an action under this section, not only 
 must it be shown that the act complained of was an infringement 
 of the patent in question, but also that it was an infringement of 
 the legal rights of the defendant, that is to say, the defendant 
 must be the legal owner of the patent and not merely possessed 
 of a beneficial interest ; so in The Kensington, Sfc, Electric Light 
 Co. V. Lane-Fox Co. (s), where it appeared that an agreement 
 had been entered into whereby the patentee had agreed to assign 
 the patent alleged to have been infringed to the defendant 
 company, but no assignment had in fact been executed, it was 
 held that the defendants having only a beneficial interest in the 
 patent, had no legal right in it capable of being infringed, and 
 consequently the plaintiffs were entitled to judgment without 
 
 (q) Kensington, tt'C. Electric Lighting (r) 4 P. 0. R., at p. 371 ; L. R., 36 
 
 Co. V. Lane-Fox Co., 8 P. 0. R. 277, Ch. D., at p. 435 ; see also Kurtz v. 
 
 279 ; see also Walker v. Clarke, 4 P. Spence, 4 P. 0. R. 427, 430 ; Herr- 
 
 0. R. Ill, 114 ; Bitrt v. Morgan, 4 P. burger v. Squire, 5 P. 0. R. 581, 589. 
 0. R. 279, 280 ; Johnson v. Edge, 9 (6) 8 P. O, R, 277. 
 
 P. 0. R, 142, 145. 
 
278 THE LAW OF PATENTS. 
 
 enteriug into the consideration of the validity or invalidity of the 
 patent. 
 
 The clause of section 32 now under consideration is a condition 
 precedent to the right of the plaintiff to recover damages in 
 respect of the threats complained of (t), consequently, prima facte, 
 the burden of proof is on the shoulders of the plaintiff that what 
 he has done is not an infringement of the defendant's patent. As to 
 how far he must establish this will depend upon the facts of each 
 particular case (it). 
 
 " Provided that this section shall not apply, &c. : " — In this 
 proviso lies the most important part of the section, and many 
 points arise in its consideration of considerable difficulty. It is 
 proposed to deal with it first in detail, after which the effect of 
 the proviso as a whole will be more easily understood. To take 
 the last portion first, it is necessary that the person making such 
 threats should commence and prosecute an action for infringe- 
 ment of his patent ; it is not clearly provided against whom the 
 action is to be brought, nor whether an action for a different form 
 of an infringement from that complained of would be sufficient, 
 and in the decided cases alone can an interpretation be found. 
 As has been pointed out above, the beneficial owner of a patent 
 cannot shelter himself under the saving clause ; for similar reasons 
 an action brought by the legal owner for infringement of his 
 patent will not be such an action as to entitle the beneficial 
 owner to the benefit of the proviso in an action in restraint of 
 threats brought against him by alleged infringers {x). The action 
 must be in respect of infringements which were alleged in the 
 threats circulated by the patentee {//), and must be brought 
 against some one of the persons threatened (s). 
 
 In U(i// V. Fodcr (a) the plaintiff", after threatening the 
 defendant, who was a licensee under the plaintiff''s patent, 
 and also Messrs. Banrtt 1^ Elers, brought an action against the 
 
 (<) Banicij V. U ailed Telephone Co., Jutomatic, (tc. Co., L. R., 42 Cli. D., 
 
 2 P. 0. R. 174. at p. 670. 
 
 {u) Challouler V. RoyJe, 4 1'. O. R.. {z) Challeiider y. Moylc, 4 P. 0. R., 
 
 at p. 371. at p. 373; L. R., 36 Ch. D. at p. 
 
 {x) Kensiwjtoii, d:c. Electric Lighl 439. 
 Co. V. Lane-Fox Co., 8 1^ 0. R. 277. ("-^ 7 V. O. li. TA. 
 
 (y) Cmnhincd We/yhuiy, <Lt. Cn. v. 
 
ACTION TO RESTKAIN THREATS. 279 
 
 derfendant for infringement and royalties; he being a licensee, 
 was unable to dispute the validity of the patent, and, consequently, 
 Messrs. Barrett Sf Elers were anxious to be joined as co- 
 defendants to the action. This being refused by the plaintiff, 
 they instituted proceedings under section 32. North, J., held 
 that the action of Day v. Foster was an action for infringement 
 within the meaning of the proviso, and in accordance with the 
 interpretation laid down by Cotton, L.J., in ChaUeiider v. Royle 
 {supra) : "That in order to bring the case within the proviso the 
 action must be an honest action, honestly brought in order to test 
 the validity of the patent, or the fact of infringement, whichever 
 may be in question ; " and in consequence held that the action 
 was vexatious, and directed that all further proceedings in it 
 should be stayed. 
 
 As is pointed out in the judgment of Cotton, L.J., quoted 
 above, the action must be brought bona fide {b), and the onus of 
 proof rests on the other party to show that the action was not in 
 fact an honest one (r). 
 
 " With due diligence commences and prosecutes." — In con- 
 sidering whether such an action is brought with due diligence, 
 the time of issuing the threats, and not the time when the party 
 bringing the action first knew of the acts which he alleges to be 
 infringements, is the period to be looked at (d), and it is 
 immaterial whether the action is brought before or after the 
 commencement of the threats action (e). 
 
 Where threats of proceedings were made by the patentee to 
 another for the space of three years, after which continuous 
 negotiations took place between the parties and further com- 
 plaints made, it was held that an action for infringement brought 
 on the termination of those negotiations by the patentee disclosed 
 no lack of due diligence (/). 
 
 The section does not require that the action should be prose- 
 
 (6) Cliallender v. Royle, L. R., 36 P. 0. R. 60. 
 Ch. D. 438, 439 ; 4 P. 0. R. 373, (c) Combined Weighing- Machine Co. 
 
 375 ; Day v. Foster, 7 P. 0. R. 60 ; v. Automatic, cfec. Co., 6 P. 0. R. 502 ; 
 
 Colley V. Hart, 7 P. 0. R. 112. Challender v. Royle, supra. 
 
 (c) Colley y. Hart, 7 P. 0. R. 112. (/) Edlin v. Pneumatic Tyre, d-c, 
 
 [d) Challender v. Royle, L. R., 36 Agcnqi, 10 P. O. R. 311, 
 Ch. D. 42.y. 437 ; Day v. F stcr, 7 
 
280 THE LAW OF PATENTS. 
 
 ciited to a successful termination, the bona fide institution of 
 proceedings for infringement being held to be sufficient. 
 
 In CoIIey v. Hart (g) the facts were as follows : On the 15th 
 September, 1888, the defendant issued a circular, threatening 
 proceedings against the plaintiff, amongst others. On the 22nd 
 of the same month the plaintiff commenced an action to restrain 
 the threats of the defendant ; on the 6th December the defendant 
 commenced an action for infringement against the plaintiff, 
 and delivered particulars of infringement in February in the 
 following year, and on the 13th May delivered his statement of 
 claim. On the 7th of November, after the close of the pleadings, 
 but before trial, the defendant abandoned his action for infringe- 
 ment. It was held that this action had been prosecuted with due 
 diligence within the meaning of the proviso in section 32. In 
 his judgment, North, J., said : "Under those circumstances, of 
 course, he is exactly in the same position by discontinuing a 
 hopeless action before trial as he would have been in if he had 
 prosecuted it to trial, and had then failed. As failure at the 
 trial would not have prevented the action being one within the 
 proviso, so, in my opinion, the discontinuance before trial does not 
 put him in a worse position than if he had carried it to trial " (h). 
 
 In The English and American Machinery Co. v. The Gare 
 Machine Co. (i) the facts were very similar to those in Co/ley v. 
 Hart [sapra), but in this case the defendants abandoned their 
 infringement action before delivering their reply. It was held 
 by Chitty, J., approving of the decision of North, J., in the earlier 
 case, and upon the same grounds, that due diligence had been 
 exercised in the prosecution of the action for infringement. 
 
 It is difficult to say how far the above reasoning might be 
 carried, whether the mere serving of a writ would be held to 
 amount to prosecuting with due diligence, or is it necessary to 
 deliver a statement of claim ? No doubt the circumstances of the 
 case must be the guide. As has been pointed out above, bona 
 fides is required, and if that is shown to be absent, no action 
 would be sufficient ; but if, on the other hand, the Court considers 
 that the person making the threats did commence his action 
 
 ('j) 7 P. 0. R. 101. (i) 11 P. 0. R. 627. 
 
 {h) Atp 111. 
 
ACTION TO RESTRAIN THREATS. 281 
 
 bona fide, and with due diligence, a very slight amount of 
 prosecution, probably, would take the case out of the operation of 
 the section (k). 
 
 But where the defendant showed great delay in taking pro- 
 ceedings for infringement, in accordance with his threats, and, 
 further, it appeared that he only took such proceedings in order to 
 escape from the liability to which he had exposed himself by 
 reason of those threats, it was held that such proceedings were not 
 sufficient to satisfy the proviso (/). 
 
 If an action to restrain threats has been commenced and 
 stayed pending an action for infringement, and the action for 
 infringement is not prosecuted with due diligence, an injunction 
 will be granted upon the first action, and the stay removed {in). 
 
 In The Fusee Vesta Co. v. Bryant 8f May {n) the action, which 
 was one for infringement of the plaintiff's patent, was stayed, 
 pending the amendment by the plaintiffs of their specification ; 
 during the stay, and prior to amendment, the plaintiffs circulated 
 post- cards among the customers of the defendants, threatening 
 legal proceedings. On a motion by the defendants for an 
 injunction to restrain such threats, Kay, J., granted the injunc- 
 tion applied for to extend to the trial of the action, or further 
 order, the plaintifis to pay the costs of the motion. 
 
 The effect of commencing and prosecuting an action fur 
 infringement with due diligence is to nullify the whole of the 
 section, that is to say, its provisions cease to apply, and the 
 rights of the person threatened are confined to those which 
 existed prior to the Act of 1883 (o). What those rights were 
 has already been indicated at the commencement of the present 
 chapter; there it was pointed out that damages could only 
 be recovered when the threats were malicious, but since the action 
 to satisfy the proviso must be a bona fide one, and, in fact, it has 
 been suggested that that action was required as a sort of test 
 
 {k) But see Crampion v. Patents 0. R. 140, 142. 
 
 Investment Co., 5 P. 0. E. 382, 393. («) 4 P. 0. R. 191. 
 
 (I) Johnson v. Edge, 9 P. 0. R. 142, (o) Combined WeigJiincj, d-c. Co. v. 
 
 146; see also Herrhurger v. Squire, 5 Automatic, (kc. Co., L. R., 42 Ch. D. 
 
 P. 0. R. 581, 594. 665 ; Colleij v. Hart, 7 P. 0. R. 101 ; 
 
 {m) Household v. Fairhurn, 2 P. Daij v. Foster. 7 P. 0, R. 60. 
 
282 THE LAW OF PATENTS. 
 
 whether the threats were bona fide or not [p), it would be 
 practically impossible to recover damages upon the plea that the 
 threats were in fact malicious. The result is that in such a case 
 the only course open to persons threatened, where the action for 
 infringement has been dropped, as in Collcy v. Hart {mprci), 
 and the question of infringement never tested in the Court, is to 
 apply for an injunction to restrain the further issue of threats, 
 but it is doubtful whether such an injunction would be granted 
 under the circumstances, since, it being presumed that the threats 
 wei'e bona fide, the abandonment of the proceedings for infringe- 
 ment would imply, of necessity, that those threats would not be 
 continued, and it has already been pointed out ((?) that injunc- 
 tions are only granted where there is a probability of the 
 continuance of the acts comjjlained of. Moreover, in the event 
 of the renewal of the threats, the right of action under section 32 
 would be at once revived. 
 
 Where an action for infringement has been commenced after 
 the institution of proceedings under section 32, the proper course 
 for the parties in the latter action to pursue was indicated by 
 Kekewich, J. (r). The patentee should take steps to get rid of 
 the threats action, or to put a stay upon it, so that no unnecessary 
 cost should be incurred, and in that case, where it appeared that 
 the patentees had insisted upon having the threats action set 
 down for trial and disposed of, the learned Judge, at the close of 
 his judgment, said : " If I could with propriety make them (the 
 patentees) pay the costs, I should be disposed to do so. I 
 cannot do that. I dismiss the action, but 1 certainly shall dismiss 
 it without costs." 
 
 The effect of section 32, taken as a whole, is not to deprive 
 a patentee of the power, or it may be termed the duty (s), 
 of warning infringers before rushing into litigation, but it does 
 limit that power to one class of patentees, that is to say, only a 
 man who is in possession of a patent which he is willing and 
 
 {p) Challemler v. Royle, L. E., 36 Automatic, dx., Co., L. R., 42 Ch. D. 
 
 Ch. D., at p. 439. 665. 
 
 [c]) Cha}). XVIII. ; see also Smjij v. (s) Per Jessel, M.R., iu Halsey v. 
 
 Bray, 2 P. 0. K., at p. 246. Brotherhood, L. R., 15 Ch. D., at p. 
 
 (r) Combined IFeif/hiv.i/, <{■€. ( u. v. 517. 
 
ACTION TO KESTUAIN THREAT.S. 283 
 
 intends to su])})ort in a Court of Law may threaten (jthers with 
 legal proceedings in respect of it. A. may be infringing through 
 ignorance, B. through design, but both possibly would desist on 
 receipt of a warning. But when an alleged infringer shows 
 that, in spite of the warnings, he has no intention of desisting 
 from the acts complained of, the patentee must put his threat 
 into execution, by which means alone can he escape liability under 
 the provisions of this section. 
 
 In Challender v. RoyJe (!'),upon the subject of an interlocutory 
 injunction to restrain threats, Cotton, L.J., said: "I think, 
 however, that before going to the proviso I ought, having regard 
 to the judgment of the Yice-Chancellor, to state my opinion a? 
 to how the matter ought to be dealt with in an interlocutory 
 application. As far as I understand the Yice-Chancellor, he 
 seems to have considered that he could not enter, or that he 
 need not enter, at this stage of the cause into the question 
 whether the sale of the plaintiffs' tap-unions was an infringement 
 of the defendant's patent, or whether that patent was a valid 
 patent, and that all he need consider was the balance of con- 
 venience and inconvenience as between these parties in granting 
 or refusing the interlocutory injunction. I must express my 
 dissent from that view. It is very true that in all cases of inter- 
 locutory injunction the Court does consider and ought to consider 
 the balance of convenience and inconvenience in granting or 
 refusing the injunction. But there is another and very material 
 question to be considered — has the plaintiff made out a prima 
 facie case ? That is to say, if the evidence remains as it is, 
 is it probable that at the hearing of the action he will get a 
 decree in his favour ? Therefore, though I quite agree that the 
 Court ought not on an interlocutory injunction to attempt finally 
 to decide the question whether the act complained of is an infringe- 
 ment, or (if the question of the validity of the patent is raised) 
 whether the patent is a valid one or not, yet in my opinion it 
 ought to be satisfied that on one or both of these two points the 
 plaintiff in the actioa has made out a prima facie case, and 
 unless the Court is so satisfied it would be wrong to grant an 
 
 (/) T . i;., :'.6 Cli. D., at ].. 435 ; see also Walker v. Clarke, 4 P. 0. R. 111. 
 
284 THE LAW OF PATENTS. 
 
 injunction merely on the ground that it cannot do the defendant 
 any harm." 
 
 "Where there was a conflict of testimony as to the fact of 
 infringement, the Court refused to grant an interlocutory injunc- 
 tion (u). 
 
 In Colleij V. Hart {a), which was a motion for an interlocutory 
 injunction to restrain threats, North, J., said : " When there is a 
 doubt whether the thing does infringe what he calls his rights 
 or not, the fact that the defendant refrains from bringing an 
 action to assert his rights is a fact I cannot leave out of con- 
 sideration in forming an opinion as to whether he has such 
 rights or not." 
 
 The question of damages generally has already been discussed 
 in an earlier chapter. 
 
 The defendant in an action under this section is entitled 
 to particulars of the threats upon which the plaintiff relies (^), 
 and if the validity of the patent is put in question the general 
 rides relating to particulars of objections will apply {z). Those 
 rules will be considered in detail hereafter. 
 
 Where there was a doubt upon which patents the defendants 
 had based their threats, the Court ordered that the defendants 
 should deliver to the plaintiffs a list of such patents {a). 
 
 And where the plaintiffs alleged that the threats were made 
 by the defendants' agents, it was held that the defendants were 
 entitled to particulars of the names of those agents {b). 
 
 (u) Barney -v. United Telephone Co., 86. 
 
 2 P. 0. R. 173. («) Union Electriccd Power Co. v. 
 
 {x) 6 P. 0. R., at p. 21. Electrical Storage Co., 5 P. 0. R, 
 
 (7/) Laiv V. Ashworth, 7 P. 0. R. 86. 329. 
 
 {z) Union Electrical Power Co. v. {h) Taylor v. The Drosophore Co., 
 
 Electrical Power Storage Co., 5 P. 0. 11 P. 0. R. 536. 
 R. 329 ; Law v. Ashworth, 7 P. 0. R. 
 
( 285 ) 
 
 CHAPTER XXI. 
 
 PRACTICE IN AN ACTION FOR INFRINGEMENT. 
 
 An action for infringement is commenced by writ issued out ot 
 the High Court of Justice. 
 
 Subject to the special provisions of the Patents, &c., Acts, the 
 rules of the Supreme Court apply to actions for infringement of 
 patents and petitions for revocation {a). 
 
 The writ may be endorsed merely for damages for infringement, 
 or for an account of sales and profits, cnid it may be endorsed for 
 an injunction claiming that the defendant may be restrained from 
 continuing to infringe the patent, and for a mandatory order 
 that the defendant may be ordered to deliver up to the plaintiff 
 the articles made in infringement of the patent which are in his 
 custody or power, or in the custody or power of his servants or 
 agents, so that they may be broken up or destroyed (c). The 
 plaintiff may not claim both an account of sales and profits and 
 damages for infringement ; the two claims being inconsistent, 
 since, if an account is taken, the infringement is condoned (d) . 
 
 Service of a writ in Scotland for an infringement in England 
 will be allowed (e). 
 
 STATEMENT OF CLAIM. 
 
 The Rules of Court of 1883 have rendered the form of plead- 
 ings of less importance than hitherto. Ord. XIX. rule 26, 
 
 (a) ffaddan's Patent, 54 L. J., Ch. Be Vitre v. Betts, L. R., 6 H. L. 321 • 
 
 126 ; GrifSn, P. C. lOS. Ncedham v. Oxley, 11 W. R. 852 
 
 (c) Form, p. 470. See Tangye v. But see Hills v. Evans, 4 De G. F. & 
 
 Stott, 14 W. R. 386 ; Betts v. De J. 288. 
 Vitre, 34 L. J., Ch. 289. (c) SpecJchart v. Camphell, Achnach 
 
 {d) Per Lord Westbury in Neilson <£• Co. , Solicitors' Journal, Feb. 2, 
 
 V. Betts, L. R., 5 H. L, 1, See also 1884. 
 
286 THE LAW OF PATENTS. 
 
 provides : " No technical objection shall be raised to any plead- 
 ing on the ground of any alleged want of form ; " but by rule 27 
 the power of the Court to strike out pleadings on the grounds 
 that they are unnecessary, scandalous, or embarrassing, is 
 preserved. 
 
 Ord. XIX. rule 4, requires all material facts to be pleaded, 
 and prohibits the pleading of evidence. Rule 5 is as follows : — 
 " The forms in Appendices (C, D., and E.), when applicable, 
 and where they are not applicable forms of the like character, as 
 near as may be, shall be used for all pleadings, and where such 
 forms are applicable and sufficient, any longer forms shall be 
 deemed prolix, and the costs occasioned by such prolixity shall 
 be disallowed to or borne by the party so using the same, as the 
 case may be." 
 
 The forms mentioned relate to pleadings in an action for the 
 infringement of a patent, but there is no provision made for the 
 case where infringement has only been threatened, nor for the 
 case when a mandatory order or an account of sales and profits is 
 required ( /' ). 
 
 It wUl be observed that the statement of claim in patent cases, 
 which is rendered obligatory by Ord. XIX. rule 5, contains no 
 allegation as to the matters going to constitute the validity of the 
 patent, nor does it give the date, time or place of the infringe- 
 ment ; but it refers to the particulars of breaches which are 
 delivered " herewith." 
 
 PARTICULARS OF BREACHES. 
 
 Particulars of breaches were required to be delivered in every 
 action for the infringement of a patent by sect. 41 of the Patent 
 Law Amendment Act, 1852 ; and now by sect. 29 (1) of the 
 Act of 1883, it is provided : — " In an action for infringement of a 
 patent the plaintiff must deliver with his statement of claim, or hy 
 order of the Court or the judge at any subsequent time, particulars 
 of the breaches complained of ; (4) at the hearing no eridence shall, 
 except by leave of the Court or a Judge, be admitted in proof of any 
 alleged infringement, or objection of which particulars are not so 
 
 (/) See Form, p. 476, et seq. 
 
PAKTT(;UI.Ai;s OF BREACHES. 287 
 
 delivered ; (5) particu/ars delivered may he from time to time 
 amended by leave of the Court or a judged 
 
 Particulars of breaches are particulars of the times, places, 
 occasions, and manner in which the plaintiff says the defendant 
 has infringed his letters patent. The defendant must have full, 
 fair, and distinct notice of the case to be made against him {g). 
 In Batley v. Kynock {h), Sir James Bacon, V.-C, said: "All 
 that is required and provided by the Patent Law Amendment 
 Act, 1852, which has made no alteration in the practice to be 
 observed in these cases, is that the defendants shall not be taken 
 by surprise, and it is the duty of the judge to take care that by 
 the particulars of breaches they shall have full and fair notice of 
 the case that they will have to meet." 
 
 It had undoubtedly prior to the passing of the Patent Law 
 Amendment Act, 1852, been the practice of the Courts to compel 
 plaintiffs to give particulars of breaches, and the cases which 
 were then decided as to the sufficiency of particulars are applic- 
 able now ; for then, as now, the object was that the defendant 
 should be warned with reasonable certainty of the case that was 
 to be made against him. 
 
 The plaintiff cannot be required to place a construction upon 
 his patent in his particulars of breaches («"). 
 
 The requirements of particulars of objections differ materially 
 from those of particulars of breaches. In the case of objections 
 taken by the defendant to the plaintiff's patent, it is essential 
 that each objection should be set out in detail and that the 
 defendant should be tied down to the particular instances of 
 anticipation which he discloses in those particulars, since the 
 objections to be taken by the defendant at the trial cannot 
 otherwise lie within the plaintiff's knowledge, whereas in the 
 case of particulars of breaches, to use the words of Bristowe, 
 y.-C. ik) : " You must always bear this in mind, that the plaintiff, 
 
 {g) Needham v. Oxley, 1 H. & M. {k) Cheetham v. Oldham, 5 P. 0. R. 
 
 248 ; Mandlehercj v. Morley, 10 P. 0. at p. 626 ; see also Talhot v. La Roche, 
 
 R. 2.56. 15 C. B., at p. 321 ; Ledyard v. Bull, 
 
 {h) L. R., 19 Eq. at p. 231. L. R., 11 App. Cas. 648 ; Hadam v. 
 
 {%) TVenham Co. v. Champion Gas Hall, 4 P. 0. R. 206. 
 Co., 8 P. 0. R. 22. 
 
288 THE LAW OF PATENTf^. 
 
 asserting his patent, knows what he claims, and he says, I tell 
 the public according to that which I am bound to do by the 
 specification that which I do claim ; ' and the defendant well 
 knows, or the defendants, as in this case, perfectly well know 
 what they are doing." Consequently to fulfil the object for 
 which such particulars are required, it is only necessary for the 
 plaintiff to indicate what patent or portions of what patent he 
 relies upon, and in what way he considers the defendant to have 
 infringed, and if these two points be made clear without adduc- 
 ing specific instances, that will be sufiicient (/). 
 
 When the patent consists of two or more processes, or distinct 
 and separable inventions, particulars of breaches should distin- 
 guish which of the processes it is alleged has been infringed (m), 
 and should particularly indicate what parts of the defendant's 
 machine or manufactured article are claimed to constitute an 
 infringement (») ; but when the process was one entire invention, 
 the Court declined to compel the plaintiff to point out the par- 
 ticular parts of the specification which were alleged to be infringed. 
 Jervis, C.J., said : " If the two processes described in the specifi- 
 cation arc wholly distinct from each other, and the defendant's 
 process may be an infringement of the one and not of the other, 
 he ought to have better particulars ; but if the whole is sub- 
 stantially one process, he is not entitled to them. . . . We must 
 not make the particulars more complicated than the specifica- 
 tion (o)." 
 
 As a general rule it is not necessary to state the lines in the 
 letterpress of the specification upon which the plaintiff relies, an 
 indication of the claims being all that is required. In Church v. 
 Wilson, Grove, J., said (p) : "It seems to me that the plaintiffs 
 
 (?) Talbot V. La Roche, 15 C. B. 310 
 Needham v. Oxley, 1 H. & M. 248 
 Ledgardv. Bull, L. R., 11 App. Cas, 
 648 ; Egleton v. Nichols, 7 P. 0. R 
 423. 
 
 («i) Church V. Wilson, 3 P. 0. R 
 123 ; Haslumv. Hall, 4 P. 0. R. 203 
 Cheetham v. Oldham, 5 P. 0. R., at p 
 
 hirers'' Co., Seton, 4th Ed. 349. 
 
 (o) Talbot V. La Roche, 15 C. B. 
 310 ; see also Tlie Electric Telegraph 
 Co. V. Nott, 4 C. B. 462 ; Tilghman's, 
 &c. V. Wright, Griff., P. C. 216 ; 1 
 P. 0. R. 103; Egleton v. Nichols, 7 
 P. 0. R. 423. 
 
 (p) 3 P. 0. R., at p. 127 ; see also 
 
 628. Cheetham v. Oldham, 5 P. 0. R,, at p. 
 
 (n) Lamb v. Nottingham Mamifac- 627. 
 
PARTICULARS OF BREACHES. 289 
 
 have given more information indeed than is necessary ; and 
 merely to evolve the information in some other form of words, 
 or to mark the parts of the specification of which they complain, 
 when there are claims, seems to me quite unnecessary. What it 
 might be where the machines are not given or where the specifi- 
 cation has no specific claims, but only a description of the inven- 
 tion and a general claim of novelty, is a very different thing (j)." 
 
 Where the plaintiff's patent is of a simple nature, such for 
 instance as the manufacture of a particular form of cartridge, 
 and the articles made by the defendants must be infringements in 
 every respect or not at all, it has been held sufficient to give one 
 or two specific instances to denote the type of infringement com- 
 plained of coupled with general words, so as not to confine the 
 plaintiff to those particular instances at the trial of the action (/•) ; 
 but general words will not be allowed should they tend to 
 embarrass the defendant (.s). 
 
 Further particulars of breaches will sometimes be postponed to 
 discovery on the ground that the defendant knows the breaches 
 which he has committed better than the plaintiff (t). 
 
 In £lsei/ V. Butler (u), an action for infringement of a patent 
 for " improvements in the manufacture of lace, in twist lace 
 machinery, and in apparatus employed therein," the following 
 particulars of breaches were held by Pearson, J., to be sufficient : 
 — " The defendant has infringed by the production in a twist 
 lace machine, or in twist lace machines, of lace fabrics in the 
 manner described in the specification of the said patent, page 3, 
 line 22 to page 9, line 39, or in a manner only colourably differ- 
 ing therefrom ; and by the use of the improved combination of 
 apparatus therein described, and also in particular by the produc- 
 tion in a twist lace machine, or in twist lace machines, of fabric 
 known as * Double tie Swiss Net ' in the manner described in 
 the specification of the said patent, page 6, line 57 to page 7, 
 
 (q) 'Note Lamb V. NoUinghaniManu- (s) The Patent Type Foundry Co. v. 
 
 facturers' Co., Setoii, 4th Ed. 349. Richard, 2 L. T., N. S. 359 ; Church 
 
 (r) Talbot v. La Roche, 15 C. B. v. Wilson, 3 P. 0. R. 123. 
 
 310 ; BatUy v. Kynock, L. R., 19 Eq. [t) Russell v. Hatfield, Griff. P. C. 
 
 229 ; Tilghman v. Wright, 1 P. 0. R. 204 ; 2 P. 0. R. 144. 
 
 103. {u) Griff. P. C. 96. 
 
 T. ir 
 
2.90 THE LAW OF PATENTS. 
 
 line 38, or in a manner only colourably differing therefrom, and 
 by the use of the improved combination of apparatus therein 
 described." 
 
 Where an action is brought against the vendor of articles 
 alleged to have been made by a process which infringed the 
 plaintiffs' patent, a greater degree of precision is required in the 
 particulars of breaches than if the defendant was the manu- 
 facturer himself. 
 
 In MancUeberg v. Morley {x), Stirling, J., said (y) : " Now if a 
 manufacturer is attacked for infringing a patent by a particular 
 process he does not want to be told in the shape of particulars, 
 or otherwise, what the process is he is using. He knows what 
 the process he is using is. But it is a very different thing with 
 respect to a vendor. The vendor does not know with certainty 
 what process is being used by the person from whom he himself 
 buys, and who manufactures the article." 
 
 In that case the particulars of breaches alleged that : " The 
 plaintiffs complain that each of the said letters patent of the 
 plaintiffs have been infringed by the sale and exposure for sale 
 by the defendants of each of the said garments, known as * The 
 Champion,' and * The Distingue,' and by the sale and exposure 
 for sale of other waterproof garments made by the manufacturers 
 of ' The Champion,' ' The Distingue,' and ' The Tropical Odour- 
 less,' but not bearing their distinguishing names, but which 
 unnamed garments are manufactured by similar processes to the 
 three named garments." It was held that the reference to un- 
 named garments was not sufficiently specific, as it was not clear 
 that the unnamed garments referred to were substantially the 
 same as those which were specifically mentioned. 
 
 If the particulars delivered are too general, the defendant should 
 apply for further and better particulars. 
 
 If at the trial evidence is tendered which comes within the 
 literal meaning of the particulars it will be admitted, not^^^th- 
 standing that the particulars are too general, as the defendant 
 should have objected to the particulars, and not have waited 
 until the trial to take his objection (s). 
 
 (,7j) 10 P. 0. R. 256. {z) Hull v. Bollard, 25 L. J., Ex. 
 
 [y) At p. 260. 304. 
 
PARTICULARS OF BRKA(!HES. 291 
 
 The plaintiff having delivered particulars of breaches specifying 
 certain sales by the defendant of rollers, and in particular to 
 Shaw and Smith, the defendant, in answer to interrogatories, 
 admitted sales to Hirst. Fry, J., in giving judgment, said : 
 " In this case I think I must admit the evidence tendered in respect 
 of Hirst's case. It is said that in respect of those cases which 
 are not mentioned by name in the particulars of breaches, the 
 plaintiff cannot give evidence. It may be that the particulars 
 were not sufficient, or tended to embarrass. But the defendant 
 did not apply for amended particulars, according to the case of 
 HhU v. Bollard. It appears to me I have to inquire what is the 
 meaning of the particulars. I find the case of Hirst is within the 
 literal meaning of the particulars. If I had found that the case 
 of Hirst was likely to create surprise, or likely to introduce any 
 point not raised by Smith's or Shmv's case, I should probably 
 have given an opportunity to the defendant to bring fresh evi- 
 dence. I have asked whether there is any witness not here 
 whom the defendants would desire to bring in respect of Hirst's 
 case, and have received no satisfactory answer on that point, and 
 must assume there is no such witness " {a). 
 
 Conversely where the particulars of breaches complained only 
 of infringement by user, the Court refused to enter into the ques- 
 tion as to whether there had been infringement by manufacturing 
 the articles complained of (^). 
 
 Particulars of breaches, as we have seen, may also be ordered 
 in actions which are not strictly actions for the infringement of 
 patents ; this is done under the ordinary jurisdiction of the 
 Court (c). In an action charging that the defendant falsely and 
 maliciously wrote and told persons who had bought certain 
 machines of the plaintiffs that the machines were infringements 
 of his, the defendant's patents, the defendant having pleaded not 
 guilty, the court ordered the defendant to deliver particulars, 
 showing in what part the plaintiffs' machines were an infringe- 
 ment of the defendant's patents, and pointing out by reference to 
 the page and line of the defendant's specifications, which part 
 
 (a) Sykes v. Howarth, L. R., 12 Ch. 421, 427. 
 D. 826. (c) Ferry v. Mitchell, 1 Web. P. C. 
 
 (6) Henser v. Bardie, 11 P. 0. R. 269. 
 
 U 2 
 
292 THE LAW OF PATENTS. 
 
 of the inventions therein described he alleged to have been 
 infringed (d). 
 
 STATEMENT OF DEFENCE. 
 
 The statement of defence in patent actions is now, under the 
 rules of the Supreme Court, 1883, a very brief and concise docu- 
 ment, giving no particulars or details whatever, and remitting the 
 plaintiff to the particulars of objections and the answers to the 
 interrogatories for information as to the case which is to be made 
 against him. Under Order XIX. rule 5, the form given in 
 Appendix (D.), sect. VI., is rendered obligatory. That form merely 
 gives headings of defence which is all that is to be allowed ; for 
 instance : — " (1) That the defendant did not infringe the patent ; 
 (2) The invention was not new ; (3) The plaintiff was not the 
 first and true inventor ; (4) The invention was not useful ; (5) 
 The patent was not assigned to the plaintiff." And to these 
 might be added : — That the title did not disclose the nature of 
 the invention (e) ; that the title, the provisional specification, and 
 the complete specification, or any two of them, did not substan- 
 tially refer to the same invention (_/') ; that the specification was 
 not suificient (g) ; that the claim in the specification was not 
 sufficient to distinguish what was new from what was old (A) ; 
 that the patent was obtained in fraud of the defendant, as, for 
 instance, when a person employed to carry out or assist in 
 experiments, applies for letters patent himself, or where the 
 patentee has obtained the invention from the confidence of the 
 defendant. 
 
 It will be observed that any one of these defences will be suffi- 
 cient to constitute a complete defence to an action ; and that 
 the greater portion of them are of a nature to require elaborate 
 and costly evidence to prove or disprove them. Too much care 
 cannot, therefore, be taken in preparing a statement of defence 
 to avoid setting up defences which it is not expected will be 
 satisfactorily proved at the trial, regard being had to the pro- 
 visions of the rules of 1883 as to costs ; otherwise, even if the 
 
 (d) Wren v. Weild, L. R., 4 Q. B. (/) Ante, p. 84, et seq. 
 213. {g) Aiite, p. 106, et seq. 
 
 (e) Ante, p. 78, el seq. {h) Ante, p. 116, et seq 
 
STATEMENT OF DEFENCE. 293 
 
 defendant succeeds in the action, he may be mulcted in heavy 
 costs to the other side. 
 
 The defence that the plaintiff was not the first and true in- 
 ventor should not be set up unless it is intended to prove 
 that somebody else was the inventor, as the issue that the in- 
 vention was not new, and in consequence that it was not in- 
 vented by the plaintifi", should be raised under the other headings 
 of defence (^) . 
 
 A statement of defence alleged that if the specification were 
 construed so as to make the defendant an infringer, the claims 
 of invention would be bad for want of novelty, as including 
 matters described in certain specifications (stating them). 
 North, J., refused to strike out par. 2 under Order XIX. 
 rule 27 ; the Court of appeal dismissed the appeal with costs {k). 
 
 A statement of defence admitted infringement in ten in- 
 stances and no more, the plaintiffs elected to move for judg- 
 ment upon such admissions ; held that they were entitled to 
 an enquiry as to damages as to these ten instances of infringe- 
 ment and no more, and that all evidence as to any other instances 
 of infringement alleged to have been committed by the defen- 
 dant must be excluded (/). 
 
 Where the defendants in an action for infringement have 
 been indemnified by another person or company, such other 
 person or company may be joined as a third party under Order 
 XVI. rule 48, of the rules of the Supreme Court {m). 
 
 PARTICULARS OF OBJECTIONS. 
 
 Section 29, sub-sect. (2) of the Act of 1883, provides : — " The 
 defendant must deliver with his statement of defence, or by order 
 of the Court, or a judge at any subsequent time, particulars of 
 any objections on which he relies in support thereof ; (3) If the 
 defendant disputes the validity of the patent, the particulars de- 
 livered by him must state on ivhat grounds he disputes it; and 
 
 {i) Morgan v. Windover, 7 P. 0. R. {I) United Tdcjjlione Co. v. Donohoe, 
 
 449; Thomson v. Macdonald, 8 P. 0. L. R., 31 Ch. D. 399. 
 R. 9. {/n) Edison v. Holland, L. R., 33 
 
 (k) HocMnfj V. Hocking, (Jrill. P. C. Ch. D. 497. 
 129 ; 3 P. 0. R. 291. 
 
294 THE LAW OF PATENTS. 
 
 if one of those grounds is want of novelty, must state the time 
 and place of the previous publication or user alleged hij him ; (4) 
 At the hearing, no evidence shall, except by leave of the Court, or a 
 judge, he admitted in proof of any alleged infringement or objection, 
 of which particulars are not so delivered ; (5) Particulars delivered 
 may be from time to time amended, by leave of the Court, or a judge." 
 
 Order XIX. rule 6, of the Rules of the Supreme Court, 1883, 
 provides : " In all cases in which the party pleading relies on 
 any misrepresentation, fraud, breach of trust, wilful default, or 
 undue influence, and in all other cases in which particulars 
 may be necessary beyond such as are exemplified in the forms 
 aforesaid, particulars (with dates and items if necessary) shall be 
 stated in the pleading : provided that if the particulars be of 
 debt, expenses, or damages, and exceed three folios, the fact 
 must be so stated, and a reference to full particulars already 
 delivered or to be delivered with the pleading." 
 
 It is not easy to reconcile the practice under this rule with 
 the language of the 29th sect, of the Patent Act, or, indeed, with 
 the form of defence given in the form to the rules quoted 
 above. Order XIX. rule 6, provides that particulars shall be in- 
 corporated with the pleading ; on the other hand, the form and 
 the Patent Act seem to indicate a separate document. Hitherto 
 the practice has been to deliver a separate document, and it 
 is apprehended that when the balance of convenience is con- 
 sidered the Courts will hold that in respect of a patent action 
 the practice has remained unchanged. 
 
 Where it was a condition precedent to an agreement to assign 
 letters patent, that the assignee should first satisfy himself as 
 to tlic validity of the patent, in an action brought for specific 
 performance of this agreement, and resisted by the assignee on 
 the ground of his right under the condition precedent, it was 
 held that the validity of the patent was at issue and that the 
 plaintiff was entitled to particulars of objections (n). 
 
 It is not necessary for every one of two or more defendants 
 defending in the same interest to deliver particulars of objections (o). 
 
 (n) Ilazlehursl v. Hijlands, 9 P. 0. Cas. 249, reversing L. R., 26 Ch. D. 
 R. 1. 700. 
 
 {o) Smith V. Cropper, L. K., 10 App. 
 
PARTICULARS OF OBJECTIONS. 295 
 
 Any of the objections which we have discussed in previous 
 chapters may be taken in order to upset a patent, but the par- 
 ticulars must set out those objections in such terms that the 
 plaintiff may be informed what case he will have to meet at the 
 trial of the action. 
 
 When the objection is, that the grantee was not the true 
 inventor, the Court will not require the defendant to say who 
 was the true inventor (|9). The fact upon which the objection 
 is based, is the want of consideration, not the fact of some one 
 having performed the invention before. The performance of the 
 invention by some one else before the patent would not, of 
 necessity, invalidate the patent. As, for instance, if it were done 
 in secret ; but if the invention was communicated to the grantee, 
 the patent would be void for want of consideration. Now the 
 foundation of the objection is, the fact of that communication, 
 and the knowledge of this, and the time and place of it, might be 
 within the patentee's knowledge only, and might not be extracted 
 from him until in the witness box. 
 
 The objection that the specification is insufficient is enough 
 without explaining in what way it is insufficient (q). A litigant 
 could scarcely be required to argue his case on paper before he 
 went into Court, and the sufficiency or insufficiency of a specifica- 
 tion is to a great extent a matter of mere argument. 
 
 In Jones v. Berger{r), it was held that objections that the 
 specification " did not sufficiently distinguish between what was 
 old and what was new," and that the inventor " did not disclose 
 the most beneficial method with which he was then acquainted 
 of practising his said invention," were sufficient. 
 
 In Heathfield v. Greenway (s), the following objections, viz. : 
 " That the specification does not sufficiently describe and ascer- 
 tain the nature of the invention, and the manner in which the 
 same is to be performed ; " and, " That the said specification is 
 ambiguous and framed in a manner calculated to mislead ; " were 
 held to be too vague. 
 
 ( p) Russell V. Ledsam, 11 M. & W. v. Macdonald, 8 P. 0. R. 9. 
 647. But see Jones v. Bergcr, 5 M, & (g) Heath v. Unwin, 10 M. & W. 687. 
 
 G. 208 ; 1 Web. P. C. 544 ; Morgan v. (r) 5 M. & G. 208. 
 
 Windover, 7 P. 0, R. 449 ; Thomson (s) 11 P. 0. R. 17. 
 
296 THE LAW OF PATENTS. 
 
 When the objection is on the ground of want of conformity 
 between the provisional and complete specification, " the de- 
 fendant ought to give such particulars as would inform the 
 plaintiffs of the nature and scope of this objection of noncon- 
 formity. This does not mean that the defendants must furnish 
 the plaintiffs with the heads of what the defendants' argument 
 will be at the trial, but only such information as the plaintiffs 
 may reasonably require in order to know precisely the nature of 
 the case that will be raised against them. Each case must 
 depend on its own circumstances." Per Cotton, L. J. (t), C. A. 
 And when the objection is the insufficiency of the specification, 
 the defendant must condescend to particulars of insufficiency (u). 
 
 We have seen that Ord. XIX. rule 6, requires particulars in 
 case of fraud to be delivered with the statement of defence. 
 
 Fraud is a valid objection to a patent. The practice of the 
 Court is to require accurate and detailed particulars of any 
 fraudulent acts alleged. The species of " fraud, covin, or mis- 
 representation " should be given (x). 
 
 The objection to a patent which is generally relied upon is 
 want of novelty, either on the ground of prior user, prior publi- 
 cation, or common knowledge. 
 
 Prior user. — The objection on the ground of prior user must 
 state the time and place when such user occurred ; but it will 
 be observed that the persons by whom used is not mentioned in 
 sub-sect. (3). The Act, however, does not direct that such par- 
 ticulars shall not be required. The Patent Law Amendment 
 Act, 1852, sect. 41, required that the place of prior user should 
 be given, and was silent as to times or persons. Notwithstand- 
 ing this, in Pahiier v. CoojJO' {//), Baron Alderson went even 
 further than to require the names of the persons who had used 
 the invention, and the present addresses of such persons were 
 ordered to be given, " As otherwise the plaintiff would not know 
 
 (t) Anglo - American Brush Light L. T. 291 ; 4 P. 0. R. 197. 
 Corporation v. CromiJtmi, L. R. 34 {x) Russell v. Lcdsam, 11 M. & W. 
 
 Ch. D. 152 ; 56 L. J., Ch. 167 ; 4 647. 
 P. 0. R. 27. (y) 9 Ex. 231 ; see also Bulnois v. 
 
 (ti) Grompton v. Anglo - American Mackenzie, 4 Bing. N. C. 132 ; Gallo- 
 
 Brush Light Corporation, L. R. , 35 way v. Bleadcn, 1 Web. P. C. 268 (n). 
 Ch. D. 283; 56 L. J., Ch. 802; 57 
 
PARTICULAIIS OF OBJECTIONS. 297 
 
 where to go for his evidence." The object of particulars is, in 
 the words of Tindal, C.J. (2), " Not, indeed, to limit the defence, 
 but to limit the expense of the parties, and more particularly to 
 prevent the patentee from being upset by some unexpected turn 
 of the evidence. Under the fifth section {5 & 6 Will. 4, c. 83), 
 therefore, it was intended that the defendant should give an 
 honest statement of the objections on which he means to rely." 
 In Palmer v. Cooper {siqwa), Parke, B., said : " The defendant's 
 particulars ought to give the plaintiff such information as will 
 enable him to make the necessary inquiries at the place named." 
 
 It will be evident, therefore, that there are cases where to 
 omit giving the names and addresses of the persons who are 
 alleged to have anticipated the invention would be to supply the 
 plaintiff with objections which would be practically useless. 
 
 There are cases where the names and addresses have been 
 refused. In Carpenier v. Walker (a), the objections stated that 
 the invention had been used by " the defendant and divers 
 persons." It was refused to order the defendant either to give 
 the names and addresses of the "divers persons," or to have 
 those words struck out. 
 
 It may be argued that the reason of such refusal was that a 
 disclosure was required of the witnesses and case of the defendant. 
 It is obvious that, although it is a recognized principle that one 
 litigant shall not be permitted to inquire as to what witnesses the 
 other is about to call at the trial, still that by far the more 
 important principle is that neither party should be taken by 
 surprise, and that the plaintiff should have a fair opportunity of 
 critically examining every alleged anticipation which may be 
 attempted to be established against him. 
 
 It does not of necessity follow that persons who have antici- 
 pated the invention should be the only and necessary witnesses 
 of such anticipation. On the whole, therefore, it is submitted 
 that names and addresses of such persons should be given in 
 particulars of objections. 
 
 General words are inadmissible in particulars ; for instance, 
 
 (s) Fishery. Dcivick, 1 Web. P. C. {a) 1 Web. P. C. 268 (n.). 
 
 267. 
 
298 THE LAW OF PATENTS. 
 
 expressions sucli as " and divers other people " {b), and " Inter 
 alia at Sheffield, Birmingham, and London " (c). But in Bentley 
 V. Kcighley {d), Mr. Justice Maule, under special circumstances, 
 allowed the words " and others " to be safficient. 
 
 In Floice)' v. Lloyd (e), Field, J., said : " I cannot follow the 
 cases which have been cited ; we have advanced in our ideas 
 since they were decided (/). If the defendants knew that their 
 processes have been used by other persons in London and Birm- 
 ingham, besides those specified, they must know the ' persons 
 by whom they have been used, and must give more specific 
 information. I do not say that they need give the name and 
 address of every such person, but they must give fair informa- 
 tion. If they can give no further information, the words in 
 question are useless, and too indefinite, and must be struck out." 
 
 In Botjd V. Farrar (g), the allegation of prior user " by arficlefi 
 made according to the supposed invention, being publicly ex- 
 hibited in use by Messrs. J. H. & S., at their works," was held 
 too general, so in Siemens v. Karo (h), " by the general use of 
 the Wenham regenerative gas lamp for several years prior to 
 the patent," did not suificiently particularize any variety of lamp, 
 it is not necessary to refer to any particular article, but the 
 defendant should specify the kind of article referred to in express 
 terms, so that there may be no doubt what it is that he alleges to 
 be an anticipation of the plaintifi''s patent {I) . 
 
 The time at which the alleged prior user took place should be 
 clearly defined, a general statement that the user continued from 
 1832 to 1862 was held in 1890 to be too general, and it was 
 ordered that further particulars should be given (k). 
 
 ^^'hen the allegation of the defendant is that the patent is void 
 by reason of a portion of the described invention being old, the 
 
 (&) Fisher v. Dewick, 1 Web. P. C. (c) Solicitors' Journal, 1876, p. 860. 
 
 551 (n.) ; Galloway y. Bleaden, 1 Web. (/) Bentley v. Keighley, 7 M. & G. 
 
 P. C. 268, (n.) ; Boyd v. Eorrocks, 3 652 ; Palmer v. Wagstaff, 8 Ex. 840. 
 
 P. 0. R. 285. ((j) 5 P. 0. R. 33. 
 
 (c) Holland v. Fox, 1 W. R. 448 ; {h) 8 P. 0. E. 376 ; also Boyd v. 
 
 1 C. L. R. 440 ; Morgan v. Fuller, Eorrocks, 3 P. 0. R. 285. 
 
 L. R., 2 Eq. 297; Boydv. Horrocks, (i) Sidcbottom v. Fielden, 8 P. 0. 
 
 3 P. 0. R. 285. R. 266. 
 
 {d) 7 M. & G. 652 ; see also Jmes v. {k) Smith v. Lang, 7 P. 0. R. 148. 
 Berger, 1 Web. P. C. 549. 
 
PARTICULARS OF OBJECTIONS. 299 
 
 particulars should clearly distinguish which part is alleged to be 
 old, as well as the times and places of prior user (/). 
 
 Objections on the ground of prior publication stand very much 
 upon the same footing as those on the ground of prior user. 
 
 If the prior publication is alleged to be in books or newspapers, 
 the plaintiflp is entitled to be told the name of the book or news- 
 paper, and to be given such details of the books or newspapers as 
 will enable them to be found and identified by the plaintiff (m) . 
 
 In Fowler v. Gaul (n), the defendants, by their particulars of 
 objections, alleged (inter alia), " 5. That the alleged invention 
 was published prior to the patent by certain patents and the 
 specifications thereof (naming them) ; 8. The plaintiff's specifi- 
 cation claims some of the matters specified or patented in certain 
 specifications (naming them)." The District Registrar, afiirmed 
 subsequently by the Judge in Chambers and Divisional Court, 
 ordered " better particulars, showing in detail what part or parts 
 of the patents or specifications respectively referred to in the 5th 
 and 8th objections showed prior publication, and what parts were 
 relied on as being claimed by the plaintiff's specification. In 
 default of delivery, objections 5 and 8 to be struck out." 
 
 In Plimpton v. Sjnller (o), the particulars were — " before the 
 date of the alleged letters patent the alleged invention had been 
 published in England in the ' Commissioners of Patents Journal,' 
 of the 6th February, 1863, and in the ' Scientific American,' of 
 the 24th January, 1863, and in drawings and sketches deposited 
 in the Patent Office library in July, 1865." Mr. Justice Field 
 directed that the defendant should amend his particulars by 
 stating the date of the American patent, and in whose name it 
 had been granted. And also by giving the pages of the publica- 
 tions mentioned, but not the lines. And also by giving such 
 written details as would enable the drawings mentioned to be 
 identified, and to state whether the drawings were or were not 
 
 (l) Heath v. Unwin, 10 M. & W. see also Harris v. Eothiuell, Griff. P. C. 
 
 684 ; Eussell v. Ledsam, 11 M. & W. 109 ; 3 P. 0. R. 243. 
 
 647. (o) 20 Solicitors' Journal, 1876, p. 
 
 [m) Jones v. Bcrger, 5 M. & G. 208 ; 860 ; see also Flower v. Lloyd, same 
 
 Palmer v. Cooper, 9 Ex. 231. reference. 
 
 {n) Griff. P. C. 99 ; 3 P. 0. R, 247 ; 
 
300 THE LAW OF PATENTS. 
 
 contained in books, and what books. Notice of objections, on the 
 ground that the grantee of the letters patent was not the first and 
 true inventor, does not stand upon the same footing as objections 
 on the ground of prior user or publication. Sect. 29, sub-sect. 3, 
 does not require the defendant to state more than generally on 
 what grounds he objects, and a statement that his objection is 
 that the plaintiff "was not the true inventor, that is, that the con- 
 sideration did not move from him, will be sufficient, care being 
 taken to distinguish this objection from that of prior user or 
 publication. 
 
 AMiether or not a defendant will be required to give particulars 
 of lines and pages of the specifications upon which he relies in 
 his objections will depend upon the circumstances of the case and 
 the nature of those specifications (j)) ; where it appeared that 
 the defendant had, figuratively speaking, " thrown at the head " 
 of the plaintifi" a large number of specifications without any 
 attempt at discrimination, further particulars were required {q), 
 but if the defendant bond fide relies upon the whole of a specifi- 
 cation, or any number of specifications in reason, his particulars 
 of objections will not be interfered with. In Nettle folds v. 
 Reynolds (r), Lindley, L. J., said : " It appears to me, therefore, 
 that the moment the learned Judge came to the conclusion, as he 
 did in fact, that the defendant here had honestly done his best to 
 give to the plaintifi" that information that he is entitled to, unless 
 the Court came to the conclusion that there was some grievous 
 or some obvious mistake, he ought to be satisfied with that, and 
 not to say, ' I shall order further particulars, because I know 
 from experience that if you say you rely on the whole of the 
 specification, when you come into court nine-tenths will not be 
 referred to.' If the defendant is to be bound hand and foot to 
 a particular page, and to a particular line, it will be perfectly 
 impossible for him to defend his case, or to impeach the patent to 
 the extent and in the manner in which he is entitled to do it." 
 
 The object of particulars of objections is to ascertain the lines 
 
 (;;) Heathfield v. Greenivay, 11 P. P. 0. R. 320; Heathfieldv. Greenway, 
 
 O. R. 19. 11 P. 0. R. 17. 
 
 (q) Sickhottomv. Fidden, 8 P. 0. R. (r) 8 P. 0. R., at p. 417; see also 
 
 266, 270 ; Hollulay v. Ucppenstall, 6 Siemens v. Karo, 8 P. 0. R. 376. 
 
PARTICULARS OF OBJECTIONS. 301 
 
 upon which the plaintiff's patent is to be attacked, and thereby 
 prevent surprise, consequently it is not only necessary to define 
 the objection to the plaintiff's patent upon which the defendant 
 intends to rely, but also, where the patent in question is of some 
 complexity, to define the part of it against which the attack is 
 directed (s). 
 
 Objections on the ground of common knowledge must be care- 
 fully distinguished from objections on the ground of prior publi- 
 cation; in the latter case every book or document must be par- 
 ticularized, as no instance of anticipation can be adduced at the 
 trial of which particulars have not been delivered, but when the 
 objection to a patent is based upon common knowledge, no par- 
 ticular instances need be referred to, as this objection can only 
 be proved by the examination of witnesses and reference to well- 
 known standard works upon the subject (f). Specifications may 
 not be put in at the trial in proof of common knowledge, but 
 must be specifically mentioned in the particulars {u). 
 
 Evidence will be admitted at the trial, provided the language of 
 the particulars of objections is large enough to admit it ; for in- 
 stance, if the plaintiff has allowed such words as " and elsewhere " 
 to stand until the trial, the defendant will be allowed to give 
 evidence of prior user anywhere (x). The proper course for the 
 plaintiff to take should the defendant deliver vague particulars 
 is to issue a summons before a judge in chambers for further 
 and better particulars, or, in the alternative, to have the 
 objectionable words struck out {//). 
 
 In Sugg v. Silber (z), Mellish, L. J., said : — " The authorities 
 cited by Mr. Cave were cases where objections had been taken to 
 the notices of objection at the time when they were delivered, 
 
 (s) Harris v. Rothiudl, 3 P. 0. R. 11 P. 0. R. 367, 373. 
 
 243 ; Boyd v. Farrar, 5 P. 0. R. 33, {x) Hull v. Bollard, 25 L. J. , Ex. 
 
 (0 Holliday v. Heppenstall, 6 P. 0. 304 ; Sykes v. Howarth, L. R., 12 Ch. 
 
 R. 320 ; English and American Ma- D. 826. 
 
 chinery Co. v. Union Boot Co., 11 P. 0. iy) Fisher v. Bewick, 1 Web. P. C. 
 
 R- 367. 551 (n.); Carpenters. Walker, 1 Web. 
 
 (m) Solvo Laundry Co. v. Mackie, P. C. 268 (n. ) ; Holland v. Fox, 1 C. 
 
 10 P. 0. R. 68 ; Peckover v. Rowlaml, L. R. 440. 
 
 10 P. 0. R. 118 ; English and Ameri- (z) L. R., 2 Q. B. D. 495. 
 can Machinery Co. v. Union Boot Co., 
 
302 THE LAW OF PATENTS. 
 
 and further and better particulars were asked for. In my 
 opinion there is a very large difference between a case where 
 a judge has been applied to and has ordered further particulars 
 in order to state an objection more specifically, and a case 
 where at the trial the plaintiff asserts that the defendant ought 
 to be prevented from availing himself of an objection. It is 
 perfectly obvious that, if Mr. Cave was right in saying that 
 the two questions are the same, and that wherever the Court 
 would order further particulars because the objection had not 
 been particularly specified, it would also hold that the party was 
 precluded from raising it at the trial. Nobody would be foolish 
 enough to apply to a judge for further particulars. Although the 
 objections did not specifically point out that the invention con- 
 sisted of several claims, yet the objection, that the invention is 
 not the subject matter of a patent, is sufficient to open the objec- 
 tion that the whole, or some particular part of it, is not the sub- 
 ject matter of a patent, and that consequently the patent is 
 bad " (a). 
 
 In Britain v. Hirsch (h), in the Court of Appeal, Cotton, L. J., 
 said : "In my opinion, under the present Act of Parliament, it 
 is within the discretion of a judge who hears evidence in a patent 
 case to allow evidence to go beyond the particulars actually 
 delivered." 
 
 The defendant will not be allowed at the hearing of the action 
 to introduce evidence of prior user, not disclosed in the particulars 
 of objection, although such evidence may have only come to his 
 knowledge since the delivery of the particulars of objection. His 
 proper course is to obtain leave by summons or by serving short 
 notice of motion for leave to amend, when an order will be made 
 upon the terms mentioned below ; and with an added term to 
 delay the trial should it appear just that the plaintiff should have 
 time to investigate the new evidence (c). 
 
 Page- Wood, V.-C, in Penn v. Bibb?/ (d), permitted a defen- 
 dant in his amended particulars, to preface his statement of the 
 
 (a) See also Hull v. Bollard, 1 H. & {b) 5 P. 0. R., at p. 231. 
 
 N. 134 ; Neilson v. Harford, 1 Web. (c) Daiv v. Eleij, L. R., 1 Eq. 38. 
 
 P. C. 331 ; Bovill v. Goodier, L. R., (d) L. R., 1 Eq. 548. 
 1 Eq. 35. 
 
PARTICULARS OF OBJECTIONS. 303 
 
 specific instances of alleged prior user, with the words " amongst 
 other instances " in order to give him an opportunity to apply for 
 leave to re- amend by inserting any further instances of prior user 
 which he might discover. 
 
 Liberty to amend particulars of objections at the trial was 
 given upon terms in Menard v. Levenstein (a) ; but in Moss 
 V. Malings (b), North, J., refused leave, and said : — " I could 
 only grant it if the defendant showed that he could not, with 
 reasonable diligence, have discovered the new facts sooner. This 
 he has not done. I must, therefore, refuse the application." 
 
 In Allen v. Horton (c), the defendant amended his particulars 
 of objections at the trial by leave of the Court ; judgment was 
 given for the defendant, but costs refused owing to the late stage 
 at which the amendment was made. 
 
 The terms upon which amendment is permitted are, first, that 
 the plaintiff should be at liberty, if he pleases, to discontinue the 
 action, and to be in the same position as to costs, as if the pro- 
 posed amended particulars had been delivered in the first in- 
 stance (d), and, secondly, that the defendant should be put under 
 such terms as to costs, as to the judge or Court may seem just. 
 The particulars of objections give notice to the plaintiff of the case 
 which is to be made against him ; thereupon he may discontinue 
 or not, as he pleases, paying the defendant's costs. The defendant 
 should not be permitted to keep back his most salient objections, 
 and so to entice the plaintiff to proceed and incur costs, and then 
 to amend his particulars at the last moment. 
 
 In Pirriev. York Street Spinning Company (e), leave to amend 
 the particulars of objections was granted pending appeal. 
 
 Forms of orders, for delivery of further particulars of objec- 
 tions, and for liberty to amend, will be found in the appendix (/'). 
 
 (a) 11 L. T. at p. 506 ; also Allen v. Closet Co., L. R., 17 Ch. D. 139 (n.) ; 
 
 Morton, 10 P. O. R. 412. and Aveling v. Maclaren, same page ; 
 
 (i) L. R., 33 Ch. D. 603 ; 3 P. 0. also Edison Telephone Co. v. India- 
 
 R. 375; also Peckover v. Bawland, 10 ruhher Co., L. R., 17 Ch. D. 137; 
 
 P. O. R., at p. 120. Parker v. Maignen's Filter Co., 5 
 
 (c) 10 P. 0. R. 412 ; note also P. 0. R. 207. 
 
 IFcstley Richards v. Perkes, 10 P. 0. (c) 11 P. 0. R 431. 
 
 R. 181, 186. (/) P. 483, post. 
 
 {d) Baird v. Moule^s Patent Earth 
 
n04 THE LAW OF PATENTS. 
 
 INTERROGATORIES. 
 
 Order XXXI. rule 1, of tlie rules of the Supreme Court, 1883, 
 provides that either party to an action, with leave of the Court 
 or a judge, may interrogate the other party. 
 
 Interrogatories must 'be relevant to the issue, and will not be 
 allowed to be used for the purpose of cross-examination. Since 
 it is not possible to say precisely what the issues between 
 the parties are before the statement of defence is delivered, 
 neither party, except under special circumstances, will be 
 allowed to interrogate until that stage of the action has been 
 reached (g). 
 
 Eule 26 provides that 5/, or some further sum, should be 
 brought into Court by the party desiring to interrogate before he 
 shall be at liberty to do so. 
 
 The general rules as to interrogatories in ordinary actions apply 
 equally to actions for infringement. 
 
 The plaintiff may interrogate the defendant, and the defendant 
 must answer as to what infringement he has been guilty of; and 
 he must disclose, if asked, the names and addresses of all persons, 
 whether in England or abroad, from whom he may have received 
 money for the use of articles alleged to be made in infringement 
 of the patent {h). 
 
 In Lister v. Norton (?"), the defendants put in a defence denying 
 infringement, and the plaintiff interrogated the defendants, and 
 asked in one interrogatory whether the defendant's firm had not 
 sold imitation sealskins (the patent being for " Improvements in 
 the manufacture of velvets and of pile fabrics in imitation of seal- 
 skin and other similar materials ") to certain firms, naming six- 
 teen firms. This interrogatory the defendants declined to answer, 
 on the ground that the information was not bo)id fide sought for 
 the purposes of the action. Chitty, J., ordered an answer to 
 the interrogatory, unless within fourteen days the defendant 
 admitted infringement. 
 
 {g) Mercierv. Cotton, L. R., 1 Q. B. 547 ; Ashworth v. Roberts, 7 P. 0. R. 
 
 D. 442. 455. 
 
 (/j) Crossley v. Stewart, 1 N. R. (i) Griff. P. C, at p. 149 ; 2 P. 0. 
 
 426 Eovj V. McKernan, 30 Beav. R. 68, 
 
INTERROGATORIES. 305 
 
 In Benno Jaffe v. Richardson (k) tho pliintifF administered 
 interrogatories to the defendant, framing them upon the statements 
 in his specification, which he alleged that the defendant had in- 
 fringed, and thereby asked the defendant if he had used the pro- 
 cesses described in the specification, taking them step by step. 
 Some of these interrogatories the defendant refused to answer, on 
 the ground that they were not relevant until the patent was 
 established. It was held by North, J., that the plaintiff was 
 entitled to further answers. 
 
 But where the materiality of an interrogatory depends upon 
 tli(; construction of the patent, no answer need be given (l). 
 
 The fact that the defendant's particulars of objections are suflfi- 
 cient will not necessarily preclude the plaintiff from obtaining more 
 detailed information by administering interrogatories. In Birch 
 V. Mather, Chitty, J., said : '* The right to interrogate is con- 
 ferred by the general orders, and I cannot say as a matter of 
 principle that it can be laid down that the plaintiff is not entitled 
 to interrogate the defendant, and vice versa, with reference to 
 these matters which may be covered by the particulars. I hold, 
 therefore, on the general question, that there is a right to deliver 
 interrogatories, and provided the interrogatories are properly 
 worded, interrogatories with reference to these very matters 
 which ought to be covered by the particulars " (in). 
 
 The plaintiff is entitled to interrogate as to the names and 
 addresses of the persons by whom the defendant alleges the in- 
 venti(m was used prior to the date of the plaintiff's patent, also 
 as to the places where such prior user occurred (n). 
 
 In a petition for revocation under section 26, interrogatories 
 will be allowed to be administered by the petitioner to the 
 respondent, inquiring into the manufacture, use, and sale of the 
 patented article prior to the date of the patent (o). 
 
 (A-) 10 P. 0. R. 136; see also Ash- (n) Finne.gan v. James, L. R., 19 
 
 ^vorth V. Roberts, 7 P. O. R. 451. Eq. 72 ; Crossley v. Tomcu, L. R., 2 
 
 [1] Delta Metal Co. v. Maxim- Ch. D. 533 ; Birch v. Mather, L. R., 
 
 Nordenfelt Guns Co., 8 P. 0. R. 169. 22 Ch. D. 629 ; Alliance Pure White- 
 
 {m) L. R., 22 Cli. D., at p. 631 ; lead Syndicate v. Maclvor's Patents, 
 
 see also Alliance Ptire WMtelead 8 P. O. R. 321. 
 
 Syndicate v. MacTvor's Patents, 8 (o) Haddan^s Patent, 54 L. J , Ch. 
 
 P. 0. R., at p. 322 126. 
 
 T. X 
 
306 IHE LAW OF PATENTS. 
 
 Where a defendant alleged that his process was secret, lie was 
 bound to answer whether he used the materials mentioned in the 
 specification, and whether he used any additional materials, hut 
 not to disclose the proportions in which he used the specified 
 materials, or what the additional materials were {p). 
 
 " The mere plea of secret process is not sufficient to defeat dis- 
 covery, but, on the other hand, interrogatories must not be made 
 the means of unfair treatment of a man who is fighting 
 fairly" (g). 
 
 When there is nothing to show that the defendant has in- 
 fringed the patent, and he has denied on oath having infringed 
 the patent, the plaintiff will not be permitted to interrogate as to 
 the articles made and sold by the defendant, there being nothing 
 to show that the articles sold infringe the patent. If Lea v. 
 Saxhjj {)•) be read, this proposition will be seen to follow. 
 
 CrossJey v. Tomey (s) was an action to restrain infringement. 
 The defendant ininterrogatori'^s was required to state whether he 
 was not making articles in all respects identical with those of the 
 plaintiff, and to set forth in what respects they difiered, and by 
 what process they were made. It was held that the defendant, 
 who alleged prior user by himself and others, had sufficiently 
 answered by stating that, save so far as the articles manufactured 
 by him before the date of the patent were similar to those of the 
 plaintiff, the articles he now made differed from those made by 
 the plaintiff, but he could not show in what they differed without 
 ocular demonstration. 
 
 Communications between a man and his patent agent are not 
 privileged, consequently, where the plaintiff's patent agent also 
 acied as his solicitor, he was ordered to answer interrogatories with 
 reference to documents which passed between them at the time 
 the specification was prepared, such communications having taken 
 place in the relationship of patent agent, and not of soHcitor and 
 cHent {t). 
 
 In the same case interrogatories which sought to compel the 
 
 {p) Renard v. Levinstein, 3 N. R. (r) 32 L. T., N. S. 731. 
 
 665. is) L. R., 2 Ch. D. 533. 
 
 {q) Per Kekewich, J., in Ashworth (t) Mosclcy v. Victoria Euhier Co., 
 
 V. nohcrts, 7 1". 0. R., at \k 455. 3 P. O. R. 351. 
 
INTERROGATORIES. 307 
 
 plaintiff to particularise the alleged breaches by stating what 
 parts of the plaintiff's specification were infringed by the 
 defendants (the defendants having in answers to interrogatories 
 disclosed what they had done) were disallowed on the ground that 
 the defendants could for themselves compare the plaintiff's speci- 
 fication with what th(y admitted they had done. 
 
 In Bovill V. Smith (u), the following interrogatory was dis- 
 allowed : " Does not the defendant allege that the plaintiff's inven- 
 tion was publicly used within this realm before the date of the plain- 
 tiff's patent ? Set forth particularly when, and in what place or 
 places, and in what manner, does the defendant allege that the 
 plaintiff's invention, or any or what part thereof, was publicly used 
 within this realm before the date of the plaintiff's ijatent." Sir 
 W. Page Wood, V.-C, said that the plaintiff was not entitled to 
 enquire generally into the way in which the defendant shaped 
 his case in order to find out whether some of the persons alleged 
 by him to have used the process before the date of the patent, 
 were the persons against whom the plaintiff had succeeded in 
 other suits, though he might have asked if the process was the 
 same as that used by A. B., or any one person specifically named, 
 who had been a defendant in some former suit. 
 
 A defendant who submits to answer must answer fully: he 
 cramot, by denpng the plaintiff's title, escape answering. Dis- 
 covery of title deeds and of professional communications form an 
 exception. The plaintiff and defendant had both patents for 
 making gelatine ; the plaintiff interrogated as to the article 
 manufactured by the defendant, and as to the names and addresses 
 of the customers, and as to prices and profits. The defendant 
 denied all infringement. He said he had made his article accord- 
 ing to his own, and not according to the plaintiff's, patent, and he 
 declined to give an account of such article. Held, that notwith- 
 standing his denial, he w£is bound to do so (x). It is doubtful 
 whether this case would be followed now, for it is difficult to 
 understand how the question could be relevant to the issue. It 
 might be relevant after judgment, but before judgment the issue 
 
 (u) L. R., 2 Eq. 459 ; see also Dmu 416 ; but note Lea v. Saxhy, 32 L. T. , 
 V. Eleij, 2 H. & M. 725. N. S. 731. 
 
 {x) Swinhorne v. Nelson, 16 Beav. 
 
 X 2 
 
308 THE LAW OF PATENTTM. 
 
 is, infrlui^ement or no infringement. The names of the customers 
 could not bear upon this question. 
 
 After ti-ial, and in pursuance of the terms of the judgment, if 
 the plaintiff has been successful he is entitled to interrogate the 
 defendant, or to require that the defendant " should make and 
 file an affidavit stating what machines of the same construction as 
 that supplied by him to A. or B., including such machines as 
 are in his possession or power," see Seton, Mh ed. p. 352. The 
 answer or affidavit of the defendant must be complete. In 
 Murmy v. Clayton {y), a patentee of improvements in brick- 
 cutting machines, who was a manufacturer of the machines by an 
 agent at the agent's works and not a licensor, having obtained a 
 perpetual injunction against the defendants (who were also manu- 
 facturers of brick- cutting machines), from infringement, the 
 defendants were ordered to file an affidavit stating the number of 
 machines made by them since the date of the patent, and the 
 names and addresses of the persons to whom the same had been 
 sold, and of the agents concerned in the transactions. Upon 
 motion to vary the order, it was held that the plaintiff was entitled 
 to have discovery of the names and addresses of the purchasers, 
 but not of tbe agents concerned, there being nothing to show that 
 any agents had been employed. 
 
 In answering interrogatories filed by a defendant for the 
 examination of the plaintiff, the general rule applies that he who 
 is bound to answer must answer fully (;:). 
 
 Interrogatories for the examination of a plaintiflF are on a diffe- 
 rent footing from those for the examination of a defendant in this 
 respect, that a plaintiff is not entitled to discovery of the 
 defendant's case, but a defendant may ask any questions tending 
 to destroy the plaintiff's claim («). 
 
 In determining whether a question is one of fact, and, there- 
 fore, to be answered, it makes no difference that it is asked with 
 reference to a written document {b). 
 
 A defendant in a suit for infringement of a patent in order to 
 prove that there was no novelty in the plaintiff's patent, interro- 
 
 (?y) L. R., 15 Eq. 115. {a) Hoffman v. PostUll. 
 
 (2) Hoffman v. Posthill, L. K., 4 {h) Ibia. 
 
 Cli. 673. 
 
INTERROGATORIES. 309 
 
 gated the plaintiff as to the inventions described in the specifica- 
 tions of various patents, and asked him to show in what respects 
 they differed from his. The plaintiff declined to answer these 
 interrogatories on the ground that the questions were not ques- 
 tions of fact, and that they related to the plaintiflTs case ; the 
 defendant excepted to the answer, and the exceptions were 
 allowed (c). 
 
 A plaintiff in a patent suit was required by interrogatories to 
 set out a correspondence between himself and a third party, and 
 also to state the particulars of the infringement of his patent on 
 which he relied. He refused to answer these questions on the 
 ground that the defendant might obtain an order in chambers to 
 inspect the correspondence : and that he had sufficiently set out 
 the particulars of the infringement in his bill. These answers 
 were held to be sufficient (d). 
 
 We have set out the effect of this case at length, because it is 
 founded upon and exemplifies in many ways the principle upon 
 which a defendant may examine a plaintiff. Lord Justice 
 Giffard, in giving judgment, said : " As regards the case of Bmv v. 
 JiJki/ (e), it must be always remembered that that was the case of a 
 plaintiff exhibiting interrogatories to a defendant, and it was there 
 held that the plaintiff could not call on the defendant to set forth 
 the particulars of his defence. But when you come to the case 
 of a defendant asking questions of a plaintiff, it is a very different 
 thing. It is the defendant's business to destroy the plaintiff's 
 case, and there the defendant has a right to ask all questions 
 which are fairly calculated to show that the patent is not a good 
 patent (/'), or that what he alleges to be an infringement is not an 
 infringement." Lord Justice Selwyn had said : " Our decision in 
 this case will leave it entirely within the power of the learned 
 Vice-Chancellor to order that all the costs occasioned by the inter- 
 rogatories, the answer, the exceptions, the hearing the exceptions 
 before him, and the hearing of this appeal, shall be dealt with as 
 he, in his discretion, shall think fit ; and if it shall appear that 
 the power which the Court, for the purpose of justice and dis- 
 
 Fatcnt 
 
 (c) Hoffman v. Posthill. 
 
 (/) Rylands v. Ashley's 
 
 {d) Ibid. 
 
 Bottle Co., 7 P. 0. i;. i;.*;. 
 
 (c) 2 H. & M. 725. 
 
 
310 THE LAW OF PATENTS. 
 
 covery, gives to the parties to administer interrogatories to each 
 other has been abused, I have no doubt the learned Vice- 
 Chancellor will take care that justice shall be done, and will make 
 the party who is to blame pay all the costs of the improper 
 exercise of this power." 
 
 INSPECTION. 
 
 Sect. 30 of the Patents, &c. Act of 1883, provides : " In an 
 action for infringement of a patent, the Court or a judge may, on 
 the application of either piartij, make such order for an injunction, 
 inspection, or account, and impose such tenns and give such direc- 
 tions respecting the saine and the proceedings thereon, as the Court 
 or a judge may see fit." 
 
 The power to order an inspection was always assumed by the 
 Courts ; in Bovill v. Moore (g), Lord Eldon said : " There is no 
 use in this Court directing an action to be brought, if it does not 
 possess the power to have the action properly tried. The plaintiff 
 has a patent for a machine used in making bobbin lace. The 
 defendant is a manufacturer of that article ; and, as the plaintiff 
 alleges, he is making it with a machine constructed upon the 
 principle of the machine protected by the plaintiff's patent. Now 
 the manufactory of the defendant is carried on in secret. The 
 machine which the defendant uses to make bobbin lace, and 
 which the plaintiff alleges to be a piracy of his invention, is in 
 the defendant's own possession, and no one can have access to it 
 without his permission. The evidence of the piracy, at present, 
 is the bobbin lace made by the defendant. The witnesses say 
 that this lace must ha\'e been manufactured by the plaintiff''s 
 machine, or by a machine similar to it in principle. This is 
 obviously in a great measure conjecture. No Court can be 
 content with evidence of this description. There must be an 
 order that plaintiff's witnesses shall be permitted before the 
 trial of the action to inspect the defendant's machine, and to 
 see it work." 
 
 " The right to inspection is a right to be given at the discre- 
 tion of the Court — to be exercised with a judicial discretion and 
 
 {(/) 2 Coop. Cli. C'a. 56 (ii.)- 
 
INSPECTION. 311 
 
 with due regard to the interests of the parties concerned in the 
 litigation " (h). 
 
 The object which the Court has in view in all cases where an 
 inspection is permitted, is to ensure that the true facts of the case 
 shall be carefully sifted ; but at the same time the Court will take 
 care that the process of the law is not abused, and that an action 
 for infringement shall not be made a means and lever for the 
 discovery of other persons' secrets. 
 
 The Court requires, before granting an order for inspection, 
 that a prima facie case shall be made out of infringement (*)• 
 And when the interests of justice require, the inspection will be 
 granted to scientific witnesses, who will be required to keep any 
 secrets which they may have discovered, and which do not affect 
 the question of infringement (k). And in Fhwer v. Lloyd (/) the 
 Court of Appeal strictly limited the inspection to scientific men, 
 and excluded the plaintiff from being present. 
 
 In Pigott V. The Anglo-American Telegraph Co. {m), it was 
 alleged that an inspection would disclose important secrets. 
 Giffard, V.-C, in refusing an order to inspect, said : " Of late 
 years greater readiness has been shown by the equity Courts to 
 allow inspection in patent cases than by the courts of common 
 law. But it has never been considered as a matter of right, nor 
 have the equity Courts considered themselves as precluded from 
 exercising a proper discretion in applications of this description. 
 The Court ought to be satisfied of two things : that there really 
 is a case to be tried at the hearing of the cause, and that the 
 inspection asked for is of material importance to the plaintiff's 
 case as made out by his evidence." 
 
 In Bailey v. Kynock {n), Sir James Bacon, V.-C, said : 
 " Upon the single point which is raised before me, there can 
 
 (A) Per Bristowe, V.-C, in 3fc- L. J., Ch. 287 ; 1 P. 0. R. 217. 
 
 Dougall v. Partington, 7 P. <->. R., at {k) See Russell v. Crichton, 1 Web. 
 
 p. 357. P. C. 667 (n.); 15 Dec. Ct. of Sess. 
 
 [i) Bovill V. Moore, snpra ; The 1270. 
 
 Singer Setving Mn chine Co. v. Wilson, {I) W. N. 1876, 169, 230 ; see also 
 
 12 L. T., N. S. 140; Shaw v. The The Plating Oo. v. Farquharson, Griff. 
 
 Bank of England, 22 L. J., Ex. 26 ; P. C. 187. 
 
 Batley v. Kynoch, L. R., 19 Eq. 90 ; (/;0 19 L. T., N. S. 46. 
 
 Germ Milling Co. v. Rohinsim, 55 («) L. R., 19 Ei[. 92. 
 
312 THE LAW OF PATENTS. 
 
 be 110 doubt that the plaintiff in such a suit as this is entitled to 
 an inspection of the means which the defendants employ in the 
 manufacture of the articles alleged to be violations of the 
 plaintiff's patent, when such inspection is essential for the 
 purpose of enal)ling the plaintiflF to prove his case ; upon the 
 materials before me that is not made out. There is no allega- 
 tion by the plaintiff that he cannot make out his case without 
 inspection. But there is on the part of the defendants a plain 
 allegation that inspection is not necessary for the purposes of the 
 suit ; upon that only I must decide this question. I would 
 rather not go into the other matters which have been referred 
 to. The description in the specification and the allegation in the 
 bill — but as I read both the description in the specification and 
 the allegation in the bill — I find that the charge made by the 
 plaintiff is that the cartridges, the right of manufacturing which 
 is vested in him exclusively, have been imitated and copied by 
 the defendant, and if that fact can be made out the plaintiff's 
 case can be clearly established. The mode of making that out is 
 by examination of the cartridges, the means by which they have 
 been made, whether by a machine or hammer or a screw cannot 
 signify in the least if the cartridges of the defendant when 
 made are made upon the principle of the patent claimed by the 
 plaintiff." 
 
 As we have seen, the plea of secret process is of no avail for 
 the purpose of resisting an order for inspection, but in such a 
 case before granting the order the Court will require the plaintiff 
 to make out a strong prinid facie case of infringement (o). 
 
 In Drake v. Muutz Metal Co. (p), before statement of claim 
 ap])licHtion was made to Bacon, V.-C, that the defendnnts by 
 their proper officer should make an affidavit verifying the 
 machines and processes used by the defendant company in 
 bending metal tubes since the date of the plaintiff's patent 
 and for inspection. The Vice-Chancellor said that sect. 30 
 {supra) did not give him power to direct an affidavit to be made, 
 but ordered inspection of the machines. 
 
 The Court, in the case of The Patent Type Founding Co. v. 
 
 (o) Germ 3/iHinij Co. v. RubiiLnon, {-p) 3 P. 0. R. 43. 
 
 1 1'. U. K., at p. 219. 
 
INSPECTION. 313 
 
 Walter {q), assumed the jurisdiction to order the defendant to 
 deliver to the plaintiff a sample of the type made by him so that 
 the plaintiflF might have the same analysed, for the purpose of 
 ascertaining whether the composition was similar to the plaintiff's 
 patented composition. 
 
 In that case it was also held that laches sufficient to defeat the 
 plaintiff's right to an interlocutory injunction was no har to an 
 ordt'r on the same motion for inspection. 
 
 Inspection will only be allowed of that with regard to which 
 A prima facie case of infringement has been made out (r). 
 
 In some cases where it is necessary, the Court will order the 
 defendant and the plaintiff to give mutual inspection, and to 
 show both the patented machine and the alleged infringement 
 at work, and to permit either j)arty to take away any of the 
 work or samples of the work which has been done in their 
 presence («). 
 
 ^^'hether the plaintiff will be entitled to see the alleged in- 
 fringing machine at work or not will depend upon the circum- 
 stances of the case [t). 
 
 Where the defendant has delivered to the plaintiff specimens 
 of the alleged infringing articles, the latter is not entitled to see 
 those articles in actual use on the defendant's premises {n). 
 
 No order will be made for inspection by the plaintiff of articles 
 not within the control of the defendant, nor of exhibits which the 
 defendant's witnesses will give in evidence [x). 
 
 In IIcDoiigall v. Parfingtott {//) the plaintiff's right to inspec- 
 tion depended upon a contract which was the matter in dispute, 
 and since he was unable to show that inspection was necessary to 
 prepare his case, it was held that no inspection should be granted 
 
 iq) 8 W. R. 353 ; John. 727 ; see (t) The Germ Milling Co. v. Eobin- 
 
 also Germ Milling Co. v. Robinson, 3 son, 3 P. 0. R. 11 ; Drake v. Muntz 
 
 P. 0. R. 11. Metal Co., 3 P. 0. R. 43 ; Sidehottom 
 
 (r) Cheetham v. Oldham, 5 P. 0. R. v. Fielden, 8 P. 0. R. 266. 
 
 617, 621. («) Sidehottom v. Fielden, 8 P. 0. R. 
 
 (s) Davenport v. Jcpson, 1 N. R. 307 ; 266, 
 
 see also The Singer Sewing Machine Co. {x) Garrard v. Edge, 6 P. 0. R. 
 
 V. Wilson, 5 N. R. 505 ; The Germ 372 ; also Sidehottom v. Fielden, 8 
 
 Milling Co. v. Robinson, 55 L. J., Cli, P. 0. R. 266, 269. 
 
 288 ; 3 P. 0. R. 11. [ij) 8 P. 0. R. 351, 472. 
 
314 THE LAW OF PATENTS. 
 
 on the ground that the right depended upon the question to he 
 determined at the trial. 
 
 The appHcation may be made on motion to the Court or by 
 summons ; it is usually made upon the application for an interim 
 injunction, but it is immaterial at what stage of the proceedings 
 the application is made. The evidence in support must be on 
 affidavit, and a prima facie case of infringement must be made 
 out, and that the inspection is material to the plaintiff's case. 
 
 Order L. of the Rules of the Supreme Court, 1883, contains 
 some provisions as to inspection which must be noticed. 
 
 Rule '6 provides for the inspection of property and the taking 
 of samples, or for " any observations to be made or experiment 
 to be tried which may be necessary or expedient for the purpose 
 of obtaining full information or evidence." Rule 4 : "It shall 
 be lawful for any judge, by whom any cause or matter may be 
 beard or tried with or without a jury, or before whom any cause 
 or matter may be brought by way of appeal, to inspect any 
 property or thing concerning which any question may arise 
 therein." 
 
 This last mentioned rule was introduced by the Rules 1883. 
 Before, tbe parties must have consented to a view being had. 
 In Jacknon v. Tlie Duke of Newcastle (2), Lord "Westbury said : 
 " A judge is bound to pronounce his decision according to the 
 evidence before him, but his inspection of the premises may 
 bring him to a conclusion directly opposite to that which is 
 established by the evidence." 
 
 THE TRIAL. 
 
 The constitution of the Court which is to hear and determine 
 patent actions is provided for by sect. 28, sub- sect. 1, of the Act 
 of 1883 : " In an action or proceeding for infringement or revoca- 
 tion of a patent, the Court may, if it thinks fit, and shall on the 
 request of either of the parties to the 'proceeding, call in the aid of 
 an assessor, specially qualified, and hear and try the case wholly or 
 partially with his assistance ; the action shall he tried without a 
 jury, unless the Court shall otherivise direct." 
 
 {z) 33 L. J., Ch. 698. 
 
THE TRIAL. 315 
 
 Under the old statute, either party had an absolute right to 
 have the questions of fact decided by a jury, and the Court had 
 no power to deprive them of tliis right (a). 
 
 Under the 57th sect, of the Judicature Act, 1873, the Court had 
 power, without the consent of the parties, " in any such cause or 
 matter requiring any prolonged examination of documents or 
 accounts or ani/ scientific or local investigation which cannot, in the 
 opinion of the Court or a judge, conveniently be made before a jury, 
 or conducted by the Court through its other ordinary officers, the 
 Court or a judge may at any time, on such terms as may be thought 
 proper, order any question or issue of fact, or any question of 
 account arising therein, to be tried either before an official referee, 
 to be appointed as hereinafter provided, or before a special referee 
 to be agreed on between the parties ; and any such special referee 
 so agreed on, shall have the same powers and duties, and proceed 
 in the same manner as an official referee. All such trials before 
 referees shall be conducted in such manner as may be prescribed 
 by rules of Court, and subject thereto in such manner as the 
 Court or judge ordering the same shall direct." 
 
 In the case of Saxhy v. The Gloucester' Wagon Co. {b), Mr. 
 Justice Hawkins was of opinion that a patent case was a case 
 which required a "prolonged scientific examination," and conse- 
 quently he remitted the action to that which he considered the 
 most proper tribunal for difficult scientific questions, " the official 
 referee." We are inclined to think that sect. 28 of the Patents 
 &c.. Act, does away with tliis option. The words appear to read : 
 " The Court may employ an assessor, and shall do so on the appli- 
 cation of either party, and shall try the case ; and the action shall 
 be tried without a jury, d^c." 
 
 Ord. XXXVI. rule 5 of the Rules of the Supreme Court pro- 
 vides, " The Court or a judge may direct the trial without a jury, 
 of any cause, matter, or issue, requiring any prolonged examina- 
 tion of documents or accounts or any scientific or local examina- 
 tion which cannot, in their or his opinion, conveniently be made 
 with a jury " ; and rule 6 : " In any other cause or matter, upon the 
 application of any party thereto, for a trial with a jury." These 
 
 (a) F^vgg v. Silher, L. R., 1 Q. B. {b) W. N. 1880, p. 28. 
 
 D. 362. 
 
316 THE LAW OF PATENTS. 
 
 rules, together with the provisions of sect. 28 of the Patent Act, 
 would show that the better opinion probably is that, unless a 
 judge or the Court otherwise orders, the constitution of the Court 
 shall be a judge sitting without a jury, and with or without an 
 assessor. 
 
 The grounds of application for a trial by jury would be that 
 the evidence shows a conflict of testimony in material parts, or 
 that grave questions of credibility are likely to arise, or that a 
 charge of fraud is made against either party. 
 
 jMr. Hindmarch, at p. 291 of his celebrated work, says : " Few 
 causes require so much care and industry in preparing for trial as 
 patent actions, in which very nice points of law and difficult 
 questions of fact must often be decided between the parties ; and 
 it will frequently happen that a party will succeed or fail in 
 obtaining a verdict according to the industry with which he has 
 got up his case for trial. Properly to understand the questions 
 raised in such actions and prepare the necessary proofs, a compe- 
 tent knowledge, not only of law, but also of science in general and 
 the useful arts, is essentially requisite." 
 
 Prior to the Act of 1883 the jurisdiction of the Palatine Court 
 of Lancaster was " the jurisdiction of the old Court of Chancery 
 within the boundary " (c), and its jurisdiction to award damages 
 depended upon the provisions of Lord Cairns' Act (d), which 
 limited that jurisdiction to cases where the Court had power to 
 grant an injunction ; consequently where it was held that no in- 
 junction could under the circumstances be granted, the plaintiffs 
 were unable to recover damages in that Court for the infringe- 
 ment of their patent (e). 
 
 The Act of 1883 made no mention of the Palatine Court, 
 defining the word " Court " as the High Court of Justice, and by 
 the general repeal of previous Acts relating to letters patent, 
 without excepting their application to proceedings in the Palatine 
 
 (c) Per Jcssel, M.R. ; Ee Lcmgdcn- Davenport v. Rylands, L. R., 1 Eq, 
 
 dale Cotton Spinning Co., L. R., 8 Cli. 302 ; Swaine v. Great Northern Rail 
 
 D. 152 ; 26 W. R. 491. Co., 12 W. R. 391 ; JFedmar r. Cor 
 
 {d) 21 & 22 Vict. c. 27. 2'oration of Bristol, 11 W. R. 136 
 
 (e) Proctor v. Baylcy, 6 P. 0. R. Cory v. Thames Iron Co., 11 W. R, 
 
 538, 545 ; see also upon this point 589 ; Catton v. Wyld, 32 Beav. 266. 
 Hindlcijv. Emery, Ti. R, 1 Eq. 52 ; 
 
THE TRIAL. 317 
 
 Court, confined the jurisdiction of that Court to the general rule 
 relating to proceedings in a Chancery action for the infringement 
 of a right of any description, unless special jurisdiction could be 
 found in the interpretation of the word "judge " in the Act of 
 1883. 
 
 In Winter v. Baybuf ( /') the Vice-Chancellor held that the words 
 " The Court or a judge " in the 19th. sect, meant " The High 
 Court or a judge with power to try actions for infringement," and 
 consequently held that he had jurisdiction to give liberty to the 
 plaintiff to apply for leave to amend his specification while an 
 action for infringement was pending before him. But in Proctor 
 V. Sutton {(j) Day, J., held that the same words in the 31st sect, 
 meant " The Court or a judge thereof," and consequently that 
 the Vice-Chancellor had no jurisdiction to grant a certificate of 
 validity under that section. 
 
 If the latter be the correct interpretation it would appear that 
 the jurisdiction in patent actions given to the Vice-Chancellor 
 under the provisions of the Acts which were repealed by the Act 
 of 1883, was by that Act taken away. 
 
 The Chancery of Lancaster Act, 1890, sect. 3, enacts: — 
 
 " From and after the passing of this Act the Court of Chancerii 
 of the County Palatine of Lancaster {in this Act called the Lan- 
 caster Chancery Court), shall, as regards all persons, bodies corpo- 
 rate, and property tvithin or becoming subject to its jurisdiction, have 
 and exercise the lihe powers and jurisdiction, and in a similar manner 
 and subject to the same restrictions in all respects, as the High Court 
 in its Chancery Division now has and exercises, or may, under or bi 
 virtue of any Act of Parliament hereafter passed, and not expressly 
 enacting to the contrary hereof, have and exercise, in respect of all 
 jjersons, bodies corporate, and property within its jurisdiction." 
 
 The effect of this Act is to extend the meaning cf the word 
 " Court" in the Patents, &c.. Acts, to the Palatine Court so far 
 as it relates to actions for infringement. 
 
 A grant of letters patent gives to the patentee a right which 
 extends over the whole of the United Kingdom, and only a small 
 portion of that right lies in the district which is within the juris- 
 diction of the Palatine Court, consequently the Chancery of 
 (/) 1 P. 0. R. 76. {g) 5 P. O. R. 184. 
 
31 8 THE LAW OF PATENTS. 
 
 Lancaster Act, 1890, does not give to that Court power to adju- 
 dicate upon a petition for revocaticm of letters patent since the 
 whole of the property which is the subject of the petition does 
 not lie within its jurisdiction. 
 
 A county court has no jurisdiction to try an action for infringe- 
 ment when the validity of the patent is in dispute (//). 
 
 It is no ground for postponing the trial of an action for in- 
 fringement that a petition has been presented by the defendant or 
 any other person under sect. 26 to revoke the patent. 
 
 We have seen that proceedings for revocation are similar to, 
 and for the same purpose as, scire facias prior to the Act of 1883. 
 In Muniz v. Foster (i) it had been held that the fact of a writ of 
 scire facias being pending was no ground for staying the action for 
 infringement. Tindal, C. J., said : " As a general rule, a plain- 
 tiff has a right to have his cause go on for trial according to the 
 ordinary course of business. Special circumstances may exist 
 upon which the Court may see fit to interfere ; but the present 
 does not appear to us to be a case in which we ought to interfere 
 by staying the proceedings in the action." 
 
 The ground of this decision was that the plaintiff in the action 
 for infringement, being defendant in the proceedings by scire 
 facias, had not the conduct of those proceedings, and that the 
 defendant in the action for infringement might delay them ; but 
 where, in Patteson v. Holland {k), an action for infringement had 
 been tried, and a rule nisi for a new trial had been obtained and 
 argued, and it appeared that another action was pending in that 
 Court for another infringement of the same patent, and that a 
 scire facias had been sued out to repeal the patent, the Court sus- 
 pended their judgment upon the rule for a new trial, and ordered 
 the trial of the other action to be postponed until after the trial 
 of the scire facias. 
 
 And where a verdict had already gone for the Crown on scire 
 facias, but a new trial was pending, the plaintiff was not per- 
 mitted to proceed to trial with his action for infringement until 
 
 (h) R. V. County Court Judge of {i) 2 Web. P. C. 93 (n.) ; 1 Dowl. & 
 
 Bali/ax, L. R., 1891, 1 Q. B. 793 ; Low. 942. 
 
 L. R., 1891, 2 Q. B. 263 ; 8 P. 0. R. (k) Hindmarch, p. 293. 
 338. 
 
THE TRIAL. 319 
 
 the rule for the now trial in scire facias had been disposed 
 
 of(/). ^ _ • 
 
 In an action for infringement the plaintiflf has the right of 
 heginning and of replying, notwithstanding that the burden of 
 proof may really be on the defendant, as, for instance, where the 
 case principally turns upon questions of prior user or prior publi- 
 cation, which are introduced by the defendant. It sometimes 
 happened that this privilege, particularly in cases of conflicting 
 evidence, was of great value, and for the purpose of snatching 
 it from the plaintiff the defendant did not wait for the plaintiff to 
 commence his action, but commenced proceedings himself by scire 
 facias to repeal the patent, so as to place himself in the position 
 of plaintiff. But, by sect. 26, sub-sect. 7, of the Act of 1883, 
 it is provided that in cases where it is sought to revoke a patent, 
 " The defendant shall be entitled to begin and give evidence in sup- 
 port of the patent, and if the plaintiff gives evidence impeaching the 
 validity of the patent, the defendant shall be entitled to reply." 
 
 In Westley Richards v. Perhes (m) the fact of infringement 
 was admitted, and the case turned upon the validity of the plain- 
 tiff's patent. Kay, L.J., stopped the plaintiff's counsel after 
 having made out a prima facie case, the burden of proof as to 
 invalidity being on the shoulders of the defendant, and in that 
 case the learned judge gave leave to the defendant's counsel to- 
 reply on the whole case. Probably this was owing to the fact that 
 the point that the alleged anticipation was never published was 
 not taken by the plaintiff's counsel until he replied generally to 
 the defendant's case. 
 
 The plaintiff must give evidence of the issues, which he is bound 
 to prove. It is for him to support his patent and to establish its 
 validity. He must prove his patent if the grant be denied. This 
 is done by producing the patent itself, with the great seal — or, 
 under the Act of 1883, the seal of the Patent Office — attached to 
 it. Sect. 12, sub-sect. 2, provides that, " A patent so sealed shall 
 have the same effect as if it were sealed with the great seal of the 
 United Kingdom " ; or under sect. 89, if it be not convenient or 
 possible to produce the original, " Printed or written copies or 
 
 (l) Smith V. Upto7i, 6 M. & G. (??i) in P. 0. R. 181. 
 
 251. 
 
320 THE LAW OF PATENTS. 
 
 extracts, piirporfijir/ to l)f> cortifiod hj the comptroller and sealed 
 with the seal of the Patent Office, of or from patents, specifications, 
 disclaimers, and other documents in the Patent Office, and of or from 
 registers and other books kept there shall he admitted in evidence in 
 all Courts in Her Majesty s dominions, and in all proceedings, 
 without further proof or production of the originals." 
 
 If the plaintiff sues as assignee, or under any derivative title, 
 and his title is denied, the entry from the register of patents may 
 be proved in the manner suggested by the 89th section. 
 
 Under the 96th section " a certificate purportittg to he under the 
 hand of 'the comptroller as toang i-ntrij, matter, or thing which he is 
 authorised by this Act, or any general rules inade thereunder, to 
 make or do, shall he prima facie evidence of the entry having been 
 made, and of the contents thereof, and of the Tnatter or thing having 
 been done or left undone." 
 
 For instance, if an entry in the register is denied by the 
 defendant, he may prove its omission by a certificate under the 
 96th section. 
 
 If the fact of infringement is denied, the plaintiff must be ready 
 with evidence that the defendant has made, used, or sold the 
 articles or process, and any one of these Acts, as we have already 
 seen, will satisfy the allegation of infringement, whether inten- 
 tional or not (»). 
 
 The burden of proving infringement is strictly on the plaintiff, 
 and if he does not satisfactorily prove it there is no necessity of 
 entering upon the defendant's case on other matters. The plain- 
 tiff must always give evidence when the alleged infringement is 
 the sale or use of an article, that it was not made by himself or 
 his agents (o). 
 
 The plaintiff must, if the matter be put in issue, prove that the 
 title, provisional specification and complete specification, corre- 
 spond and substantially describe the same invention [p). 
 
 If it is alleged by the defendant that the invention is illegal or 
 useless, the burden of proof is on the plaintiff. 
 
 So the plaintiff must be prepared, if he intends to claim 
 
 (n) See Chap. XVII. (p) Ante, p. 78, et scq. 
 
 (o) Belts V. Wilhmtt, L.R.,6 Oh. 239. 
 
THE TRIAL. 321 
 
 damages, and not an account, to prove the damage which he has 
 sustained [q). 
 
 When the defendant alleges that there is a defect or insuffi- 
 ciency in the specification, the burden of proving that there is no 
 such defect is on the plaintiff. 
 
 "We have seen (?•) that it is for the jury to say whether a 
 specification is sufficient or intelligible or not ; it is for the Court 
 to place a construction upon the language used in the specifica- 
 tion. The plaintiff must therefore be prepared with evidence of 
 an expert character as to the sufficiency of the specification ; and 
 in selecting this evidence the plaintiff cannot be better guided 
 than by the judgment of Sir George Jessel in Plimpton v. Mal- 
 colmson (s) ; he must not select eminent engineers or celebrated 
 chemists as the persons to whom the specification must be intelli- 
 gible, but he must choose "ordinary workmen " in the particular 
 branch of trade to which the invention refers — " not a careless 
 man, but a careful man, though not possessed of that great 
 scientific knowledge or power of invention which would enable 
 him by himself unaided to supplement a defective description or 
 correct an erroneous description." He may, of course, call 
 eminent engineers, but their evidence can only be, " placing my- 
 self in the position of an ordinary workman I think it would or 
 would not be intelligible or sufficient to me." If the specification 
 be not sufficiently clear to be understood by an ordinary workman 
 (a witness for the plaintiff), witnesses will not be allowed to be 
 called to explain the intention of the patentee, and the plaintiff 
 will be non-suited {t). 
 
 An expert witness cannot be asked his opinion as to whether 
 or not there has been infringement. That is a question for the 
 jury, or the Court in the absence of a jury {u). 
 
 The description of evidence which is admissible in an action for 
 infringement has been considered in an earlier chapter {v) ; ques- 
 tions, however, which may be put to an expert witness in exarai- 
 
 {q) As to measure of damage, see (t) Brooks v. Rijjley, 2 Lend. Jour. 
 
 Chap. XVIII., ante. C. S. 35. 
 
 (?•) Ante, p. 93. (m) Per Lord Wensleydale, in Seed 
 
 (s) L. R., 3 Ch. D. 531 ; see also v. Ilkjgins, 8 H. L. Cas. 550. 
 
 ante, p. 93, et seq. (y) Ante, p. 96. 
 
 T. Y 
 
322 THE LAW OF PATENTS. 
 
 nation in chief ditfer to some extent from those which may be put 
 in cross-examination. When the witness has stated in his exami- 
 nation that an ordinary workman would make a certain machine 
 from the description contained in the specification, it is open to 
 the counsel on the other side to cross-examine him upon the 
 specification, taking it line by line for the purpose of sho wing 
 that what he said in the first instance was incorrect, although 
 that method of questioning would not be permitted on examina- 
 tion in chief. 
 
 The Court will consider the circumstances of the case, the 
 behaviour of the witnesses and their credibility, when considering 
 the question of infringement or no infringement. 
 
 In Clat'k V. Adie ix), Lord Blackburn said : — " Whenever a 
 man knowing for the first time of an invention, either by seeing 
 a machine at work or by reading a specification, proceeds to do 
 what he never did before, and takes a part of the invention, it is 
 always a very strong argumentum ad Jiominem to say : You are, by 
 the very fact of taking this, making evidence against yourself 
 that it was a new invention ; otherwise, why did you take it ? 
 You are making evidence against yourself that at all events the 
 part you took was new, or why did you take it ? and whenever 
 there is a case of theft or stealing knowingly, that observation 
 ought to have some weight, although I think in practice it has 
 more weight given to it than it ought to have. But where there 
 is a case of an innocent infringement of property, by an unwitting 
 use of this sort, that observation can have no weight against the 
 party in the slightest degree, and I think it ought not to have 
 any." 
 
 Experiments conducted for the express purpose of manu- 
 facturing e\ddence, with a view to litigation, are to be looked at 
 ■with distrust {y). 
 
 When the defendant pleads that the grantee of the letters 
 patent was not the true and first inventor, or that the invention 
 was not new, it will be sufficient if the j)laintiff gives some jjrimd 
 facie evidence of novelty (z). It will be sufficient to call one or 
 
 {x) L. R., 2 App. Cas. 337. TVestle7j Richards v. Perkes, 10 P. 0. R. 
 
 {y) TouTig v. Fernie, 4 Giff. 609. 181, 18C. 
 
 (2) Turner v. Winter, 1 T. R. 606 ; 
 
THE TRIAL. 323 
 
 two persons acquainted practically with the trade to which the 
 invention refers, to say that they never heard of it, or saw or 
 heard of its having been put in practice or published before the 
 date of the patent. Gibbs, C.J., said : " The first witness, a 
 man of considerable experience, had never seen locks with the 
 lips so perforated ; prima facie that is good evidence ; but when 
 the question is, whether this had existence previous to the patent, 
 fifty witnesses proving that they never saw it before, would be of 
 no avail if one was called who had seen it and practised it (a). 
 
 The plaintiff having given this jji-imd facie evidence, the burden 
 of proof as to prior user or prior publication is shifted to the 
 defendant, and if he would invalidate the patent he must prove 
 his case. 
 
 We have pre\'iously discussed what amounts to prior user and 
 prior publication (b). The evidence which the defendant brings 
 must be complete and satisfactory, and the question is one of 
 fact. 
 
 If the defendant has succeeded in establishing a case against 
 the plaintiff, the latter will be permitted before the defendant 
 sums up, to adduce rebutting evidence. In Penn v. Jack and 
 Others (c), Sir W. Page- Wood, V.-C, said : =' I think the plain- 
 tiff is entitled to adduce evidence, in reply, for the purpose of 
 rebutting the case set up by the defendants ; and for this reason 
 that it is quite impossible for him to know what is the nature of 
 the evidence which is to be produced. The defendants, who con- 
 test the validity of the invention, have in effect put in a plea 
 denying the novelty of the plaintiff's patent ; and the affirmative 
 of the issue just raised in reality rests with the defendants who 
 are not obliged to give the names of their witnesses. How can 
 the plaintiff possibly meet such a case until he hears the evidence 
 for the defence, and knows what their witnesses will prove ? I 
 should be very sorry to have to put the parties to all the expense 
 and delay of a new trial, which I should have to direct, if this 
 evidence were excluded. Besides which, the witnesses are at 
 hand and ready, and the sensible and obvious course is to examine 
 them now. The practice at common law is stated in Taylor on 
 
 {a) Manton v. Manton, Dav. P. C. {b) Ante, Chap. V. 
 
 350. (c) L. R., 2 Eq., at p. 317. 
 
 Y 2 
 
324 THE LAW OF PATENTS. 
 
 E\adGnce ; and it appears that where, as here, several issues are 
 joined, the plaintiff may content himself with adducing evidence 
 in support of those issues which he is bound to prove, reser\dng 
 the right of rebutting his adversary's proofs, in the event of the 
 defendant establishing a J9n//ic2 facie case with respect to the 
 issues which lie upon him. In support of this proposition, S>haw 
 V. Beck (d) is cited, where Parke, B., used the following expres- 
 sion : ' But Abbott, C. J., laid down what appears to me to be a 
 more reasonable rule, by holding that the defendant was bound to 
 prove his j)lea, and that the plaintiff might answer it by addi- 
 tional e^adence.' Other instances are also mentioned, all show- 
 ing the wide discretion given to the judge in allowing evidence to 
 be given by the plaintiff in reply. The plaintiflF has put in his 
 letters patent as formal e\ddence of his title. The defendants 
 then plead want of novelty, and give, in proof of the issues thus 
 raised by them, special e\adenco, which the plaintiff is entitled to 
 rebut, by evidence in rej)ly. Regarding this case as one of an 
 affirmative plea, the burden of proving which rests on the 
 defendants, I feel bound to admit the e\ddence proposed to be 
 given by the plaintiff in reply." 
 
 Although the plaintiff may, as of right, rebut the case made by 
 the defendant, upon any issue which rests with the defendant, 
 where the plaintiff has given such rebutting evidence, the 
 defendant will not he allowed to strengthen the case which he had 
 made by adducing further evidence ; and this will apply with 
 greater force when the defendant's counsel has summed up the 
 evidence which has been offered (e). 
 
 At the hearing of the action, no ohjection will he allowed either 
 to the particulars of objections, or to the particulars of breaches, 
 and any evidence will be received which they are wide enough to 
 admit of. If there is any vagueness or insufficiency in the par- 
 ticulars, the party requiring further information must apply for it 
 to a judge in chambers, within reasonable time before the trial of 
 the action ; but they will not be allowed to permit the oj)posite side 
 to go to trial, and then to submit that for want of sufficient particu- 
 larity in the objection, the evidence is not admissible (,/). 
 
 {(l) 8 Ex. 392. p. 318. 
 
 (e) Fenn v. Jack, L. R., 2 Eq., at (/) Ante, pp. 290, 301. 
 
THE TRIAL. 325 
 
 Where the defendant alleged a secret process in an action for 
 infringement, the hearing was conducted in camera, and the short- 
 hand notes of the trial impounded by order of the Court (g). 
 
 QUESTIONS FOR COURT AND JURY. 
 
 We have seen that, as a rule, actions for the infringement of 
 letters patent are directed to be tried before the Court without a 
 jury. Still, under special circumstances, the parties, or cither of 
 them, may obtain an order to try before a jury. Under these 
 circumstances it will still be material to consider what are the 
 questions which the Court should leave to the jury, and wliich 
 are left to the decision of the Court. 
 
 As to the specification. The construction is for the Court (//) ; 
 and the rules of construction arc similar to those which govern 
 the construction of other documents (i). In Hills v. Evans (/.•), 
 Lord Westbury said : " It is undoubtedly true, as a proposition 
 of law, that the construction of a specification, as the construction 
 of all other written instruments, belongs to the Court ; but a 
 specification of an invention contains most generally, if not 
 always, some technical terms, some phrases of art, some 
 processes, and requires generally the aid of the light derived 
 from what are called surrounding circumstances. It is, there- 
 fore, an admitted rule of law that the explanation of the words 
 or technical terms of art, the phrases used in commerce, and the 
 proofs and results of the processes which are described (and in a 
 chemical patent the ascertainment of chemical equivalents), that 
 all these are matters of fact upon which e\T.dence may be given, 
 contradictory testimony may be adduced, and upon which un- 
 doubtedly it is the province and the right of a jury to decide. 
 But when these portions of a specification are abstracted and 
 made the subject of evidence, and therefore brought within the 
 province of the jury, the direction to be given to the jury with 
 regard to the construction of the rest of the patent, which is con- 
 ceived in ordinary language, must be a direction given only con- 
 ditionally, that is to say, a direction as to the meaning of the 
 
 {(/) Badiscke Anilin und Soda (h) Ante, p. 93, ctseq. 
 
 Fabrik v. Levinstein, L. R., 24 Ch. D. (/) Ante, p. 05. 
 
 156. {k) 31 L. J., Ch. 457. 
 
326 THE LAW OF PATENTS. 
 
 patent upon the hypothesis or the basis of the jury arriving at a 
 certain conclusion with regard to the meaning of those terms, the 
 signification of those phrases, the truth of those processes, and 
 the result of the technical procedure described in the specification. 
 And so the rule is given by Parke, B., in delivering the judgment 
 of the Court of Exchequer in the case, I think, of Neihon v. 
 Harford (/). The language of the learned judge, which I adopt, 
 is in these words : ' The construction of all written instruments 
 belongs to the Court alone, whose duty it is to construe all such 
 iustriiments as soon as the true meaning of the words in wliich 
 they are couched and the surrounding circumstances, if any, have 
 been ascertained as facts by the jury ; and it is the duty of the 
 jury to take the construction from the Court, either absolutely, 
 if there be no words to be construed as words of art or phrases 
 used in commerce, and no surrounding circumstances to be ascer- 
 tained, or conditionally, when those words or circumstances are 
 necessarily referred to them.' Now, adopting that as the rule in 
 the comparison of two specifications, each of which is filled with 
 terms of art and with the description of technical processes, the 
 duty of the Court would be confined to this — to give the legal 
 construction of such documents taken independently. But, after 
 that duty is discharged, there would remain a most important 
 function to be still performed, which is the comparison of the 
 two instruments when they have received their legal exposition 
 and interpretation ; and as it is always a matter of e\4dence what 
 external thing is indicated and denoted by any descrij)tion, when 
 the jury have been informed of the meaning of the description 
 contained in each specification, the work of comparing the two, 
 and ascertaining whether the words, as interpreted by the Court, 
 contained in sj)ecification A, do or do not denote the same 
 external matter as the words, as interpreted and explained by 
 the Court, contained in specification B, is a matter of fact, and 
 is, I conceive, a matter within the province of the jury, and not 
 within the function of the Court." 
 
 Epitomising this elaborate judgment. When the language 
 used is that v/hich has an ordinary and legal meaning the 
 question is, wliat has the man said ? not what did ho intend to 
 
 (l) 8 M. & W. 806. 
 
QUESTIONS FOR COURT AND JURY. 327 
 
 say ? and, therefore, the Court will pkice the legal meaning on 
 his words. When the language used is that which has no 
 ordinary legal meaning, or which under different circumstances 
 may have two or more ordinary legal meanings, the question is, 
 as a fact, with what meaning did the writer use the words or 
 expressions which he has used ? and that is a question which the 
 Court should require the jury to solve. The matter could not be 
 placed more lucidly than it is by Lord Westbury in the last 
 dozen lines of the judgment which we have quoted. 
 
 It is for the jury to say whether the specification is intelli- 
 gible (w) or not, and it is for the Court to direct the jury as to 
 the class of persons to whom it must be intelligible (w). 
 
 It is for the jury to say whether the specification is sufficient 
 or not, that is, whether it contains a sufficient description of the 
 invention; but it is for the Court to inform the jury the degree 
 of sufficiency which the law requires in specifications (o). 
 
 The novelty of the invention is a question for the jury. 
 Questions of prior user or prior publication are always questions 
 of fact, and it is for the jury to compare what has been done 
 before and what is set up as being new, and to say whether or 
 not they are identical. And so any document which is said to 
 amount to prior publication must be construed by the Court, but 
 it is for the jury to compare it with the specification and to say 
 whether the described matter is the same or not (p). 
 
 The utility of the invention is also for the jury, subject to the 
 directions of the Court as to the degree of utility which the law 
 requires for the purpose of supporting the validity of a 
 patent (q). 
 
 The question of infringement is for the jury. In Be la Rue v. 
 
 (m) Ante, pp. 93, 99, et seq. 519 ; Mliott v. Aston, 1 Web. P. C. 
 
 (n) Ante, p. 99, et seq. 222 ; Muntz v. Foster, 2 "Web. P. 0. 
 
 107 ; Spencer v. Jack, 11 L. T., N. S. 
 
 242 ; also cases quoted ante, p. 96. 
 {q) Hill V. Thompson, 1 Web. P. C. 
 
 237 ; Bloxam v. Elsee, 1 C. & P. 565 ; 
 
 Cornish v. Keenc, 1 Web. P. C. 506 ; 
 
 Morgan v. Seaward, 1 Web. P. C. 
 
 186 ; Macnamara v. Hulse, C. & M. 
 
 (o) Hill V. Thompson, 1 Web. P.C 
 235 ; Bickford v. Skewes, 1 Q. B. 938 
 Neilson v. Harford, 1 Web. P. C. 295 
 Walton V. Bateman, 1 Web. P. C. 621 
 Beard y. Egerton, 19 L. J., C. P. 38 
 Wallington v. Dale, 7 Ex. 888 
 Parkes v. Stevens, L. R., 8 Eq. 358 
 L. R., 5 Ch. 36. 471. 
 
 (^) Cornish v. Keene, 1 Web. P. C. 
 
328 THE LAW UF PATENTS. 
 
 Dickemon (r), Campbell, C.J., said : — " There may well be a case 
 where the judge may and ought to take upon himself to say that 
 the plaintiff has offered no evidence to be left to the jury to 
 prove infringement, as if there were a j^atent for a chemical 
 composition, and the evidence was that the defendant had con- 
 structed and used a machine for combing wool. But, if the 
 e\'idence has a tendency to show that the defendant has used 
 substantially the same means to obtain the same result as speci- 
 fied by the plaintiff, and scientific witnesses have sworn that the 
 defendant actually has used such means, the question becomes 
 one of fact, mixed with law, which the judge is bound to submit 
 to the jury." 
 
 In Seed v. Higgins (s). Lord Chelmsford in the House of Lords 
 said : — " What the defendant had done in any case was of course 
 a question of fact, but whether, on proof of certain acts having 
 been done by a defendant, the plaintiff had any case to go to a 
 jury, was a question for the judge " (/). 
 
 CERTIFICATES. 
 
 Sect. 31 of the Patents, &c., Act, 1883, is as follows : — " In 
 foi action for infringement of a jxitenf, the Court or a judge mag 
 certify that the validity of the patent came in question, and if the 
 Court or a judge so ccrtijiea, tlien in ang suhsequott action for 
 infringement, the plaintiff in that action, on obtaining a final order 
 or judgment in his favour, shall have his full costs, charges and 
 crpenses as between solicitor and client, anless the Court or judge 
 trging tlie action certifies that he ought not to have the same." 
 
 Similar provisions were contained in 5 & 6 Will. IV. c. 83, 
 and also in the 43rd section of the Patent Law Amendment Act, 
 1883. 
 
 The object of these sections is to prevent patentees of important 
 inventions being ruined by successive actions, which they are 
 bound to bring to restrain infringements, manufacturers banding 
 themselves together to defeat a patentee's rights in this manner. 
 
 ('/•) 7 E. & B., at p. 755. Graiid Junction Rail. Co., 5 Ex. 331 
 
 (&■) 30 L. J., Q. Ji., at p. 317. Stevens v. Kcatiny, 2 Web. P. C. 191 
 
 (t) See also Walton v. Potter, 1 Sellers v. Dkhlnson, 5 Ex. 323 
 
 Web. P. C, 586 ; Macnamara v. Curtis v. Piatt, 35 L. J., Ch. 852. 
 
 JIulse, Car. & M. 471 ; Newton v, 
 
CERTIFICATES. 329 
 
 The Act of William IV. cited above gave the patentee a right 
 to treble costs, but this was taken away by 5 & 6 Vict. c. 97, 
 which gave him full costs ; and now, as wo have seen, costs as 
 between solicitor and client arc substituted for full costs. 
 
 To acquire the protection of the 31st section a certificate is 
 requisite, and this should be applied for at the trial of the action, 
 and the application must be made to the Court or judge who have 
 tried the cause {u). 
 
 The Court has no power to order full costs upon the first 
 trial in which the validity of the patent came in question, the 
 words of the statute being " in any subsequent action for infringe- 
 ment " (^). 
 
 When a certificate of validity has once been granted, the Court 
 will not grant another in a subsequent action upon the same 
 patent (a). 
 
 An action was compromised at the trial by a verdict being 
 entered for the plaintijff in the action for 40-s. damages and costs, 
 with all usual certificates. Subsequently, upon an ex parte 
 application, the judge endorsed on the record a certificate that 
 the record in a certain action, wherein Bovill was plaintiff and 
 Keyworth was defendant, and the certificate thereon endorsed 
 was given in e\adcncc at the trial of this action {BociU v. Hadley), 
 it was held that this certificate was imjDroperly granted, the record 
 and certificate in the former action not having been given in 
 evidence, and it not being under the circumstances a " usual 
 certificate" within the contemplation of the parties (J). Upon 
 the trial of the second action the record of the first action with 
 the endorsement must be produced, but not before the verdict, in 
 such a manner as to prejudice the second trial (c). 
 
 It docs not appear clear whether or not a certificate might be 
 granted in an action to restrain threats, that the validity of the 
 patent came in question. This point arose in Crampton v. The 
 Patents Investments Co. (d), which was an action under section 32. 
 
 («) Gillett V. Green, 7 M. & W. 347. (b) Bovill v. Eadletj, 17 C. B., N. 
 
 (x) Pcnn V. Bihhij, L. R., 3 Eq. S. 435. 
 
 308. (c) Ncimll v. Wilkins, 17 L. T. 20, 
 
 {a) Edison v. Holland, 6 P. 0. R. {d) 5 P. 0. R. 382. 
 243. 
 
330 THE LAW OF FATE>"Tj 
 
 In that case it was held that the defendanf s patent was valid, and 
 had be^i infringed ; appHcation was made by the counsel for the 
 del^dant far a certificate nnder section 31, Field, J., said : " I 
 entertain great doubt whether I hare jurisdiction, and I think 
 the safer course wiU be for me to gire a certificate without pre- 
 judice to the validity of it, if it should come into op^eration [e). 
 
 In obtaining this certificate the plaintiff and the country are 
 the parties, not the defendant, and the judge is bound to protect 
 the interests of the C'^untiy and to see that the certificate is not 
 given when the validity of the patent has not, in fact, been 
 proved to the satisfaction of the Court ; otherwise, there is 
 nothing to prevent collusive actions toeing merely brought for 
 the purpose of obtaining this valuable privilege — a privilege 
 which can be used as an enormous lever, preventing persons 
 from incurring the risk of a conflict with the patentee ij'). 
 
 Of late years it would seem that these certificates have been 
 granted somewhat too easily, having regard to the importance of 
 the consequences indicated above. 
 
 In Haddock y. Bradbury (g) the validity of the patent was put 
 in isue by the defence, but the defendant not appearing at the 
 trial, the validity of the patent was not seriously contested. 
 Judgment was given for the plaintiff and a certificate of validity 
 granted. 
 
 In The Delta Metal Co. v. Maxim Nordenfelt Co. (A), after the 
 trial had been in progress for some days, the parties agreed to 
 a compromise in the following terms : " Judgment for plaintift' 
 on validity of patent P laintiff-? to be at liberty to ask the judge 
 for a certificate: Judgment for defendants on infringement. 
 Plaintiflfe to pay 300/. towards the defendants' costs. !Xo other 
 action to be brought on plaintLflfe' patent against defendants or 
 their customers." 
 
 Judgment was given upon the terms of the compromise. In 
 answer to an application of p lain tiffs' counsel for a certificate of 
 validity, Collins, J., said : "I am not asked to pronounce any 
 
 M At p. 4<M. ( jf) 4 P. O. E. 7i ; also UnUed 
 
 - C. & K. &9 ; Phoiiogni^ Co. v. Young, 11 P. O. B 
 
 - ., 1 P. O. B. 492. 
 
 2&1- {h) 8 P. O. E. 24S. 
 
CERTIFICATES. 331 
 
 opinion, and I do not pronounce any opinion. It lias unquestion- 
 ably been brought in question, and you have arranged between 
 yourselves bow it is to be decided. You will hand the terms in 
 — I do not do anything. I simply give judgment in accordance 
 with the terms of your consent, that is all." Certificate granted. 
 
 In neither of the above cases was the vaHdity of the patent 
 put to the test, and it must be surmised that the certificates were 
 granted in those cases owing to the fact that the judgment of 
 Erie, J., in Stocker v. Rogers, refen-ed to above, was not brought 
 under the notice of the judge, owing, in the one case to the 
 absence of, and in the other to the acquiescence by the defendant, 
 and in consequence the ratio decidendi of that judgment was not 
 jjroperly taken into consideration by the Court. 
 
 In the first of the two cases {Haydock v. Bradbury), Kekewich, 
 J., said : " Unless there is some authority to the contrary, I do 
 not see why you should not have a certificate where the defen- 
 dant retires from the contest." The counsel for the plaintiff 
 intimated that he did not know of any authority on the point, 
 and a certificate was accordingly granted. 
 
 On the authoiity of the decision in Haydock v. Bradbury, a 
 certificate of validity was granted in Tlie United PhonograpJi Co. 
 V. Young {i), in which the cii'cumstances were precisely similar. 
 
 The case of The Delta Metal Co. v. Tke Ma.xim Nordenfelt 
 Co. (sujjra), seems to fall exactly within the evil contemplated by 
 Erie, J., and which he considered it to be so important to avoid. 
 
 No appeal will He from a granting or refusing to grant a cer- 
 tificate that the validity of the patent came in question ; such 
 appeal not being from a judgment or order within sect. 19 of the 
 Judicature Act (k). 
 
 " In any subsequent action for infringement : " A certificate of 
 validity granted in one action will not aftect the costs in another, 
 although decided at a later date, provided that the latter proceed- 
 ings were instituted before the grant of the certificate in the 
 earlier action (/). 
 
 (i) 11 P. 0. R. 492. chiiieCo. v. The IiiiterriatiowiL Hygveriic 
 
 {k) Haslam v. HaU, L. K, 20 Q. Soc., 6 P. 0. R, at p. 480; see also 
 
 B. D. 491 ; 5 P. 0. R. 144. Penn v. Fernie, L. R., 3 Eq. 308. 
 {I) The Atctomatic TFeiyhiny Ma- 
 
332 THE LAW OF PATENTS. 
 
 It duos not api3ear to be quite clearly settled whether or not 
 solicitor and client costs will be allowed in the second action when 
 the validity of the patent is not j)ut in issue. In The Automatic 
 Wciglihuj Machine Co. v. The International Hygienic Society {m), 
 Charles, J., expressed an opinion that sect. 31 did not apply if 
 the validity of the patent was not disputed in the subsequent 
 action; and in Otto v. Steel [n), solicitor and cKent costs were 
 refused on the ground that the validity of the patent was disputed 
 upon different grounds to those wliich were relied upon in the 
 earlier action. 
 
 In The United Telephone Co. v. Townsend (o), the validity of 
 the patent was not put in issue, a certificate had been granted in 
 an earlier action, Bacon, V.-C, said : " The policy of the Act is, 
 that if a patentee is put to the trouble of bringing an action 
 after he has established his right, the infringer shall pay solicitor 
 and client costs ; and that must be the order here." 
 
 And iu The United Telephone Co. v. Patterson {p), Chitty, J., 
 said : " The mere fact of the validity of the patent not being 
 called in question in a subsequent action for infringement is no 
 ground, by itself, for the judge exercising his discretion in favour 
 of the defendant." 
 
 " Unless the Court or judge trying the action certifies that he 
 ought not to have the same." This clause gives unlimited discre- 
 tion to the judge, a discretion which is exercised in view of the 
 facts of each particular case ; so where the second action was 
 vexatious {q), or where litigation was the natural consequence 
 of the vague and lax manner in which the specification had been 
 drawn up (r), costs as between solicitor and client were re- 
 fused («). The Imrden is on the defendant to show cause why 
 he should not pay solicitor and client costs under this section {t). 
 
 (m) Ibid. (r) Aiitomatic Weighing Machine 
 
 {n) 3 P. 0. R. 120 ; but note The Co. v. National Exhibitions Associa- 
 
 A'utoviutic Weighing Machine Co. v. tion, 8 P. 0. R. 352. 
 
 Fearhy, 10 P. 0. R. 442. (s) See also Boyd v. The Tootal 
 
 (o) 3 P. 0. R. 10 ; see also United Broadhurst Lee Co., 11 P. 0. R., at p. 
 
 Telephone Co. v. St. George, 3 P. 0. R. 185. 
 
 321. {t) United Telephone Co. v. Patter- 
 
 {p) 6 P. O. R. 142. son, 6 P. O. R. 142 ; see also United 
 
 ( q) Proctor V. Sutton, 5 P. 0. R. Telephone Co. v. St. George, 3 P. 0. R 
 
 184. ut p. 33U. 
 
CERTIFICATES. 333 
 
 Sect. 29 of the Act of 1883, after providing for the delivery of 
 particulars of breaches and objections, enacts : — " (6.) On taxation 
 of costs regard shall he had to the 2^<^f^'ticiilars delipered hy the 
 plaintiff and hij the defendant, and they respectively shall not be 
 allowed any costs in respect of any particular delivered hy them 
 unless the same is certified hy the Court or a judge to have been 
 proven, or to have been reasonable and proj^er without regard to the 
 general costs of the case.^' 
 
 Where the plaintiff is successful on some issues, and the 
 defendant on some, the costs should be apportioned (u). In 
 Badische Anilin Fabrik v. Levinstein (.r), in the Court of Appeal, 
 Bowen, L. J., said : " I am of opinion in this case that the plain- 
 tiffs should have the costs occasioned by the issues raised by the 
 particulars of breaches, and that in respect of all the other costs 
 the costs in the action should follow the usual result, and be 
 awarded to the successful party. It seems to me that without 
 laying down any hard-and-fast line, or trying to fetter our discre- 
 tion at a future period in any other case, we are acting on a 
 sensible and sound principle, namely, the principle that the parties 
 ought not, even if right in the action, to add to the expenses of an 
 action by fighting issues in which they are in the wrong. It may 
 be very reasonable with regard to their own interest, and may 
 help them in the conduct of the action, that they should raise 
 issues in which, in the end, they are defeated, but the defendant 
 who does so does it in his own interest, and I think he ought to 
 do it at his own expense. The order, therefore, I think ought to 
 be as I have stated," 
 
 Costs will be apportioned both where the patent is held to be 
 invalid and the acts alleged to be infringements proved [y), and 
 where the plaintiff fails on the issue of infringement, and suc- 
 
 {u) Wegmann v. Corcoran, 27 W. R. nington v. Hill, 8 P. 0. R., at p. 332 ; 
 
 357 ; Pooley v. Pointon, 2 P. 0. R. at Cassel Gold Extracting Co. v. Cyanide 
 
 p. 173 ; Nordcnfclt v. Gardner, 1 P. Gold Recovery Syn., 11 P. 0. R., at p. 
 
 0. R., at p. 75. 653 ; but note United Telephone Co. v. 
 
 (.c) L. R., 29 Ch. D., at p. 418; Harrison, L. R., 21 Ch. D. 720, 747; 
 
 2 P. 0, R., at p. 118. and Blakey v. Latham, 6 P. 0. R. 29, 
 
 iy) Ibid. See also Young v. Rosen- 38 ; also in C. A., 6 P. O. R. 184, 
 
 thall, 1 P. 0. R. 41 ; Phillips v. Ivel 190. 
 Cycle Co., 7 P. 0. R., at p. 85 ; Bin- 
 
334 THE LAW OF PATENTS. 
 
 ceeds in upholding his patent (s), but in each of these cases the 
 issues must be perfectly distinct (a). 
 
 "Where the act of infringement was admitted before the trial, 
 the plaintiifs were not allowed any costs on that issue, their patent 
 being held to be invalid (b). 
 
 Where the plaintiffs brought an action for infringement of two 
 patents, but abandoned their case as to one of them at the trial of 
 the action, it was held that the plaintiffs should pay all costs in- 
 curred by the defendants so far as occasioned by the claim to the 
 patent so abandoned, although successful in the remainder of their 
 action (c). 
 
 The certificates granted under this section must not be con- 
 fused with the certificate under sect. 31. The object of sect. 29 
 is to provide what costs shall be payable in the action itself, and 
 the object of sect. 31 is to provide for the costs of future actions. 
 
 Care must be taken at the trial to ask the Judge to certify as to 
 each particular breach mentioned in the particulars of breaches, 
 and as to each particular objection ; and no costs of witnesses, or 
 of, and incidental to, such breach or objection, as is not specially 
 certified for, will be allowed (d). 
 
 Omission to ask the Judge at the trial for his certificate does 
 not preclude the successful party from obtaining it, provided he 
 makes his application within a reasonable time (e). 
 
 If an action is not tried out, it is obvious that a difficulty may 
 arise as to costs, since the parties have had no opportunity to 
 prove or disprove their particulars. In Greaves v. The Eastern 
 Counties Railway Co. (,/'), it was held that where the defendant 
 
 (z) TweedaU v. Ashtvorth, 7 P. 0. P. 0. R., at p. 194. 
 
 R., at p. 435 ; Nobel's Ex^ylosives Co. (c) Hocking v. Frascr, 3 P. 0. R. 3 ; 
 
 V. Anderson, IIP. 0. R., at p. 128 ; see also Edison v. Woodlwuse, 3 P. 0. 
 
 but note The Automatic Weighing R. 167, 178. 
 
 Machine Co. v. The Combined Weigh- [d) Honiball v. Bloomer, 10 Exch. 
 
 ing Machine Co., 6 P. 0. R. 367. 538 ; see also Losh v. Hague, 5 M. & 
 
 (a) Guilbert-Martin v. Kerr, -A P. 0. W. 387 ; Parncll v. Mort, Liddell & 
 R. 18; Kayev. Chubb, 4 P. 0. R., at Co., L. R., 29 Ch. D. 325; Long- 
 p. 300 ; Ellington v. Clark, 5 P. 0. R. bottom v. Shaw, 6 P. 0. R. 510. 
 
 328; Parkinson V. Simon, 11 P. 0. R. (e) Roivcliffev. Morris, 3 P. O. R. 
 
 238, 256. 145. 
 
 (b) Westleif^ Richards v. Perkes, 10 (/) 1 E. & E. 961 ; Batley v. Ky- 
 
CERTIFICATES. 385 
 
 had delivered particulars of objections, and just before trial the 
 plaintiff had abandoned his action, thus giving the defendant no 
 opportunity of proving or disproving his objections, the defendant 
 was entitled to the costs of the objections and of the witnesses, 
 for the act did not apply, except where the cause came on for 
 trial. 
 
 But where the action came on for hearing, and the case breaks 
 down before all the particulars have been tried out, the Court will 
 not go through all those particulars with a view to ascertain 
 whether they are reasonable and proper and can be substantiated, 
 and a certificate will only be granted with respect to those parti- 
 culars upon which the action was decided (g). 
 
 The reason of this distinction is that in the first case, that is, 
 when the plaintiff abandons his action before trial, he thereby 
 admits the substantial nature of the objections taken to his patent 
 by the defendant ; but in the second case, that is, where judgment 
 is given upon some particular point without the necessity of con- 
 sidering any of the other objections relied on by the defendant, 
 it does not at all follow that the other particulars were proper and 
 could be substantiated, as there is neither judgment of the Court 
 nor admission by the plaintiff to that effect. 
 
 No mention is made in sect. 29 to a petition for revocation, so 
 probably in such case the provisions of that section will be held 
 not to apply {h). 
 
 No costs were allowed a defendant who was successful by reason 
 of anticipations only put in by amendment of his particulars of 
 objections at the trial of the action (?"). 
 
 We have seen that since the Judicature Acts, the Common 
 Law Division and the Chancery Di\asion can either of them grant 
 full relief in an action for the infringement of a patent, granting 
 both an injunction and damages, or an account. In olden times 
 the Common Law Courts merely inquired into damages, and if 
 
 nock, L. R., 20 Eq. 632; Peroni v. Garrard v. Edge, 6 P. 0. R., 372, 
 
 Hudson, 1 P. 0. R. 261 ; Willoughj 563 ; 7 P. 0. R. 139. 
 
 V. Taylor, 11 P. 0. K. 45, 55. {h) Gaulard v. Gibbs' Patent, 5 P. 
 
 (rj) Longbottom v. Shaw, 5 P. 0. R. 0. R. 525, 537. 
 
 497, 502 ; 6 P. 0. R. 143, 147 ; Boijd (i) Allen v. fforton, 10 P. 0. R. 
 
 V. Horrocks, 6 P. 0. R. 152, 162 ; 412. 
 
336 THE LAW OF PATENTS. 
 
 less than 40.s\ was recovered a question arose as to whether or not 
 County Court costs should not alone be allowed ; but now in every 
 patent case an injunction may be granted, and this removes the 
 case from the operation of 30 &31 Vict. c. 142, s. 5. 
 
 The Rules of the Supreme Court, 1883, provide for cases 
 where the higher scale and lower scale of costs are to be allowed ; 
 and in future, notwithstanding that an injunction is granted, it 
 will be necessary to ask the judge at the trial to certify for costs 
 on the higher scale. 
 
 Order LXV. r. 8, provides : " In causes and matters com- 
 menced after these rules come into operation, solicitors shall be 
 entitled to charge and be allowed the fees set forth in the column 
 headed ' lower scale,' in Appendix N. in all causes and matters, 
 and no higher fees shall be allowed in any case, except such as are 
 by this order otherwise provided for ; and in causes and matters 
 pending at the time when these rules come into operation, to 
 which the higher scale of costs previously in force was applicable, 
 the same scale shall continue to be applied." 
 
 Rule 9. — "The fees set forth in the column headed 'higher 
 scale ' in Appendix N. may be allowed, either generally in any 
 cause or matter, or as to the costs of any particular application 
 made, or business done, in any cause or matter, if, on special 
 grounds arising out of the nature and importance, or the difficulty 
 or urgency of the case, the Court or a judge shall, at the trial or 
 hearing, or further consideration of the cause or matter, or at the 
 liearing of every application therein, whether the cause or matter 
 shall or shall not be brought to trial or hearing, or to further con- 
 sideration (as the case may be) so order ; or if the taxing officer, 
 under directions given to him for that purpose by the Court or a 
 judge, shall think that such allowance ought to be made upon 
 such special grounds as aforesaid." 
 
 Costs on the higher scale are only allowed in cases of excep- 
 tional difficulty, where a special class of witnesses was necessary 
 for making clear the points at issue {k) . 
 
 {k) Ellington v. Clark, 5 P. 0. R. Voriii F. Bayer <£• Co. v. Bowker, 8 
 
 319, 328 ; The Automatic Weigkiny P. 0. R, 389, 397 ; Hopkinson v. St. 
 
 Machine Co. v. The Combined Co., 6 James' Electric Light Co., 10 P. 0. R. 
 
 P. 0. R. 367, 372 ; Farhenfabriken 46, 62. 
 
CERTIFICATES. 387 
 
 In Gadd v. TJhe Mayor, 8fc., of Manchester (/), Lindlcy, L.J., 
 said : "I think costs on the higher scale ought only to be given 
 where there are cases of very unusual difficulty and skill — anti- 
 quarian research and things of that kind. The idea of giving 
 costs on the higher scale in all patent cases is one that I will not 
 sanction." 
 
 The Courts have of late been very reluctant to order costs on 
 the higher scale {m). 
 
 In The Wenham Gas Co. v. The Champion Gas Co. (n), costs 
 on the higher scale were refused on the ground that the necessity 
 for scientific evidence was largely due to the unfortunate wording 
 of the specification. 
 
 Sect. 49 of the Judicature Act, 1873, provides that there 
 shall be no appeal as to costs ; but this was held not to apply 
 where the costs were a matter of right, and not discretionary (o). 
 Under the Rules of Court, which were in operation prior to the 
 24th October, 1883, the question of higher or lower scale was a 
 matter of right (7:*). Hence, in Be Terrell (q), the Court of 
 Appeal held that there was an appeal, but now it will be observed 
 that the order is in the absolute discretion of the judge, and, 
 therefore, it is submitted there is no appeal. 
 
 The directors of a limited company, whose servants have 
 infringed a patent, may be ordered to pay costs personally. 
 
 In Spencer v. The Ancoats Vale Co. (r), it was ordered that 
 costs on the higher scale should be paid by the defendant 
 company, and by the directors in the event of the company not 
 paying. 
 
 Judgment having been recovered, minutes of judgment should 
 be prepared. The minutes will be in accordance with one 
 or other of the precedents given hereafter. We have drawn 
 attention in previous pages to those points which should be 
 attended to in preparing these minutes. Care should be exercised 
 
 (?) 9 P. 0, R. 516, 535. (0) Turner v. Hancock, C. A., L. R., 
 
 (m) Ibid. Also Edison Bell Phono- 20 Ch. D. 303. 
 graph Co. v. Smith <L- Young, 11 P. 0. (p) Rules of S. C, 1875. 
 
 R. 148, 160 ; Parkinson v. Simon, 11 [q) L. R., 22 Oh. D. 473. 
 
 P. 0. R. 238, 256. (/•) 6 P. 0. R. 46 ; see also Belts v. 
 
 (n) 8 P. 0. R., at p. 320. De Vitre, L. R., 3 Ch. 429 
 
 T. Z 
 
338 'I'lIK l-AW OK I'ATKNTS. 
 
 when an account is dircctod to 1»(> iiikcii tluii pi'ovision Itc inudc 
 for tlic payment of costs to the plaintiff up to and inchiding 
 the hearing, otlici'wisc tli(! [)ayni(uit oC all (sosts will bo delayed 
 until the liiial account has been taken, which in some cases has 
 hocn known to amount to a delay of years. 
 
 A stay will be put upon a judgment ])eiidin}^ appc^al wli(;n the 
 matter iit issue is of great iiii])ortaric(', iiiid when in tlu^ event of 
 the judf^nuMit heiiifj; reversed great injury would otherwise be 
 incurnul ])y tlu! defendant, but in such cases tlie defendant is 
 ordered to keep an a(;couiit, and to bring his appeal without 
 delay (.v). 
 
 rRAcriCK ON MM'KAl,. 
 
 Undkii Order LVIII. rule 4, the Court of Appeal has all the 
 pow(>rs and duties as to amendment and otherwise of the High 
 Court, tog(!ther with lull diso'etioiiiiry ])ower to receive further evi- 
 dence up(m questions ol' fiict, such evidence to 1)0 either by oral 
 examination in Court, by allidavit, or by de])osition taken before 
 an exaiiiin(;r or conimissioiKir. Such further evid(!iu;e may be 
 given without special leavci u|)i)ii interlocutory a])pli(!ation, or in 
 any case as to maiXers which have occurred after the date of the 
 decision from which th(! appeal is brought. Upon a]»[)eals from 
 a judgtnent after tiial oi- heai'ing of any (tause or matter upon the 
 mei'its, su(^b farther evidence (save as to matters subsei^uent as 
 aforesaid) shall be admitted on special grounds only, and not 
 without special leave; of the Court. 
 
 As to further evidence in JTiiulc v. Osborne (/), Lindley, L.J., 
 said: "The power given to the Court of Appeal to hear fresh 
 evidence is an extremely valuable one, and is given by Order 
 liVTII. r. 4. I cannot understand that as meaning that the 
 Court of Appeal ought to grant l(>ave to adduce fresh evidence, 
 simply because a man has failed at the trial and he thinks he can 
 
 (s) 77ic North BrUish llnhber Co. v. ().]{,., iit p. lljti. 
 Macintosh, 11 P. 0. R. 477, 489 ; sco {t) 2 P. O. R., at p. 47; instances 
 
 also JIuclciiui V. Fraser, 3 P. O. R. 7 ; whoro fresh ovidonco was allowed on 
 
 Kaye v. Chubb, 4 V. 0. R. 27 ; Proctor a])j)eal, Britain v. Hirsch, 5 P. 0. R. 
 
 V. Bennis, 4 P. 0. R. 863; Lyonv. 22(5; Spencer v. Ancoats litibber Co., 6 
 
 Ooddard, 10 P. 0. R. 135. For Ibini P. (). It. 46 ; Blakcy v. Latham, 6 P. 
 
 of onhir .scr J.ynn v. OoihUml, 10 I'. (). !{,., al- ]). 186. 
 
PRACTICE ON APPEAL. 339 
 
 got more evidence, which, if ho had got it before, would have 
 enabled him to succeed on the trial. That cannot be. There 
 must be some ground shown to satisfy the Court that there 
 is some evidence now forthcoming, which, with due diligence, he 
 could not have got, and it must, therefore, in accordance with the 
 usual practice, be evidence, not merely swearing by affidavits or 
 anything of that kind, but something in the nature of the pro- 
 duction of a lost document, or something of that sort, which will 
 not expose the parties to a more flood of affidavits made up to 
 meet the blots and defects which have been disclosed upon the 
 first trial," 
 
 As to amendment of pleadings and particulars, in Cropper v. 
 Smith, Bowcn, L.J., said {u) : — "Now, I think it is a well 
 established principle that the object of Courts is to decide the rights 
 of the parties, and not to punish them for mistakes they make in 
 the conduct of their cascs'by deciding otherwise than in accordance 
 with their rights. Speaking for myself, and in conformity with 
 what I have heard laid down by the other division of the Court of 
 Appeal, and by myself as a member of it, I know of no kind of 
 error or mistake which, if not fraudulent or intended to overreach, 
 the Court ought not to correct, if it can be done without injustice 
 to the other party. Courts do not exist for the sake of discipline, 
 but for the sake of deciding matters in controversy, and I do 
 not regard such amendment as a matter of favour or of 
 grace." 
 
 On appeal to the House of Lords it was held in a case where 
 the Court of Appeal had held the specification bad and for the 
 defendant on the infringement issue, but the House had reversed 
 the decision on the specification and upheld it on the infringe- 
 ment issue, that each party must pay their own costs of the 
 appeal {x). 
 
 (u) L. R., 26 Ch. D. 710; instance p. 148; Griff. P. C. at p. 161; see 
 
 when amendmeut was allowed, Pirric also as to costs on reversal of decision 
 
 V. York Street Spinning Company, 11 of C. A. by House of Lords, The 
 
 P. O. R., at p. 431. United Horsenail Co. v. Stewart, 5 P. 
 
 ix) Moore v. Bennett, 1 P. 0. R., at O. R. 260, 269. 
 
 z 2 
 
APPENDIX A. 
 
 STATUTES. 
 
 I.— STATUTE OF MONOPOLIES (1623). 
 
 [21 Jac. I. c. 3.] 
 
 A/i Act concerning Monopolies and Dispensations of Penal Laivs 
 and the Forfeitures thereof. 
 
 For as much as your most excellent Majesty, in your royal 
 judgment, and of your blessed disposition to the weal and quiet 
 of your subjects, did in the year of our Lord God 1610, publish 
 in print to the whole realm, and to all posterity, that all grants 
 and monopolies and of the benefit of any penal laws, or of 
 power to dispense with the law, or to compound for the for- 
 feiture, 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 your 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 execu- 
 tion, 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 pub- 
 lished as aforesaid : For avoiding whereof and preventing of 
 the like in time to come, be it enacted, that all monopolies AH monopolies, 
 and all commissions, grants, licences, charters, and letters y^i^^ 
 patent heretofore made or granted, or hereafter to be made 
 or granted, to any person or persons, bodies politic or corpo- 
 rate whatsoever, of or for the sole buying, selling, making, 
 working, or using of anything within this realm or the dominion 
 of Wales, or of any other monopolies, or of power, liberty, or 
 faculty, to dispense with any others, or to give licence or tole- 
 
342 
 
 APPENDIX A. 
 
 Monopolies, 
 &c., shall be 
 tried by the 
 common laws 
 of this realm. 
 
 All persons 
 disabled to 
 use monopolies. 
 &c. 
 
 The party 
 grieved by 
 pretext of a 
 monopoly, ^c, 
 shall recover 
 treble damages 
 and double 
 costs. 
 
 ration to do, use, or exercise anything against the tenor or 
 purport of any law or statute ; or to give or make any warrant 
 for any such dispensation, licence, or toleration to be had or 
 made ; or to agree or compound with any others for any penalty 
 or forfeiture limited by any statute ; or of any grant or pro- 
 mise 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 proclamations, inhibi- 
 tions, restraints, warrants of assistance, and all other matters 
 and things whatsoever, any way tending to the instituting, 
 erecting, strengthening, furthering, or countenancing of the 
 same, or any of them, are altogether contrary to the laws of 
 this realm, and so are and shall be utterly void and of none 
 effect, and in no wise to be put in use or execution. 
 
 2. That all monopolies, and all such commissions, gi'ants, 
 licences, charters, letters patent, proclamations, inhibitions, 
 restraints, warrants of assistance, and all other matters and 
 things tending as aforesaid, and the force and validity of them, 
 and of every of them, ought to be, and shall be for ever here- 
 after examined, heard, tried, and determined, by and according 
 to the common laws of this realm, and not otherwise. 
 
 3. That all person and persons, bodies politic and corporate 
 whatsoever, which now are or hereafter shall be, shall stand and 
 be disabled, and incapable to have, use, exercise or put in use 
 any monopoly, or any such commission, grant, licence, 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. That if any person or persons at any time after the end 
 of forty days next after the end of this present session of parlia- 
 ment shall be hindered, grieved, or disturbed, or disquieted, or 
 his or their goods or chattels any way seized, attached, dis- 
 trained, taken, carried away, or detained by occasion or pre- 
 text of any monopoly, or of any such commission, grant, licence, 
 power, liberty, faculty, letters patent, proclamation, inhibition, 
 restraint, warrant of assistance, or other matter or thing tend- 
 ing 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 and 
 persons shall and may have his and their remedy for the same 
 
STATUTE OF MONOPOLIES (1623). 343 
 
 at the common law by any action or actions to be grounded 
 upon this statute ; the same action and 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, distrained, taken, carried 
 away, or detained ; wherein all and every such person and 
 persons which shall be so hindered, grieved, disturbed, or dis- 
 quieted, or whose goods or chattels shall be so seized, attached, 
 distrained, taken, carried away, or detained, shall recover three 
 times so much as the damages wliich he or they sustained by 
 means or occasion of being so hindered, grieved, disturbed or 
 disquieted, 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 delay- 
 ing thereof, no essoign, protection, wager of law, aid, prayer, 
 privilege, injunction, or order of restraint, shall be 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 action 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 order, war- 
 rant, power, or authority, save only by writ of error or attaint ; 
 and 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 Richard the Second. 
 
 6. Provided also, that any declaration before mentioned shall what new 
 not extend to any letters patent and grants of privilege for the Patents to be 
 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 grants shall not use, so as also they be not 
 
344 
 
 APPENDIX A. 
 
 Proviso. 
 
 Warrants 
 granted to 
 justices saved. 
 
 Charters 
 granted to 
 corporations 
 saved. 
 
 contrary to the law nor mischievous to the State by raising 
 prices of commodities at home, or hurt of trade, or generally 
 inconvenient : the said fourteen years to be accounted from the 
 date of the first letters patents or 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, that this Act or anything therein con- 
 tained shall not in anywise extend or be prejudicial to any 
 grant or privilege, power, or authority whatsoever heretofore 
 made, granted, allowed, or confirmed by any Act of Parliament 
 now in force, so long as the same shall so continue in force. 
 
 8. Provided also, that tliis Act shall not extend to any 
 warrant or privy seal made or directed, or to be made 
 or directed, by His Majesty, his heirs or successors, to the 
 justices of the Courts of the King's Bench or Com- 
 mon Pleas and barons of the Exchequer, justices of 
 assize, justices of oyei' 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, to compound for the forfeitures of 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, that this Act or anything therein con- 
 tained shall not in anywise extend or be prejudicial 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 made or granted, or for or con- 
 cerning any custom or customs used by or within them or any 
 of them ; or unto any corporation, companies, or fellowships of 
 any art, trade, occupation, or mystery, or to any companies or 
 societies of merchants within this realm erected for the main- 
 tenance, enlargement, or ordering of any trade or merchandise ; 
 but 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 ; 
 anything before in this Act contained to the contrary in any 
 wise notwithstanding. 
 
PATENTS, DESIGNS, ETO. ACTS, 1883 — 88. 345 
 
 II.— PATENTS, DESIGNS AND TEADE MARKS 
 ACTS, 1883—88, CONSOLIDATED. 
 
 Being — 
 
 46 & 47 Vict. c. 57. — An Act to amend and consolidate the 
 Law relating to Patents for Inventions, Eegistration of 
 Designs, and of Trade Marks. 
 
 48 & 49 Vict. c. 63. — An Act to amend the Patents, 
 Designs, and Trade Marks Act, 1883. 
 
 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. 
 
 51 & 52 Vict. c. 50. — An Act to amend the Patents, 
 Designs, and Trade Marks Act, 1883. 
 
 Note, — The general text of the Act of 1883 is adhered to. 
 The repealed parts are printed in italics, and the additions in 
 heavier type. The amending Act and section are quoted in 
 the margin. 
 
 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 the present Parliament assembled, 
 and by the authority of the same, as follows : — 
 
 PART I. — Preliminary. 
 
 1. This Act may be cited as the Patents, Designs, and Trade Short title. 
 Marks Act, 1883. 
 
 2. This Act is divided into parts, as follows : — Division of Act 
 
 Part 1.— Preliminary. ^°t° P^'^^- 
 
 Part II. — Patents. 
 Part III. — Designs. 
 Part IV.— Trade Marks. 
 Paet V. — General. 
 
 3. This Act, except where it is otherwise expressed, shall Commence- 
 
346 
 
 APPENDIX A. 
 
 commence from 
 December, 1883. 
 
 and immediately after the 31st day of 
 
 PART IL— Patents. 
 
 Persons en- 
 titled to apply 
 for patent. 
 Joint applica- 
 tion. 
 
 Act, 1885, s. 5. 
 
 Aj^plication 
 and specifica- 
 tion. 
 
 Declaration. 
 
 Act, 1885, s. 2. 
 
 Provisional 
 specification. 
 
 Complete 
 specification. 
 
 AjypUmtion for and Grant of Patent. 
 
 4. — (1) Any person, whether a British subject or not, may 
 make an application for a patent [p. 8]. 
 
 (2) Two or more persons may make a joint application for 
 a patent, and a patent may be granted to them jointly [p. 9]. 
 
 "WTiereas doubts have arisen -whetlier under the principal 
 Act a patent may la"wfully 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 [p. 9]. 
 
 5. — (1) An application for a patent must be made in the 
 form set forth in the first schedule to this Act, or in such other 
 form as may be from time to time prescribed ; and must be 
 left at, or sent by post to, the Patent Ofl&ce in the prescribed 
 manner {a). 
 
 (2) An application must contain a declaration to the eflFect 
 that the applicant is in possession of an invention, whereof he, 
 or in the case of a joint application, one or more of the appli- 
 cants, claims or 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. 
 
 The declaration may be either a statutory declaration 
 under the Statutory Declarations Act, 1835, or not, as may 
 be from time to time prescribed (J)). 
 
 (3) A provisional specification must describe the nature of 
 the invention, and be accompanied by drawings, if required (c), 
 
 (4) A complete specification, whether left on application or 
 subsequently, must particularly describe and ascertain the 
 
 (a) See Chapter VIII. ; as to 
 documents accompanying an appli- 
 cation, see P. R. 1890, rr. 8—10 ; 
 as to apjilication under inter- 
 national aiTangements, see P. R. 
 1890, rr. 24—29 ; and general^ 
 P. R. 1890, n-. 18—23. 
 
 (h) See pp. 9, 127 ; as to statu- 
 tory declarations, see P. R., 1890, 
 rr. 17, 17a. 
 
 (c) pp. 83 — 90 ; as to di'awings, 
 see p. 124, and P. R., 1890, rr. 30 
 —33. 
 
PATENTS, DESIGNS, ETC. ACTS, 1883—88. 347 
 
 nature of the invention, and in what manner it is to be per- 
 formed, and must be accompanied by drawings, if required 
 [pp. 90, 124]. 
 
 The requirement of this sub-section as to drawings shall The same 
 not be deemed to be insuflB.ciently complied with by reason Jiccompany 
 only that instead of being accompanied by draw^ings the both specifica- 
 complete specification refers to the drawings which ac- ^^^ jggg ^ 2 
 companied the provisional specification. And no patent 
 heretofore sealed shall be invalid by reason only that the 
 complete specification was not accompanied by drawings, 
 but referred to those which accompanied the provisional 
 specification (d). 
 
 (5) A specification, whether provisional or complete, must 
 commence with the title, and in the case of a complete specifi- 
 cation must end with a distinct statement of the invention 
 claimed [pp. 78, 116]. 
 
 6. The comptroller shall refer every application to an Reference of 
 examiner, who shall ascertain and report to the comptroller ''^pp^^'^^*}°'^ 
 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 suffi- 
 ciently indicates the subject matter of the invention [p. 128]. 
 
 [7, (i) If the examiner reports that the nature of tJw inven- Power for 
 tion is not fairly described, or that the application, specification, comptroller 
 or drawings has not or have not Men prepared in tJie prescribed iipi:>liciition 
 manner, or that the title does not si/Mcientli/ indicate the subject- °^ require 
 
 . M ^ J amendment. 
 
 matter of the invention, the comptroller may require that the Repealed 
 application, specification, or drawings be amended before he pro- ^^^> ^^^^' ^- '^• 
 ceeds with the application. 
 
 (2) Where the comptroller requires an amendment, the appli- 
 cant may appeal from his decision to the law officer. 
 
 (3) Tlie law officer sJiall, if required, liear the applicant and 
 the comptroller, and may make an order determining whether and 
 subject to what conditions, if any, the applicatio?i shall be accejited. 
 
 (4) The comptroller shall, when an applkation has been 
 accepted, give notice thereof to the applicant. 
 
 (5) If after an applicatio7i has been made, but before a ixitent 
 has been sealed, an appilication is made, accompanied by a speci- 
 fication bearing the same or a similar title, it sfiall be tJie dnfy of 
 
 {(l) See P. R., 1890, r. 33. 
 
348 APPENDIX A. 
 
 the examiner to report to the comptroller whether the specification 
 appears to him to comprise the same invention ; and, if he reports 
 in the affirmative, the comptroller shall give tiotice to the applicafits 
 that he has so reported. 
 
 (6) Where the examiner reports in the affirmative, the comp- 
 troller maij determine, sulject to an appeal to the laiv officer, 
 ivhether 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.'] 
 Power of 7. — (1) If the examiner reports that the nature of the 
 
 to refuse invention is not fairly described, or that the application, 
 
 application specification, or drawings has not, or have not,been prepared 
 amemhne^nt. ^^ *^® prescribed manner, or that the title does not suffi- 
 Act,lS88,s.2. ciently indicate the subject matter of the invention, the 
 comptroller may refuse to accept the application, or require 
 that the application, specification or drawings be amended 
 before he proceeds with the application ; and in the latter 
 case the application shall, if the comptroller so directs, 
 bear date as from, the time when the requirement is com- 
 plied with [pp. 129, 152]. 
 
 (2) When the comptroller refuses to accept an applica- 
 tion or requires an amendment, the applicant may appeal 
 from his decision to the law^ officer (e). 
 
 (3) The law oflacer shall, if required, hear the applicant 
 and comptroller, and may make an order determining 
 whether, and subject to what conditions (if any), the appli- 
 cation shall be accepted. 
 
 (4) The comptroller shall, when an application has been 
 accepted, give notice thereof to the applicant. 
 
 (5) If, after an application for a patent has been made, but 
 before the patent thereon has been sealed, another applica- 
 tion for a patent is made, accompanied by a specification 
 bearing the same or a similar title, the comptroller, if he 
 thinks fit, on the request of the second applicant, or of his 
 legal representative, may, within two months of the grant 
 of a patent on the first application, either decline to proceed 
 with the second application or allow the surrender of the 
 patent, if any, granted thereon. 
 
 (e) See Law Officers' Rules. 
 
PATENTS, DESIGNS, ETC. ACTS, 1883 88. 349 
 
 8. — (1) If the applicant does not leave a complete specifi- Time for leav- 
 cation with his application, he may leave it at any subsequent spfeifi^^ion! 
 time within nine months from the date of application [p. 131]. 
 
 A complete specification may be left within such extended Act, 1885, s. 3. 
 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 when specifi- 
 the application shall be deemed to be abandoned. '^^'■'°^ deemed 
 
 ^ '- abandoned. 
 
 9. — (1) Where a complete specification is left after a pro- ^^ ^^^.^gg^j ^f 
 visional specification, the comptroller shall refer both specifica- provisional 
 tions to an examiner for the purpose of ascertaining whether specification! 
 the complete specification has been prepared in the prescribed 
 manner, and whether the invention particularly described in 
 the complete specification is substantially the same as that 
 which is described in the provisional specification [p. 131]. 
 
 (2) If the examiner reports that the conditions herein- Power of 
 before contained have not been complied with, the comptroller rXse'^until ° 
 may refuse to accept the complete specification unless and until amended, 
 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 Power of 
 the comptroller, and may make an order determining whether 
 
 and subject to what conditions, if any, the complete specifica- 
 tion shall be accepted. 
 
 (4) Unless a complete specification is accepted within twelve When specifi- 
 months from the date of application, then (save in the case of "^^ ^°° ^°''' 
 an appeal having been lodged against the refusal to accept) 
 
 the application shall, at the expiration of those twelve months, 
 become void. 
 
 A complete specification maybe accepted within Buch. Act, 1885, s.B. 
 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 Reports of 
 or be open to public inspection, and shall not be liable to to bTpr^rate. 
 production or inspection in any legal proceeding [other than ^^t, 1888, s. 3. 
 an appeal to the law officer under this AcC], unless the court or 
 
 officer having power to order discovery in such legal proceeding 
 
 (/) See P. R., 1890, IT. 49—51. 
 
350 
 
 APPENDIX A. 
 
 Advertisement 
 on acceptance 
 of complete 
 specification. 
 
 Opposition to 
 grant of 
 patent. 
 Time and 
 irrounds for. 
 
 Repealed 
 Jd, 1888, s. 4. 
 
 Act, 1888, s. 4. 
 
 After notice 
 comptroller 
 to decide. 
 
 Or on appeal, 
 
 law officer. 
 
 Who may 
 obtain expert's 
 assistance. 
 
 Sealing of 
 patent. 
 
 WLen sealed. 
 
 shall certify that such production or inspection is desirable in 
 the interests of justice, and ought to be allowed. 
 
 10. On the acceptauce of the complete specification the 
 comptroller shall advertise the acceptance ; and the application 
 and specification or specifications with the drawings (if any) 
 shall be open to public inspection [p. 132 (g)']. 
 
 11. — (1) Any person may at any time within two months 
 from the date of the advertisement of the acceptance of a 
 complete specification give notice at the Patent Office of opposi- 
 tion to the grant of the patent on the ground of the applicant 
 having obtained the invention from him, or fi'om a person of 
 whom he is the legal representative, or on the ground that the 
 invention has been patented in this country on an application of 
 prior date [or on the ground of an examiner having reported to the 
 comptroller that the specification appears to him to comprise the same 
 invention as is comprised in a specification bearing the same or a 
 sitnilar title and accompanying a p)revious applicati.on], 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, but on no 
 other ground (h). 
 
 (2) Where such notice is given the comptroller shall give 
 notice of the opposition to the applicant, and shall, on the ex- 
 piration of those two months, after hearing the applicant and 
 the person so giving notice, if desirous of being heard, decide 
 on the case, but subject to appeal to the law officer [p. 141]. 
 
 (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 [p. 141]. 
 
 (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 [p. 142]. 
 
 12. — (1) If there is no opposition, or, in case of opposi- 
 
 (g) See P. R., 1890, rr. 21, 22. 
 
 (h) See ChaiJter IX., "Opposition," P. R., 1890, rr. 34—44. 
 
PATENTS, DESIGNS, ETC. ACTS, 1883 — 88. 351 
 
 tion, 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 [p. 143], 
 
 (2) A patent so sealed shall have the same eflfect as if it Great seal 
 were scaled with the great seal of the united kingdom [p. 143]. ' teQ^y 
 
 (3) A patent shall be sealed as soon as may be, and not Time for 
 after the expiration of fifteen months from the date of the sealing. 
 application, except in the cases hereinafter mentioned, that is Exceptions to 
 to say — 
 
 (a) Where the sealing is delayed by an appeal to the law (a) For legal 
 officer, or by opposition to the grant of the patent, the Proceedings. 
 patent may be sealed at such time as the law officer may 
 
 direct. 
 
 (b) If the person making the application dies before the (b) When ap- 
 expiration of the fifteen months aforesaid, the patent may plicant dead, 
 be granted to his legal representative and sealed at any 
 
 time within twelve months after the death of the applicant. 
 
 A complete specification may be left and accepted within Extension of 
 such extended times, not exceeding one month and three ,. 
 months respectively after the said nine months and twelve Act,18S5, s. 3. 
 months respectively, as the comptroller may, on payment 
 of the prescribed fee allow, and w^here 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. 
 
 13. Every patent shall be dated and sealed as of the day of Date of patent. 
 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 earlier application 
 [pp. 132, 143]. 
 
 "When an application for a patent has been abandoned. Application 
 or become void, the specification or specifications and gnecificatio'n 
 drawings (if any) accompanying or left in connection with not to be 
 such application, shall not at any time be open to public ^^^ "isss' s 4 
 inspection or be published by the comptroller. 
 
352 
 
 APPENDIX A. 
 
 Provisional 
 protection. 
 
 Effect of 
 acceptance of 
 complete 
 specification. 
 
 Extent of 
 patent. 
 
 Term of 
 patent. 
 
 Ceases on 
 failure of 
 payments. 
 
 Exception by 
 application to 
 comptroller. 
 
 Extension of 
 time for 
 payment upon 
 terms. 
 
 (a) Period of 
 extension. 
 
 (b) 
 
 for infringe- 
 ment in the 
 interval. 
 
 Provisional Protection. 
 
 14. Where an application for a patent in respect of an 
 invention has been accepted, the invention may during the 
 period between the date of the application and the date of 
 sealing such patent be used and published 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 [pp. 19, 83, 132]. 
 
 Protection hy Complete Specification. 
 
 15. After the acceptance of a complete specification and 
 until the date of sealing a patent in respect thereof, or the 
 expiration of the time for sealing, the applicant shall have the 
 like privileges and rights as if a patent for the invention had 
 been sealed on the date of the acceptance of the complete 
 specification : provided that an applicant shall not be entitled 
 to institute any proceeding for infringement unless and until 
 a patent for the invention has been granted to him [pp. 90, 
 133]. 
 
 Patent. 
 
 16. Every patent when sealed shall have effect throughout 
 the united kingdom and the Isle of Man. 
 
 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 {i). 
 
 (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. 
 
 (b) If any proceeding shall be taken in respect of an in- 
 
 {i) See P. R 1890, rr. 45—48. 
 
PATENTS, DESIGNS, ETC. ACTS, 1883 — 88. 353 
 
 fringement 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 pro- 
 ceeding is proposed to be taken may, if it shall think fit, 
 refuse to award or give any damages in respect of such 
 infringement. 
 
 Amendment of Specification. 
 18. — (1) An applicant or a patentee may, from time to time, Amendment of 
 by request in writing left at the patent office, seek leave to specification, 
 amend his specification, including drawings forming part 
 thereof, by way of disclaimer, correction, or explanation, 
 stating the nature of such amendment and his reasons for the 
 same Qc). 
 
 (2) The request and the nature of such proposed amend- Advertisement 
 ment shall be advertised in the prescribed manner, and at any ^^ amendment 
 
 . 1 n • r- T • ^^^^ notice of 
 
 tune withm one month rrom its first advertisement any person opposition to 
 
 may give notice at the patent office of opposition to the ^^^ ^'^®"" 
 
 amendment [p. 158]. 
 
 (3) Where such notice is given the comptroller shall give Where notice 
 
 notice of the opposition to the iierson making the request, and ^^^fP- ^^o^P; 
 
 11-11 1 • 11 troller decides, 
 
 shall hear and decide the case subject to an appeal to the law 
 
 officer [p. 159]. 
 
 (4) The law officer shall, if required, hear the person making Appeal to law 
 the request and the person so giving notice, and being in the officer, 
 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 [p. 159]- 
 
 (5) Where no notice of opposition is given, or the person so Where no 
 giving notice does not appear, the comptroller shall determine notice comp- 
 
 11 1 1- 1 T- ■ o troller deter- 
 
 whether and subject to what conditions, if any, the amend- mines condi- 
 ment ought to be allowed Pp. 162]. *i°"s °f 
 
 ° 1 • n 1 1 1 amendment. 
 
 (6) When leave to amend is reiused by the comptroller, the 
 person making the request may appeal from his decision to the 
 law officer [p. 162]. 
 
 (7) The law officer shall, if required, hear the person making Appeal to 
 the request, and the comptroller, and may make an order ^^^^ officer. 
 determining whether, and subject to what conditions, if any, 
 
 the amendment ought to be allowed [p. 163]. 
 
 (/>■) Sep Chapter XL. also P. R., 1890, rr. 52— .59. 
 
 A A 
 
354 APPENDIX A. 
 
 Noamemlment (g) No amendment shall be allowed that would make the 
 enlarge or alter spscification, as amended, claim an invention substantially 
 materially larger than or substantially different from the invention 
 
 claimed by the specification as it stood before amendment 
 
 [p. 163]. 
 Leave conclu- (9) Leave to amend shall be conclusive as to the right of 
 case of TriucT- ^^^ V^^'^J ^^ make the amendment allowed, except in case of 
 amendment fraud ; and the amendment shall in all courts and for all 
 specification purposes be deemed to form part of the specification [p. 1G6]. 
 Kepeaied 0^) \_The foregoijig provisions of this section do not applij 
 
 Act, 1888, s. 5. ivhen and so long as any action for infringement or other legal 
 
 proceeding in relation to a patent is innding^^ 
 
 Proceedings (^IQ) The foregoing provisions of this section do not apply 
 
 pending. 
 
 Act 1888 s. f). "when and so long as any action for infringement or pro- 
 ceeding for revocation of a patent is pending [p. 169]. 
 
 Power to 19. — (1) In an action for infringement of a patent, and 
 
 disclaim part . t c .-niin i_ -i 
 
 of invention ^^ ^ proceeding tor revocation oi a patent, the court or a judge 
 
 during action, niay 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 [p. 170]. 
 
 Restriction on 20. Where an amendment by way of disclaimer, correction, 
 
 damages. o"" explanation, has been allowed under this Act, no damages 
 
 shall be given in any action in respect of the use of the 
 invention before the disclaimer, correction or explanation, 
 unless the patentee establishes to the satisfaction of the court 
 that his original claim was framed in good faith and with 
 reasonable skill and knowledge [p. 172]. 
 
 Advertisement 21. Eveiy amendment of a specification shall be advertised 
 
 of amendment, j^ ^^^^ prescribed manner [p. 174]. 
 
 Compulsory Licences. 
 Power for 22. If on the petition of any person interested it is proved 
 
 to order grant to the Board of Trade that by reason of the default of a 
 of licences. patentee to grant licences on reasonable terms — [p. 181] (/) 
 {'^l\ The uatent is not being worked in the United Kingdom ; 
 or 
 
 (0 See P. R., 1890, rr. 60— G6. 
 
PATENTS, DESIGNS, ETC. ACTS, 1883 — 88. 355 
 
 (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 licences on such 
 terms as to the amount of royalties, security for payment, or 
 otherwise, as the Board, having regard to the nature of the 
 invention and the circumstances of the case, may deem just, 
 and any such order may be enforced by mandamus. 
 
 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 ', '^' , 
 
 T ?i „ ' „ -n ■ Where to be 
 
 names and addresses of grantees of patents, notifications of keptaud 
 
 assignments and of transmissions of patents, of licences contents. 
 under patents, and of amendments, extensions, and revoca- 
 tions of patents, and such other matters affecting the validity 
 or proprietorship of patents as may from time to time be 
 prescribed [p. 185] (m). 
 
 (2) The register of patents shall be prima facie evidence of Is evidence. 
 any matters by this Act directed or authorised to be inserted 
 therein. 
 
 (3) Copies of deeds, licences, and any other documents Copies for 
 affecting the proprietorship in any letters patent or in any 
 licence thereunder, must be supplied to the comptroller in the 
 prescribed manner for fihng in the patent office. 
 
 Fees. 
 
 24. — (1) There shall be paid in respect of the several Fees payable, 
 instruments described in the second schedule to this Act, the 
 fees in that schedule mentioned, and there shall likewise be 
 paid, in respect of other matters under this part of the Act, 
 such fees as may be from time to time, with the sanction of the 
 treasury, prescribed by the Board of Trade ; and such fees 
 shall be levied and paid to the account of her Majesty's 
 exchequer in such manner as the treasury may from time to 
 time direct. 
 
 (2) The Board of Trade may from time to time, if they Power to 
 think fit, with the consent of the treasury, reduce any of those ^^^^'^^ ^°^^- 
 fees. 
 
 (m) See P. R., 1890, rr. 67—79. 
 
 A A 2 
 
356 
 
 APPENDIX A. 
 
 Extension of 
 term of patent 
 on petition 
 to Queen 
 in council. 
 
 When applied 
 for. 
 
 Entry of 
 caveat. 
 
 Privy Council 
 jurisdiction. 
 
 Powers of 
 
 judicial 
 
 committee. 
 
 On their report 
 extension 
 granted on 
 conditions. 
 
 Power to make 
 rules for such 
 proceedings. 
 
 Costs. 
 
 Abolition of 
 scire facias. 
 
 Extension of Term of Patent. 
 25. — (1) A patentee may, after advertising in manner 
 directed by any rules made under this section his intention to 
 do so, present a petition to her Majesty in council, praying that 
 his patent may be extended for a further term ; but such 
 petition must be presented at least six months before the time 
 limited for the expiration of the patent [pp. 195 et seq.']. 
 
 (2) Any person may enter a caveat, addressed to the regis- 
 trar of the council at the council oflBce, against the extension, 
 
 (3) If her Majesty shall be pleased to refer any such peti- 
 tion to the judicial committee of the privy council, the said 
 committee shall proceed to consider the same, and the petitioner 
 and any person who has entered a caveat shall be entitled to 
 be heard by himself or by counsel on the petition. 
 
 (4) The judicial committee shall, in considering their 
 decision, have regard to the nature and merits of the invention 
 in relation to the public, to the profits made by the patentee as 
 such, and to all the circumstances of the case [p. 197]. 
 
 (5) If the judicial committee report that the patentee has 
 been inadequately remunerated by his patent, it shall be 
 lawful for her Majesty in council to extend the term of the 
 patent for a further term not exceeding seven, or in exceptional 
 cases fourteen, years ; or to order the grant of a new patent 
 for the term therein mentioned, and containing any restrictions, 
 conditions, and provisions that the judicial committee may 
 think fit. 
 
 (6) It shall be lawful for her Majesty in council to make, 
 from time to time, rules of procedure and practice for regu- 
 lating proceedings on such petitions, and subject thereto such 
 proceedings shall be regulated according to the existing 
 procedure and practice in patent matters of the judicial 
 committee [p. 196]. 
 
 (7) The costs of all parties of and incident to such pro- 
 ceedings shall be in the discretion of the judicial committee ; 
 and the orders of the committee respecting costs shall be 
 enforceable as if they were orders of a division of the liigh 
 court of justice. 
 
 Revocation. 
 
 26. — (1) The proceeding by scire facias to repeal a patent is 
 hereby abohshed [pp. ■iCG et seq.^ 
 
PATENTS, DESIGNS, ETC. ACTS, 1883 88. 357 
 
 (2) Revocation of a patent may be obtained on petition to Revocation of 
 the court. P^*"''*- 
 
 (3) Every ground on which a patent might, at the com- How revoca- 
 mencement of this Act, be repealed by scire facias shall be *''°" obtained, 
 available by way of defence to an action of infringement, and rev°o"catira. 
 shall also be a ground of revocation. 
 
 (4) A petition for revocation of a patent may be presented Petition for 
 
 1,^ revocation, 
 
 ^ who may 
 
 (a) The attorney-general in England or Ireland, or the lord present. 
 
 advocate in Scotland : [p. 268]. 
 
 (b) Any person authorised by the attorney- general in 
 England or Ireland, or the lord advocate in Scotland : 
 [p. 269]. 
 
 (c) Any person alleging that the patent was obtained in 
 fraud of his rights, or of the rights of any person under 
 or through whom he claims : [pp. 268, 269]. 
 
 (d) Any person alleging that he, or any person under or 
 through whom he claims, was the true inventor of any 
 invention included in the claim of the patentee : 
 
 (e) Any person alleging that he, or any person under or 
 through whom he claims an interest in any trade, business, 
 or manufacture, had publicly manufactured, used, or 
 sold, within this realm, before the date of the patent, 
 anything claimed by the patentee as his invention. 
 
 (5) The plaintiff must deliver with his petition particulars of Plaintiff must 
 the objections on which he means to rely, and no evidence b^u^jV"^ 
 shall, except by leave of the Court or a judge, be admitted in particulars, 
 proof of any objection of which particulars are not so 
 delivered [p. 301]. 
 
 (6) Particulars delivered may be from time to time amended Amendment of 
 by leave of the Court or a judge [p. 302]. particulars. 
 
 (7) The defendant shall be entitled to begin, and give Patentee 
 evidence in support of the patent, and if the plaintiff gives dant°hastri"vi- 
 evidence impeaching the validity of the patent, the defendant leges of plain- 
 shall be entitled to reply [p. 319]. *^^' ^* *"^*- 
 
 (8) Where a patent has been revoked on the ground of Where patent 
 fi-aud, the comptroller may, on the application of the true f^Iud^ fi,-st 
 inventor, made in accordance with the provisions of this Act, tr«e inventor 
 grant to him a patent in lieu of and bearing the same date as pa^nt. ^^^ 
 the date of revocation of the patent so revoked, but the patent 
 
358 
 
 APPENDIX A. 
 
 Patent to 
 bind crown. 
 
 Exceptions. 
 
 Hearing with 
 assessor. 
 
 By court. 
 
 Court of aj^peal 
 or privy council 
 may sit with 
 assessors. 
 
 Assessors' fees. 
 
 Delivery of 
 particulars 
 of breaches ; 
 
 of objections. 
 
 SO granted shall cease on the expiration of the term for which 
 the revoked patent was granted [p. 2^9]. 
 
 Croivn. 
 
 27. — (1) A patent shall have to all intents the like effect as 
 against Her Majesty the Queen, her heirs and successors, as 
 it has against a subject [p. 151]. 
 
 (2) But the officers or authorities administering any 
 department of the service of the Crown may, by themselves, 
 their agents, contractors, or others, at any time after the 
 application, use the invention for the services of the Crown on 
 terms to be before or after the use thereof agreed on, with the 
 approval of the treasury, between those officers or authorities 
 and the patentee, or, in default of such agreement, on such 
 terms as may be settled by the treasury after hearing all parties 
 interested [p. 151]. 
 
 Legal Froceedings. 
 
 28. — (Ij In an action or proceeding for infringement or 
 revocation of a patent, the Court may, if it thinks fit, and 
 shall, on the request of either of the parties to the proceeding, 
 call in the aid of an assessor specially qualified, and try and 
 hear the case wholly or partially with his assistance ; the 
 action shall be tried without a jury unless the Court shall 
 otherwise direct [p. 314]. 
 
 (2) The Court of Appeal or the judicial committee of the 
 privy council may, if they see fit, in any proceeding before them 
 respectively, call in the aid of an assessor as aforesaid. 
 
 (3) The remuneration, if any, to be paid to an assessor 
 under this section shall be determined by the Court or 
 the Court of Appeal or judicial committee, as the case may be, 
 and be paid in the same manner as the other expenses of the 
 execution of this Act. 
 
 29. — (1) In an action for infringement of a patent the 
 plaintiff' must deliver with his statement of claim, or by order 
 of the Court or the judge, at any subsequent time, particulars 
 of the breaches complained of [p. 286]. 
 
 (2) The defendant must deliA-er, with his statement of 
 defence, or, by order of the Court or a judge, at any subse- 
 quent time, particulars of any objections on which he relies iu 
 support thereof [pp. 293 ei seq.']. 
 
PATENTS, DESIGNS, ET(;. ACTS, 1883 — 88. 359 
 
 (3) If the defendant disputes the validity of the patent, tlie Grounds must 
 particulars delivered by him must state on what grounds '^ ®*^''^*^'^'^ • 
 
 he disputes it, and if one of those grounds is want of novelty, 
 must state the time and place of the previous publication or 
 user alleged by him [p. 294]. 
 
 (4) At the hearing no evidence shall, except by leave of the Evidence must 
 Court or a judge, be admitted in proof of any alleged infringe- partfcuiars'"'^ 
 ment or objection of which particulars are not so delivered 
 
 [pp. 290, 301]. 
 
 (5) Particulars delivered may be, from time to time, Amendment. 
 amended, by leave of the Court or a judge [p. 303]. 
 
 (6) On taxation of costs, regard shall be had to the Costs. 
 particulars delivered by the plaintiff and by the defendant ; 
 and they respectively shall not be allowed any costs in respect 
 
 of any particular delivered by them, unless the same is 
 certified by the Court or a judge to have been proven, or to 
 have been reasonable and proper, without regard to the general 
 costs of the case [pp. 333 et seq.']. 
 
 30. In an action for infringement of a patent, the Court or Order for in- 
 a judge may on the application of either party, make such •'^^^g^°"j| ' 
 order for an injunction, inspection, or account, and impose 
 
 such terms and give such directions respecting the same and the 
 proceedings thereon as the Court or a judge may see fit [p. 310]. 
 
 31. In an action for inMngeraeut of a patent, the Court or Certificate 
 
 a judge may certify that the validity of a patent came in tli^t yaluhty 
 
 "" ° •' •' J I questioned, 
 
 question ; and if the Court or a judge so certifies, then in any 
 
 subsequent action for infringement, the plaintiff in that action, 
 
 on obtaining a final order or judgment in his favour, shall have 
 
 his full costs, charges, and expenses, as between solicitor and 
 
 client, unless the Court or judge trying the action certifies 
 
 that he ought not to have the same [pp. 328 et se^.]. 
 
 32. Where any person claiming to be the patentee of Remedy in case 
 an invention by circulars, advertisements, or otherwise, threats of 'kd 
 threatens any other person with any legal proceedings or proceedings, 
 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 
 
360 
 
 APPENDIX A. 
 
 Patent for one 
 invention only. 
 
 Patent on 
 application of 
 representative 
 of deceased 
 inventor. 
 
 Time and 
 contents of 
 aijplication. 
 
 Patent to first 
 inventor not 
 invalidated by 
 application in 
 fraud of him. 
 
 Assignment 
 for particular 
 placesi. 
 
 Loss or 
 destruction 
 of patent. 
 
 Proceedings 
 and costs 
 before law 
 officer. 
 
 which the threats related was not, in fact, an infringement of 
 any legal rights of the )3ersou 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 [pp. 274 et seq."]. 
 
 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 any action or other proceeding to take any 
 objection to a patent on the ground that it comprises more 
 than one invention [pp. 1:^8, 216]. 
 
 34. (1) If a person possessed of an invention dies without 
 making application for a patent for the invention, application 
 may be made by, and a patent for the invention granted to his 
 legal representative [pp. 10, 176]. 
 
 (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 thei'eou, or by any use vv 
 publication of the invention subsequent to that fraudulent 
 application during the period of provisional protection [p. 18]. 
 
 36. A patentee may assign his patent for any place in or 
 part of the United Kingdom, or Isle of Man, as effectually as 
 if the patent were originally granted to extend to that place, 
 or part only [pp. 177, 210, 216]. 
 
 37. If a patent is lost or destroyed, or its non-production is 
 accounted for to the satisfaction of the comptroller, the comp- 
 troller may, at any time, cause a duplicate thereof to be sealed. 
 
 38. The law ofiicers may examine witnesses on oath, and 
 administer oaths for that purpose under this part of this Act, 
 and may, from time to time, make, alter, and rescind rules, 
 regulating references and appeals to the law officers, and 
 the practice and procedure before them under this part of this 
 Act ; and in any proceeding before either of the law officers 
 under this part of this Act, the law officer may order costs to 
 
PATENTS, DESIGNS, ETC. ACTS, 1883 — 88. 361 
 
 be paid by either })avty, and any such order may be made 
 a rule of the Court [[>. 142 (;/)J. 
 
 39. The exliibition of an invention at an industrial or inter- Exhibition at 
 national exhibition, certified as such by the Board of Trade, or |°tg|^^*^^bnd 
 the publication of any description of the iuveution during the exhibitioa uot 
 period of the holding of the exhibition, or the use of the *°ten\^ ^k^ts 
 invention for the purpose of the exhibition in the place where 
 the exhibition is held, or the use of the invention during the 
 period of the holding of the exhibition by any person else- 
 where, without the privity or consent of the inventor, shall not 
 prejudice the right of the inventor or his legal personal 
 representative to apply for and obtain provisional protection 
 and a patent in respect of the invention or the validity of any 
 patent granted on the application, provided that both the 
 following conditions are complied with, namely, — [p. 68]. 
 
 (a) The exhibitor must, before exhibiting the invention. Conditions : 
 give the comptroller the prescribed notice of his intention ('^) Notice ; 
 to do so ; and 
 
 (b) The application for a patent must be made before (b) Patent 
 or within six months from the date of the opening of the aiipiied for. 
 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 : 
 
 It shall be lawful for Her Majesty, by Order in Council, Protection of 
 
 from time to time to declare that sections 39 and 57 of the \^'^^^^^ ^"^^ 
 
 designs ex- 
 Patents, Designs, and Trade Marks Act, 1883, or either of hibited at 
 
 those sections, shall apply to any exhibition mentioned in i" ^.ny^.io'i^ 
 the Order, in like manner as if it were an industrial or ^^^ -[^ggg ^ g 
 international exhibition certified by the Board of Trade, 
 and to provide that the exhibitor shall be relieved from 
 the condition, 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 issued publication of 
 periodically an illustrated journal of patented inventions, as ili"«t|'ated 
 well as reports of patent cases decided by courts of law, and indexes', &c. 
 (n) See Law Officers' Rules. 
 
362 
 
 APPENDIX A. 
 
 Copies to be 
 ou sale. 
 
 Continuation 
 of publication. 
 
 Patent 
 museum. 
 
 Power to re- 
 quire models 
 on payment. 
 
 Foreign vessels 
 in British 
 waters. 
 
 Exception. 
 
 Assignment to 
 secretary for 
 
 any other information that the comptroller may deem generally 
 useful or important. 
 
 (2) Provision shall be made by the comptroller for keeping 
 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 may 
 deem expedient, the indexes and abridgements of specifications 
 liitherto published, and shall from time to time prepare and 
 publish such other indexes, abridgements of specifications, 
 catalogues, and other works relating to inventions, as he may 
 see fit. 
 
 41. The control and management of the existing patent 
 nmseum and its contents shall, from and after the commence- 
 ment of this Act, be transferred to and vested in the department 
 of science and art, subject to such directions as Her Majesty in 
 council may see fit to give. 
 
 42. The department of science and art may at any time 
 require a patentee to furnish them with a model of his invention 
 on payment to the patentee of the cost of the manufacture of 
 the model ; the amount to be settled, in case of dispute, by the 
 Board of Trade. 
 
 43. — (1) A patent shall not prevent the use of an invention 
 for the purposes of the navigation of a foreign vessel within the 
 jurisdiction of any of Her Majesty's Courts in the United 
 Kingdom, or Isle of Man, or the use of an invention in a 
 foreign vessel within that jurisdiction, provided it is not used 
 therein for or in connection with the manufacture or prepa- 
 ration of anything intended to be sold in or exported fi'om the 
 United Kingdom or Isle of Man [p. 242 J. 
 
 (2) But this section shall not extend to vessels of any foreign 
 state of which the laws authorise subjects of such foreign state, 
 having patents or like privileges for the exclusive use or 
 exercise of inventions within its territories, to prevent or inter- 
 fere v/ith 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 ex])orted from the territories of such foreign state. 
 
 44. — (1) The inventor of any improvement in instruments 
 
PATENTS, DESIGNS, KTO. ACTS, 1888 — 88. 363 
 
 or munitions of war, his executors, administrators, or assigns war of certain 
 
 . , ... . • 1 • ,1 • ii, inventions. 
 
 (who arc ni this section comprised m the expression tne 
 inventor), may (either for or without valuable consideration) 
 assign to her Majesty's principal secretary of state for the war 
 department (hereinafter referred to as the secretary of state), on 
 behalf of Her Majesty, all the benefit of the invention and 
 of any patent obtained or to be obtained for the same ; and the 
 secretary of state may be a party to the assignment [pp. 151, 
 468]. 
 
 (2) The assignment shall effectually vest the benefit of the Extent of 
 invention and patent in the secretary of state for the time ^^'^'snmen . 
 being on behalf of Her Majesty, and all covenants and agree- 
 ments therein contained for keeping the invention secret and 
 otherwise shall be valid and effectual (notwithstanding any 
 
 want of valuable consideration), and may be enforced accord- 
 ingly by the secretary of state for the time being. 
 
 (3) Where any such assignment has been made to the Power of secre- 
 secretary of state, he may at any time before the application ^^^ to keep 
 for a patent for the invention, or before publication of the invention 
 
 • • SGCl'Ct Oil 
 
 specification or specifications, certify to the comptroller his certifyino- that 
 opinion that, in the interest of the public service, the par- jt is i" public 
 ticulars of the invention and of the manner in which it is to jg ^^^ 
 be performed should be kept secret. 
 
 (4:) If the secretary of state so certifies, the application and I" which case 
 specification or specifications, with the drawings (if any), and and documents 
 any amendment of the specification or specifications, and any '^^'^ sealed up. 
 copies of such documents and drawings, shall, instead of being 
 left in the ordinary manner at the Patent Oftice, 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 For term of 
 or extended term during which a patent for the invention may ^^ ^" ' 
 
 be in force, be kept sealed by the comptroller, and shall not be 
 opened save under the authority of an order of the secretary of 
 state, or of the law officers. 
 
 (6) Such sealed packet shall be delivered at any time during Delivery of 
 the continuance of the patent to any person authorised by g^^f,.ettry"of^^' 
 writing under the hand of the secretary of state to receive the state's autho- 
 same, and shall if returned to the comptroller be again kept ^^^^J^ ""°° 
 sealed by him. 
 
364 
 
 APPENDIX A. 
 
 At expivatiou. 
 
 Foregoing 
 subsections to 
 apply where 
 patent applied 
 for but specifi- 
 cations not 
 published. 
 
 Where certified 
 by secretary 
 of state no 
 petition for 
 revocation. 
 
 No copy of any 
 .secret specifi- 
 cations to be 
 made public. 
 
 Power of 
 secretary of 
 state to waive 
 benefit of 
 section. 
 
 Communica- 
 tion to secre- 
 tary of state 
 for war not to 
 be deemed 
 publication. 
 
 (7) On the expiration of the term or extended term of the 
 patent, such sealed packet shall be delivered to any person 
 authorised hy 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 draw- 
 ings (if any), shall be forthwith placed in a packet sealed by 
 authority of the comptroller, and such packet shall be subject 
 to the foregoing provisions respecting a packet sealed by 
 authority of the secretary of state. 
 
 (9) No proceeding by petition or otherwise shall lie for revo- 
 cation of a j)atent granted for an invention in relation to 
 which the secretary of state has certified as aforesaid 
 [p. 269]. 
 
 (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 
 to the inspection of the public, but save as in this section 
 otherwise directed, the provisions of this part of this Act shall 
 apply in respect of any such invention and patent as aforesaid. 
 
 (11) The secretary of state may, at any time by writing 
 under his hand, waive the benefit of this section with respect 
 to any particular invention, and the specifications, documents 
 and drawings shall be thenceforth kept and dealt with in the 
 ordinary way. 
 
 (12) The communication of any invention for any improve- 
 ment in instruments or munitions of war to the secretary of 
 state, or to any person or persons authorised by him to investi- 
 gate the same or the merits thereof, shall not, nor shall anything 
 done for the purposes of the investigation, be deemed use or 
 publication of such invention so as to prejudice the grant or 
 validity of any patent for the same. 
 
 Provisions 
 respecting ex- 
 isting patents. 
 
 Existing Patents. 
 45. — (1) The provisions of this Act relatiug to applications 
 for patents and proceedings thereon shall have effect in respect 
 only of applications made after the commencement of this 
 Act. 
 
PATENTS, DESIGNS, ETC. ACTS, 1883 — 88. 365 
 
 (2) Every patent granted before the commencement of this 
 Act, or on an application then pending, shall remain unaffected 
 by the provisions of this Act relating to patents binding the 
 Crown, and to compulsory licences [p. 208]. 
 
 (3) In all other respects (inclading the amount and time of 
 payment of fees) this Act shall extend to all patents granted 
 before the commencement of this Act, or on applications then 
 pending, in substitution for such enactments as would have 
 applied thereto, if this Act had not been passed [p. 208], 
 
 (4) All instruments relating to patents granted before the Documents left 
 commencement of this Act required to be left or filed in the great Pa^^nt Office 
 seal Patent Office shall be deemed to be so left or filed if left or deemed left at 
 filed before or after the commencement of this Act in the Patent coVmeacement 
 Office. of tliis Act. 
 
 Definiiions. 
 46. In and for the purposes of this Act — Definitions of 
 
 " Patent " means letters patent for an invention : "Patent ; " 
 
 " Patentee " means the person for the time being entitled to "Patentee ; " 
 the benefit of a patent : [p. 7]. 
 
 "Invention" means any manner of new manufacture the " Invention ; " 
 subject of letters patent and grant of privilege within sect. 6 of 
 the Statute of Monopolies (that is, the Act of the twenty-first 
 year of the reign of King James the First, chapter 3, intituled, 
 " An Act concerning monopolies and dispensations with penal 
 laws and the forfeiture thereof"), and includes an alleged 
 invention [p. 26]. 
 
 In Scotland " injunction " means " interdict." "Injunction " 
 
 in Scotland. 
 
 PART III.— Designs. 
 
 Registration of Designs. 
 47. — (1) The comptroller may, on application by or on be- Application for 
 half of any person claiming to be the proprietor of any new or of det^i^ns'^ 
 original design not previously published in the United 
 Kingdom, register the design under tliis part of this Act. 
 
 (2) The application must be made in the form set forth in 
 the first schedule to this Act, or in such other form as may be 
 fro.n time to time prescribed, and must be left at, or sent by 
 post to, the Patent Office in the prescribed manner. 
 
 (3) The application must contain a statement of the nature 
 
366 
 
 APPENDIX A. 
 
 Drawings, &c 
 
 to be furnished applicant 
 
 on application 
 
 Certificate of 
 registration. 
 
 of the design, and the class or classes of goods in which the 
 applicant desires that the design be registered. 
 
 (4) The same design may be registered in more than one 
 class. 
 
 (5) In case of doubt as to the class in which a design ought 
 to be registered, the comptroller may decide the question. 
 
 ((J) The comptroller may, if he thinks fit, refuse to register 
 any design presented to him for registration, but any person 
 aggrieved by any such refusal may appeal therefrom to the 
 Board of Trade. 
 
 (7) The Board of Trade shall, if required, hear the applicant 
 and the comptroller, and may make an order determining 
 whether, and subject to what conditions, if any, registration is 
 to be permitted. 
 
 48. — (1) On application for registration of a design the 
 shall furnish to the comptroller the prescribed 
 number of copies of drawings, photographs, or tracings of the 
 designs suiBcient, in the opinion of the comptroller, for 
 enabling him to identify the design ; or the applicant may, 
 instead of such copies, furnish exact representations or speci- 
 mens of the design. 
 
 (2) The comptroller may, if he thinks fit, refuse any draw- 
 ing, photograph, tracing, representation, or specimen which is 
 not. in his opinion, suitable for the official records. 
 
 49. — (1) The comptroller shall grant a certificate of regis- 
 tration to the proprietor of the design when registered, 
 
 (2) The comptroller may, in case of loss of the original cer- 
 tificate, or in any other case in which he deems it expedient, 
 grant a copy or copies of the certificate. 
 
 Copyright on 
 registration. 
 
 Gojnjr'ujTd in Registered Designs. 
 
 50. — (1) "\^^len a design is registered, the registered pro- 
 prietor of the design shall, subject to the provisions of this Act, 
 have copyright in the design during five years from the date of 
 registration. 
 
 (2) Before delivery on sale of any articles to which a regis- 
 tered design has been applied, the proprietor must (if exact repre- 
 sentations or specim_ens were not furnished on the application 
 for registration), furnish to the comptroller the prescribed 
 number of exact representations or specimens of the design ; 
 
PATENTS, DESIGNS, ETC. ACTS, 1883 — 88. 367 
 
 and if be fails to do so, the comptroller may erase his name 
 from the register, and thereupon his copyright in the design 
 shall cease. 
 
 51. Before delivery on sale of any articles to which a regis- Marking 
 tered design has been applied, the proprietor of the design shall ^^gj^^j,^ 
 cause each such article to be marked with the prescribed mark, 
 or with the prescribed word or words or figares, denoting that 
 the design is registered ; and if he fails to do so the copyright 
 in the design shall cease, unless the proprietor shows that he 
 took all proper steps to ensure the marking of the article. 
 
 52.— (1) During the existence of copyright in a design, the inspection of 
 design shall not be open to ispection except by the proprietor, I'egjstered 
 or a person authorised in writing by the proprietor, or a person 
 authorised by the comptroller or by the Court, and furnishing 
 such information as may enable the comptroller to identify the 
 design, nor except in the presence of the comptroller, or of an 
 officer acting under him, nor except on payment of the pre- 
 scribed fee ; and the person making the inspection shall not 
 be entitled to take any copy of the design, or of any part 
 thereof. 
 
 "Provided that where registration of a design is refused Act, 1888, 
 
 s 6 
 on the ground of identity with a design already registered, " ' 
 
 the applicant for registration shall be entitled to inspect 
 
 the design so registered." 
 
 (2) When the copyright in a design has ceased, the design 
 
 shall be open to inspection, and copies thereof may be taken by 
 
 any person on payment of the prescribed fee. 
 
 53. On the request of any person producing a particular Information as 
 design, together with its mark of registration, or producing copyiTchr*^ ° 
 only its mark of registration, or furnishing such information 
 
 as may enable the comptroller to identify the design, and on 
 payment of the prescribed fee, it shall be the duty of the 
 comptroller to inform such person whether the registration still 
 exists in respect of such design, and if so, in respect of what 
 class or classes of goods, and stating also the date of registra- 
 tion, and the name and address of the registered proprietor. 
 
 54. If a registered design is used in manufacture in any Cesser of copy- 
 foreign country and is not used in this country within six "°^* ^°'^^^'*'^'" 
 months of its registration in this country, the copyright in the 
 
 design shall cease. 
 
,^68 
 
 APPENDIX A. 
 
 Register of 
 designs. 
 
 Fees on regii 
 tration, &e. 
 
 Exhibition at 
 industrial or 
 international 
 exhibition not 
 to prevent or 
 invalidate 
 registration. 
 
 Act, 1886, 
 s. 3. 
 
 Register of Designs. 
 
 55. — (1) There shall be kept at the patent office a book 
 called the Register of Designs, wherein shall he, entered the 
 names and addresses of proprietors of registered designs, notifi- 
 cations of assignments and of transmissions of registered designs, 
 and such other matters as may from time to time be prescribed. 
 
 (2) The register of designs shall be prima facie evidence of 
 any matters by this Act directed or authorised to be entered 
 therein. 
 
 Fees. 
 
 56. There shall be paid in respect of applications and regis- 
 tration and other matters under this part of this Act such fees 
 as may be from time to time, with the sanction of the Treasury, 
 prescribed by the Board of Trade ; and such fees shall be levied 
 and paid to the account of Her Majesty's Exchequer in such 
 manner as the Treasury shall from time to time direct. 
 
 Industrial and International Exhibitions. 
 
 57. The exhibition at an industrial or international exhibi- 
 tion certified as such by the Board of Trade, or the exhibition 
 elsewhere during the period of the holding of the exhibition, 
 without the privity or consent of the proprietor, of a design, 
 or of any article to which a design is applied, or the publica- 
 tion, during the holding of any such exhibition, of a description 
 of a design, shall not prevent the design from being registered, 
 or invalidate the registration thereof, provided that both the 
 following conditions are complied with ; namely :— 
 
 (a) The exhibitor must, before exhibiting the design or 
 article, or publishing a description of the design, give the 
 comptroller tlie prescribed notice of his intention to do 
 so ; and 
 
 (b) The application for registration must be made before or 
 within six mouths from the date of the opening of the 
 exhibition. 
 
 And 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 : — 
 
 It shall be lawful for Her Majesty, by Order in Council, 
 from time to time to declare that sections 39 and 57 of the 
 
PATENTS, DESIGNS, ETC. ACTS, 1 8S8 SS. 36S 
 
 Patents, Designs, and Trade Marks Act, 1883, or either of 
 those sections shall apply to any exhibition mentioned in 
 the Order in like manner as if it Avere 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. 
 
 Legal Proceedings. 
 
 58. During the existence of copyright in any design — Penalty on 
 
 (a) It shall not be lawful for any person without the licence P'''^*^7 °^ 
 ^ , *' J- registered 
 
 or written consent of the registered proprietor to aj^ply, design. 
 or cause to be applied, such design or any fraudulent or ^c^. 1888, 
 obvious imitation thereof, in the class or classes of goods 
 in which such design is registered, for purposes of sale to 
 any article of manufacture or to any substance artificial 
 or natural, or partly artificial and partly natural ; and 
 
 (b) It shall not be lawful for any person to publish or expose 
 for sale any article of manufacture or any substance to which 
 such design or any fraudulent or obvious imitation thereof 
 shall have been so applied, knowing that the same has been 
 so applied without the consent of the registered proprietor. 
 
 Any person who acts in contravention of this section shall 
 be liable for every offence to forfeit a sum not exceeding fifty 
 pounds to the registered proprietor of the design, who may re- 
 cover such sum as a simple contract debt by action in any 
 court of competent jurisdiction : Provided that the total sum Ad, 1888, 
 forfeited in respect of any one design shall not exceed one *• '• 
 hundred pounds. 
 
 59. Notwithstanding the remedy given by this Act for the Action for 
 recovery of such penalty as aforesaid, the registered proprietor ' ''■"''^ses. 
 of any design may (if he elects to do so) bring an action for the 
 recovery of any damages arising from the application of any 
 
 such design, or of any fraudulent or obvious imitation thereof 
 for the purpose of sale, to any article of manufacture or 
 substance, or from the publication, sale, or exposure for sale by 
 any person of any article or substance to which such design or 
 .my fraudulent or obvious imitation thereof shall have been so 
 
 T. B B 
 
370 
 
 APPENDIX A. 
 
 Definition 
 of "design," 
 '• copyright." 
 
 Definition of 
 proprietor. 
 
 applied, such person knowing that the proprietor had not given 
 his consent to such application. 
 
 Definitions, 
 
 60. In and for the purposes of this Act — 
 
 " Design " means any design applicable to any article of 
 manulacture, or to any substance artificial or natural, or partly 
 artificial and partly natural, whether the design is applicable 
 for the pattern, or for the shape or configuration, or for the 
 ornament thereof, or for any two or more of such purposes, and 
 by whatever means it is applicable, whether by printing, paint- 
 ing, embroidering, weaving, sewing, modelling, casting, em- 
 bossing, engraving, staining, or any other means whatever, 
 manual, mechanical, or chemical, separate or combined, not 
 being a design for a sculpture, or other thing within the 
 protection of the Sculpture Copyright Act of the year 1814 
 (fifty-fourth George the Third, chapter fifty-six). 
 
 " Copyright" means the exclusive right to apply a design to 
 any article of manufacture or to any such substance as aforesaid 
 in the class or classes in which the design is registered. 
 
 61. The author of any new and original design shall be 
 considered the proprietor thereof, unless he executed the work 
 on behalf of another person for a good or valuable considera- 
 tion, in which case such person shall be considered the 
 proprietor, and every person acquiring for a good or valuable 
 consideration a new and original design, or the right to apply 
 the same to any such article or substance as aforesaid, either 
 exclusively of any other person or otherwise, and also every 
 person on whom the property in such design or such right to 
 the application thereof shall devolve, shall be considered the 
 proprietor of the design in the respect in which the same may 
 have been so acquired, and to that extent, but not otherwise. 
 
 PART ly.— Teade Maeks. 
 Registration of Trade 3Iarks. 
 
 Application for 62. — (1) The comptroller may, on application by or on 
 registration. behalf of any person claiming to be the proprietor of a trade 
 
 mark, register the trade mark. 
 
 (2) The application must be made in the form set forth in 
 
 the first schedule to this Act, or iu such other form as may 
 
PATENTS, DESIGNS, ETC. ACTS, 1883 — 88. 371 
 
 be from time to time prescribed, and must be left at, or sent ^ct, 1888, 
 by post to, [fJic Pafetif Office in the jyrescribed manner^ such 
 place and in such manner as may be prescribed. 
 
 (3) The application must be accompanied by the prescribed 
 number of representations of the trade mark, and must state 
 the particular goods or classes of goods in connection with 
 which the applicant desires the trade mark to be registered. 
 
 (4) The comptroller may, if he thinks fit, refuse to register 
 a trade mark, but any such refusal shall be subject to appeal 
 to the Board of Trade, who shall, if required, hear the appli- 
 cant and the comptroller, and may make an order determining 
 whether, and subject to what conditions, if any, registration is 
 to be permitted. 
 
 (5) The Board of Trade may, however, if it appears ex- 
 pedient, refer the appeal to the Court ; and in that event the 
 Court shall have jurisdiction to hear and determine the appeal, 
 and may make such order as aforesaid. 
 
 " (6) Where an applicant for the registration of a trade Act, 1888, 
 mark otherwise than under an international convention is *' * 
 out of the United Kingdom at the time of making the 
 application he shall give the comptroller an address for 
 service in the United Kingdom, and if he fails to do so the 
 application shall not be proceeded with until the address 
 has been given." 
 
 63. Where registration of a trade mark has not been or shall Limit of time 
 not be completed within twelve months from the date of the ^j'trappHca-" 
 application, by reason of default on the part of the applicant tion. 
 [the application shall he deemed to lie al)andoned'], " the eomp- Act, 1888, 
 troUer shall give notice of the non-completion to the agent ^' ^■ 
 employed on behalf of the applicant, and if at the expira- 
 tion of fourteen days from that notice the registration is 
 not completed, shall give the like notice to the applicant, 
 and if at the expiration of the latter fourteen days, or such 
 further time as the com.ptroller may in special eases permit, 
 the registration is not completed, the application shall be 
 deemed to be abandoned." 
 
 [64.— (1) For the purposes of this Act, a trade mcirlc must consist Conditions of 
 of or co7itain at least one of the following essential particidars : tp^de mark. 
 
 (a) A name of an individual or firm printed, impressed, or Repealed. 
 icoven in some particidar and distinctive manner ; or Act, 188S, 
 
 (b) A written signature or copu of a loritten shiaalure of the ^' 
 
 B B 2 
 
372 APPENDIX A. 
 
 individual or firm apijlyiny for registration thereof as a trade 
 mark; or 
 (c) A distinctive device, mark, hrand, heading, lalet, ticket, or 
 fancy icord or ivords not in common use. 
 
 (2) There may le added to any one or more of these particulars 
 any letters, words, or figures, or coml)i?iaiion of letters, words, or 
 figures, or of any of them. 
 
 (3) Provided that any special and distinctive icord or words, 
 letter, figure, or combination of letters or figures, or of letters and 
 iigures used as a trade mark before the thirteenth day of August, 
 one thousand eight hundred and seventy-five, may ie registered 
 as a trade mark under this part of this Act.^ 
 
 Act, 1888, "64. — (1) For the purposes of this Act a trade mark 
 
 must consist of or contain at least one of the foUo'wing 
 essential particulars : 
 
 " (a) A name of an individual or firm printed, impressed, 
 
 or woven in some particular and distinctive manner ; or 
 
 " (b) A written signature or copy of a w^ritten signature 
 
 of the individual or firm applying for registration 
 
 thereof as a trade mark ; or 
 
 " (c) A distinctive device, mark, brand, heading, label, 
 
 or ticket ; or 
 " (d) An invented word or invented w^ords ; or 
 " (e) A word or words having no reference to the 
 character or quality of the goods, and not being a 
 geographical name. 
 " (2) There may be added to any one or more of the 
 essential particulars mentioned in this section any letters, 
 w^ords, or figures, or combination of letters, words, or 
 figures, or of any of them, but the applicant for registration 
 of any such additional matter must state in his application 
 the essential particulars of the trade mark, and must dis- 
 claim in his application any right to the exclusive use of 
 the added matter, and a copy of the statement and dis- 
 claimer shall be entered on the register. 
 " (3) Provided as follows : 
 
 " (i.) A person need not under this section disclaim his 
 own name or the foreign equivalent thereof, or his 
 place of business, but no entry of any such name shall 
 affect the right of any owner of the same name to use 
 that name or the foreign equivalent thereof; 
 
PATENTS, DESIGNS, ETC. ACTS, 1 8S3 — 88. 373 
 
 " (ii.) Any special and distinctive word or words, letter, 
 figure, or combination of letters or figures, or of 
 letters and figures used as a trade mark before the 
 thirteenth day of August, one thousand eight hundred 
 and seventy-five, may be registered as a trade mark 
 under this part of this Act." 
 
 65. A trade mark must be registered for particular goods or Connexion of 
 
 classes of goods. tr<ide mark 
 
 66. When a person claiming to be the proprietor of several „ . 
 
 , , . , . KegistratioD 
 
 trade marks which, whue resembling each other in the material of a series 
 particulars thereof, yet diifer in respect of (a) the statement of °^ "^'I'^s. 
 the goods for which they are respectively used or proposed to 
 be used, or (b) statements of numbers, or (c) statements of 
 price, or (d) statements of quality, or (e) statements of names 
 of places, seeks to register such trade marks, they may be 
 registered as a series in one registration. A series of trade 
 marks shall be assignable and transmissible only as a whole, 
 but for all other purposes each of the trade marks composing 
 a series shall be deemed and treated as registered separately. 
 
 67. A trade mark may be registered in any colour or colours. Trade marks 
 and such registration shall (subject to the provisions of this ™^y ^® 
 Act) confer on the registered owner the exclusive right to use any cole 
 
 lour. 
 
 the same in that or any other colour or colours. Act, 1888 
 
 68. Every application for registration of a trade mark under *' 
 this part of this Act shall as soon as may be after its receipt be of application. 
 
 advertised by the comptroller, unless the comptroller refuse Act, 1888, 
 
 s 12 
 to entertain the application. 
 
 69. — (1) Any person may within [^fwo mo7iths'] one month Opposition to 
 or such further time, not exceeding three months as the 'egistration. 
 comptroller may allow, of the iJirsQ advertisement of the jyj'.gg ^'2 ' 
 application, give notice in duplicate at the patent office of oppo 
 sition to registration of the trade mark, and the comptroller 
 shall send one copy of such notice to tlie applicant. 
 
 (2) Within [^iromwi^/is] one month afterreceipt of such notice Act, 1888, 
 or such further time as the comptroller may allow, the applicant *' ^^' ^'^^'^' ^' 
 may send to the comptroller a counter-statement in duplicate of 
 the grounds on which he relies for liis application, and if he does 
 not do so, shall be deemed to have abandoned his application. 
 
 [(3) If the applicant sends such counter- siatemenf, the comp- 'Re])ea.\ed. 
 troller shall famish a copi/ thereof to the person irho gave notice ^, -^o ^^^l^ ^ 
 of opposition, and shall require liiui to (jive security in such 
 
374 
 
 APPENDIX A. 
 
 mamw and to such amount as the comptroller nmij require for 
 such costs as mcuj he awarded in respect of such opposition ; and 
 if such securit// is not given ivithi?i fourteen days after such 
 requirement was made, or such further time as the comptroller 
 may aUow, the opposition shall he deemed to he wiihdraivn. 
 
 (4) If the person ivho gave notice of opposition duly gives 
 such security as aforesaid, the comptroller shall inform the 
 applicant thereof in ivriting, and thereupon the case shall he 
 deemed to stand for the determination of the Court.'] 
 Act 1888 " (3) If the applicant sends sueh counter-statement the 
 
 s. 13, suh-s. -1. comptroller shall furnish a copy thereof to the person -w^ho 
 gave notice of opposition, and shall, after hearing the 
 applicant and the opponent, if so required, decide w^hether 
 the trade mark is to be registered, but his decision shall 
 be subject to appeal to the Board of Trade, -w^ho shall, if 
 required, hear the applicant and the opponent and the 
 comptroller, and may make an order determining whether, 
 and subject to "what conditions (if any), registration is to 
 be permitted. 
 
 " (4) The Board of Trade may, however, if it appears 
 expedient, refer the appeal to the Court, and in that event 
 the Court shall have jurisdiction to hear and determine 
 the appeal, and may make such order as aforesaid. 
 
 " (5) If the applicant abandons his application after 
 notice of opposition in pursuance of this section he shall 
 be liable to pay to the opponent such costs in respect of 
 the opposition as the comptroller may determine to be 
 reasonable. 
 
 " (6) Where the opponent is out of the United Kingdom 
 he shall give the coraptroller an address for service in the 
 United Kingdom." 
 
 70, A trade mark, when registered, shall be assigned and 
 transmitted only in connection with the goodwill of the 
 business concerned in the particular goods or classes of goods 
 for which it has been registered, and shall be determinable with 
 that goodwill. 
 
 71. Where each of several persons claims to be registered as 
 proprietor of the same trade mark, the comptroller may refuse 
 to register any of them until their rights have been deter- 
 mined according to law, and the comptroller may himself submit 
 or require the claimants to submit their rights to the Court. 
 
 Assignment 
 anil transmis- 
 sion of trade 
 mark. 
 
 Conflicting 
 claims to 
 rc''istration. 
 
PATENTS, DESIGNS, ETC. ACTS, 1883 — 88. 375 
 
 72, — (1) Except where the Court has decided that two or Restrictions on 
 more persons are entitled to be registered as proprietors of^^sistration. 
 the same trade mark, the comptroller shall not register in 
 respect of the same goods or description of goods a trade mark 
 identical with one already on the register with respect to such 
 goods or description of goods. 
 
 (2) Except as aforesaid the comptroller shall not register ^ct, 1888, 
 with respect to the same goods or description of goods a trade 
 mark [so nearly reseniNinff] having such resemblance to a 
 trade mark already on the register with respect to such goods 
 or description of goods as to be calculated to deceive. 
 
 73. It shall not be lawful to register as part of or in com- Further 
 bination with a trade mark any words the [exdusivel use of restriction on 
 
 •' , '- -" . registration. 
 
 which would by reason of their being calculated to deceive or J^^^ jgsg 
 otherwise, be deemed disentitled to protection in a court of «• 15. 
 justice, or any scandalous design. 
 
 74. — (1) Nothing in this Act shall be construed to prevent Saving for 
 the comptroller entering on the register, in the prescribed !3°^7de°for 
 manner, and subject to the prescribed conditions, as an addition entry on 
 to any trade mark- Zt.rLks 
 
 (a) In the case of an application for registration of a trade as additions to 
 mark used before the thirteenth day of August one ^''^'^^ '°^'"^^- 
 thousand eight hundred and seventy-five — 
 
 Any distinctive device, mark, brand, heading, label, 
 ticket, letter, word, or figure, or combination of letters, 
 words, or figures, though the same is common to the trade 
 in the goods with respect to which the application is made ; 
 
 (b) In the case of an ap]ilication for registration of a trade 
 mark not used before the thirteenth day of August one 
 thousand eight hundred and seventy-five — 
 
 Any distinctive word or combination of words, though 
 the same is common to the trade in the goods with 
 respect to which the application is made ; 
 [(2) The applicmit for entry of any such common particular Repealed, 
 or particulars must, however, disclaim in his application any '^'g ' 
 right to the exclusive use of the same, and a copy of the disclaimer 
 shall he entered on the register. ] 
 
 " (2) The applicant for registration of any such addition Act, 1888, 
 
 s 16 
 must, however, state in his application the essential par- ' 
 
 ticulars of the trade mark, and must disclaim in his appli- 
 cation any right to the exclusive use of the added matter. 
 
376 APPENDIX A. 
 
 and a copy of the statement and disclaimer shall be entered 
 on the register. 
 
 " Provided that a person need not under this section 
 disclaim his o-wn name or the foreign equivalent thereof, 
 or his place of business, but no entry of any such nam,e 
 shall affect the right of any owner of the same name to 
 use that name or the foreign equivalent thereof." 
 
 (3) Any device, mark, brand, heading, label, ticket, letter, 
 word, figure, or combination of letters, words, or figures, which 
 was or were, before the thirteenth day of August one thousand 
 eight hundred and seventy-five, publicly used by more than 
 three pei'sons on the same or a similar description of goods 
 shall, for the purposes of this section, be deemed common to 
 the trade in such goods. 
 
 Effect of Registration. 
 Registration 75. [Registration of a trade mark sJuill he deemed to be 
 
 equivalent to cquivaJent to puUic use of the trade mark.'] 
 
 imblic use. j. l j j 
 
 Act, 1888, " Application for registration of a trade mark shall be 
 
 ^- 1^' deemed to be equivalent to public use of the trade mark, 
 
 and the date of the application shall for the purposes of 
 this Act be deemed to be, and as from the first day of 
 January one thousand eight hundred and seventy-six to 
 have been, the date of the registration." 
 Right of first 76_ The registration of a person as proprietor of a trade 
 exclusive use uiark shall be prima facie evidence of his right to the esclu- 
 of trade mark, gfye use of the trade mark, and shall, after the expiration of 
 five years from the date of the registration, be conclusive 
 evidence of his right to the exclusive use of the trade mark 
 subject to the provisions of this Act. 
 Restrictions on 77. A person shall not be entitled to institute any proceeding 
 Wngement ^°' ^^ pi'evcut or to recovcr damages for the infringement of a 
 and on defence trade mark unless, in the case of a trade mark capable of 
 certain cases ^cing registered under this Act, it has been registered in 
 pursuance of this Act, or of an enactment repealed by this 
 Act, or, in the case of any other trade mark in use before the 
 thirteenth of August one thousand eight hundred and seventy- 
 five, registration thereof under this part of this Act, or of an 
 enactment repealed by this Act, has been refused. The comp- 
 troller may, on request, and on payment of the prescribed fee, 
 i^rant a certificate that such retiistratiou has been refused. 
 
PATENTS, DESIGNS, ETC. ACTS, 1883 88. 377 
 
 77 (a). " In an action for infringement of a registered Certificate to 
 trade mark, the Court or a judge may certify that the right exclusive use, 
 
 ciDCl COST'S 
 
 to the exclusive vise of the trade mark came in question, and thereon. 
 if the Court or a judge so certifies, then in any subsequent Act, 1888, 
 action for infringement the plaintiff in that action, on ^- ^^• 
 obtaining a final order or judgment in his favour, shall have 
 his full costs, charges, and expenses as between solicitor and 
 client, unless the Court or judge trying the subsequent 
 action certifies that he ought not to have the sarae." 
 
 Register of Trade Maries. 
 
 78. There shall be kept at the patent office a book called the Register of 
 Register of Trade Marks, wherein shall be entered the names ^^ ^ ^'^^ 
 and addresses of proprietors of registered trade marks, 
 notifications of assignments and of transmissions of trade 
 marks, and such other matters as may be from time to time 
 prescribed. 
 
 79. — (1) At a time not being less than two months nor Removal of 
 more than three mouths before the expiration of fourteen ^^f^gj, fg^j-^ggj^ 
 years from the date of the registration of a trade mark, the years unless 
 comptroller shall send notice to the registered proprietor that 
 the trade mark will be removed from the register unless the 
 proprietor pays to the comptroller before the expiration of 
 such fourteen years (naming the date at which the same will 
 expire) the prescribed fee ; and if such fee be not previously 
 paid, he shall at the expiration of one month from the date of 
 the giving of the first notice send a second notice to the same 
 eflTect. 
 
 (2) If such fee be not paid before the expiration of such 
 fourteen years the comptroller may after the end of three 
 months from the expiration of such fourteen years remove the 
 mark from the register, and so from time to time at the 
 expiration of every period of fourteen years. 
 
 (J3) If before the expiration of the said three months the 
 registered proprietor pays the said fee togetiier with the addi- 
 tional prescribed fee, the comptroller may without removing 
 such trade mark from the register accept the said fee as if it 
 had been paid before the expiration of the said fourteen 
 years. 
 
 (4) Where after the said three months a trade mark has 
 
378 
 
 APPENDIX A. 
 
 Act, 1888, 
 s. 19, subs. 1. 
 
 Act, 1888, 
 s. 19, subs. 2. 
 
 been removed from the register for nonpayment of the pre- 
 scribed fee, the comptroller may, if satisfied that it is just so 
 to do, restore such trade mark to the register on payment of 
 the prescribed additional fee. 
 
 (5) Where a trade mark has been removed from the register 
 for nonpayment of the fee or otherwise, such trade mark shall 
 nevertheless for the purpose of any application for registration 
 during [the five years'] one year next after the date of such re- 
 moval, be deemed to be a trade mark which is already registered, 
 " unless it is shown to the satisfaction of the comptroller 
 that the nonpayment of the fee arises from the death or 
 bankruptcy of the registered proprietor, or from his having 
 ceased to carry on business, and that no person claiming 
 under that proprietor or under his bankruptcy is using 
 the trade mark." 
 
 Fees for 
 registration. 
 
 Fees. 
 80. There shall be paid in respect of applications and 
 registration and other matters under this part of this Act, 
 such fees as may be from time to time, with the sanction of the 
 Treasury, prescribed by the board of trade ; and such fees shall 
 be levied and paid to the account of Her Majesty's exchequer 
 in such manner as the Treasury may from time to time direct. 
 
 Registration 
 by Cutlers' 
 Company of 
 Sheffield 
 marks. 
 
 Repealed. 
 Act, 1888, 
 s. 20, subs. 
 
 Sheffield Marks. 
 81. "With respect to the master, wardens, searchers, assist- 
 ants, and commonalty of the Company of Cutlers in Hallam- 
 shire, in the County of York (in this Act called the Cutlers' 
 Company) and the marks or devices (in this Act called 
 Sheffield marks) assigned or registered by the master, wardens, 
 searchers and assistants of that company, the following pro- 
 visions shall have efiect : 
 
 (1) The Cutlers' Company shall establish and keep at 
 Sheffield a new register of trade marks (in this Act called 
 the Sheffield register) : 
 [(2) The Cutlers'' Gompanu shall enter in the Sheffield register, 
 in respect of cutlery, edge tools, or raw stesl, and the goods 
 mentioned in the next suh-section all the trade marks entered 
 before the commencement of this Act in respect of cutlery, 
 edge tools or raw steel and such goods in the register estah- 
 
PATENTS, DESIGNn', ETC. ACTS, 1883 — 88. 379 
 
 lished under the Trade Marks Regisiratkin Act, 1875, 
 belonging to }wrsovs carrging on husiness in Hallamshire, or 
 ivithin six miles thereof, and shall also enter in such register, 
 in respect of the same goods, all the trade marks ti'ldch shall 
 have been assigned bg the Cutlers' Gompang and actuallg 
 used before the commencement of this Act, but ivhkh have 
 not been eyitered in the register established under the Trade 
 Marks Registration Act, 1875.] 
 " (2) The Cutlers' Company shall enter in the Sheffield Act, 1888. 
 register, in respect of metal goods as defined in this ^' ^^» *"■"■«■ !• 
 section, all the trade marks entered before the first day 
 of January, One thousand eight hundred and eighty- 
 nine in respect of metal goods either in the register 
 established under the Trade Marks Registration Act, 
 1875, or in the register of trade marks under this Act, 
 belonging to persons carrying on business in Hallam- 
 shire or within six miles thereof. The Cutlers' Com- 
 pany shall also, on request made in the prescribed 
 manner, enter in the Sheffield register, in respect of 
 ruetal goods, all the trade marks w^hich shall have been 
 assigned by the Cutlers' Company and actually used 
 before the first day of January, One thousand eight 
 hundred and eighty-four, but Awhich have not been 
 entered in either of the said other registers." 
 
 (3) An application for registration of a trade mark used Act, 1888, 
 [on cutlerg, edge tools, or on raw steel, or on goods made of^- ^^' *"^"^- ^• 
 steel, or of steel and iron combined, whether with or without 
 
 a cutting edge'] on metal goods shall, if made after the 
 commencement of this Act by a person carrying on 
 business in Eallamshire, or within six miles thereof, be 
 made to the Cutlers' Company : 
 
 (4) Every application so made to the Cutlers' Compauy shall 
 be notified to the comptroller in the prescribed manner, 
 and unless the comptroller within the prescribed time 
 gives notice to the Cutlers' Company that he objects to 
 the acceptance of the application, it shall be proceeded 
 with by the Cutlers' Company in the prescribed manner : 
 
 (5) If the comptroller gives notice of objection as aforesaid, 
 the application shall not be proceeded with by the Cutlers' 
 Company, bat any person aggrieved may appeal to the 
 Court : 
 
380 APPENDIX A. 
 
 (6) Upon the registration of a trade mark in the Sheffield 
 register the Cutlers' Company shall give notiee thereof to 
 the comptroller, who shall thereupon enter the mark in 
 the register of trade marks ; and such registration shall 
 bear date as of the day of application to the Cutlers' 
 Company, and have the same effect as if the application 
 had been made to the comptroller on that day. 
 Repealed, [(7) TJis provisions of this Ad, and of any general rides 
 
 s. 20, subs. 3. made under this Act, with respect to application for registra- 
 
 tiofi in the register of trade marks, the effect of such regis- 
 tration, and tlie assignment and transmission of rights in a 
 registered trade mark shall apply in the case of applications 
 and registration in the Sheffield register ; and notice of every 
 entry made in the Sheffield register must le given to the 
 comptroller hg the Cutlers'' Company, save a?id except that 
 the provisions of this sub-section shall not prejudice or 
 affect any life estate and interest of a widow of the holder 
 of any Sheffield mark ivhich may he in force in resp)ect of 
 such mark at the time ivhen it sJiall he placed upon the 
 Sheffield reyister .-] 
 
 Ad, 1888, (7) The provisions of this Act and of any general rvQes 
 
 s. 20, suh-s 3 , ,,.,..,.,, ., .,.. jy 
 
 made under this Act with respect to the registration of 
 
 trade marks, and all matters relating thereto, shall, 
 subject to the provisions of this section, apply to the 
 registration of trade marks on metal goods by the 
 Cutlers' Company, and to all matters relating thereto ; 
 and this Act and any such general rules shall, so far as 
 applicable, be construed accordingly with the substitu- 
 tion of the Cutlers' Company, the oflElce of the Cutler's 
 Company, and the Sheflaeld register, for the Comp- 
 troller, the Patent Office, and the Register of Trade 
 Marks, respectively; and notice of every entry, cancel- 
 lation, or correction made in the Shefl&eld register shall 
 be given to the Comptroller by the Cutlers' Company : 
 Provided that this section shall not affect any life estate 
 and interest of a w^idow of the holder of any Sheflfield 
 mark which may be in force in respect of such mark 
 at the time w^hen it shall be placed upon the Sheffield 
 register. 
 (8) Where the comptroller receives from any person not 
 carrying on business in Hallamshire or within six miles 
 
PATENTS, DESIGNS, ETC. ACTS, 1883 — 88. 381 
 
 thereof an application for registration of a trade mark Act, 1888, 
 used [o7i cutlery, edge tools, or on raw steel, or on goods ^' ' *" 
 made of steel, or of steel and iron combined, ichetJier with or 
 ivithout a cutting edge'], on metal goods, he shall in the 
 prescribed manner notify the application and proceedings 
 thereon to the Cutlers' Company : 
 
 (9) At the expiration of five years from the commencement 
 of this Act the Cutlers' Company shall close the Cutlers' 
 register of corporate trade marks, and thereupon all 
 marks entered therein shall, unless entered in the Sheffield 
 register, be deemed to have been abandoned : 
 
 (10) A person may (notwithstanding anything in any Act 
 relating to the Cutlers' Company) be registered in the Shef- 
 field register as proprietor of two or more trade marks : 
 
 (11) A body of persons, corporate or not corporate, may 
 (notwithstanding anything in any Act relating to the 
 Cutlers' Company) be registered in the Sheffield register 
 as proprietor of a trade mark or trade marks : 
 
 (12) Any person aggrieved by a decision of the Cutlers' 
 Company in respect of anything done or omitted under 
 this Act may, in the prescribed manner, appeal to 
 the comptroller, who shall have power to confirm, reverse, 
 or modify the decision, but the decision of the comp- 
 troller shall be subject to a further appeal to the Court : 
 
 (13) So much of the Cutlers' Company's Acts as applies 
 to the summary punishment of persons counterfeiting 
 
 Sheffield corporate marks, that is to say, the fifth section 
 of the Cutlers' Company's Act of 1814, and the pro- 
 visions in relation to the recovery and application of the 
 penalty imposed by such last-mentioned section contained 
 in the Cutlers' Company's Act of 1791, shall apply to any 
 mark entered in the Sheffield register. 
 
 (14) For the purposes of this section the expression Act, 1888, 
 "metal goods" means all metals, whether wrought, ^- 20, sui-*-. 4. 
 unwTought, or partly wrought, and all goods composed 
 
 wholly or partly of any metal. 
 
 (15) For the purpose of legal proceedings in relation to 
 trade marks entered in the SheflBeld register, a certi- 
 ficate under the hand of the master of the Cutlers' 
 Company shall have the same effect as the certificate 
 of the comptroller. 
 
382 
 
 APPENDIX A. 
 
 PAET v.— Geneeal. 
 
 Patent Office. 
 
 Officers and 
 clerks. 
 
 Seal of 
 patent office. 
 
 Trust not to 
 be entered in 
 registers. 
 
 Kf-fusal to 
 grant patent, 
 
 PaUnt Office and Proceedings thereat. 
 82. — (1) The Treasury may provide for the purposes of this 
 Act an office with all requisite buildings and conveniences, 
 which shall be called, and is in this Act referred to as the 
 Patent Office. 
 
 (2) Until a new patent office is provided, the offices of the 
 Commissioners of Patents for inventions and for the registra- 
 tion of designs and trade marks existing at the commencement 
 of this Act shall be the patent office within the meaning of this 
 Act. 
 
 (3) The patent office shall be under the immediate control of 
 an officer called the comptroller-general of patents, designs, 
 and trade marks, who shall act under the superintendence and 
 direction of the Board of Trade. 
 
 (4) Any act or thing directed to be done by or to the 
 comptroller may, in his absence, be done by or to any officer 
 for the time being in that behalf authorised by the Board of 
 Trade. 
 
 83. — (1) The Board of Trade may at any time after the 
 passing of this Act, and from time to time, subject to the 
 approval of the Treasury, appoint the comptroller-general of 
 patents, designs, and trade marks, and so many examiners and 
 other officers and clerks, with 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 ap- 
 pointed by the Board of Trade, with the concurrence of the 
 Treasury, and the same and the other expenses of the execu- 
 tion of this Act shall be paid out of money provided by 
 Parliament. 
 
 84. There shall l)e a seal for the patent office, and impres- 
 sions thereof shall be judicially noticed and admitted in 
 evidence [p. 144]. 
 
 85. There shall not be entered in any register kept under 
 this Act, or be receivable by the comj)troller, any notice of any 
 trust expressed, implied or constructive [pp. 23, 185]. 
 
 86. 'J he coniptroller may refuse to grant a patent for an in- 
 
PATENTS, DESIGNS, ETC. ACTS, 1883 88. 383 
 
 vention, or to register a design or trade mark, of which the use &c., in certain 
 
 cases. 
 
 would, in his opinion, be contrary to law or morality [p. 130]. 
 
 87. Where a person becomes entitled by assignment, trans- Entry of 
 mission, or other operation of law to a patent, or to the copy- and^rrnrmis- 
 right in a registered design, or to a registered trade mark, the sions in 
 comptroller shall on request, and on proof of title to his satis- ^^^^^ ^^' 
 faction, cause the name of such person to be entered as ]jro- 
 
 prietor of the patent, copyright iu 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 this Act and to any rights appear- ^<'^' 1888,' 
 ing from such register to be vested in any other person, have 
 power absolutely to assign, grant licenses as to, or otherwise 
 deal with, the same and to give effectual receipts for any con- 
 sideration for such assignment, licence or dealing. Provided 
 that any equities in respect of such patent, design or trade 
 mark may be enforced in like manner as in respect of any 
 other personal property [p. 18.5]. 
 
 88. Every register kept under this Act shall at all convenient inspection of 
 times be open to the inspection of the public, subiect to the i!'"^ extracts 
 
 ' '■ 1 1 • from registers. 
 
 provisions of this Act and to such regulations as may be pre- ^^^ igSS 
 scribed ; and certified copies, sealed with the seal of the patent «• 22. 
 office, of any entry in any such register shall be given to any 
 person requiring the same on payment of the prescribed fee 
 [p. 185]. 
 
 89. Printed or written copies or extracts, purporting to be Sealed copies 
 
 certified by the comptroller and sealed with the seal of the ^° be received 
 
 in evidence, 
 patent office, of or from patents, specifications, disclaimers and 
 
 other documents in the patent office, and of or from registers ^^ 
 
 and other books kept there, shall be admitted in evidence in all 
 
 courts in her Majesty's dominions, and in all proceedings, 
 
 without further proof or production of the originals [p. 186]. 
 
 90. — (1) The Court may on the application of any person Rectification 
 
 aggrieved by the omission without sufficient cause of the name of registers 
 
 ,. o , . p .by court. 
 
 01 any person, or of any other particulars irom any register . ,, .oqq 
 kept under this Act, or by any entry made without sufficient s. 23. 
 cause in any such register, make such order for making, 
 expunging or varying the entry, as the Court thinks fit ; or the 
 
n84 
 
 APPENDIX A. 
 
 Act, 1888, 
 a. 24. 
 
 Alteration of 
 
 registered 
 
 mark. 
 
 Notice to be 
 given. 
 
 Comptroller 
 to alter in 
 accordance 
 with order. 
 
 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 [p. 186]. 
 
 (2) The Court may in any proceeding under this section 
 decide any question that it may be necessary or expedient to 
 decide ibr the rectification of a register, and may direct an 
 i^sue to be tried for the decision of any question of fact, and 
 may award damages to the party aggrieved. 
 
 (3) Any order of the Court rectifying a register shall direct 
 that due notice of the rectification be given to the comptroller. 
 
 91. The comptroller may, on request in writing accompanied 
 by the prescribed fee [p. 186], 
 
 (a) Correct any clerical error in or in connection with an 
 application for a patent, or for registration of a design or 
 trade mark ; or 
 
 (b) Correct any clerical error in the name, style, or address 
 of the registered proprietor of a patent, design or trade 
 mark ; 
 
 (c) Cancel the entrj^ or part of the entry of a trade mark on 
 the register : Provided that the applicant accompanies his 
 request by a statutory declaration made by himself, stating 
 his name, address, and calling, and that he is the person 
 whose name appears on the register as the proprietor of 
 the said trade mark. 
 
 (d) Permit an applicant for registration of a design or trade 
 mark to amend his application by omitting any parti- 
 cular goods or classes of goods in connection with which 
 he has desired the design or trade mark to be registered. 
 
 92. — (1) The registered proprietor of any registered trade 
 mark may apply to the Court for leave to add to or alter such 
 mark in any particular, not being an essential particular within 
 the meaning of this Act, and the Court may refuse or grant 
 leave on such terms as it may think fit. 
 
 (2) Notice of any intended application to the Court under 
 this section shall be given to the comptroller by the applicant ; 
 and the comptroller shall be entitled to be heard on the 
 application. 
 
 (3) If the Court grants leave, the comptroller shall, on proof 
 thereof and on payment of the prescribed fee, cause the register 
 to be altered in conformity with the order of leave. 
 
PATFKTS, DESIGNS, ETC. ACTS, 1883 — 88. 385 
 
 93. If any person makes or causes to be made a false entry Falsification 
 
 of entries 
 registers. 
 
 in any register kept under this Act, or a writing falsely pur °^ entries m 
 
 porting to be a copy of an entry in any such register, or 
 produces or tenders or causes to be produced or tendered in 
 evidence any such writing, knowing the entry or writing to be 
 false, he shall be guilty of a misdemeanor. 
 
 94. Where any discretionary power is by this Act given to Exercise of 
 the comptroller, he shall not exercise that power adversely to "discretionary 
 
 '■ i. J power by 
 
 the applicant for a patent, or for amendment of a specification, comptroller. 
 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 [p. 130] (o). 
 
 95. The comptroller may, in any case of doubt or diflBculty Power of 
 arising in the administration of any of the provisions of this take^dh-c ti*° 
 Act, apply to either of the law officers for direction in the of law officers. 
 matter. 
 
 96. A certificate purporting to be under the hand of the Certificate of 
 comptroller as to any entry, matter, or thing which he is be'evidence *^° 
 authorised 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 [p. 320]. 
 
 97. — (1) Any application, notice, or other document autho- Applications 
 rised or required to be left, made, or given at the Patent Office, ^ , ost ''^^^ 
 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 respec- 
 tively at the time when the letter containing the same would 
 be delivered in the ordinary course of post. 
 
 (2) In proving such service or sending, it shall be sufficient Proof, 
 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 Provision as 
 for the time being in force, for leaving any document or pay- feavfng °^ 
 ing any fee at the Patent Office ^hall fall on Christmas Day, documents at 
 Good Friday, or on a Saturday or vSunday, or any day observed ° '^^' 
 as a holiday at the Bank of England, or any day observed as a 
 
 (o) See P. R., 1890, r. 11. 
 I. c c 
 
386 
 
 APPENDIX A. 
 
 Declaration 
 by infant, 
 lunatic, &c. 
 
 Transmission 
 of certified 
 printed copies 
 of specifica- 
 tions, &c. 
 
 Power for 
 board of trade 
 to make gene- 
 ral rules for 
 classifying 
 goods und 
 regulating 
 business of 
 Patent Office. 
 
 day of public fast or thanksgiving, herein referred to as 
 excluded days, it shall be lawful to leave such document, or to 
 pay such fee, on the day next following such excluded day, or 
 daysif t\TO or more of them occur consecutively [p. 131] (p). 
 
 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 com- 
 mittee (if any) of such incapable person, or if there be none, 
 any person appointed by any Court or judge possessing juris- 
 diction 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 declara- 
 tion as nearly corresponding thereto as circumstances permit, 
 and do such thing in the name and on behalf of such incapable 
 person, and all acts done by such substitute shall for the pur- 
 poses of this Act be as eflFectual as if done by the person for 
 whom he is substituted [pp. 10, 127]. 
 
 100. Copies of all specifications, drawings, and amendments, 
 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 Rolls Office in the Isle of Man, within twenty-one 
 days after the same shall respectively have been accepted or 
 allowed at the Patent Office ; and certified copies of or extracts 
 from any such documents shall be given to any person requiring 
 the same on payment of the prescribed fee ; and any such copy 
 or extract shall be admitted in evidence in all Courts in Scot- 
 land and Ireland and in the Isle of Man without further proof 
 or production of the originals. 
 
 101. — (1) The Board of Trade may from time to time make 
 such general rules and do such things as they think expedient, 
 subject to the provisions of this Act [p. 182] : 
 
 (a) For regulating the practice of registration under this Act : 
 
 (b) For classifying goods for the purposes of designs and 
 trade marks : 
 
 (p) See P. R., 1890, r. 7. 
 
PATENTS, DESIGNS, ETC. ACTS, 1883 — 88. 387 
 
 (c) For making or requiring duplicates of specifications, 
 amendments, drawings, and other documents : 
 
 (d) For securing and regulating the publishing and selling 
 of copies, at such prices and in such manner as the Board 
 of Trade think fit, of specifications, drawings, amend- 
 ments, and other documents : 
 
 (e) For securing and regulating the making, printing, 
 publishing, and selling of indexes to, and abridgments 
 of, specifications and other documents in the Patent 
 Olfice ; and providing for the inspection of indexes and 
 abridgments and other documents : 
 
 (f) For regulating (with the approval of the Treasury) the 
 presentation of copies of Patent OflBce publications to 
 patentees and to public authorities, bodies, and institutions 
 at home and abroad : 
 
 (g) Generally for regulating the business of the Patent 
 Office, and all things by this Act placed under the direc- 
 tion 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 Alteration 
 altered or amended by rules made by the Board as aforesaid : °* forms. 
 
 (3) General rules may be made under this section at any General rules ; 
 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) be of the same effect as if they were 
 contained in this Act, and shall be judicially noticed. 
 
 (•i) Any rules made in pursuance of this section shall be laid to ^^ la,id 
 before both Houses of Parliament, if Parliament be in session ^^^^ ^^ '' 
 at the time of making thereof, or, if not, then as soon as advertised 
 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 mean- 
 time 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 Annual reports 
 every year, cause a report respecting the execution by or under °^ comptroller. 
 
 c c 2 
 
388 
 
 APPENDIX A. 
 
 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 pur- 
 poses of this Act, and an account of all fees, salaries, and 
 allowances, and other money received and paid under this Act. 
 Proceediiigs of 102a.— (1) All things required or authorised under this 
 
 Boaid of Trade. Act to be done by, to, or before the Board of Trade, may be 
 
 Act, 1888, , , 
 
 g 25. done by, to, or before the president, or a secretary or an 
 
 assistant secretary of the Board. 
 
 (2) AH 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 authorised in that behalf by the 
 president of the Board, shall be received in evidence, and 
 shall be deemed to be such orders withovit 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. 
 
 International 
 arrangements 
 for protection 
 of inventions, 
 designs, and 
 trade mai-ks. 
 
 Act, 1885, 
 s. 6. 
 
 Time. 
 
 No protection 
 prior to speci- 
 fication or 
 registration. 
 
 International and Cotonial Arrangements. 
 
 103. — (1) If Her Majesty is pleased to make any arrange- 
 ment with the government or governments of any foreign state 
 or states for mutual protection of inventions, designs, and 
 trade marks, or any of them, then any person who has applied 
 for protection for any invention, design, or trade mark in any 
 such state shall be entitled to a patent for his invention, or to 
 registration of his design or trade mark (as the case may be) 
 under this Act, in priority to other applicants ; and such patent 
 or registration shall have the same date as the \_date of protec- 
 tion oMained'] date of the application in such foreign state 
 [pp. 24, 68].^ 
 
 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 protection in the 
 foreign state with which the arrangement is in force. 
 
 Provided that nothing in this section contained shall entitle 
 the patentee or proprietor of 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. 
 
PATENTS, DESIGNS, ETC. A(;TS, 1883 88. 389 
 
 (2) The publication in the United Kingdom or the Isle of P>'tjiication at 
 Man, during the respective periods aforesaid, of any description ^itlon not\o ^" 
 of the invention or the use therein during such periods of the invalidate 
 
 ,• ,1 1 -1 •!.• ii • 1 • 1 • T patent or trade 
 
 invention, or the exhibition or use therein during such periods Jjj.^j.]. 
 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 registra- 
 tion of the design or trade mark : 
 
 (3) The application for the grant of a patent, or the registra- Application 
 tion of a design, or the registration of a trade mark under this sectbn*to\e 
 section, must be made in the same manner as an ordinary applica- made in same 
 tion under this Act : Provided that, in the case of trade marks, "^1°^^^ ^^ 
 any trade mark the registration of which has been duly applied application, 
 for in the country of origin may be registered under this Act : 
 
 (4) The provisions of this section shall apply only in the Application of 
 case of those foreign states with respect to which Her Majesty ^^^^ section, 
 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 force with respect to that 
 state. 
 
 104. — (1) "Where it is made to appear to Her Majesty that Provision for 
 the legislature of any British possession has made satisfactory j^^°^'^^ ^^^ 
 provision for the protection of inventions, designs, and trade 
 marks, patented or registered in this country, it shall be lawful 
 for Her Majesty, from time to time, by order in council, to 
 apply the provisions of the last preceding section, with such 
 variations or additions, if any, as to Her Majesty in council 
 may seem fit, to such British possession. 
 
 (2) An order in council under this Act shall, from a date to Effect of order 
 be mentioned for the purpose in the order, take effect as if its ^^ '^o^^" • 
 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 Penalty on 
 by him is a patented article, when no patent has been granted ^-^'^r^ repre- 
 
 J I ' r a senting articles 
 
 for the same, or describes any design or trade mark applied to to be patented. 
 any article sold by hiin as registered which is not so, shall be 
 
390 
 
 APPENDIX A. 
 
 Definition o£_ 
 false repre- 
 sentation 
 under this 
 section. 
 
 Penalty on 
 unauthorised 
 assumption of 
 royal arms. 
 
 Saving for 
 courts in 
 Scotland. 
 
 Definition of 
 " court of 
 appeal." 
 Summary 
 proceedings 
 iu Scotland. 
 
 Pioceedings 
 for revocation 
 of patent in 
 Scotland. 
 
 Service in 
 Scotland. 
 
 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 enact- 
 ment, 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 ex- 
 pressing or implying that a patent or registration has been 
 obtained for the article stamped, engraved, or impressed on, or 
 otherwise applied to the article. 
 
 106. Any person who, without the authority of Her Majesty, 
 or any of the royal family, or of any Government department, 
 assumes or uses in connection with any trade, business, calling, 
 or profession, the royal arms, or arms so nearly resembling the 
 same as to be 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 pro- 
 ceeding respecting a patent hitherto competent to those Courts. 
 
 For the purposes of this section " Court of Appeal " shall 
 mean any Court to which such action is appealed. 
 
 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 shown only [p. 268]. 
 
 (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. 
 
PATENTS, DESIGNS, ETC. ACTS, 1883 — 88. 391 
 
 110. All parties shall, notwithstanding anything in this Reservation of 
 Act, have in Ireland their remedies under or in respect of a jj-eiand. 
 patent as if the same had been granted to extend to Ireland 
 only. 
 
 111. — (1) The provisions of this Act conferring a special General saving 
 jurisdiction on the Court as defined by this Act, shall not, ex- ^f 'courts. ^*^ ^^^ 
 cept so far as the jurisdiction extends, affect the jurisdiction of 
 any Court in Scotland or Ireland in any proceedings relating to 
 patents or to designs or to trade marks ; and with reference to 
 any such proceedings in Scotland, the term " the Court " shall 
 mean any Lord Ordinary of the Court of Session, and the term 
 " Court of Appeal " shall mean either division of the said 
 Court ; and with reference to any such proceedings in Ireland, 
 the terms "the Court" and " the Court of Appeal " respec- 
 tively 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 Rectification 
 required in pursuance of any proceeding in a Court in Scot- of register. 
 land or Ireland, a copy of the order, decree, or other authority 
 for the rectification, shall be served on the comptroller, and he 
 shall rectify the register accordingly. 
 
 112. This Act shall extend to the Isle of Man, and — Isle of Man. 
 
 (1) Nothing in this Act shall affect the jurisdiction of the Jurisdiction 
 Courts in the Isle of Man, in proceedings for infringement °^ courts. 
 or in any action or proceeding respecting a patent, design, 
 
 or trade mark competent to those courts : 
 
 (2) The punishment for a misdemeanor under this Act in Punishments, 
 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 Offences and 
 Man which would in England be punishable on summary t^^gated as in 
 conviction may be prosecuted, and any fine in respect England under 
 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. 
 112a. " The Court of Chancery of the county palatine of jurisdiction of 
 Lancaster shall, with respect to any action or other pro- Lancashire 
 ceeding in relation to trade marks the registration whereof ^'^ j|^ggg 
 
 s. 26. 
 
392 APPENDIX A. 
 
 is applied for in the Mancliester oflS.ce, 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 eases" [p- 316]. 
 
 Reinal ; Transitional Provisions ; Savings. 
 Repeal and 113. The enactments described in the third schedule to this 
 
 saving for past ^^^ ^^^ hereby repealed. But this repeal of enactments shall 
 
 operation of ^ r i 
 
 repealed not — 
 
 enactments, ^^^ Affect the past operation of any of those enactments, or 
 
 Exceptions. ^^1 patent or copyright or right to use a trade mark 
 
 granted or acquired, or application pending, or appoint- 
 ment made, or compensation granted, or order or direction 
 made or given, or right, privilege, obligation, or liability 
 acquired, accrued, or incurred, or anything duly done or 
 suffered under or by any of those enactments before or at 
 the 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 rela- 
 tion to any such action or proceeding. 
 
 Former H^- — (1) The registers of patents and of proprietors kept 
 
 registers to be under any enactment repealed by this Act shall respectively 
 tinued. be deemed parts of the same book as the register of patents 
 
 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. 
 Saving for 115. All general rules made by the Lord Chancellor or by 
 
 existing 111 es. ^^^^ ^^^^^ authority under any enactment repealed by this Act, 
 and in force at the commencement of this Act, may at any 
 time after the passing of this Act be repealed, altered, or 
 amended by the Board of Trade, as if they had been made by 
 
PATENTS, DESIGNS, KT(J. ACTS, 1883 88. 393 
 
 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. 
 
 116, Nothing in this Act shall take away, abridge, or pre- Saving for 
 j udicially afl'ect the prerogative of the crown in relation to the prerogative, 
 granting of any letters patent, or to the withholding of a 
 grant thereof. 
 
 General Definitions. 
 
 117. — (1) In and for the purposes of this Act, unless the General 
 context otherwise requires, — definitions. 
 
 " Person " includes a body corporate : " Person." 
 
 "The Court" means (subject to the provisions for Scotland, "Coui-t." 
 Ireland, and the Isle of Man) her Majesty's High Court of 
 Justice in England : 
 
 "Law officer" means her Majesty's attorney-general or " Law officer. " 
 solicitor-general for England : 
 
 "The Treasury" means the commissioners of her Majesty's "Treasury." 
 treasury : 
 
 "Comptroller" means the comptroller-general of patents, "Comp- 
 designs, and trade marks : troller. 
 
 " Prescribed" means prescribed by any of the schedules to "Prescribed." 
 this Act, or by general rules under or within the meaning of 
 this Act : 
 
 "British possession" means any territory or place situate "British 
 within her Majesty's dominions, and not being or forming P°^^^^^^°°- 
 part of the United Kingdom, or of the Channel Islands, or of 
 the Isle of Man, and all territories and places under one 
 legislature, as hereinafter defined, are deemed to be one 
 British possession for the purposes of this Act : 
 
 "Legislature" includes any person or persons who exercise "Legislature." 
 legislative authority in the British possession ; and where 
 there are local legislatures as well as a central legislature, 
 means the central legislature only. 
 
 In the application of this Act to Ireland, "summary con vie- "Summary 
 tion " means a conviction under the Summary Jurisdiction Acts conviction " as 
 
 ' applied tu 
 
 that IS to pay, with reference to the Dublin metropolitan police Ireland. 
 
APPENDIX A. 
 
 llegistei- of 
 patent agents. 
 Jet, 1888, 
 5. 1. 
 
 district the Acts regulating the duties of justices of the peace 
 and of the police for such district, and elsewhere in Ireland the 
 Petty Sessions (Ireland) Act, 1851, and any Act amending it. 
 1. — (1) After the first day of July one thousand eight 
 hundred and eighty-nine a person shall not be entitled to 
 describe himself as a patent agent, Avhether by advertise- 
 ment, by description on his place of business, by any docu- 
 ment issued by him, or otherw^ise, 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 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) Provided that every person who proves to the satis- 
 faction of the Board of Trade that prior to the passing of 
 this Act he had been bon^ 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 knoAvingly describes himself as a patent 
 agent in contravention of this section he shall be liable on 
 summary conviction to a fine not exceeding twenty pounds. 
 
 (5} In this section " patent agent " means exclusively an 
 agent for obtaining patents in the United Kingdom. 
 
 Section 33. 
 
 The address. 
 
 First recital. 
 
 SCHEDULES. 
 The First Schedule. 
 
 Forms of Application, &c. 
 Fonns A, B and C of this first schedule are altered by the substitution 
 of those given in the second schedule to the Patent Rules, 1890 (post). 
 
 Form D. 
 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 tliese presents 
 shall coine greeting : 
 
 Whereas John Smith, of 29, Perry Street, Birmingham, in the county 
 of Warwick, enrjineer, liatli by his solemn declaration represented unto 
 us that he is in possession of au invention for " Improveirunts in Sewing 
 
PATENTS, DESIGNS, ETC. ACTS, 1883 — 88 395 
 
 Machines," that he is the true and ilrst inventor thereof, and that the 
 same is not in use by any other persoTi to the best of his knowledge and 
 belief: 
 
 And whereas the said inventor hath humbly prayed that we would be Second recital, 
 graciously pleased to grant unto him (hereinafter together with his 
 executors, administrators, and assigns, or any of them, referred to as 
 the said patentee) our royal letters patent for the sole use and advantage 
 of his said invention : 
 
 And whereas the said inventor hath by and in his complete specification Third recital, 
 particularly described the nature of his invention : 
 
 And whereas we being willing to encourage all inventions which may Fourth recital, 
 be for the jniblic good, are graciously pleased to condescend to his 
 request : 
 
 Know ye, therefore, that we, of our especial gi-ace, certain knowledge, The grant, 
 and mere motion, do by these presents, for us, our heirs and successors, 
 give and grant unto the said patentee our especial licence, full power, sole 
 privilege, and authority, that the said patentee by himself, his agents or 
 licensees, and no others, may at all times hereafter during the term of 
 years herein mentioned, make, use, exercise, and vend the said invention 
 within our united kingdom of Great Britain and Ireland and Isle of Man, 
 in such manner as to him or them may seem meet, and that the said 
 patentee shall have and enjoy the whole profit and advantage from time 
 to time accruing by reason of the said invention, during the term of four- 
 teen years from the date hereunder written of these presents : And to the The prohibi- 
 end that the said patentee may have and enjoy the sole use and exercise, tion. 
 and the full benefit of the said invention, we do by these presents, for us, 
 our heirs and successors, strictly command all our subjects whatsoever 
 within our united kingdom of Great Britain and Ireland and the Isle of 
 Man, that they do not at any time during the continuance of the said 
 term of fourteen years, either directly or indirectly make use of or put in 
 practice the said invention, or any part of the same, nor in anywise 
 imitate the same, nor make or cause to be made any addition thereto or 
 subtraction therefrom, whereby to pretend themselves the inventors there- 
 of without the consent, licence, or agreement of the said patentee in 
 writing under his hand and seal, on pain of incurring such penalties as 
 may be justly inflicted on such offenders for their contempt of this our 
 royal command, and of being answerable to the patentee according to law 
 for his damages thereby occasioned : Provided that these our letters patent The conditions 
 are on this condition, that, if at any time during the said term it be made 
 to appear to us, our heirs or successors, or any six or more of our privy 
 council, that this our grant is contrary to law, or prejudicial or incon- 
 venient to our subjects in general, or that the said invention is not a new 
 invention as to the public iise and exercise thereof within our irnited king- 
 dom of Great Britain and Ireland, and Isle of Man, or that the said paten- 
 tee is not the first and true inventor thereof within this realm as aforesaid, 
 these our letters patent shall forthwith determine, and be void to all 
 intents and purposes, notwithstanding anything hereinbefore contained : 
 Provided also, that if the said patentee shall not pay all fees by law 
 required to be paid in respect of the grant of these letters patent, or in 
 respect of any matter relating thereto at the time or times, and in manner 
 
396 
 
 APPENDIX A. 
 
 The construc- 
 tion. 
 
 for the time being by law provided ; and also if the said patentee shall 
 not supply or cause to be supplied, for our service all such articles of the 
 said invention as may be required by the officers or commissioners 
 administering any department of our service in such manner, at such 
 times, and at and upon such reasonable prices and terms as shall be 
 settled in manner for the time being by law provided, then, and in any of 
 the said cases, these our letters patent, and all privileges and advantages 
 whatever hereby granted shall determine and become void notwithstand- 
 ing anything hereinbefore contained : Provided also, that notliing herein 
 contained shall prevent the granting of licences in such manner and for 
 such considerations as they may by law be granted : And lastly, we do by 
 these presents for us, our heirs and successors, grant unto the said patentee 
 that these our letters patent shall be construed in the most beneficial 
 sense for the advantage of the said patentee. In witness whereof we have 
 caused these our letters to be made patent this 18 and to be 
 
 sealed as of the 18 . 
 
 [Seal of Patent Office.] 
 
 Section 113. ThE ThIED SCHEDULE. 
 
 Etiactments Repealed. 
 
 21 James 1, c. 3 (1623). — The Statute of Monopolies. In part ; namely, 
 sections 10, 11 and 12. 
 
 5 & 6 Will. 4, c. 62 (1835) [In part].— The Statutory Declarations Act, 
 1835. In part ; namely, section 11. 
 
 5 & 6 Will. 4, c. 83 (1835). — An act to amend the law touching letters 
 patent for inventions. 
 
 2 & 3 Vict. 67 (1839).— An act to amend an act of the fifth and sixth 
 years of the reign of king William the Fourth, intituled " An Act to 
 amend the law touching letters patent for inventions." 
 
 5 & 6 Vict. c. 100 (1842). — An act to consolidate and amend the laws 
 relating to the co^iyright of designs for ornamenting articles of manufac- 
 ture. 
 
 6 & 7 Vict. c. 65 (1843). — An act to amend the laws relating to the 
 copyright of designs. 
 
 7 & 8 Vict. c. 69* (1844) [In part]. — An act for amending an act passed 
 in the fourth year of the reign of his late majesty, intituled " An act for 
 the better administration of justice in his majesty's privy council, and to 
 extend its jurisdiction and powers." In part ; namely, sections 2 to 5, 
 both included. 
 
 13 & 14 Vict. c. 104 (1850). — An act to extend and amend the acts 
 relating to the copyright of designs. 
 
 15 & 16 Vict. c. 83 (1852).— The Patent Law Amendment Act, 1852. 
 
 16 & 17 Vict. c. 5 (1853). — An act to substitute stamp duties for fees on 
 passing letters patent for inventions, and to provide for the purchase for 
 the public use of certain indexes of specifications. 
 
 * Note. — Sects. 6 and 7 of this act are repealed by the Statute Law 
 Revision (No. 2) Act, 1874. 
 
PATENTS, DESIGNS, ETC. ACTS, 1883 — 88. 397 
 
 16 k 17 Vict. c. 115 (1853). — An act to amend certain provisions of the 
 Patent Law Amendment Act, 1852, in respect of the transmission of 
 certified copies of letters patent and specifications to certain offices in 
 Edinburgh and Dublin, and otherwise to amend the said act. 
 
 21 & 22 Vict. c. 70 (1858).— An act to amend the act of the fifth and 
 sixth years of her present Majesty, to consolidate and amend the hiws 
 relating to the copyright of designs for ornamenting articles of manufac- 
 ture. 
 
 22 Vict. c. 13 (1859). — An act to amend the law concerning patents for 
 inventions with respect to inventions for improvements in instruments and 
 munitions of war. 
 
 24 & 25 Vict. c. 73 (1861). — An act to amend the law relating to the 
 copyright of designs. 
 
 28 & 29 Vict. c. 3 (1865).— The Industrial Exhibitions Act, 1865. 
 
 33 & 34 Vict. c. 27 (1870).— The Protection of Inventions Act, 1870. 
 
 33 & 34 Vict. c. 97 (1870).— The Stamp Act, 1870. In part ; namely, 
 section 65, and in the schedule the words and figures, "Certificate of the 
 registration of a design . . £5 0. And see section 65." 
 
 38 & 39 Vict. c. 91 (1875).— The Trade Marks Registration Act, 1875. 
 
 38 & 39 Vict. c. 93 (1875).— The Copyright of Designs Act, 1875. 
 
 39 & 40 Vict. c. 33 (1876).— The Trade Marks Registration Amendment 
 Act, 1876. 
 
 40 & 41 Vict. c. 37 (1877).— The Trade Marks Registration Extension 
 , Act, 1877. 
 
 43 & 44 Vict. c. 10 (1880).— The Great Seal Act, 1880. In part; 
 namely, section 5. 
 
 45 k 46 Vict. c. 72 (1882).— The Revenue, Friendly Societies, and 
 National Debt Act, 1882. In part ; namely, section 16. 
 
308 APPENDIX A. 
 
 III.— PATENTS, ETC., ACT, 1885. 
 
 48 & 49 Vict. c. 63. 
 
 An Act to amend the Patents, Designs, and Trade Maries 
 Act, 1883. 
 
 Be it enacted by the Queen's most excellent Majesty, by 
 and with the advice and consent of the Lords Spiritual and 
 Temporal, and Commons, in this present Parliament assembled, 
 and by the authority of the same, as follows : 
 
 1. This Act shall be construed as one with the Patents, 
 Designs, and Trade Marks Act, 1883 (in this Act referred to 
 as the principal Act). 
 
 This Act may be cited as the Patents, Designs, and Trade 
 Marks (Amendment) Act, 1885, and this Act and the principal 
 Act may be cited together as the Patents, Designs, and Trade 
 Marks Acts, 1883 and 1885. 
 feTrsTiTb- °^ ^- Whereas sub-section 2 of section 5 of the principal Act 
 sect. 2. requires a declaration to be made by an applicant for a patent 
 
 to the eflFect in that sub-section mentioned, and doubts have 
 arisen as to the nature of that declaration, and it is expedient 
 to remove such doubts : Be it therefore enacted that : 
 
 The declaration mentioned in sub-section 2 of section 5 of 
 the principal Act may be either a statutory declaration under 
 the Statutory Declarations Act, 1835, or not, as may be from 
 time to time prescribed. 
 Amendment of 3, Whereas under the principal Act, a complete specification 
 'is required (by section 8) to be left within nine months, and 
 (by section 9) to be accepted within twelve months, from the 
 date of application, and a patent is required by section 12 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 re- 
 spectively as the comptroller may on the payment of the 
 prescribed fee allow, and where such extension of time has been 
 allowed, a further extension of four months after the said 
 
PATENTS, ETC. ACT, 1S85. 399 
 
 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, Abandoned 
 or become void, the specification or specifications and drawings application, 
 (if any) accompanying or left in connection with such applica- 
 tion, shall not at any time be open to public inspection or be 
 published by the comptroller. 
 
 5. Whereas doubts have arisen whether under the principal Joint patent. 
 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. 
 
 6. In sub-section 1 of section 103 of the principal Act, the Amendment of 
 words " date of the application " shall be substituted for the sect. 103, sub- 
 words " date of the protection obtained." 
 
•iOO APPENDIX A. 
 
 IV.— PATENTS, ETC., ACT, 1886. 
 49 & 50 YiCT. c. 37. 
 
 An Act to remove certain doubts resjjeciing the construction of 
 the Fate?its, Designs, and Trade Marks Act, 1883, so far 
 as respects the drawings Inj which sjwcljirations are required 
 to he accomjmnied, and as respects Exhibitions. 
 
 Wheeeas by section 5 of the Patents, Designs, and Trade 
 Marks Act, 1883, specifications, whether provisional or com- 
 plete, must be accompanied by drawings if required, and 
 doubts have arisen as to whether it is sufficient that a 
 complete specification refers to the drawings by which the pro- 
 visional specification 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 Parlia- 
 ment assembled, and by the authority of the same, as follows : 
 Title. 1. This Act may be cited as the Patents Act, 1886, and 
 
 shall be construed as one with the Patents, Designs, and Trade 
 Marks Acts, 1883 and 1885, and, together with those Acts, 
 may be cited as the Patents, Designs, and Trade Marks Acts, 
 1883 to 1886. 
 Explanation of 2. The requirement of sub-section 4 of section 5 of the 
 sect. 5, sub- Patents, Designs, and Trade Marks Act, 1883, as to drawings 
 
 sect. 4 of 7 o ' ' ' o 
 
 principal Act. shall not be deemed to be insufficiently complied with by reason 
 only that instead of being accompanied by drawings the com- 
 plete specification refers to the drawings which accompanied 
 the provisional specification. And no patent heretofore sealed 
 shall be invalid by reason only that the complete specification 
 was not accompanied by drawings, but referred to those 
 which accompanied the provisional specification. 
 Extension of 3. Whereas by section 39 of the Patents, Designs, and 
 principal°Act Trade Marks Act, 1883, as respects patents, and by section 57 
 of the same Act as respects designs, provision is made that the 
 exhibition of an invention or design at an industrial or inter- 
 national exhibition, certified as such by the Board of Trade, 
 shall not prejudice the rights of the inventor or proprietor 
 
PxVTENTS, ETC. ACT, 1886. 401 
 
 thereof, subject to the conditions therein mentioned, one of 
 which is that the exhibitor must, before exhibiting the inven- 
 tion, design, or article, or publishing a description of the 
 design, give the comptroller the prescribed notice of his 
 intention to do so : 
 
 And whereas it is expedient to provide for the extension 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 ]\Iajesty, by order in Council, from 
 time to time to declare that sections 81) and 57 of the Patents, 
 Designs, and Trade Marks Act, 1883, or either of those 
 sections, shall apply to any exhibition mentioned in the order 
 in like manner as if it were an industrial or international 
 exhibition certified by the Board of Trade, and to provide that 
 the exhibitor shall be relieved from the conditions, specified in 
 the said sections, of giving notice to the comptroller of his in- 
 ^tention to exhibit, and shall be so relieved either absolutely or 
 upon such terms and conditions as to her Majesty in Council 
 may seem fit. 
 
 u u 
 
APPENDIX A. 
 
 46 & 47 Vict. 
 c. 57. 
 
 Register of 
 
 Y.— PATENTS, DESIGNS, ETC., ACT, 1888. 
 
 An Act to amend the Patents, Designs, and Trade Marks Ad, 
 1883. [24th December, 1888.] 
 
 Wheeeas it is expedient to amend the Patents, Designs, 
 and Trade Marks Act, 1883, hereinafter referred to as the 
 principal 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 Parlia- 
 ment assembled, and by the authority of the same, as follows : 
 
 1. — (1) After the first day of July, one thousand eight hun- 
 patent agents. ^^^^ ^^^^ eighty-nine, a person shall not be entitled to describe 
 himself as a patent agent, whether by advertisement, by de- 
 scription 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 [see Register of Patent Agents Rules, 
 p. 459]. 
 
 (2) The Board of Trade shall, as soon as may be after the 
 passing of this Act, and may from time to time, make such 
 general rules as are in the opinion of the Board required for 
 giving effect to this section, and the provisions of section 101 
 of the principal Act shall apply to all rules so made as if they 
 were made in pursuance of that section. 
 
 (3) Provided that every person who proves to the satisfaction 
 of the Board of Trade that prior to the passing of this Act he 
 had been 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 be liable on 
 summary conviction to a fine not exceeding twenty pounds. 
 
 (5) In this section " patent agent " means exclusively an 
 agent for obtaining patents in the United Kingdom. 
 
 2. For section seven of the principal Act the following 
 section shall be substituted, namely : — 
 
 " 7. — (1) If the examiner reports that the nature of the 
 invention is not fairly described, or that the apphcation, speci- 
 fication, or drawings has not, or have not, been prepared in 
 
 Amendments 
 of 46 & 47 
 Vict. c. 57. 
 
 S. 7, as to 
 apijlications. 
 
PATENTS, DESIGNS, ETC. ACT, 1888. 403 
 
 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 appli- 
 cation, specification or drawings be amended before he pro- 
 ceeds with the application ; and in the latter case the applica- 
 tion shall, if the comptroller so directs, bear date as from the 
 time when the requirement is complied with, 
 
 " (2) Where the comptroller refuses to accept an application 
 or requires an amendment, the applicant may appeal from his 
 decision to the law officer. 
 
 " (3) The law officer shall, if required, hear the applicant and 
 the comptroller, and may make an order determining whether, 
 and subject to what conditions (if any) the application shall 
 be accepted. 
 
 " (4) The comptroller shall, when an application has been 
 accepted, give notice thereof to the applicant. 
 
 " (5) If, after an application for a patent has been made, 
 but before the patent thereon has been sealed, another appli- 
 cation for a patent is made accompanied by a specffication 
 bearing the same or a similar title, the comptroller, if he 
 thinks fit, on the request of the second applicant, or of his 
 legal representative, may, within two months of the grant of a 
 patent on the first application, either decline to proceed with 
 the second application or allow the surrender of the patent, if 
 any, granted thereon." 
 
 3, In sub-section .5 of section of the principal Act the S. 9, as to 
 words " other than an appeal to the law officer under this j!gpo^j,tg"o7 ° 
 Act " shall be omitted. examiners. 
 
 4, In sub-section 1 of section 11 of the principal Act the s. 11, as to 
 words from " or on the ground of an examiner " to " a previous opposition to 
 
 ° . ^ grant of 
 
 application," both inclusive, shall be omitted, and there shall patent, 
 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 specification and the leaving of 
 the complete specification." 
 
 5, For sub-section 10 of section 18 of the principal Act the S. 18, as to 
 following sub-section shall be substituted, namely — spedfication<5 
 
 P D 2 
 
404 
 
 APPENDIX A. 
 
 " (10) The foregoing provisions of this section do not apply- 
 when, and so long as any action for infringement or proceed- 
 ing for revocation of a patent is pending." 
 S. 52, as to 6. After sub-section 1 of section 52 of the principal Act 
 
 desicns!*^ ° ^^^^ following words shall be added ; namely, 
 
 " Provided that where registration of a design is refused on 
 the ground of identity with a design already registered, the 
 applicant for registration shall be entitled to inspect the 
 design so registered." 
 S. 58, as to 7, — (1) In section 58 of the principal Act the words "or 
 
 registei-ed cause to be applied " shall be added after the word " apply." 
 designs. (2) To the Same section the following words shall be added : 
 
 " Provided that the total sum forfeited in respect of any one 
 design shall not exceed one hundred pounds." 
 S. 62, as to 8. — (1) In sub-section 2 of section 62 of the principal Act 
 
 registration, for the words " the patent office in the prescribed manner" 
 shall be substituted the words " such place and in such manner 
 as may be prescribed." 
 
 (2) To the same section of the principal Act the following 
 sub-section shall be added : — 
 
 " (6) Where an applicant for the registration of a trade 
 
 mark otherwise than under an international convention is out 
 
 of the United Kingdom at the time of making the application 
 
 he shall give the comptroller an address for service in the 
 
 United Kingdom, and if he fails to do so the application shall 
 
 not be proceeded with until the address has been given." 
 
 S. 63, as to 9_ In section 63 of the principal Act for the words " the 
 
 for proceeding application shall be deemed to be abandoned " shall be substi- 
 
 with applica- tuted the words " the comptroller shall give notice of the 
 
 non-completion to the agent employed on behalf of the 
 
 applicant, and, if at the expiration of fourteen days from that 
 
 notice the registration is not completed, shall give the like 
 
 notice to the applicant, and if at the expiration of the latter 
 
 fourteen days, or such further time as the comptroller may in 
 
 special cases permit, the registration is not completed, the 
 
 application shall be deemed to be abandoned." 
 
 S. 64, as to 10. — (1) For section 64 of the principal Act the following 
 
 section shall be substituted, namely — 
 
 " 64. — (1) For the purposes of this Act, a trade mark must 
 consist of or contain at least one of the following essential 
 particulars : 
 
PATENTS, DESIGNS, ETC. ACT, "1888. 405 
 
 " (a) A name of an individual or firm printed, impressed, 
 
 or woven in some particular and distinctive manner ; or 
 " (b) A written signature or copy of a written signature of 
 the individual or firm applying for registration thereof as 
 a trade mark ; or 
 " (c) A distinctive device, mark, brand, heading, label, or 
 
 ticket ; or 
 " (d) An invented word or invented words ; or 
 " (e) A word or words having no reference to the character 
 or quality of the goods, and not being a geographical 
 name. 
 " (2) There may be added to any one or more of the essen- 
 tial particulars mentioned in this section any letters, words, or 
 figures, or combination of letters, words, or figures, or of any 
 of them, but the applicant for registration of any such addi- 
 tional matter must state in his application the essential par- 
 ticulars of the trade mark, and must disclaim in his applica- 
 tion any right to the exclusive use of the added matter, and a 
 copy of the statement and disclaimer shall be entered on the 
 register. 
 
 " (3) Provided as follows :— 
 
 " (i.) A person need not under this section disclaim his own 
 name or the foreign equivalent thereof, or his place of 
 business, but no entry of any such name shall atfect the 
 right of any owner of the same name to use that name or 
 the foreign equivalent thereof: 
 " (ii.) Any special and distinctive word or words, letter, 
 figure, or combination of letters or figures, or of letters 
 and figures used as a trade mark before the thirteenth 
 day of August one thousand eight hundred and seventy- 
 five, may be registered as a trade mark under this part of 
 this Act." 
 
 11. In section 67 of the principal Act the words "ors. 67, asto 
 colours " shall be added after the word " colour " in each place colours of 
 
 ^ trade marks. 
 
 where that word occurs. 
 
 12. In section 68 of the principal Act after the word "comp- s. 68, as to 
 troller " shall be added the words " unless the comptroller refuse advertisement 
 
 . of applications. 
 
 to entertam the application. 
 
 13. — (1) In subsection 1 of section 69 of the principal Act s. 69, as to 
 for the words "two months" shall be substituted the words opposition to 
 
 registration. 
 
406 APPENDIX A. 
 
 " one month or such further time, not exceeding three months, 
 as the comptroller may allow." 
 
 (2) In the same sub-section the word " first " shall be 
 omitted. 
 
 (3) In sub-section 2 of the same section for the words " two 
 months " shall be substituted the words " one month." 
 
 (4) For sub-sections 3 and 4 of the same section the 
 following sub-sections shall be substituted ; namely, 
 
 "(3) If the applicant sends such counter-statement the 
 comptroller shall furnish a copy thereof to the person who gave 
 notice of opposition, and shall, after hearing the applicant and 
 the opponent, if so required, decide whether the trade mark is 
 to be registered, but his decision shall be subject to appeal to 
 the Board of Trade, who shall, if required, hear the applicant 
 and the opponent and the comptroller, and may make an order 
 determining whether, and sul^ject to what conditions (if any), 
 registration is to Ije permitted. 
 
 " (4) The Board of Trade may, however, if it appears 
 expedient, refer the appeal to the Court, and in that event the 
 Court shall have jurisdiction to hear and determine the appeal, 
 and may make such order as aforesaid. 
 
 "(5) If the applicant abandons his application after notice 
 of opposition in pursuance of this section he shall be liable to 
 pay to the opponent such costs in respect of the opposition as 
 the comptroller may determine to be reasonable. 
 
 " (6) Where the opponent is out of the United Kingdom he 
 shall give the comptroller an address for service in the United 
 Kingdom." 
 S. 72, as to ^^' I^ sub-section two of section 72 of the principal Act, 
 
 restrictions on the following words shall be added at the beginning of the 
 sub-section, namely, " except as aforesaid," and for the words 
 " so nearly resembling " shall be substituted the words " having 
 such resemblance to." 
 S. 73 as to ^^- ^^ section 73 of the principal ilct the word " exclusive " 
 
 restriction on shall be omitted. 
 
 regis ra lou. ^q -p^^. g^Tj.gggt^iQj-, 2 of section 74 of the iirincipal Act the 
 
 S. 74, as to . ^ '■ 
 
 additions to lollowmg sub-section shall be substituted ; namely, 
 
 trade marks. a ^2) The applicant for registration of any such addition 
 must, however, state in his application the essential particulars 
 of the trade mark, and must disclaim in his application any 
 
PATENTS, DESIGNS, ETC. ACT, 1888. 407 
 
 right to the exclusive use of the added matter, and a copy of 
 the statement and disclaimer shall be entered on the registei*. 
 
 " Provided that a person need not under this section dis- 
 claim his own name or the foreign equivalent thereof, or his 
 place of business, but no entry of any such name shall affect 
 the right of any owner of the same name to use that name or 
 the foreign equivalent thereof." 
 
 17. For section 75 of the principal Act the following section s. 75, as to 
 shall be substituted ; namely, ^'Sect of 
 
 "Application for registration of a trade mark shall be ° ' 
 deemed to be equivalent to public use of the trade mark, and 
 the date of the application shall for the purposes of this Act be 
 deemed to be, and as from the first day of January, one 
 thousand eight hundred and seventy-six, to have been the date 
 of the registration." 
 
 18. After section 77 of the principal Act the following Certificate as 
 section shall be added and numbered 77a ; namely, iUand" costs 
 
 " In an action for infringement of a registered trade mark thereon, 
 the Court or a judge may certify that the right to the exclusive 
 use of the trade mark came in question, and if the Court or a 
 judge so certifies, then in any subsequent action for infringe- 
 ment the plaintiff in that action, on obtaining a final order or 
 judgment in his favour, shall have his full costs, charges, and 
 expenses as between solicitor and. client, unless the Court or 
 judge trying the subsequent action certifies that he ought not 
 to have the same." 
 
 19. — (1) In sub-section 5 of section 79 of the principal Act, Amendments 
 for the words *' the five years " shall be substituted the words y^^.^^ g_ 57^ 
 " one year." S. 79, as to 
 
 (2) To the same sub-section the following words shall be '■^'"°^''^^ °^ 
 
 ^ ^ • n trade mark 
 
 added ; namely, " unless it is shown to the satisfaction of the from the 
 comptroller that the non-payment of the fee arises from the register, 
 death or bankruptcy of the registered proprietor, or from his 
 having ceased to carry on business, and that no person claiming 
 under that proprietor or under his bankruptcy is using the 
 trade mark." 
 
 20. — (1) For sub-section 2 of section 81 of the principal Act S. 81, as to 
 the following sub-section shall be substituted : marks. 
 
 " (2) The Cutlers' Company shall enter in the Sheffield 
 register in respect of metal goods as defined in this section, ail 
 
c. 91 
 
 408 APPENDIX A. 
 
 the trade marks entered before the first day of January, one 
 thousand eight hundred and eighty-nine, in respect of metal 
 3Sjc 39 Vict, goods either in the register established under the Trade Marks 
 Registration Act, 1875, or in the register of trade marks under 
 this Act, belonging to persons carrying on business in Hallam- 
 shire or within six miles thereof. The Cutlers' Company shall 
 also, on request made in the prescribed manner, enter in the 
 Sheffield register, in respect of metal goods, all the trade mark=? 
 which shall have been assigned by the Cutlers' Company and 
 actually used before the first day of January, one thousand 
 eight hundred and eighty-four, but which have not been entered 
 in either of the said other registers." 
 
 (2) In sub-sections 3 and 8 of the same section, fur the words 
 " on cutlery, edge tools, or on raw steel., or on goods made of 
 steel, or of steel and iron combined, whether with or without a 
 cutting edge," shall be substituted the words " on metal goods." 
 
 (3) For sub-section 7 of the same section the following sub- 
 section shall be substituted : 
 
 " (7) The provisions of this Act and of any general rules made 
 under this Act with respect to the registration of trade marks, 
 and all matters relating thereto, shall, subject to the provisions 
 of this section, apply to the registration of trade marks on 
 metal goods by the Cutlers' Company, and to all matters 
 relating thereto ; and this Act and any such general rules shall, 
 so far as applicable, be construed accordingly with the substi- 
 tution of the Cutlers' Company, the office of the Cutlers' 
 Company, and the Sheffield register, for the comptroller, the 
 Patent Office, and the registrar of trade marks respectively ; 
 and notice of every entry, cancellation, or correction made in 
 the Sheffield register shall be given to the comptroller by the 
 Cutlers' Company : Provided that this section shall not affect 
 any life estate and interest of a widow of the holder of any 
 Sheffield mark which may be in force in respect of such mark 
 at the time when it shall be placed upon the Sheffield register." 
 
 (4) To the same section the following sub-sections shall be 
 added ; namely, 
 
 " (14) For the purposes of this section the expression " metal 
 goods" means all metals, whether wrought, unwrought, or 
 partly wrought, and all goods couiposed wholly or partly of 
 any metal 
 
PATENTS, DESIGNS, ETC. ACT, 1888. 409 
 
 "(15) For the purpose of legal proceedings in relation to 
 trade marks entered in the Sheffield register a certificate under 
 the hand of the master of the Cutlers' Company shall have the 
 same effect as the certificate of the comptroller." 
 
 21. In section 87 of the principal Act, after the word s S. 87, as to 
 " subject to," shall be added the words " the provisions of this ass^Jnmenos 
 Act and to." &c. 
 
 22. In section 88 of the principal Act, after the words s, 88, as to 
 " subject to," shall be added the words " the provisions of this ii^spection. 
 Act and to." 
 
 23. In section 90 of the principal Act, after the words " of s. 90, as to 
 the name of any person," shall be added the words " or of any J^g^^jJ^f '""^ °^ 
 other particulars." 
 
 24. To section 91 of the principal Act the following sub- s. 91, as to 
 
 section shall be added ; namely, correction of 
 
 ■^ ' . . errors. 
 
 " (d) 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 connection with which he has 
 
 desired the design or trade mark to be registered." 
 
 25. After section 102 of the principal Act the following rroceedings of 
 section shall be added and numbered 102 a ; namely, Board of Trade. 
 
 "(1) All things required or authorised under this Act to be 
 done by, to, or before the Board of Trade, may be done by, 
 to, or before the President or a secretary or an assistant 
 secretary of the Board. 
 
 " (2) All documents purporting to be orders made by the 
 Board of Trade and to be scale li with the seal of the 
 Board, or to be signed by a secretary or assistant secretary 
 of the Board, or by any person authorised in that behalf 
 by the President of the Board, shall be received in 
 evidence, and shall be deemed to be such orders without 
 further proof, unless the contrary is shown. 
 
 " (3) A certificate, signed by the President of the 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." 
 
 26. After section 112 of the principal Act the following Jurisdiction of 
 section shall be added and numbered 112a ; namely, PahiUne^C^ourt. 
 
 " The Court of Chancery of the County Palatine of Lancastei- 
 shall, with respect to any action or other proceeding in relation 
 
410 
 
 APPENDIX A. 
 
 Construction 
 of principal 
 Act. 
 
 Commence- 
 ment of act. 
 
 Short title. 
 
 to trade marks, the registration whereof is applied for in the 
 Manchester office, have the like jurisdiction under this Act as 
 her Majesty's High Court of Justice in England, and the 
 expression ' the court ' in this Act shall be construed and have 
 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 otherwise 
 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. 
 
APPENDIX B. 
 
 mXERNATIONAL CONVENTION FOR THE PRO- 
 TECTION OF INDUSTRIAL PROPERTY. 
 
 Signed at Paris, March 20, 1883. 
 
 \_Ratifications exchanged at Paris, June 6, 1884.] 
 
 I. — International Convention. 
 
 His Majesty the King of the Belgians, his Majesty the 
 Emperor of Brazil, his Majesty the King of Spain, the 
 President of the French Republic, the President of the 
 Republic of Guatemala, his Majesty the King of Italy, his 
 Majesty the King of the Netherlands, his Majesty tlie King of 
 Portugal and the Algarves, the President of the Republic of 
 Salvador, his Majesty the King of Servia, and the Federal 
 Council of the Swiss Confederation. 
 
 Being equally animated with the desire to secure, by mutual 
 agreement, complete and effectual protection for the industry 
 and commerce of their respective subjects and citizens, and to 
 provide a guarantee for the rights of inventors, and for the 
 loyalty of commercial transactions, have resolved to conclude a 
 convention to that efiect, and have named as their pleni- 
 potentiaries, that is to say : — 
 
 His Majesty the King of the Belgians : the Baron Beyens, 
 Grand Officer of His Majesty's Royal Order of Leopold, 
 Grand Officer of the Legion of Honour, his Majesty's Envoy 
 Extraordinary and Minister Plenipotentiary at Paris, &c. ; 
 
 His Majesty the Emperor of Brazil : M. Jules Constant, 
 Oount de Villeneuve, member of his Majesty's Council, his 
 Majesty's Envoy Extraordinary and Minister Plenipotentiary at 
 ■the Court of his Majesty the King of the Belgians, Commander 
 ■of the Order of Clii'ist, Officer of his Majesty's Order of the 
 Kose, Chevalier of the Legion of Honour, &c. ; 
 
 His Majesty the King of Spain : his Excellency the Duke 
 
412 APPENDIX E. 
 
 de Fernan -Nunez, de Montellano et del Arco, Count de 
 Cervcllon, Marquis de Almonacir, Grandee of Spain First 
 Class, Chevalier of the Distinguished Order of the Golden 
 Fleece, Grand Cross of the Order of Charles III., Chevalier de 
 Calatrava, Grand Cross of the Legion of Honour, Senator of the 
 Kingdom, his Majesty's Ambassador Extraordinary and Pleni- 
 potentiary at Paris, &c. ; 
 
 The President of the French Eepublic : M. Paul Challemel- 
 Lacour, Senator, Minister for Foreign Affairs ; M. Herisson, 
 Deputy, Minister of Commerce ; M. Charles Jagerschmidt, 
 Minister Plenipotentiary of the First Class, Officer of the 
 National Order of the Legion of Honour, &c, ; 
 
 The President of the Republic of Guatemala : M. Crisanto- 
 Medina, Officer of the Legion of Honour, his Envoy Extra- 
 ordinary and Minister Plenipotentiary at Paris, &c. 
 
 His Majesty the King of Italy : M. Constantin Kessman, 
 Commander of his Majesty's Orders of Saints Maurice and 
 Lazarus, and of the Crown of Italy, Commander of the Legion 
 of Honour, Councillor of the Italian Embassy at Paris, &c. ; 
 
 His Majesty the King of the Netherlands : the Baron 
 de Zuylen de Nyevelt, Commander of his Majesty's Order of 
 the Netherlands Lion, Grand Cross of his Majesty's Grand 
 Ducal Order of the Oaken Crown, and of the Golden Lion of 
 Nassau, Grand Officer of the Legion of Honour, his 
 Majesty's Envoy Extraordinary and Minister Plenipotentiary 
 at Paris, &c. ; 
 
 His Majesty the King of Portugal and the Algarves : 
 M. Jose da Silva Mendes Leal, Councillor of State, Peer of the 
 Realm, Minister and Honorary Secretary of State, Grand Cross 
 of the Order of St. James, Chevalier of the Order of the Tower 
 and Sword of Portugal, Grand Officer of the Legion of Honour, 
 his Majesty's Envoy Extraordinary and Minister Pleni- 
 potentiary at Paris, &c. ; M. Fernand de Azevedo, Officer of 
 the Legion of Honour, First Secretary of the Portuguese 
 Legation at Paris, &c. ; 
 
 The President of the Republic of Salvador : M. Ton*es- 
 Caicedo, corresponding member of the French Institute, Grand 
 Officer of the Legion of Honour, his Envoy Extraordinary and 
 Minister Plenipotentiary at Paris, &c. ; 
 
 His Majesty the King of Servia : M. Sima M. Marinovitch, 
 
INTE [{NATIONAL CONVENTION, 188'i. 413 
 
 Charge d' Affaires of Servia ad interim, Chevalier of the Royal 
 Order of Takovo, &c. ; 
 
 And the Federal Council of the Swiss Confederation : 
 M. Charles Edouard Lardy, Envoy Extraordinary and Minister 
 Plenipotentiary at Paris, &c. ; M. J. Weibel, Engineer at 
 Geneva, President of the Swiss Section of the Permanent 
 Commission for the Protection of Industrial Property ; 
 
 Who, having communicated to each other their respective 
 full powers found in good and due form, have agreed upon the 
 following Articles : — 
 
 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 of 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 con- 
 ditions 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 establish- 
 ments 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 peiiods hereinafter stated. 
 
414 
 
 APPENDIX B. 
 
 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. 
 
 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. 
 
INTERNATIONAL CONVENTION, 1883. 415 
 
 Article IX. 
 
 All goods illegally bearing a trade-mark or trade name may 
 be seized on importation into those states of the union where 
 this mark or name has a right to legal protection. 
 
 The seizure shall be 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 I'Union pour la Protection de la 
 Propri^te 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 supervision. Its 
 functions shall be determined by agreement between the states 
 of the union. 
 
41 G APPENDIX B. 
 
 Article XIV. 
 
 The present Convention shall be submitted to periodical 
 revisions, with a view to introducing improvements calculated 
 to perfect the system of the union. 
 
 To this end conferences shall be successively held in one of 
 the contracting states by delegates of the said states. The 
 next meeting shall take place in 1885 at Rome. 
 
 Article XY. 
 It is agreed that the high contracting parties respectively 
 reserve to themselves the right to make separately, as between 
 themselves, special arrangements for the protection of industrial 
 property, in so far as such arrangements do not contravene the 
 provisions of the present Convention. 
 
 Article XVI. 
 
 States which have not taken part in the present Convention 
 shall be permitted to adhere to it at their request. 
 
 Such adhesion shall be notified officially through the diplo- 
 matic channel to the government of the Swiss Confederation, 
 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 far as 
 necessary, to the observance of the formalities and rules 
 established by the constitutional laws of those of the high 
 contracting parties who are bound to procure the application 
 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 only affect the denouncing state, the 
 
INTERNATIONAL CONVENTION, 1883. 417 
 
 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 Pads the 20th March, 1883. 
 
 (Signed) 
 
 (l.s.) Beyens. 
 
 (l.s.) Villeneuve. 
 
 (l.s.) Due DE Fernan-Nunez. 
 
 (l.s.) p. Challemel-Lacour. 
 
 (L.s.) Ch. Herisson. 
 
 (l.s.) Ch. Jagerschmidt. 
 
 (l.s.) Crisanto-Medina. 
 
 (L.s.) Eessman. 
 
 (l.s.) Baron de Zutlen de Nyevelt. 
 
 (l.s.) Jose da Silva Mendes Leal. 
 
 (L.s.) F. d'Azevedo. 
 
 (l.s.) J.-M. Torres-Caicedo. 
 
 (l.s.) Sima M. Marinovitch. 
 
 (l.s.) Lardy, 
 
 (l.s.) J. Weibel. 
 
 II. — Final Protocol. 
 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 
 products employed in commerce (mineral waters, &c.). 
 
 (2) Under the word " patents " are comprised the various 
 
 T. E E 
 
418 APPENDIX B. 
 
 kinds of industrial patents recognized by the legislation of each 
 of the contracting states, such as importation patents, improve- 
 ment patents, &c. 
 
 (3) The last paragraph of Article 11. does not affect the 
 legislation of each of the contracting states as regards the 
 procedure to be followed before the tribunals, and the com- 
 petence of those tribunals. 
 
 (4) Paragraph 1 of Article VI . is to be understood as 
 meaning that no trade-mark shall be excluded from protection 
 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 YI. 
 
 (5) The organization of the special department for industrial 
 property mentioned in Article XII. shall comprise, so far 
 as possible, the publication in each state of a periodical 
 official paper. 
 
 (6) The common expenses of the international office, 
 instituted by virtue of Article XIII. are in no case to exceed 
 for a single year a total sum representing an average of 2,000 fr. 
 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 : — 
 
 1st class 25 units. 
 
 2u(l class 20 
 
 3rd class 15 
 
 4th class 10 
 
 5th class ........ 5 
 
 6th class 3 
 
PROTOCOL TO INTERNATIONAL CONVENTION, 1888. 419 
 
 These co-efficients will be multiplied by the number of 
 states in each class, and the sum of the result thus obtained 
 will supply the number of units by which the 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 class 
 
 . Spain. 
 
 3rd class 
 
 . Belgium, Brazil, Portugal, Switzerland 
 
 4th class 
 
 . Holland. 
 
 th class 
 
 . Servia. 
 
 6th class 
 
 . 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 administrations. 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 adminis- 
 trations, 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. 
 
 The administration of the country in which the next 
 conference is to be held will make preparations for the trans- 
 
 E E 2 
 
-^20 APPENDIX B. 
 
 actions of that conference, with the assistance of the inter- 
 national office. 
 
 The director of the international office will be present at the 
 meetings of the conferences, and will take part in the dis- 
 cussions, 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. 
 
 (Signed) Beyens. 
 
 ViLLENEUVE. 
 
 Due DE Fernan-Nunez. 
 p. Challemel-Lacour. 
 Ch. Herisson. 
 Ch. Jagerschmidt. 
 
 CRISA^f TO-M EDINA. 
 
 Eessmax. 
 
 Baron de Zuylen de Nyevelt. 
 
 Jose da Silva Mendes Leal. 
 
 F. d'Azevedo. 
 
 J.-M. Torres-Caicedo. 
 
 SiMA M. MARmOVITCH. 
 
 Lardy. 
 J, Weibel. 
 
 in. — Accession of her Majesty's Government to the Convention 
 signed at Paris, March 20, 1883. 
 The undersigned, Ambassador Extraordinary and Pleni- 
 potentiary of her Majesty the Queen of the United Kingdom 
 of Great Britain and Ireland to the French Republic, declares 
 
BRITISH ACCESSION TO INTERN AT. CONVENTION, 1883. 421 
 
 that her Britannic Majesty, having had the International 
 Convention for the protection of industrial property, con- 
 cluded at Paris on the 20th March, 1883, and the protocol 
 relating thereto, signed on the same date, laid before her, and 
 availing herself of the right reserved by Article XVI. of that 
 Convention to states not parties to the original Convention, 
 accedes, on behalf of the United Kingdom of Great Britain and 
 Ireland, to the said International Convention for the protection 
 of industrial property, and to the said protocol, which are to be 
 considered as inserted word for word in the present declaration, 
 and formally engages, as far as regards the President of the 
 French Republic and the other high contracting parties, to 
 co-operate on her part in the execution of the stipulations 
 contained in the Convention and protocol aforesaid. 
 
 The undersigned makes this declaration on the part of her 
 Britannic Majesty with the express understanding that power is 
 reserved to her Britannic Majesty to accede to the Convention 
 on behalf of the Isle of Man and the Channel Islands, and any 
 of her Majesty's possessions, on due notice to that eflFect being 
 given through her Majesty's Government. 
 
 In witness whereof the undersigned, duly authorized, has 
 signed the present declaration of accession, and has affixed 
 thereto the seal of his arms. 
 
 Done at Paris, on the 17th day of March, 1884. 
 
 (Signed) (l.s.) Lyons. 
 
 IV. — Declaration of acceptance of Accession. 
 Her Majesty the Queen of the United Kingdom of Great 
 Britain and Ireland, having acceded to the International 
 Convention relative to the protection of industrial property, 
 concluded at Paris, March 20, 1883, together with a protocol, 
 dated the same day, by the declaration of accession delivered 
 by her ambassador extraordinary and plenipotentiary to the 
 Government of the French Eepublic ; the text of which 
 declaration is word for word as follows : — 
 
 (Here is inserted the text of No. III. in English.) 
 
422 APPENDIX B. 
 
 The President of tiie French Republic has authorized 
 the undersigned, President of the Council, Minister for Foreign 
 Affairs, to formally accept the said accession, together with the 
 reserves which are contained in it concerning the Isle of Man, 
 the Channel Islands, and all other possessions of her Britannic 
 Majesty, engaging as well in his own name as in that of the 
 other high contracting parties to assist in the accomplishment 
 of the obligations stipulated in the Convention and the 
 protocol thereto annexed, which may concern the United 
 Kingdom of Great Britain and Ireland. 
 
 In witness whereof the undersigned, duly authorized, has 
 drawn up the present declai'ation of acceptance, and has affixed 
 thereto his seal. 
 
 Done at Paris, the 2nd April, 1884. 
 
 (l.s.) (Signed) Jules Ferry. 
 
APPENDIX C. 
 
 L— PATENTS RULES, 1890. 
 
 By virtue of the provisions of the Patents, Designs and 
 Trade Marks Acts, 1883 to 1888, the Board of Trade do 
 hereby make the following rules : 
 
 Short Title, 
 
 1. These rules may be cited as the Patents Rules^ 18&0. ^^'^^^ *i*'«- 
 
 Commencement. 
 
 2. These rules shall come into operation from and immedi- Commence- 
 ately after the 31st day of March, 1890. '"^^*" 
 
 Interpretation. 
 
 3. In the construction of these rules, any words herein Interpretation 
 used defined by the said Acts shall have the meanings thereby 
 assigned to them respectively. 
 
 Fees. 
 
 4. The fees to be paid under the above-mentioned Acts shall F^^'- 
 be those specified in the list of fees in the first schedule to 
 these rules. 
 
 Forms. 
 
 5. The forms A, B, and C in the first schedule to the Act Forms altera- 
 of 1883 shall be altered or amended by the substitution there- 
 for of the Forms A, Al, A2, B, and C in the second schedule 
 
 to these rules. 
 
 6. — (1) An application for a patent containing a declaration Application, 
 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 sp«;ifica- Specification. 
 
424 
 
 APPENDIX C. 
 
 tion and the Form C of complete specification shall respectively 
 be used. 
 Other forms. (3) The remaining forms other than A, Al, A2, B, and C, 
 set forth in the second schedule to these rules, may, as far as 
 they are applicable, be used in any proceedings under these 
 rules. 
 
 Hours of 
 business. 
 
 Agency. 
 
 Statement of 
 address. 
 
 Size, kc. of 
 documents. 
 
 Geneeal. 
 
 7. The Patent Office shall be open to the public every week 
 day 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 
 [p. 131]. 
 
 8. An application for a patent must be signed by the appli- 
 cant, but all other communications between the applicant 
 and the comptroller and all attendances by the applicant 
 upon the comptroller may be made by or through an agent 
 duly authorised to the satisfaction of the comptroller, and if 
 he so require, resident in the United Kingdom [p. 126]. 
 
 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 
 address shall be furnished by him to the comptroller. He 
 may in any particular case require that the address mentioned 
 in this rule be in the United Kingdom [p. 127j. 
 
 10. All documents and copies of documents, except statutory 
 declarations and affidavits, sent to or left at the Patent Office 
 or otherwise fm-nished to the comptroller or to the Board of 
 Trade shall be written or printed in large and legible charac- 
 ters, and unless otherwise directed in the English language 
 upon strong wide ruled paper (on one side only), of a size of 
 thirteen inches by eight 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 
 
PATENTS KULES, 189U. 425 
 
 legible hand. Duplicate documents shall at any time be left, 
 if required by the comptroller [p. 127J. 
 
 11. Before exercising any discretionary power given to the Exercise of 
 comptroller by the said Acts adversely to the applicant for a pg^^^.gf ^ "^^^ 
 patent or for amendment of a specification, the comptroller Comptroller, 
 shall give ten days' notice, or such longer notice as he may Notice of 
 think fit, to the applicant of the time when he may 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 Comt of Justice [pp. 130, 153]. 
 
 12. "Within five days from the date when such notice would Notice by 
 de delivered in the ordinary course of post, or such longer ^pp"*^^'^** 
 time as the comptroller may appoint in such notice, the appli- 
 cant shall notify in writing to the comptroller whether or not 
 
 he intends to be heard upon the matter [p. 153]. 
 
 13. Whether the applicant desires to be heard or not, the Comptroller 
 comptroller may at any time require him to submit a state- ^a[em«rt'^&c 
 meut in writing within a time to be notified by the comp- 
 troller, or to attend before him and make oral explanations 
 
 with respect to such matters as the comptroller may require 
 [p. 153]. 
 
 14. The decision or determination of the comptroller in the Decision to be 
 exercise of any such discretionary power as aforesaid shall be ^°^jgg ° 
 notified by him to the applicant, and any other person affected 
 
 thereby [p. 153]. 
 
 15. Any person desirous of exhibiting an invention at an industrial or 
 industrial or international exhibition, or of publishing any de- exhibitions!^ 
 scription of the invention during the period of the holding of 
 
 the exhibition, or of using the invention for the purpose of the 
 exhibition in the place where the exhibition is held, shall, after 
 the Board of Trade have issued a certificate that the exhibition 
 is an industrial or international one, give to the comptroller 
 notice 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. 
 
426 
 
 APPENDIX C. 
 
 Power of 16, Any document for the amending of which no special 
 
 &c. ° ™^° ' provision is made by the said Acts may be amended, and any 
 irregularity in procedure, which in the opinion of the comp- 
 troller may be obviated without detriment to the interests of 
 any person, may be corrected, if and on such terms as the 
 comptroller may think fit [p. 155]. 
 
 16a. Any application, notice, or other document authorised 
 or required to be left, made, or given at the Patent Ofl&ce, or 
 to the comptroller, or to any other person under these rules, 
 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 [p. 127]. 
 Manner m ^7. The statutory declarations required by the said Acts and 
 
 which, and •' t i t , i, i 
 
 persons before these rules, or used in any proceedmgs thereunder, shall be 
 whom, declara- majg and subscribed as follows : 
 
 (a) In the United 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 ; 
 
 (b) 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 exer- 
 cising the functions of a British consul, or a notary 
 public, or before a judge or magistrate [p. 127]. 
 
 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 
 [p. 127]. 
 
 tion is to be 
 taken 
 
 Order of 
 
 recording 
 applications. 
 
 Application with Provisional or Complete 
 Specification. 
 
 18. Applications for patents sent through the post shall, as 
 
PATENTS RULES, 1890. 427 
 
 far as may be i)racticable, be opened and numbered in the 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 includes Application for 
 therein by mistake, inadvertence, or otherwise, more than one patents by way 
 invention, he may, after the refusal of the comptroller to of amendment, 
 accept such application, amend the same so as to apply to one 
 invention only, and may make application for separate patents 
 
 for each such invention accordingly [p. 129]. 
 
 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 prescribed by the said Acts and by these 
 rules, 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 of deceased 
 accompanied by an official copy of or extract from his will, or ii^'entor- 
 
 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 requu'e [p. 127]. 
 
 21. On the acceptance of a provisional or complete specifica- Notice and 
 tion the comptroller shall give notice thereof to the applicant, gf acceptance. 
 and shall advertise such acceptance in the official journal of the 
 
 Patent Office [p. 132]. 
 
 22. Upon the publication of such advertisement of accept- Inspection on 
 
 i-i o ^ L •£! L- i.\, T i.' J acceptance of 
 
 ance m the case oi a complete specification, the application and complete 
 specification or specifications with the drawings (if any) may specification, 
 be inspected at the Patent Office upon payment of the pre- 
 scribed fee [p. 132]. 
 
 Application on Communication from Abeoad. 
 23. An application for a patent for an invention communi- Communica- 
 cated from abroad shall be made in the form Al set forth in abroad, 
 the second schedule to these rules. 
 
428 APPENDIX C. 
 
 International and Colonial Arrangements. 
 
 24. The term " foreign application " shall mean an applica- 
 tion 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 sj^ecify all the foreign states or British 
 possessions in which foreign applications have been made and 
 the otEcial date or dates thereof respectively. The application 
 must be made within seven months from the date of the first 
 foreign application, and must be signed by the person or 
 persons by whom such first foreign application was made. If 
 such person, or any of such persons, be dead, the application 
 must be signed by the legal personal representative of such 
 dead person, as well as by the other applicants, if any, 
 
 26. The application in the United Kingdom shall be made in 
 the Form A2 in the second schedule to these rules, and in addi- 
 tion 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 afore- 
 said, or otherwise verified to the satisfaction of the 
 comptroller ; 
 
 (2) A statutory declaration as to the identity of the invention 
 in respect of which the application is made with the 
 invention in respect of which the said first foreign ap^Dli- 
 cation was made, and if the specification or document 
 corresponding thereto be in a foreign language, a transla- 
 tion thereof shall be annexed to and verified by such 
 statutory declaration. 
 
 27. On receipt of such application, together with the pre- 
 scribed specification and the other document or documents 
 
PATENTS RULES, 1890. 429 
 
 accompanying the same, required by the last preceding rule, 
 and with such other proof (if any) as the comptroller may 
 require of or relating to such foreign application or of the 
 official date thereof, the 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 applica- 
 tion shall be taken within the times and in the manner pre- 
 scribed by the Acts or rules for ordinary applications. 
 
 20. The patent shall be entered in the Register of Patents as 
 dated of the date on which the first foreign application was 
 made, and the payment of renewal fees, and the expiration of 
 the patent, shall be reckoned as from the date of the first foreign 
 application. 
 
 Sizes and Methods of Preparing Drawings accompany- 
 ing Provisional or Complete Specifications. 
 
 30. The provisional or complete specification need not be ^'^*T'°g''.^°^ 
 accompanied by drawings if the specification sufficiently 
 describes the invention without them, but if drawings are 
 furnished, they should accompany the provisional or complete 
 specification to which they refer, except in the case provided for 
 
 by Rule 33. No drawing or sketch such as requires a special 
 engraving for 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. 
 
 They must be made on pure white, hot-pressed, rolled, or Requirements 
 calendered drawing paper of smooth surface and good quality, ^^^^P^P^""' *"=• 
 and where possible without colour or Indian-ink washes. 
 
 They must be on sheets of one of the two following sizes (the Size of diaw- 
 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 
 
430 APPENDIX C. 
 
 continued on subsequent sheets. There is no limit to the 
 number of sheets that may be sent in. 
 Quality of ink. To ensure their satisfactory reproduction, the drawings must 
 be executed with absolutely NacJcIndian Ink ; the same strength 
 and colour of fine and shade lines to he maintained throwjhoiit. 
 Section lines, and lines for effect, or shading lines, must not 
 be closely drawn. A specimen drawing is inserted in illustra- 
 tion of this requirement. Reference figures and letters must 
 be bold, distinct, 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 
 tlie part referred to by a fine line. 
 Scale of draw- rpj^^ s.cq\q adopted should be large enough to show clearly 
 wherein the invention consists, and only so much of the appa- 
 ratus, machine, &c. need be shown as affects this purpose. 
 When the scale is shown on the drawing it should be denoted, 
 not by words, but by a drawn scale, as illustrated in the specimen. 
 Drawings to Drawings must bear the name of the applicant (and in the 
 
 appHcant^&c. ^^^® ^^ drawings left with a complete specification after a pro- 
 visional specification, the number and year of the application) 
 in the left-ltand top corner ; the number of sheets of drawings 
 sent, and the number of each sheet in the right-Jiand top corner ; 
 and the signature of the applicant or his agent in the right hand 
 hotfoni corner. 
 
 No written description of the invention should appear on 
 the drawings. 
 Restrictions as Wood engravings, or representations of the invention, other 
 Kravi°nss.^°" ^^^^^ ^^^^ drawings prepared as above described, will not be 
 received, unless of such a character as to be suitable for repro- 
 duction by the process of photo-lithography. 
 Copies of 32. kfacsiinile of the original drawings but without co\ox\r 
 
 ruwmgs. ^j. in(jian-ink washes, and prepared strictly in accordance with 
 the regulations prescribed in Rule 31, must accompany the 
 originals, and be marked" true coj^y." 
 Provisional 33. If an applicant desii'es to adopt the drawings lodged 
 
 for^compk^r ^'^^^ ^'^'^ provisional specification as the drawings for his com- 
 specifi cation, plete .specification, he should refer to them as those "left with 
 
 the provisional specification." 
 Notice of 34. A notice of opposition to the grant of a patent shall be 
 
 opposition. 
 
Specirnen drawings Tor Specifications 
 
 Jianier Hjul i i*n inc/i /r-oTiv edas. of •paper. 
 
 (20./j>.^.^ j?. 
 
 F I G . I . 
 
 (-■ y/te^) 
 
 e^^/ 
 
 I 
 
 INS 
 
 V 
 
 
 JBaycUy* Ixrve, i cen. x^cTi- -Tfam. €£^e o^ ^aper. 
 Syee of paper -fcrr \ 13 ^-n/J%e^ ^j 8 itlcA^. 
 J3 ,,..,. IG incHt^ 
 
 •jce. of paper -fcrr J 
 
432 
 
 APPENDIX C. 
 
 Copy for 
 applicant. 
 
 Paiiiculars of 
 prior patent. 
 
 Opponent's 
 evidence. 
 
 Applicant's 
 evidence. 
 
 Evidence in 
 
 reply. 
 
 Closing of 
 evidence. 
 
 Notice of 
 hearing. 
 
 on Form D, and shall state the ground or grounds on which 
 the person giving such notice (hereinafter in Rules 37, 38, 41, 
 and 43 called the opponent) intends to oppose the grant, and 
 must be signed by him. Such notice shall state his address for 
 service in the United Kingdom, and shall be accompanied by 
 an unstamped copy [p. 136]. 
 
 35. On receipt of such notice the copy thereof shall be 
 transmitted by the comptroller to the applicant [p. 136]. 
 
 36. Where the ground or one of the grounds of opposition 
 is that the invention has been patented in this country on an 
 application of prior date, the number and date of such prior 
 application shall be specified in the notice [p. 136]. 
 
 37. Within fourteen days after the expiration of two months 
 from the date of the advertisement of the acceptance of a com- 
 plete specification, 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 [p. 136]. 
 
 38. Within fourteen days from the delivery of such list the 
 applicant may leave at the Patent Office statutory declarations 
 in answer, and on so leaving shall deliver to the opponent a list 
 thereof, and within fourteen days from such delivery the opponent 
 may leave at the Patent Office his statutoiy declarations in 
 reply, and on so leaving shall deliver to the apphcant a list 
 thereof. Such last-mentioned declarations shall be confined to 
 matters strictly in reply [p. 136]. 
 
 Copies of the declarations mentioned in this and the last 
 preceding rule may be obtained either from the Patent Office 
 or from the opposite party. 
 
 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 comp- 
 troller on application in writing made to him for that purpose 
 [p. 136]. 
 
 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 ten days' notice 
 at the least of such appointment. If the applicant or oppo- 
 
PATENTS RULES, 1890. 433 
 
 nent 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 application 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 Disallowance 
 in respect of any ground not stated in the notice of opposition, \^ certah/°° 
 aud where the ground or one of the grounds is that the cases. 
 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 applicant 
 has obtained the invention from the opponent, or from a person 
 of whom such opponent is the legal representative, unless 
 evidence in support of such allegation be left at the Patent 
 Office within the time prescribed by these rules, the opposition 
 shall be deemed to be abandoned, and a patent shall be sealed 
 forthwith. 
 
 44. The decision of the comptroller, after hearing any party Decision to be 
 who applies under Rule 41, shall be notified by him to the parties, 
 parties. 
 
 Certificates of Payment or Kenewal. 
 
 45. If a patentee mte?ids at the expimtmi of the fourth or Repealed— 
 
 PR ISQ'' 
 eighth year from the date of Ms patmi to Tceej} the same in force, 
 
 he shalt, before the eccpiration of such fourth or eighth year, as the 
 
 case mayle, subject as hereinafter provided, 2My tlie prescribed fee 
 
 of 501 or 100/., as the case mag be. 
 
 46. In the case of patents granted before the commencement of 
 the said Acts, the above rule shall be read as if the words 
 " seventh year " ivere therein written instead of the ivords " eighth 
 gear'"' 
 
 47. If the patentee intends to pay annual fees in lieu oj the 
 above mentioned fees of 50?. and 100/., he shall, before the expira- 
 tion of the fourth and each succeeding year during the term of the 
 patent, until and inclusive of the ISth year thereof, pay the 
 prescribed fee. 
 
 The form J in the seco7id schedule, dulg stamped, should be 
 
 T. F F 
 
434 
 
 APPENDIX C. 
 
 used for the pvr2wse of tin's and iJie payment referred to in 
 rule 45. 
 Certificate of 48. On due compliance with these rules, and as soon as may 
 be after such respective periods as aforesaid, or any enlarge- 
 ment thereof respectively duly granted, the comptroller shall 
 issue a certificate that the prescribed payment has been duly 
 • made. 
 
 Enlargement of Time. 
 Enlargement of 40. An application for an enlargement of the time for 
 inents. ^ ^'^^' making a prescribed payment shall state in detail the circum- 
 stances in which the patentee by accident, mistake, or inadver- 
 tence 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 contained in the applica- 
 tion for enlargement. 
 Extension of 50. An application for enlargement of time for leaving or 
 time for accepting a complete specification shall state in detail in what 
 
 leaving and r » i l 
 
 accepting circumstauces and upon what grounds such extension is applied 
 
 complete f^^ ^^^ ^.j^g Comptroller may require the applicant to sub- 
 
 speciiication. '■ ^ ^ n , 
 
 stantiate such allegations by such proof as the comptroller may 
 
 think necessary [p. 131]. 
 
 In other cases. 51. The time prescribed by these rules for doing any act, 
 
 or taking any proceedhig 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 [p. 131]. 
 
 Amendment of Specification [p. 152, et seq.^. 
 Request for 52. A request for leave to amend a specification must be 
 
 leave toamend. gjg^e(j j^y the applicant or patentee (hereinafter in Rules 54, 
 55, and 58 called the applicant), and accompanied by a duly 
 certified printed copy of the original specification and draw- 
 ings, showing in red ink the proposed amendment, and shall 
 Advertise- t)e advertised by publication of the request and the nature of 
 ment. the proposcd amendment in the official journal of the Patent 
 
 Office, and in such other manner (if any) as the comptroller 
 may in each case direct. 
 Notice of 53. A notice of opposition to the amendment shall state 
 
 oijposition, the giTjund or grounds on which the person giving such 
 
PATENTS RULES, 1890. ^ . 435 
 
 « 
 
 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 [p. 158]. 
 
 54. On receipt of such notice the copy thereof shall be Copy for the 
 transmitted by the comptroller to the applicant [p. 158]. 
 
 55. Within fourteen days after the expiration of one month Opponent's 
 
 GVlddlCG 
 
 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 [p. 159]. 
 
 56. Upon such declarations being left, and such list being Further pro- 
 delivered, the provisions of Eules 38, 39, 40, 41, and 44 shall *^^^'^"'ss- 
 apply to the case, and the further proceedings therein shall be 
 regulated in accordance with such provisions as if they were 
 
 here repeated [p. 159]. 
 
 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 draw- 
 ings as amended, to be prepared in accordance with Rules 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 comp- 
 troller may direct [p. 174]. 
 
 Compulsory Licenses [p. 181]. 
 
 60. A petition to the Board of Trade for an order upon a Petition for 
 patentee to grant a license shall show clearly the nature of the '^°^^J,'^^of°^^ 
 petitioner's interest, and the ground or grounds upon which licenses, 
 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 with 
 left at the Patent Office, accompanied by the affidavits, or patent Office, 
 statutory declarations, and other documentary evidence (if 
 
 F r 2 
 
436 
 
 APPENDIX C. 
 
 Directions as 
 to further pro- 
 ceedings unless 
 petition 
 refused. 
 
 Procedure. 
 
 Petitioner's 
 evidence. 
 
 Patentee's 
 evidence. 
 
 Evidence in 
 reply. 
 
 Further pro- 
 ceedings . 
 
 any) tendered by the petitioner in proof of the alleged default 
 of the patentee. 
 
 Q2. Upon perusing the petition and evidence, unless the 
 Board of Trade shall be of opinion that the order should be at 
 once refused, they may require the petitioner to attend before 
 the comptroller, or other person or persons appointed by them, 
 to receive his or their directions as to further proceedings 
 upon the petition. 
 
 63. If and when 2i prima facie case for relief has been made 
 out to the satisfaction of the Board of Trade, the petitioner 
 shall upon their requisition, and on or before a day to be 
 named by them, deliver to the patentee copies of the petition 
 and of the affidavits or statutory declarations and other 
 documentary evidence (if any) tendered in support thereof. 
 
 64. Within fourteen 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 fourteen 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. 
 
 ^Q. 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 accord- 
 ance with such procedure as the Board of Trade may, in the 
 circumstances of the case, direct, but so that full opportunity 
 shall be given to the patentee to show cause against the 
 petition. 
 
 Register of Patents [pp. 18.5, 186]. 
 Entry of grant. (57, XJpou the Sealing of a patent the comptroller shall cause 
 to be entered in the Register 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 
 entry of sub- 
 sequent pro- 
 prietorship. 
 
PATENTS RULES, 1890. 437 
 
 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 Signature of 
 and signed by the person requiring to be registered as pro- ""^^i"*^^ • 
 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 ^^ ^^^^^'^^ "^ 
 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 pro- 
 prietor, so as to show the manner in which, and the person or 
 persons to whom, the patent, or such share or interest therein 
 as aforesaid, has been assigned or transmitted. 
 
 71. Every assignment and every other document containing, Production of 
 giving effect to, or being evidence of, the transmission of «■ titkTnd other 
 patent or affecting the proprietorship thereof as claimed by proof. 
 
 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 
 
 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 its Body 
 
 , r nn corporate. 
 
 corporate name [p. 8]. 
 
 74. Where an order has been made by her Majesty in Entry of 
 Council for the extension of a patent for a further term or p^vy^ Council 
 for the grant of a new patent, or where an order has been or of the Court. 
 made by the Court for the revocation of a patent or the recti- 
 
438 
 
 APPENDIX C. 
 
 Entry of pay- 
 ment of fees ou 
 issue of cei'- 
 tificate. 
 
 Entry of 
 failure to pay 
 fees. 
 
 Entry of 
 licenses. 
 
 Hours of 
 inspection of 
 register. 
 
 Certified copies 
 of documents. 
 
 tication of the register under section 90 of the Act of 1883, or 
 otherwise affecting the validity or proprietorship of the patent, 
 the person in whose favour such order has been made shall 
 forthwith leave at the Patent Office an office copy of such 
 order. The register shall thereupon be rectified or the pur- 
 port of such order shall otherwise be duly entered in the 
 register, as the case may be [p. 213]. 
 
 75. Upon the issue of a certificate of payment under 
 Rule 48, the comptroller shall cause to be entered in the 
 Register of Patents a record of the amount and date of pay- 
 ment 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 observed as days of public fast 
 or thanksgiving, and days observed as holidays at the 
 Bank of England ; or 
 
 (b) Days which may from time to time be notified by a 
 placard posted in a conspicuous place at the Patent 
 Office; 
 
 (c) Times when the register is required for any purpose of 
 official use. 
 
 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. 439 
 
 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 
 shown to the satisfaction of the comptroller that from any 
 reasonable cause such person is unable to do such act or thing, 
 or to sign such document, or make such declaration, or that 
 such document or evidence cannot be produced or left as 
 aforesaid, it shall be lawful for the comptroller, with the sanc- 
 tion 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, declara- 
 tion, or evidence. 
 
 Repeal. 
 
 81. All general rules heretofore made by the Board of Trade Repeal, 
 under the Patents, Designs and Trade Marks Act, 1888 to 
 1888, and in force on the 31st day of March, 1890, shall be 
 
 and tliey are hereby repealed as from that date, without pre- 
 judice, 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. 
 
440 APPENDIX C. 
 
 THE SECOND SCHEDULE (a). 
 
 FORMS. 
 
 PAGE 
 
 A. —Form of Application for Patent ^^^ 
 
 Al. — ,, ,, ,, commnnicated from abroad . 441 
 
 A2. — ,, ,, ,, under International arrangements 442 
 
 B. — ,, Provisional Specification 443 
 
 C— ,, Complete 443 
 
 D.— ,, Opposition to Grant of Patent 444 
 
 E, — ,, Application for hearing by Comptroller . . .444 
 F. — ,, ,, to amend Specification or Drawings . . 445 
 
 G.— „ Opposition to Amendment of Specification or Dramngs 445 
 H. — ,, Application for Compulsory Grant of License . . 445 
 HI. — ,, Petition for Compulsory Grant of Licenses . . . 446 
 I. — ,, Opposition to Compulsory Grant of License . . . 446 
 J. — ,, Application for Certificate of Payment or Renewal . 447 
 K. — ,, ,, for Enlargement of Time for Payment of 
 
 Renewal Fee ........ 447 
 
 Ij. — ,, Rec^uest to enter Name upon tlie Register of Patents . 447 
 M. — ,, ,, Notification of License in Register . . 448 
 
 N. — ,, Application for Duplicate of Letters Patent . . . 448 
 0. — ,, Notice of Intended Exhibition of Unpatented Invention 449 
 P.— ,, Request for Correction of Clerical Error . . . 449 
 
 Q. — ,, Certificate of Comptroller 449 
 
 Pi. — ^^ Notice for Alteration of an Address in Register . . 450 
 S. — ,, Application for Entry of Order of Privy Coimcil in 
 
 Register 450 
 
 T. — ,, Appeal to Law Officer 450 
 
 U. — ,, Application for Extension of Time for leaving a com- 
 plete Specification ....... 451 
 
 V. — ,, Application for Extension of Time for acceptance of 
 
 complete Specification ...... 451 
 
 Patents, Designs and Trade Marks Acts, 1883 to 1888. 
 [Patent.] Form A. 
 
 [To be accompanied by two copies of Form B. or of Form C. ] 
 
 Application for Patent. 
 {Here insert name and full address and calling of ajyplicant or applicants'] 
 do hereby declare that in possession" of an invention the title 
 
 of which is {here insert title of invention'] that [wi the case of more than one 
 a2)plicant, state whether all, or if not, who is or are the inventor or 
 i7iventors] the true and first inventor thereof ; and that the 
 
 (a) Fii-st Schedule repealed by P. R. 1892 (Second Set). 
 
PATENTS RULES, 1890. 441 
 
 same is not in use by any other person or persons to the best ot 
 knowledge and belief ; and humbly pray that a 
 
 Patent may be granted to for the said invention. 
 
 Dated day of 18 . 
 
 [To be signed by ajypUcant or 
 
 applicants. 
 In the case of a Firm, each 
 member of the Firm must 
 sign.] 
 
 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, 
 Chancery Lane, London, W.C. 
 
 For the convenience of applicants, suggested forms of authorization to 
 an Agent and statement of address respectively are printed below. 
 
 (1.) Where ajyplication is made through an Agent {Rule 8). 
 
 hereby appoint or to act as 
 
 Agent in respect of the within application for a Patent, and 
 request that all notices, requisitions, and communications relating thereto 
 may be sent to such Agent at the above address. 
 
 day of 18 . 
 
 [ To he signed by applicant or applicants. 
 
 (2.) Where application is made without an Agent {Rule 9). 
 
 hereby request that all notices, requisitions, and communi- 
 cations in respect of the within application may be sent to 
 at 
 
 day ot 18 . 
 
 [To be signed by applicant or applicants.] 
 
 Patents, Designs, and Trade Marks Acts, 1883 to 1888, 
 
 [Patent.] Form A1. 
 
 [To be accompanied by two copies of Form B. or of Form C] 
 
 Application for Patent for Inventions communicated from 
 Abroad. 
 
 I [here insert name, and full address, and calling of applicant] of 
 in the countj' of do hereby declare that I am in 
 
 possession of an invention the title of which is [here insert title of incen- 
 tion] which invention has been communicated to me by [here insert name, 
 address, and calling of communicant] that I claim to be the true and iirst 
 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 
 
442 APPENDIX C. 
 
 person or persons to the best of my knowledge and belief ; and I humbly 
 pray that a patent may be granted to me for the said invention. 
 
 Dated day of 18 . 
 
 [To be signed by applicant or applicants.] 
 
 Note. — "Where application is made through an Agent (Rule 8) the 
 authorization on the back (if used) should be signed by the applicant or 
 applicants. 
 
 To the Comptroller, 
 
 Patent Office, 25, Southampton Buildings, 
 Chancer]] Lane, London, W.C. 
 
 For the convenience of applicants, suggested forms of authorization to 
 an Agent and statement of address respectively are printed below. 
 
 (1.) JVhere airplication is made through an Agent {Rule 8). 
 
 hereby appoint of to act as 
 
 Agent in respect of the within application for a Patent, and 
 request that all notices, requisitions, and communications relating thereto 
 may be sent to such Agent at the above address. 
 
 day of , 18 . 
 
 [To be signed by apjMcant or ap2}licants.] 
 
 (2.) Where application is made loithout an Agent [Rule 9). 
 
 hereby request that all notices, requisitions, and communi - 
 cations in respect of the withiii application may be sent to 
 at 
 
 day of 18 . 
 
 [To he signed by applicant or applicants.] 
 
 Patents, Designs, and Trade Marks Acts, 1883 to 1888. 
 [Patent.] Form A2. 
 
 Application foe, Patent dndepw International and Colonial 
 Arrangements. 
 
 [Here insert name and full address and calling of applicant, or of each 
 of the applica7its] do hereby declare that I (or we) have made foreign 
 applications for protection of my (or our) invention of [here insert title of 
 invention] in the following Foreign States and on the following official 
 dates, viz. : [here insert the names of each Foreign State followed by the 
 offi/:ial date of the ajjpUcation in each respectively] and in the following 
 British Possessions and on the following official dates, viz. : [Jiere insert 
 the names of each British Possession followed by the official date of the 
 application in each respectively]. 
 
 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 or 
 persons before the [here insert the official date of the earliest foreign appli- 
 cation] to the best of knowledge, information, and belief, and 
 
 humbly pray that a patent may be granted to 
 for the said invention in priority to other applicants, and that such patent 
 
PATENTS RULES, 1890. 443 
 
 shall have the date [here insert the official dale of the earliest foreign 
 application]. 
 
 [Siij)utture of applicant or of each of a2}plica,nts.] 
 To the Comptroller, 
 
 Patent Office, 25, SoaUuniUjton Buildings, 
 Chancery Lane, London, W, C. 
 
 To be issued with Form A, Al, or A2.] 
 
 Patents, Designs, and Trade Marks Acts, 1883 to 1888. 
 
 Form B. 
 
 Provisional Specification. 
 
 (To be furnished in Duplicate.) 
 
 [Here insert title as in declaration] [Jiere insert name, aixd full address 
 a.nd calling of applicant or applicants as in declaration] do hereby declare 
 the nature of this invention to be as follows : — [here insert short descrip- 
 tion 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 Specification and the 
 " Duplicate "' thereof must be signed by the applicant or his agent, on the 
 last sheet, the date being first inserted as follows : 
 
 "Dated this day of 18 ." 
 
 To the Comptroller, 
 
 Patent Office, 25, Southampton Buildings, 
 Chancery Lane, London, W. C. 
 
 Patents, Designs, and Trade Marks Acts, 1883 to 1888. 
 
 Where Provisional Specification has been left, quote No. and date. 
 
 No. 
 
 Date . 
 
 [Patent.] Foem C. 
 
 Complete Specification. 
 
 (To be furnished in Duplicate — one unstamped.) 
 
 [Here insert title as in declaratioyi] [here insert name, and full address 
 and calling of applicant or applicants as in declaration] do hereby declare 
 the nature of this invention and in what manner the same is to be per- 
 formed, to be particularly described and ascertained in and by the follow- 
 ing statement : — [here insert full description of invention, which must end 
 with a distinct statement of claim or claims, in the following form : — 
 
 ^'' Having now particularly described ami ascertained tlic nature of my 
 
444 APPENDIX C. 
 
 said invention, and in ivJiai manner the same is to he i^erformed, I declare 
 that tvhat I claim is 
 
 Here state distincthj the features of novelty claimed : 1. ; 
 
 2. ; 3. .] 
 
 Note — This document must form the commencement of the Complete 
 Specification ; the continuation to be upon wide-ruled foolscap paper (but 
 on one side only) with a margin of two inches on left hand of paper. The 
 Complete Specification and the "Duplicate" thereof must be signed by 
 the applicant, or his agent, on the last sheet, the date being first inserted 
 as follows : 
 
 '"Dated this day of 18 ." 
 
 To the Comptroller; 
 
 Patent Office, 25, Southampton Buildings, 
 Chancery Lane, London, W. C. 
 
 Patents, Designs, and Trade Marks Acts, 1883 to 1888. 
 
 [Patent.] Form D. 
 
 Form of Opposition to Grant of Patent. 
 
 [ To he accompanied by an unstamped copy. ] 
 
 I [here state name and full address'] hereby give notice of my intention 
 to oppose the grant of Letters Patent upon application No. 
 of , applied for by upon the ground [here state 
 
 upon which of the grounds of opposition permitted by section 11 of the Act 
 the grant is opposed]. 
 
 (Signed) [here insert signature of opponent]. 
 
 To tJie Comptroller, 
 
 Patent OJice, 25, Southampton Buildings, 
 Chancery Lane, London, W.C. 
 
 Patents, Designs, and Trade Marks Acts, 1883 to 1888. 
 [Patent.] Form E. 
 
 Form of Application for Hearing by the Comptroller. 
 
 In cases of refusal to accept, opposition, or applications for 
 amendments, &c. 
 Sir, 
 
 of \lierc insert address] hereby apply to be heard in 
 reference to and request that I may receive due notice of 
 
 the day fi.\ed for the hearing. 
 
 Sir, 
 Your obedient Servant 
 To the Comptroller, 
 
 Patent Office, 25, Southampton Buildings, 
 Cliancery Lane, London, ]F. C. 
 
PATENTS RULES, 1890. 445 
 
 Patents, Designs, and Trade Marks Acts. 1883 to 1888. 
 [Patent.] Form F. 
 
 Form of Application for Amendment of Specification or 
 
 Drawings. 
 
 [Here state name and full address of applicant or patentee] seek leave 
 
 to amend the specification of Letters Patent No. of 188 , as 
 
 shown in red ink in the copy of the original specification herennto 
 
 annexed 
 
 My reasons for making this amendment are as follows [here state reasons 
 for seeking amendment ; and where the applicant is not the patentee, state 
 what interest he possesses in the letters patent]. 
 
 (Signed) [to be signed by aprplicant]. 
 To the Comptroller, 
 
 Patent Office, 25, SoiUhampton Buildings, 
 Chance7'i/ Lane, London, W.C. 
 
 Patents, Designs, and Trade Marks Acts, 1883 to 1888. 
 
 [Patent.] Form G. 
 
 Form of Opposition to Amendment of Specification or 
 Drawings. 
 
 [To be accompanied by an unstamped copy.] 
 [Here state name and full address of opponent] hereby give notice of 
 ohjection to the proposed amendment of the specification or drawings of 
 Letters Patent No. of 188 for the following reason : [liere state 
 
 reason of opposition^. 
 
 (Signed) 
 To the Comptroller, 
 
 Patent Office, 25, Southampton Buildings, 
 Chancery Lane, London, W. C. 
 
 Patents, Designs, and Trade Marks Acts, 1883 to 1888. 
 [Patent.] Form H. 
 
 Form of Application for Compulsory Grant of License. 
 
 [ To be accompanied by an unstamped co2nj. ] 
 
 [Here state name and full address oj applicaiit] hereby request you to 
 
 bring to the notice of the Board of Tra<le the accompanying petition for 
 
 the grant of a license to nie by [here state name a)ul address of patentee, 
 
 and number and date of his ]Mtent]. 
 
 (Signed) 
 
 Note.— The petition must clearly set forth the facts of the case and be 
 accompanied by an examined copy thereof. See form m^xt page. 
 
 To the Comptroller, 
 
 Patent Office, 25, Southam]}ton Buildings, 
 Chancery Lane, London, W. G. 
 
446 APPENDIX C. 
 
 Patents, Designs, and Trade Marks Acts, 1883 to 1888. 
 
 FoiiM HI. 
 
 Form of Petition for Compulsory Grant of Licenses. 
 
 To the Lords of the Committee of Privy Council for Trade. 
 
 The petition of [_here insert navte, fuU address, and description'] of 
 in the county of , being a person interested i 
 
 the matter of this petition as hereinafter described : — 
 
 Sheweth as follows : — 
 
 1. A patent dated No. was duly granted to 
 
 for an invention of [here insert title of invention']. 
 
 2. The nature of my interest in the matter of this petition is as 
 follows : — [^liere state fully the nature of petitioner's interest], 
 
 3. [Here state in detail the circumstances of the case under section 22 of 
 the said Act, and shotv 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 
 reasonahle. The paragraphs should be numbered consecutively.] 
 
 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 \]iere state the ground or grouvds on which relief is 
 claimed in the languaye of section 22, subsections (a), (b), or (c), as the case 
 may he. 
 
 Your petitioner therefore prays that 
 an order may be made by the Board of 
 Trade [here state the purport and effect 
 of the proposed order and the terms as to 
 the amount of royalties, security for pay- 
 7nent, or otherwise, upon which the peti- 
 tioner claims to be entitled to the relief in 
 question]. 
 
 or that the petitioner may have such 
 other relief in the premises as the Board 
 of Trade may deem just. 
 
 Patents, Designs, and Trade Marks Acts, 1883 to 1888. 
 [Patent.] Form L 
 
 Form of Opposition to Compulsory Grant of License. 
 
 [Here state name and full address] hereby give notice of objection to the 
 application of for the compulsory grant of a license under 
 
 Patent No. of 188 . 
 
 (Signed) 
 To the Comptroller, 
 
 Patent Office, 25, Southampton Buildings, 
 Chancery Lane, London, W.C. 
 
PATENTS RULES, 1S90. 447 
 
 Patents, Designs, and Trade Marks Acts, 1883 to 1888. 
 
 Form J. 
 
 Application for Certificate of Payment or Renewal. 
 
 hereby transmit the fee prescribed for the continuation in 
 force of [Acre insert name of patentee] Patent No. , of 18 for a 
 
 further period of 
 
 Name [here insert narre and full address]. 
 Address 
 To the Comptroller, 
 
 Patent Office, ^5, Southampton Buildings, 
 Chancery Lane, London, W.C. 
 
 (This part of the Form to be filled in at the Patent Office. ) 
 
 [Patent.] Certificate of Payment or Renewal. 
 
 Letters Patent No. of 188 . 
 
 18 . 
 
 This is to certify that did this day of 
 
 18 , make the prescribed payment of & in respect 
 
 of a period of from and that by virtiie of such 
 
 payment the rights of the patentee remain in force [see section 11 of the 
 
 Patents, Designs, and Trade Harks Act, 1883]. 
 
 (Seal.) 
 Patent Office, London. 
 
 Patents, Designs, and Trade Marks Acts, 1883 to 1888. 
 [Patent.] Form K. 
 
 Form of Application for Enlargement of Time for Payment of 
 Renewal Fee. 
 Sir, 
 
 I hereby apply for an enlargement of time for month 
 
 in which to make the payment of £ upon my Patent, 
 
 No. of 188 . 
 
 The circumstances in which the payment was omitted are as follows : — 
 [see Ride 49]. 
 
 I am. Sir, 
 
 Your obedient Servant, 
 [Here insert full address to tvhich receipt is to be sent.] 
 To the Comptroller, 
 
 Patent Office, 25, Southampton Buildings, 
 Chancery Lane, Lomlon, W. C. 
 
 Patents, Designs, and Trade Marks Acts, 1883 to 1888. 
 [Patent.] Form L. 
 
 Form of Request to Enter Name upon the Eegister of Patents. 
 I [or ice'] [here insert name, full address, and descrii^tion] hereby 
 request that you will euter [viy or our] name [or names'] in the Register 
 of Patents : — 
 
448 
 
 APPENDIX C. 
 
 [J or we"] claim to be entitled [here insert the nature of the claim'] of the 
 Patent Xo. of 188 , granted to [here give name and address, tfcc, 
 
 of patentee or patentees] for [here insert title of the invention] by virtue of 
 [here specify the particula7's of stoch document, giving its date, and the 
 parties to the same, and showing how the claim here made is substantiated]. 
 And in proof whereof I transmit the accompanying [here insert the 
 nature of the document] with an attested copy thereof [wJiere any document 
 which is a matter of record is required to be left, a certified or official copy 
 in lieu of an attested copy must be left]. 
 
 I am, Sir, 
 
 Your obedient Servant, 
 To the Comptroller, 
 
 Patent Office, 25, Southampton Buildings, 
 Chancery Lane, London, W. C. 
 
 Patents, Designs, and Trade Marks Acts, 1883 to 1888. 
 
 [Patent.] Form M. 
 
 Form of Request to Enter Notification of License in the 
 
 Register of Patents. 
 Sir, 
 
 I hereby transmit an attested copy ol a license granted to me by 
 under Patent No. of 188 , as well as the original 
 
 license for verification, and I have to request that a notification thereof 
 may be entered in the Register. 
 
 I am. Sir, 
 
 Your obedient Servant, 
 [Here insert full address. ] 
 
 To the Comptroller, 
 
 Patent Office, 25, Southampton Buildings, 
 Chancery Lane, London, W. C. 
 
 Patents, Designs, and Trade Marks Acts, 1883 to 1888. 
 
 [Patent.] Form N. 
 
 Application for Duplicate of Patent. 
 
 Date 
 Sir, 
 
 I regret to have to infomi you that the Letters Patent dated [here insert 
 date. No., name, and full address of patentee] "No. gi-anted to 
 
 for an invention of [here insert title of invention] have been 
 [here insert the ivord " desti^oyed" or " lost,'" as the case 7nay be]. 
 
 I beg therefore to apply for the issue of a duplicate of such Letters 
 Patent [here state interest piossessed by applicant in the Letters Patent]. 
 
 [Signature of Applicant.] 
 To the Comptroller, 
 
 Patent Office, 25, SoufJmmpton Building.i, 
 Chancery Lane, London, W.C. 
 
PATENTS RULES, 1890. 449 
 
 Patents, Designs, and Trade Marks Acts, 1883 to 1888. 
 
 [Patent.] Form 0. 
 
 Notice of Intended Exhibition of an Unpatented Invention. 
 
 [Here state name and fall address of ap2)l leant] hereby give notice of my 
 intention to exhibit a of at the 
 
 Exhibition, which [state ^'opened" or "is to open"] of 
 18 , under the provisions of the Patents, Designs, and Trade IMarks 
 Act of 1883. 
 
 [Insert brief description of invention, with drawings if necessary] here- 
 with enclose 
 
 (Signed) 
 To the Comptroller, 
 
 Patent Office, 25, Southampton Buildings, 
 Chaiicery Lane, London, W.C. 
 
 Patents, Designs, and Trade Marks Acts, 1883 to 1888. 
 [Patent.] Form P. 
 
 Form of Request for Correction of Clerical Error. 
 
 Sir, 
 
 I hereby request that the following clerical error [or errors] in the 
 [here state whether in apjjlication, specification, or register] No. of 
 
 18 , may be corrected in the manner shown in red ink in the certified 
 copy of the original [here state whether in application, specification, or 
 register] hereunto annexed. 
 
 Signature 
 Full Address 
 To the Comptroller, 
 
 Patent Office, 25, Southampton Buildings, 
 Chancery Lane, London, W.C, 
 
 Patents, Designs, and Trade Marks Acts, 1883 to 1888. 
 [Patent.] Form Q. 
 
 Certificate of Comptroller-General. 
 
 Patent Office, 
 
 London, 
 
 18 . 
 I, , Comptroller-General of Patents, Designs, and Trade 
 
 Marks, hereby certify 
 
 To [here insert name and full address of person requiring the infoinna- 
 tion]. 
 
 T. G O 
 
450 APPENDIX C. 
 
 Patents, Designs, and Trade Marks Acts, 1883 to 1888. 
 
 [Patent.] Form R. 
 
 fokm of istotice for alteration of an address in register. 
 Sir, 
 
 [Here state name or names and full address of ajjplicaJit or applicants^ 
 hereby request that address now upon the Register may be 
 
 altered as follows : — 
 [JTcrc insert full address.] 
 
 Sir, 
 Your obedient Servant, 
 To the Comjytroller, 
 
 Patent Office, 25, Southampton Bxiildings, 
 Chancery Lane, London, W. C. 
 
 Patents, Designs, and Trade Marks Acts, 1883 to 1888. 
 
 [Patent.] Form S. 
 
 Form of Application for Entry of Order of Privy Council in 
 Register. 
 
 [Ilere state name and full address of applicant] hereby transmit an 
 office copy of an Order in Council with reference to [here state the purport 
 of the order]. 
 
 Sir, 
 Your obedient Servant, 
 To the Comptroller, 
 
 Patent Office, 25, Southampton Buildings, 
 Chancery Lane, London, W.C. 
 
 Patents, Designs, and Trade Marks Acts, 1883 to 1888. 
 
 [Patent.] Form T. 
 
 Form of Appeal to Law Officer. 
 
 I, [here insert name and full address of appellant] of [here insert name 
 and full address of appellant] hereby give notice of my intention to 
 ap]5eal to the Law Officer from [here insert " the decision'" or " that part 
 of the decision," as the case may be] of the Comptroller of the 
 day of , whereby lie [here insert ' ' reficsed [or allowed] appli- 
 
 cation for Patent," or ^^ refused [or allowed] application for leave to anund 
 Patent," or otherioise, as the case may he] No. [insert number and year] 
 of the year 18 [insert number and year]. 
 
 Signature 
 
 Date 
 
 N.B. — This notice has to be sent to the Comptroller-General at the 
 Patent Office, London, W.C, and a copy of same to the Law Officers' 
 Clerk at Room 549, Royal Courts of Justice, London. 
 
PATENTS RULES, 1890. 451 
 
 Patents, Designs, and Trade Marks Acts, 1883 to 1888. 
 
 [Patent.] Form U. 
 
 Form of Application for Extension of Time fop. Leaving a 
 
 Complete Specification. 
 Sir, 
 
 hereby apply for extension of time for one month in which 
 to leave a Complete Specification upon application. 
 
 dated 
 The circumstances in and gi-ounds upon which this extension is applied 
 for are as follows [see Rule 50] : — 
 
 Sir, 
 Your obedient Servant, 
 
 [To he signed by applicant or applicants, 
 or his or their agent.] 
 To the Comptroller, 
 
 Patent Office, 25, Southampton Buildings, 
 Chancery Lane, London, W. C. 
 
 Patents, Designs, and Trade Marks Acts, 1883 to 1888. 
 [Patent.] Form V. 
 
 Form of Application for Extension of Time for Acceptance op 
 A Complete Specification. 
 
 Sir, 
 
 hereby apply for extension of time for month 
 
 for the acceptance of the Complete Specification upon application 
 No. dated 
 
 The circumstances in and grounds upon which this extension is applied 
 for are as follows [see Rule 50] : — 
 
 Sir, 
 Your obedient Servant, 
 [To he signed by applica^it or applicants, 
 or his or their agent. ] 
 
 To the Comptroller, 
 
 Patent Office, 25, Southampton Buildings, 
 Chancery Lane, Tjondon, W.C. 
 
 31st March, 1890. 
 
 M. E. HICKS-BEACH, 
 
 President of the Board of Trade. 
 
 G G 2 
 
452 APPENDIX C. 
 
 PATENTS RULES, 1892 
 
 (SECOND SET). 
 
 By virtue of the provisions of the Patents, Designs, and 
 Trade Marks Acts, 1883-88, the Board of Trade do hereby 
 make the following Rules : — 
 
 Short Title. 
 
 1. These Rules may be cited as the Patents Rules, 1892 
 (Second Set). 
 
 Commencement. 
 
 2. These Rules shall come into operation from and immedi- 
 ately after the 30th day of September, 1892. 
 
 Certificates of Payment on Renewal. 
 
 3. Rules 45, 46, and 47 of the Patents Rules, 1890, are 
 hereby repealed. 
 
 Payment of Annual Fees for Continuance of Patent. 
 
 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 
 Rules, 1890, shall be substituted the fees specified in the 
 schedule hereto. 
 
 M. E. Hicks-Beach, 
 Preside?! t of the Board of Trade, 
 Uh July, 1892. 
 
PATENTS KULES, 1892. 453 
 
 SCHEDULE. 
 
 List of Fees payable on and in connexion with Letters Patent. 
 
 Up to Sealing. 
 
 £ s. d. £ s. d. 
 
 1. On application for provisional protection . .10 
 
 2. On filing complete specitication . . .300 
 
 4 
 
 3. On filing complete specification with first application . 4 
 
 4. On appeal from comptroller to law officer. By appellant 3 
 
 5. On notice of opposition to grant of patent. By opponent . 10 
 
 6. On hearing by comptroller. By applicant and by oppo- 
 
 nent respectively . . . . . . . .10 
 
 On application to amend specification : — 
 
 7. Up to sealing. By applicant . . . . . 1 10 
 
 8. After sealing. By patentee . . . . .300 
 
 9. On notice of opposition to amendment. By opponent . 10 
 
 10. On hearing by comptroller. By applicant and by oppo- 
 
 nent 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 
 
 licence. By person applying 5 
 
 13. On opposition to grant of compulsory licence. By 
 
 patentee . . . . . . . . .500 
 
 On certificate of renewal : — 
 
 14. Before the expiration of the 4th year from the date of the 
 
 patent and in respect of the 5th year . . . .500 
 
 15. Before the expiration of the 5th year from the date of the 
 
 patent and in respect of the 6th year . . . .600 
 
 16. Before the expiration of the 6th year from the date of the 
 
 patent and in respect of the 7th year . . . .700 
 
 17. Before the expiration of the 7th year from the date of the 
 
 patent and in respect of the 8th year . . . .800 
 
 18. Before the expiration of the 8th year from the date of the 
 
 patent and in respect of the 9th year . . . .900 
 
 19. Before the expiration of the 9th year from the date of the 
 
 patent and in respect of the 10th year . . . .10 
 
 20. Before the expiration of the 10 th year from the date of the 
 
 patent and in respect of the 11th year . . . . 11 
 
454 
 
 APPENDIX C. 
 
 22 
 
 23 
 
 21. Before the expiration of the 11th year from the date of the 
 patent and in respect of the I'Zth year .... 
 
 Before the expiration of the 12th year from the date of tlie 
 patent and in respect of the 13th year .... 
 
 Before the expiration of the 13th year from the date of the 
 patent and in respect of the 14th year .... 
 
 On enlargement of time for payment of renewal fees : — 
 
 24. Not exceeding one month ...... 
 
 25. ,, two months 
 
 26. ., three months ...... 
 
 d. 
 
 12 
 
 13 
 
 14 
 
 27. For every entry of an assignment, transmission, agi-eement, 
 
 licence, or extension of patent ..... 
 
 28. For duplicate of letters patent ..... each 
 
 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 clerical error 
 
 up to sealing 
 after sealing . 
 
 35. For certificate of comptroller under section 96 . 
 
 36. For altering address in register ..... 
 
 37. For enlargement of time for filing complete specitication, 
 
 not exceeding one month ...... 
 
 38. For enlargement of time for acceptance of complete 
 
 specification : — 
 Not exceeding one month ...... 
 
 ,, two months ..... 
 
 ,, three months 
 
 10 
 2 
 
 10 
 
 10 
 
 
 
 5 
 
 
 
 1 
 
 
 
 
 
 
 
 5 
 
 
 
 
 
 5 
 
 
 
 2 
 
 2 
 
 
 
 
 
 4 
 
 
 
 
 
 6 
 
 
 
 
 
 M. E. HICKS-BEACH, 
 President of the Board of Trade. 
 4th July, 1892. 
 Approved : 
 
 Sidney Hebbert 
 Herbert Eustace Maxwell, 
 Lords Commissioners of 
 
 Her Majesty's Treasury. 
 
RULES ON APPEALS. 
 
 IL— RULES REGULATING THE PRACTICE AND 
 PROCEDURE ON APPEALS TO THE LAW 
 OFFICERS. 
 
 I. Wlien 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 fourteen days from 
 the date of the decision appealed against file in the Patent 
 Office, a notice of such his intention [pp. l-Il, 163]. 
 
 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 [p. 141]. 
 
 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 comptroller, to 
 the opponent or opponents ; and when the comptroller has 
 refused to seal a patent on the ground that a previous appli- 
 cation for a patent for the same invention is pending, to the 
 prior applicant [p. 141]. 
 
 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 [p. 141]. 
 
 V. No appeal shall bo entertained of which notice is not 
 given within fourteen days from the date of the decision 
 appealed against, or such further time as the comptroller may 
 allow, except by special leave upon application to the law 
 officer [p. 141]. 
 
 YI. 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. 
 
 YII. 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 oppo- 
 nents ; and, when the comptroller has refused to seal a patent 
 on the ground that an application for a patent for tlie same 
 invention is pending, to the prior applicant. 
 
456 APPENDIX C. 
 
 VIII. The evidence used on appeal to the law officer shall 
 be the same as that used at the hearing before the comptroller ; 
 and no further evidence shall be given, save as to matters 
 which have occurred or come to the knowledge of either party, 
 after the date of the decision appealed against, except with the 
 leave of the law officer upon application for that purpose 
 [p. Ul]. 
 
 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 [p. 141]. 
 
 X. Any person requiring the attendance of a witness for 
 cross-examination shall tender to the witness whose attendance 
 is required a reasonable sum for conduct money. 
 
 XI. Where the law officer orders that costs shall be paid by 
 any party to another, he may fix the amount of such costs, and 
 if he shall not think fit to fix the amount thereof, he shall 
 direct by whom and in what manner the amount of such costs 
 sliall be ascertained [p. 162]. 
 
 XII. If any costs so ordered to be paid be not paid within 
 fom'teen days after the amount thereof has been so fixed or 
 ascertained, or such shorter period as shall be directed by the 
 law officer, the party to whom such costs are to be paid may 
 apply to the law officer for an order for payment under the 
 provisions of section 38 of the Act. 
 
 XIII. All documentary evidence required, or allowed by the 
 law officer to be filed, shall be subject to the same regulations, 
 in all respects, as apply to the procedure before the comptroller, 
 and shall be fi-led in the Patent Office, unless the law officer 
 shall order to the contrary. 
 
 XIV. Any notice or other document required to be given to 
 the law officers' clerk, under these Eules, may be sent by a 
 prepaid letter through the post. 
 
 Henry James, A.G. 
 Farrer Herschell, S.G. 
 
PRIVY COUNCIL RULES. 457 
 
 III.— RULES TO BE OBSERVED IN PROCEEDINGS 
 BEFORE THE JUDICIAL COMMITTEE OF 
 THE PRIVY COUNCIL 
 
 Under the Act of the bfh and Gth Will. IV., intituled " An Act 
 to Amend the Law touching Letters Patent for Inven- 
 tions " {cap. 83). 
 
 Rule I. — A party intending to apply by petition, under 
 section 2 of the said Act, shall give public notice by advertising 
 in the London Gazette three times, and in three London 
 papers, and three times in some country paper published in the 
 town where or near to which he carries on any manufacture of 
 anything made according to his specification, or near to or in 
 which he resides, in case he carries on no such manufacture, 
 or published in the county where he carries on such manu- 
 facture, or where he lives, in case there shall not be any paper 
 [)ublished in such town, that he intends to petition his Majesty 
 under the said section, and shall in such advertisements state 
 the object of such petition, and give notice of the day on which 
 he intends to apply for a time to be fixed for hearing the 
 matter of his petition (which day shall not be less than four 
 weeks from the date of the publication of the last of the 
 advertisements to be inserted in the London Gazette), and 
 that on or before such day notice must be given of any 
 opposition intended to be made to the petition ; and any 
 person intending to oppose the said application shall lodge 
 notice to that 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 
 section 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 
 
458 APPENDIX C. 
 
 person intending to enter a caveat shall enter the same at the 
 .council office, on or before such day so named in the said adver- 
 , tisements ; and having entered such caveat, shall be entitled 
 to have from the petitioner four weeks' notice of the time 
 appointed for the hearing [p. 211]. 
 
 EuLE III. — Petitions under sections 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 [p. 211]. 
 
 Rule IV. — All petitions must be accompanied with affidavits 
 of advertisements having been inserted according to the pro- 
 visions of section 4 of the said Act, and the first and second of 
 these Eules, and the matters in such affidavits may be disputed 
 by the parties opposing upon the hearing of the petitions 
 [p. 211]. 
 
 Rule V. — All persons entering caveats under section -l of 
 the said Act, and all parties to any former suit or action 
 touching letters patent, in respect of which petitions shall have 
 been presented under section 2 of the said Act, and all persons 
 lodging notices of opposition under the first 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 YI. — All parties served with petitions shall lodge at 
 the council office, within a fortnight after such service, notice 
 of the grounds of their objections to the granting of the 
 prayers of such petitions. 
 
 Rule YII. — Parties may have copies of all papers lodged in 
 respect of any application under the said Act, at their own 
 expense. 
 
 Rule YIII. — The registrar of the Privy Coimcil, or other 
 officer to whom it may be referred to tax the costs incurred in 
 ■ the matter of any petition presented under the said Act, shall 
 allow or disallow in his discretion all payments made to 
 persons of science or skill examined as witnesses to matters of 
 opinion chiefly. 
 
 Rule IX. — A party applying for an extension of a patent, 
 under section 4 of the said Act, must lodge at the coimcil 
 office six printed copies of the specification, and also four 
 
PRIVY COUNCIL RULES. 459 
 
 copies of the balance-sheet of expenditure and receipts relating 
 to the patent in question, which accounts are to be proved 'on 
 oath before the lords of the committee at the hearing. In the '. 
 event of the applicant's specification not having been printed, 
 and if the expense of making six copies of any drawing therein 
 contained or referred to would be considerable, the lodging of 
 two copies only of such specification and drawing will be 
 deemed sufficient. 
 
 All copies mentioned in this rule must be lodged not less 
 than one week before the day fixed for hearing the application. 
 
 The judicial committee will hear the attorney-general, or 
 other counsel, on behalf of the Crown, against granting any 
 application made under either the 2nd or 4th section of the 
 said Act, in case it shall be thought fit to oppose the same on 
 such behalf. 
 
 IV.— REGISTER OF PATENT AGENTS' RULES, 1889. 
 
 For the purpose of giving effect to the provisions of the 
 Patents, Designs, and Trade Marks Act, 1888, relating to the 
 registration of patent agents, the Board of Trade, by virtue of 
 the provisions of the said Act, hereby make the following 
 rules : — 
 
 1. A register shall be kept by the Institute of Patent Agents, Register 
 subject to the provisions of these rules and to the orders of *° ^^ '^^i'*- 
 the Board of Trade, for the registration of patent agents in 
 pursuance of the Act. 
 
 2. The register shall contain in one list all patent agents Contents of 
 who are registered under the Acts and these rules. register. 
 
 Such list shall be made out alphabetically, according to the 
 surnames of the registered persons, and shall also contain the 
 full name of each registered person, with his address, the date 
 of registration, and a mention of any honours, memberships, 
 or other additions to the name of the registered person which 
 the council of the institute may consider worthy of mention in 
 the register. The register shall be in the Form 1 in Appendix 
 A., with such variations as may be required. 
 
 3. The institute shall cause a correct copy of the register to Printed 
 
 copies to be 
 
460 
 
 APPENDIX C. 
 
 publislied 
 annually, 
 and to be 
 evidence of 
 contents of 
 register. 
 
 Ri''istrav. 
 
 Registration 
 of persons 
 wlio were 
 patent agents 
 jjrior to the 
 passing of 
 this Act. 
 
 Final quali- 
 fying exam- 
 ination for 
 registration. 
 
 Exemption 
 of pupils 
 
 be, once every year, printed, under their direction, and pub- 
 lished and placed on sale. Such correct copy shall, in the year 
 1889, be printed and published at as early a date as is possible, 
 and in every year subsequent to the year 1889, shall be printed 
 and published on the 31st day of January. A copy of the 
 register for the time being purporting to be so printed and 
 published sliall be admissible as evidence of all matters stated 
 therein, and the absence of the name of any person from the 
 register shall be evidence, until the contrary is made to appear, 
 that such person is not registered in pursuance of the Act. 
 
 4. The institute shall apjioint a registrar, who shall keep 
 the register in accordance with the provisions of the Act and 
 these rules, and, subject thereto, shall act under the directions 
 of the institute, and the Board of Trade. 
 
 5. A person who is desirous of being registered in pursuance 
 of the Act, on the ground that prior to the passing of the Act 
 he had been bond fide practising as a patent agent, shall 
 produce or transmit to the Board of Trade a statutory decla- 
 ration in the Form 2 in Appendix A. ; provided that the Board 
 of Trade may in any case in which they shall think fit, require 
 further or other proof that the person had prior to the passing 
 of the Act been bond -fide practising as a patent agent. Upon 
 the receipt of such statutory declaration or of such further or 
 other proof to their satisfaction as the case may be, the Board 
 of Trade shall transmit to the registrar a certificate that the 
 person therein named is entitled to be registered in pursuance 
 of the Act, and the registrar shall on the receipt of such 
 certificate cause the name of such person to be entered in the 
 register. 
 
 6. Subject to the provisions of the Act in favour of every 
 person who proves to the satisfaction of the Board of Trade 
 that prior to the passing of the Act he had been bond, fide 
 practising as a patent agent, no person shall be entitled to be 
 registered as a patent agent unless he has passed, and pro- 
 duces or transmits to the registrar a certificate under the seal 
 of the institute that he has passed, such final examination as 
 to his knowledge of patent law and practice and of the duties 
 of a patent agent as the institute shall from time to time 
 prescribe. 
 
 7. Any person who has been for at least seven consecutive 
 
REGISTER OF PATENT AGENTS* RULES. 461 
 
 years continuously engaged as a pupil or assistant to one or and assist- 
 more registered patent agents, and any person for the time preUmhiary 
 being entitled to practise as a solicitor of the Supreme Coart of examination. 
 Judicature in England or Ireland, or as a law agent before the 
 Court of Session in Scotland, shall be entitled to be registered 
 without passing any examination other than the final examina- 
 tion provided for in the last preceding rule. The registrar 
 shall before registering the name of any such person as a patent 
 agent (in addition to the final examination certificate) require 
 proof satisfactory to the registrar that such person has been for 
 at least seven consecutive years continuously engaged as such 
 pupil or assistant, or is entitled to practise as such solicitor or 
 law agent. 
 
 8. Any person who is not qualified under Eule 7 must, in Qualifications 
 order to be entitled to present himself for the final qualifying genrraUy^for 
 examination, be — registration. 
 
 A person who has passed one of the preliminary examinations 
 mentioned in Appendix B., or such other examination as 
 the institute shall, with the approval of the Board of 
 Trade, by regulation prescribe. 
 
 9. The institute shall hold at least once in the year, com- Final quaii- 
 mencing with the 1st day of July, 1889, and in every other ^[^"f^^Q^^,'"'"'^' 
 succeeding year, a final qualifying examination, which shall be held by the 
 the final qualifying examination required under Rules 6 and ^"^'■i*'"*^- 
 
 7 ; and the institute shall, subject to these rules, have the 
 entire management and control of all such examinations, and 
 may from time to time make regulations with respect to all or 
 any of the following matters, that is to say, 
 
 (a) The subjects for and the mode of conducting the exam- 
 ination of candidates ; 
 {!)) The times and places of the examinations, and the 
 
 notices to be given of examinations ; 
 (c) The certificates to be given to persons of their having 
 
 passed the examinations ; 
 {(I) The appointment and removal of examiners, and the 
 remuneration, by fees or otherwise, of the examiners so 
 appointed ; and 
 (e) Any other matter or thing as to which the institute may 
 think it necessary to make regulations for the purpose of 
 carrying out this rule. 
 
APPENDIX C. 
 
 Corrections 
 of names and 
 addresses in 
 register. 
 
 Erasure of 
 names of 
 deceased 
 persons. 
 
 Erasure of 
 names of 
 persons who 
 Iiave ceased to 
 practise. 
 
 10. The registrar shall from time to time insert in the 
 register any alteration which may come to his knowledge in 
 the name or address of any person registered. 
 
 11. The registrar shall erase from the register the name of 
 any registered person who is dead. 
 
 12. The registrar may erase from the register the name of 
 any registered person who has ceased to practise as a patent 
 agent, but not (save as hereinafter provided) without the con- 
 sent of that person. For the purposes of this rule the 
 registrar may send by post to a registered person to his regis- 
 tered address a notice inquiring whether or not he has ceased 
 to practise or has changed his residence, and if the registrar 
 does not within three months after sending the notice receive 
 an answer thereto from the said person, he may, within four- 
 teen days after the expiration of the three months, send him 
 by post to his registered address another notice referring to the 
 first notice, and stating that no answer has been received by 
 the registrar ; and if the registrar either before the second 
 notice is sent receives the first notice back from the Dead Letter 
 Office of the Postmaster-General, or receives the second notice 
 back from that office, or does not within three months after 
 sending the second notice receive any answer thereto from the 
 said person, that person shall, for the purposes of this rule, be 
 deenied to have ceased to practise, and his name may be erased 
 accordingly. 
 
 13. If any registered person shall not, within one month 
 from the day on which his annual registration fee becomes 
 payable, pay such fee, the registrar may send to such registered 
 person to his registered address a notice requiring him, on or 
 before a day to be named in the notice, to pay his annual 
 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 registrar may erase his 
 name from the register : Provided that the name of a person 
 erased from the register under this rule may be restored to the 
 register by direction of the institute or the Board of Trade on 
 payment by such person of the fee or fees due from him, 
 together with such further sum of money, not exceeding in 
 amount the annual registration fee, as the institute or the 
 
REGISTER OF PATENT AGENTS' RULES. 463 
 
 Board of Trade (as the case may be) may in each particular 
 case direct (a). 
 
 14. In the execution of his duties the registrar shall, subject Registrar 
 
 . 1 • 1 , to act on 
 
 to these rules, m each case act on such evidence as appears to evidence. 
 him sufficient. 
 
 15. The Board of Trade may order the registrar to erase Erasure of 
 
 „ 1 • 1 • 1 • 1 • 1 i i-r, • "icorrect or 
 
 from the register any entry therein which is proved to tneir fraudulent 
 satisfaction to have been incorrectly or fraudulently inserted, entries. 
 
 16. If any registered person shall be convicted in lier ^^^^^^^''y^ 
 Majesty's dominions or elsewhere of an offence which, if persons con- 
 committed in England, would be a felony or misdemeanor, or "^^9^^^ °^ 
 
 » ' -^ _ J /> ci""iies, and 
 
 after due inquiry, is proved to the satisfaction of the Board of persons found 
 
 Trade to have been guilty of disgraceful professional conduct, f[^|.5^/ ''""' 
 
 or having been entitled to practise as a solicitor or law agent conduct. 
 
 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 Restoration 
 
 the register of a name of any person, or of any other entry, the ^^^j^g^ 
 
 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 there- 
 from either without fee, or on payment of such fee, not 
 exceeding the registration fee, as the Board of Trade may from 
 time to time fix, and the registrar shall restore the name 
 accordingly. 
 
 (3) The name of any person erased from the register at the 
 request or with the consent of such person shall, unless it 
 might, if not so erased, have been erased by order of the Board 
 of Trade, be restored to the register by the registrar on his 
 application and on payment of such fee, not exceeding the 
 registration fee, as the institute shall from time to time fix. 
 
 (a) The Chartered Institute of Patent Agents v. Lockwood, 10 P. 0. R. 
 167 ; 11 P. 0. R. 374. 
 
464 
 
 AITENDIX C. 
 
 Inquiry by 
 Board of 
 Trade before 
 ei'asiire of 
 name from 
 register. 
 
 Appeal to 
 Board of 
 Trade. 
 Notice of 
 appeal. 
 
 Case on 
 appeal. 
 
 Transmis- 
 sion of notice 
 of appeal to 
 Board of Trade. 
 
 Directions as 
 to lieariug of 
 appeal. 
 
 Notice of 
 hearing of 
 appeal. 
 
 Hearing and 
 decision of 
 appeal. 
 
 18. For the purpose of exercising in any case tlie powers of 
 erasing from and of restoring to the register the name of a 
 peri-on, or an entry, the Board of Trade may appoint a com- 
 mittee consisting of such persons as they shall think fit. 
 Every application to the Board of Trade for the erasure from, 
 or restoration to, the register of the name of any patent agent 
 shall be referred for hearing and incpiiry 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 registrar may appeal to the Board of Trade. 
 
 20. A person who intends to appeal to the Board of Trade 
 under these rules (in these rules referred to as the appellant) 
 shall, within fourteen days from the date of the making or 
 giving of the order, direction, or refusal complained of, leave 
 at the office of the institute a notice in writing signed by him 
 of such his intention. 
 
 21. The notice of intention to appeal shall be accompanied 
 by a statement in writing of the grounds of the appeal, and of 
 the case of the appellant in support thereof. 
 
 22. The appellant shall also immediately after leaving his 
 notice of appeal at the institute send by post a copy thereof 
 with a copy of the appellant's case in support thereof addressed 
 to the Secretary of the Board of Trade, 7 Whitehall Gar- 
 dens, 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 a])pointed for the hearing of the appeal, shall be given to 
 the appellant and the institute and the registrar. 
 
 25. The appeal may be heard by the president, a secretary, 
 or an assistant secretary of the Board of Trade, and the 
 decision and order thereon of the jiresident, secretary, or 
 assistant secretary, as the case may be, shall be the decision of 
 the Board of Trade on such appeal. On the appeal such 
 decision may be given or order made in reference to the subject- 
 matter of the appeal as the case may require. 
 
REGISTER OF PATENT AGENTS' RULE8. 465 
 
 26. The fees set forth in Appendix C. to these rules shall be Pees. 
 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 Alteration of 
 may be altered or revoked by a subsequent regulation. Copies I'^gulations. 
 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 
 efiFect. 
 
 28. The institute shall once every year, in the month of Report to 
 December, transmit to the Board of Trade a report stating the Traiie. 
 number of applications for registration which have been made 
 
 in the preceding year, the nature and results of the final ex- 
 aminations 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 — Definitions. 
 " The Act " means the Patents, Designs, and Trade Marks 
 
 Act, 1888. 
 '' The institute " means the Institute of Patent Agents, 
 
 acting through the council for the time being. 
 " The registrar " means the registrar appointed under these 
 
 rules. 
 " Eegistered patent agent " means any agent for obtaining 
 
 patents in the United Kingdom whose name is registered 
 
 under the Act and these rules. 
 
 30. These rules shall commence and come into operation on Commence- 
 the 12th day of June, 1889, but at any time after the making ^^^^' 
 
 T. H H 
 
466 
 
 APPENDIX C. 
 
 Title. 
 
 thereof auy appointment or regulations may be made and 
 things done for the purpose of bringing these rules into opera- 
 tion on the said day. 
 
 31. These rules may be cited as the Kegister of Patent 
 Agents' Rules, 1889. 
 
 By the Board of Trade, 
 
 COUKTENAY BOYLE, 
 
 Assistant Secretary, Railway Departnmit. 
 nth June, 1889. 
 
 APPENDIX A. 
 
 Form 1. 
 Form of Register. 
 
 Name. 
 
 Designation. 
 
 Address. Date of registration. 
 
 Form 2. 
 Form of Statutory Declaration. 
 llcgistcr of Patent Agents' Rules, 1889. 
 
 I, A. B. [insert full name, and in the case of a member of a firm add, 
 " a member of the firm of "]) of , in tlie coimty 
 
 of , Patent Agent, do solemnly and sincerely declare as 
 
 follows : — 
 
 1. That prior to the 24rth December, 1888, I had been bond fide prac- 
 tising in the United Kingdom as a patent agent. 
 
 2. That I acted as patent agent in obtaining the following patents : — 
 [Crive the official numbers and dates of some "patents for the United King- 
 dom in the obtaining of which the declarant acted as imtcnt agent.'\ 
 
 3. That I desire to be registered as a patent agent in pursuance of the 
 said Act. 
 
 And I make this solemn declaration conscientiously believing the same 
 to be true and by virtue of the provisions of the Statutory Declarations 
 Act, 1835. 
 
 Declared at 
 
REGISTER OF PATENT AGENTS RULES. 
 
 4G7 
 
 APPENDIX B. 
 
 Particulaes of Pueliminary Examinations. 
 
 1. The Matriculation Examination at any University in England, 
 Scotland, or Ireland. 
 
 2. The Oxford or Cambridge Middle Class Senior Local Examinations. 
 
 3. The Examinations of the Civil Service Commissioners for admission 
 to the Civil Service. 
 
 APPENDIX C. 
 
 Fees. 
 
 Nature of fee. 
 
 When to be paid. 
 
 To whom to be paid. 
 
 Amount. 
 
 For registration of name 
 of patent agent who 
 had been bona fide in 
 practice prior to the 
 passing of the act. 
 
 On application 
 and before re- 
 gistration. 
 
 To the Regis- 
 trar at the 
 institute 
 
 £. s. d. 
 5 5 
 
 For registration of name 
 
 Do. do. . 
 
 Do. do. . 
 
 5 5 
 
 of any person other 
 than as above. 
 
 
 
 
 Annual fee to be paid 
 by every registered 
 patent agent. 
 
 On or before 
 November 30 of 
 each year, in 
 respect of the 
 year commenc- 
 ing January 1st 
 following. 
 
 Do. do. . 
 
 3 3 
 
 Oa entry of a candidate 
 for the final qualifying 
 examination. 
 
 At time of enter- 
 ing name. 
 
 Do. do. . 
 
 2 2 
 
 H H 2 
 
468 APPENDIX C. 
 
 v.— WAR OFFICE MEMORANDUM TO INVENTORS. 
 
 War Office, 
 
 January 1, 1886. 
 In consequence of the nnmei'ous claims for compensation for 
 loss of time and for expenses incurred by private individuals in 
 working out inventions of various kinds, as well as for rewards 
 in consequence of the use of such inventions, the Secretary of 
 State for War considers it necessary to make known the follow- 
 ing regulations : — 
 
 (a) With regard to unpatented inventions — 
 
 (1) Persons who desire to submit any unpatented in- 
 vention for consideration should do so by letter 
 addressed to the Under-Secretary of State for War. 
 The letter should state the nature of the invention 
 and whether the person who offers it for consideration 
 desires to make any claim to remuneration in con- 
 nection with it. In the absence of such a statement 
 it will be assumed that no such remuneration is 
 expected. 
 
 (2) Expenses incurred before the submission of an un- 
 patented invention will not be considered to give a 
 claim for repayment. No liability on behalf of the 
 public will be recognised on account of loss of time or 
 expenses incurred in connection with an invention 
 after such submission, unless authority for such ex- 
 penses has been previously given by letter, signed by 
 one of the Under-Secretaries of State or the Director 
 of Artillery ; and the liability will be strictly confined 
 to the limits of expenditure authorised in such letter. 
 
 (3) All claims for reward for unpatented inventions 
 will be examined by a joint council of the Admiralty 
 and War Office, to be held at the War Office, and if 
 payment be recommended by the council and ap- 
 proved by the Secretary of State for War, the sura 
 will, with the concurrence of the Treasury, be in- 
 cluded in the Estimates, but it will not be due to the 
 claimant until after the vote is passed by the House 
 of Commons. 
 
WAR OFFICE MEMORANDUM. 
 
 (4) No claim fur reward for an unpatented invention 
 will be held to be established unless the invention 
 has been adopted into the Service. 
 
 (b) With regard to patented inventions — 
 
 (5) By section 27 of the Patents, Designs, and Trade 
 Marks Act, 1883, it is enacted as follows : 
 
 " A patent shall have to all intents the like effect 
 as against her Majesty the Queen, her heirs and 
 successors, as it has against a subject. 
 
 " But the oflBcers or authorities administering any 
 department of the service of the Crown may by them- 
 selves, their agents, contractors, or others, at any 
 time after the application, use the invention for the 
 service of the Crown, on terms to be before or after 
 the use thereof agreed on, with the approval of the 
 Treasury, l^etween those officers or authorities and the 
 patentee, or, in default of such agreement, on such 
 terms as may be settled by the Treasury after hearing 
 all parties interested." 
 
 (6) Persons desiring to submit patented inventions 
 should proceed on all points as laid down in para- 
 graph (1). 
 
 (7) Should there be a statement to the effect that 
 remuneration is expected in the event of the adoption 
 and use of the invention by the Secretary of State for 
 War, his agents, contractors, or others, and should 
 there be such adoption and use, or an intention to 
 adopt and use it, then in default of an agreement 
 between the Secretary of State for War and the 
 patentee or his agent, as to the terms of remunera- 
 tion, the Treasury will settle the terms after hearing 
 all parties interested. 
 
 Ralph Thompson. 
 
APPENDIX D. 
 
 APPENDIX D. 
 
 Injunction. 
 
 Damages. 
 Account. 
 
 Order for 
 destruction. 
 
 L— FORMS IN PROCEEDINGS IN AN ACTION FOR 
 INFRINGEMENT. 
 
 1. Indorsement on Writ. 
 
 The plaintiffs claim is : — 
 
 1. For an injunction to restrain the defendant from infring- 
 ing the plaintiff's patent, No. , and dated 
 
 2. For damages for the infringement of the said patent, or 
 alternatively that an account may be taken of all the machines 
 made in infringement of the said patent wliich have been 
 manufactured, or sold, or let for hire, or used by or by the 
 order, or for the use and profit, of the defendant, and also of 
 the gains and profits made by the defendant by reason of such 
 manufacture, sale, or letting for hire or use, and that the 
 defendant may by a day to be appointed by the Court be 
 ordered to pay to the plaintiff the amount of such gains and 
 profits. 
 
 3. That the defendant may be ordered upon oath to deliver 
 up to the plaintiflF, or break up, or otherwise render unfit for 
 use, all machines or parts of machines made in infringement of 
 the plaintiflTs said patent, which are in the custody or power of 
 the defendant, his servants, or agents. 
 
 2. Notice of Motion for Interlocutory Injunction. 
 
 In the High Court of Justice. 
 
 Chancery [_or Queen's Bench] Division. 
 
 Between A. B Plaintiff, 
 
 and 
 CD Defendant. 
 
 Take notice that this Honourable Court will be moved [ if 
 short notice of motion, by leave granted] on the day of , 
 
FORMS. 471 
 
 or so soon thereafter as counsel can be heard by Mr. , of 
 
 counsel for the above-named plaintiff", that an injunction may 
 be awarded against the defendant to restrain the said defen- 
 dant, his servants or agents, until the trial of this action or 
 further order from either directly or indirectly making, using, 
 or putting in practice the invention described in the specifica- 
 tion and drawings filed under the letters patent granted to the 
 plaintiff' [or assignor, or other predecessor in title of plaintiff], 
 and numbered , or that such further order may be made 
 
 in the premises as to the Court may seem meet. 
 
 3. Affidavit in Support of Notice of Motion. 
 [Title as alove.'] 
 I, of , the above-named plaintiff, make oath and 
 
 say, 
 
 1. Letters patent dated [ ] were granted to me under Grant, 
 the seal of the Patent Office for an invention entitled " im- 
 provements, &c., &c.," for a period of fourteen years from the 
 
 day of 
 
 2. At the time when the said letters patent were granted to Novelty. 
 me the said invention was new as to the public use and exer- 
 cise thereof within this realm. 
 
 3. I am the true and first inventor of the said invention [or First inventor, 
 John Smith or other predecessor in title of the plaintiff, was 
 
 the trne and first inventor of the said invention] . 
 
 4. The said invention is of great public utility. Utility. 
 
 5. [SMe any 'particular facts, such as a ■previous actioti or 
 long user, ivhich liave a tcndencii to cause a presumption of the 
 valiclity of the patent.'] 
 
 6. On the day of the defendant infringed the infringement, 
 plaintiff's said patent by manufacturing [selling or using], 
 
 etc. {a). 
 
 (a) Evidence should be adduced persons who had purchased brushes, 
 
 by supporting affidavits in case it which, from their appearance, 
 
 is deemed that the defendant has showed they had been made by the 
 
 infringed the patent. In Moore v. patented machine, from the defen- 
 
 Bennett, 1880, M., No. 94, the evi- dant. 
 dence adduced was that of several 
 
472 AI'1'ENI>IX I>. 
 
 7. [T})0 articloK hoW by t})0 (l<;f'en<]ant woronot TnaDufiu;turcf] 
 by mc or by my liccnHCCH or a^^eiite,] 
 
 8. T bfHovc that the deforidant irieanB to ctmimna the in- 
 friiigwrient of the Kaid IcttorB patent, wJiercby rny trade h 
 greatly injured ; persons refusinj^ to purchase the patented 
 articles from me [or I arn unable to grant licences, or nlak anij 
 olMr ijrouniU of Hpmal dawMye armwj by remon of Uie con- 
 linmd irifimjemrml']. 
 
 4. iNTKUTiOCUTOllY OllDER TO RbBTKAIN InFRINOKMENT 
 
 OF Patent, 
 
 Form 1. 
 
 Upon motir*n, <tc,, by counsel for the plaintiff", and ufjon 
 hearing counsel for the defendant [or reading an affidavit of 
 service of notice of this motion on the defendant ; or, if moved 
 ex 'park htforit Ihe lUfrndwai Imh aji/wared, the writ of summons 
 issued in this a<;ti(m on the day of ] \_mkr affidamlH in 
 HU'/rport and in oppoHilum 'if wni/j, and the plaintiff, by his 
 counsel, undertaking to abide by any order this Cour-t may 
 make as to damages, in case this Court should hereafter be of 
 oj)inion that the defendant shall have sustained any, by reason 
 of tliis order, which the plaintiif ought to pay [if so, and a]m 
 undertaking to accept short notice of motion to dissolve the in- 
 Irit«;rlwut/^ry junction hereby awarded], let an injunction be awarded to 
 injunction, restrain the defendant T. until further order, from manufac- 
 turing any tube expanders similar t<j the tube expander which 
 has been j)iirchaKed by the defendant IJ,, as in the plaintiffs 
 writ mentioned, or otherwise constructed so as to imitate or 
 resemble the roller expanding tool described in the specification 
 in the j)hiintifrs letters patent in the said writ mentioned, and 
 Uj restrain the defendants T, and B., their agents, Ac, from 
 selling or offering for sale, or otherwise parting with thecusU^dy 
 of any tube expanders, or jtarts of any tube expanders, which 
 have been so manufactured by the said defendant T. Liberty 
 U) eitli'r parly to aj»f>ly to expedite the hearing (b). 
 
 (//) iJudyvoft V. Th',wpy.ofi, M,K., i"ltli Miwli, 1874, A. I'Z'.i. 
 
FORMS. 473 
 
 Form 2. 
 
 On usual undertaking as to damages, let an injunction be 
 awarded against the defendants S. and C, to restrain the said 
 defendants, their servants, &c., until the trial of this action 
 or further order, from either directly or indirectly niaking, '^"''^ "*"'^ "" 
 
 • .. .I* ■'i*ii>i tcriiiB, 
 
 using, or puttmg m j)ractice the invention described in the 
 specification and drawings filed under the letters patent, granted 
 to N., dated the, &c., and numbered 21 'JO, and now vested by 
 assignment in the plaintiff, or any part thereof, exce))t as to 
 any skates made by the plaintiff, or his agents or agent (c). 
 
 5. Interlocutory Injunction for Infringement 
 
 REFUSED ON TeRMS. 
 
 Upon motion, &c., for injunction to restrain, &c., and the 
 defendant, by his counsel, undertaking to keep an account of 
 all moneys received or to be received by him, by reason of the 
 sale or use of the parlour or roller skates in the writ mentioned, 
 this Court does not think fit to make any order upon the said Refusal on 
 motion, but does order that the costs of the said motion be ^'^'■™"• 
 costs in tlie cause {d). 
 
 6. Inspection, Notice of Motion for. 
 \_Tiih as before.^ 
 
 Take notice that this Honourable Court will be moved [if in 
 tlie Chancery Division, before his lordship, Mr. Justice ], 
 on the part of the plaintiff, that the jjlaintiff, his solicitors and 
 agents, *^ two scientific witnesses, to be named in the notice Scientific 
 hereinafter mentioned, may be at liberty at all seasonable 
 times, and as often as may be requisite, upon giving three 
 days' previons notice in writing to the defendants' solicitors, to 
 enter into and u[;on the business premises of the defendants, 
 where the process of decoi'ating or printing tin or metal plates 
 is carried on by the defendants as stated in the plaintiff's 
 statement of claim in this action, and to inspect and examine 
 
 (c) Plimpton v. BijUUt, M.R., (cZ) Plimpton v. Malcolwson, 
 
 IGth Marcli, 1870, B. 424. M.R., 4th March, 1875, B. 421. 
 
474 APPENDIX D. 
 
 there the whole of the process by which such i^rinted and 
 decorated tin and metal plates are manufactured by the defen- 
 dants ; and to take, on paying the reasonable charges of the 
 
 Take samples, defendants for the same, samples of such plates, and upon and 
 during such inspection to make such observations as may be 
 necessary and expedient for the purpose of obtaining full in- 
 formation and evidence of the mode by which such plates are 
 manufactured by the defendants ; and that the defendants may 
 be ordered to permit the plaintiff, his solicitors and agents, 
 and two persons to be named as aforesaid, to enter into and 
 upon their said premises for the purposes aforesaid, and that 
 
 Costs. the costs of this application may be costs in the action (e). 
 
 be worked. 
 Samples. 
 
 7. Inspection, where for a Process and to take 
 Samples. 
 
 [Title as ahove.] 
 
 [Formal parts as aiove'] to enter in and upon the business 
 premises of the defendants, where the manufacture of is 
 carried on by the defendants, as mentioned in the statement of 
 claim in this action, and to inspect and examine there the 
 machines used by the said defendants in the manufacture of 
 
 , and the process by which is manufactured by the 
 
 Machines to said defendants, and that the said machines ^ process may be 
 
 put to work upon such inspection, and that the plaintiff, his 
 
 servants or agents, may be at liberty to take samples of the 
 
 made or to be made by the said machines or process, 
 upon paying to the defendants their reasonable charges for the 
 same. 
 
 8. Inspection of Plaintiff's Patented Process by 
 Defendant. 
 
 [Form of Order given in Griffin, P. C, at p. 106.] 
 
 " That A. B. and one other indifferent person appointed by 
 him and C. D., one of the defendant's solicitors, be at liberty 
 
 (e) Flower v. Lloyd, 1876, A. 1254 ; as to inspection, see p. 310, 
 ct seq. 
 
FORMS. 475 
 
 at all such times and as often as in the opinion of the said 
 A. B. be requisite, on giving 3 days' notice to the plaintiffs to 
 enter into some business premises to be selected by the plain- 
 tiffs, where the process or mode of working referred to in the 
 specification mentioned in the Statement of Claim can be seen 
 at work, and to inspect and examine there the whole of the 
 machinery fitted in such mill, and to take such samples of the 
 finished and unfinished products of the working of such 
 machinery as in the opinion of the said A. B. may be necessary 
 for the purposes of this action, And it is ordered that such 
 machinery be put to regular work upon such inspection. The 
 costs of this application are to be costs in the action (/). 
 
 9. Inspection, and Order for Delivery by Defendant 
 
 OF Samples for Analysis. 
 
 \_Title as above.'] 
 
 \_Formal parts as above'] may be at liberty, upon giving three 
 days' previous notice in writing to the defendant's solicitors to 
 enter upon the defendant's premises, and to inspect the type 
 there used by the said defendants in their printing jirocesses, as 
 mentioned in the statement of claim in this action ; and that Samples for 
 the defendant may be ordered to permit the plaintiff, his '''"^'^^'^• 
 solicitors and agents, and one person to be named as aforesaid, 
 to enter upon his premises for the purpose aforesaid, and that 
 said defendant may be further ordered to deliver to the plaintiff" 
 a competent part of the said type so used, on payment of a fair 
 price for the same, and that the costs of this application may be 
 costs in the action (g). 
 
 (/) The Germ Hilling Co. v. and infringement must be made 
 
 Robinson, 55 L. J., Ch. 287; 3 out. The order for inspection is 
 
 P. 0. K. at p. 14. frequently made upon the applica- 
 
 ((/) This was the notice of motion tion for interlocutory injunction, 
 
 in The Patent Type Founding Co. v. and is sometimes made to include a 
 
 Walte?; reported at .'> H. & N. 192 ; cross order that the plaintiff shall 
 
 29 L. J., Ex. 207 ; 6 Jur. N. S. permit the defendant to see and 
 
 103 ; 1 L. T. Rep., N. S. 382. The inspect the patented machine at 
 
 samples of type in this case were work, and also to take samples : 
 
 required for the purpose of analysis. Amies v. Kclsey, 22 L. J., Q. B. 84. 
 
 Notice of motion for inspection The affidavit should show that there 
 
 must be supported by alhdavit ; is such property or machinery as is 
 
 a fair primd facie case of validity required to be inspected, that the 
 
476 
 
 APPENDIX D. 
 
 Order for 
 
 experts. 
 
 Full informa- 
 tion. 
 
 10. — Order for Inspection of Defendant's process by 
 Experts. 
 
 Let I. and C, of, &c., be at liberty at all seasonable times, 
 and as often as requisite, on giving three days' notice to the 
 defendants, to enter into the business premises of the defen- 
 dants where the process of decorating or printing tin and metal 
 plates is carried on by the defendants, as stated in the plain- 
 tiff's statement of claim, and mentioned in tlie said affidavits, 
 or some of them, and to inspect and examine there the whole of 
 the process by which such printed and decorated tin (h) and 
 metal plates are manufactured by the defendants, and to take, 
 on paying the reasonable charges of the defendants for the 
 same, samples of such plates, and upon and during such inspec- 
 tion to make such observations as may be necessary and expe- 
 dient for the purpose of obtaining full information and evidence 
 of the mode by which such plates are manufactured by the 
 defendants (i). 
 
 Infiinccement. 
 
 11. — Statement of Claim. 
 
 Form 1. 
 
 In the High Court of Justice. 
 
 Chancery [or Queen's Bench] Division. 
 
 Between A. B. 
 
 and 
 
 PlaintiflP, 
 Defendant. 
 
 CD.. 
 
 Statement of Claim. 
 1. The defendant has infringed the plaintiff's patent, num- 
 bered , granted for the term of fourteen years from the 
 
 inspection is necessary for the pur- 
 pose of the action : Shaw v. Hank 
 of England, 22 L. J., Ex. 26. It 
 should also show what the patent 
 is for, so that the Court or judge 
 may see that there is necessity for 
 the inspection. The order will not 
 he granted on the plaintiffs appli- 
 cation, unless the Court is satisfied 
 that it is essential to enable him to 
 prove his case : Batley v. Kijnock, 
 L R , 19 Eq. 90 ; Meadows v. Kirk- 
 mann, 29 L. J., Ex. 205. In The 
 Smger Manufacturing Company v. 
 Wilson, 13 W. B. 560, the Court 
 refused to give the plaintiir inspec- 
 
 tion of the defendant's stock before 
 judgment, but ordered the defen- 
 dant to verify by affidavit all the 
 different kinds of sewing machines 
 which he had sold since the last 
 disclaimer entered by the plaintiff, 
 and to produce one of each sort for 
 inspection. 
 
 (h) No order will be made on this 
 application for the inspection of 
 books, for which a separate order 
 must be obtained : Vidi v. Smith, 
 3 E. & B. 969. 
 
 (0 Flower v. Lloyd, C.A., 5th 
 July, 1876, A. 1254. 
 
FOEMS. 477 
 
 day of , for an invention entitled " Improvements iu tlio 
 
 manufaeture of iron and steel." 
 
 2. The plaintiff was the first and true inventor of the said First 
 
 inventor. 
 
 invention. 
 
 3. The plaintiff claims an injunction to restrain the defen- Injunction, 
 dant from further infringement, and that accounts may be ^^^^^t!' 
 taken of the sales and profits made by the defendant by in- 
 fringing the said letters patent [or in the alternative, £100 
 damages]. 
 
 Particulars of breaches are delivered herewith. 
 [Place of trial.'] 
 
 Signed. 
 
 Delivered the day of , 18 . 
 
 Statement of Claim. 
 
 Form 2. 
 
 In the High Court of Justice. 
 
 Chancery [or Queen's Bench] Division, 
 
 Writ issued 
 Between A. B. and C. and CD. . Plaintiffs, 
 and 
 E. F Defendant. 
 
 Statement of Claim. 
 
 1. The plaintiff C. D., by virtue of an assignment dated Assignment, 
 day of , 18 , and duly registered, is the owner of certain 
 
 letters patent, No. , of 18 , granted to X. Y. for " Improve- 
 ments in the extracting mechanism of drop-down small arms," of 
 which the said X. Y. is the first and true inventor. The plain- Licence, 
 tiffs A. B. and C. are the sole licensees under the said letters 
 patent. 
 
 2. The defendant is a gun manufacturer carrying on business 
 :at in the county of 
 
 3. The said letters patent are valid and of full force and effect. 
 
 4. The defendant has for some time past manufactuied and 
 ■sold both guns and gun actions fitted with ejecting mechanism 
 made in infringement of the plaintiff's letters patent. 
 
478 
 
 APPENDIX D. 
 
 Injunction. 
 
 Account or 
 damages. 
 
 Destruction 
 or delivery 
 of infringing 
 articles. 
 
 The Plaintiffs' Claim. 
 
 1. An injunction to restrain the defendant, his servant and 
 agents, from making, using, and vending guns containing 
 ejector mechanism or portions thereof made in infringement of 
 the plaintiffs' letters patent, or made so as to be a mere colour- 
 able imitation of the invention therein contained. 
 
 2. An account of profits or, at the option of the plaintiffs, an 
 enquiry as to damages. 
 
 3. Destruction of or delivery up by the defendant to the 
 plaintiffs of all guns or portions of guns made in infringement 
 of the plaintiffs' rights, 
 
 4. Costs. 
 
 Signed. 
 
 Delivered the day of 18 . 
 
 Statement of Claim. 
 
 Form 3. 
 [Formal parts as alove.'] 
 
 1. By assignment dated day of , X. Y. assigned to 
 the plaintiff certain letters patent granted to him for an inven- 
 tion entitled " luiprovement in Ruffling Mechanism for Sewing 
 Machines," dated day of , and numbered 13,503. 
 
 2. The said letters patent are valid. 
 
 3. The defendant has infringed and threatened to infi-inge 
 the said letters patent in the manner and at the times men- 
 tioned in the particulars of breaches delivered herewith. 
 
 Using. 
 
 12. — Particulars of Breaches (Jc). 
 Form 1. 
 In the High Court of Justice. 
 
 Chancery [or Queen's Bench] Division. 
 
 Between A. B Plaintiff, 
 
 and 
 
 CD Defendant. 
 
 The following are the particulars of the breaches of the 
 
 letters patent complained of in the statement of claim herein : — 
 
 1. The defendant on or about the day of at his 
 
 {k) See p. 286 et seq. 
 
FORMS. 479 
 
 facfcoiy at , in the county of , manufactured acetate of 
 
 soda by the process and with the use of the machinery and 
 appliances which form the subject-matter of the plaintiff's 
 patent. 
 
 2. On the day of the defendant sold to John Smith Selling, 
 of , one parcel containing tons of acetate of soda manu- 
 factured by the defendant by the process and with the use of 
 the machinery and appliances which form the subject-matter of 
 the plaintiff's patent. 
 
 3. On the day of the defendant sold, &c. 
 
 Yours, &c., 
 
 X.Y., 
 
 Plaintiff's solicitor. 
 
 To Mr. E. F., 
 
 Defendant's solicitor. 
 
 Paeticulars op Breaches. 
 
 Form 2. 
 
 [Formal parts as above.'] 
 
 1. The defendants have since the date of the patent No. 
 
 of 18 , manufactured, or caused to be manufactured and sold, 
 dye stuffs the same, or substantially the same, as the plaintiff's 
 naphtol black. 
 
 2. The dye stuffs complained of are those sold by the defen- 
 dants under the name of naphtol black 0. D. 
 
 3. The dye stuffs complained of are made according to the 
 process described and claimed in the plaintiff's specification in 
 all respects {I). 
 
 Particulars of Breaches. 
 
 Form 3. 
 
 \_Formal parts as above.] 
 
 1. The defendant, on or about the day of , manu- Makin<'. 
 
 factured at his factory at , in the county of , sewing 
 
 (I) Settled by C.A., in Gassclla v. Levinstein, 8 T. (J. K. at [i. 47tj. 
 
480 APPENDIX D. 
 
 machines, which sewing machines were infringements of the 
 plaintiff's patent. 
 
 Selling. 2. The defendant, on or about tlie day of at his shop 
 
 at , in the county of , sold a sewing machine to , 
 
 which sewing machine was an infringement of the plaintiff's 
 patent. 
 
 Using. 3. The defendant, on or about the day of , in his 
 
 workshop at , in the county of , by himself, his ser- 
 
 vants or agents, used a sewing machine, which sewing machine 
 was an infringement of the plaintiff's patent (m). 
 
 {FurUier and he It or particulars of breaches or objections obtained 
 by summons, common form. ) 
 
 13. Order for Delivery of Further Particulars 
 OF Breaches. 
 
 It is ordered that the plaintiffs within days from the 
 
 date of this order deliver to Messrs. , solicitors for the 
 
 defendants, further and better particulars in vpriting of the 
 breaches alleged to have been committed by the defendant, 
 upon which the defendants intend to rely on the trial of the 
 questions directed to be tried by the said order dated, &c., 
 Pages and sjjecifying by reference to the pages and lines the part of the 
 spedfication plu-intiffs' specification in respect of which such alleged breaches 
 have been committed ; and let the time within which the defen- 
 dants are to deliver to the plaintiffs' solicitors particulars in 
 writing of the objections to the letters patent in the plaintiffs' 
 writ mentioned, be enlarged until the twenty-first day after the 
 delivery of such further and better particulars, costs of applica- 
 tion to be costs in the cause in). 
 
 (m) In the case of a patent for a of the claims infringement is 
 
 combination, or wliere there are alleged. 
 
 several distinct claims, the par- (yt) Lamb v. Nottingham Manu- 
 
 ticnlars of hrcaches .sliould specify facturcrs' Co., ISl.B,., 14th March, 
 
 what portion of the combination 1874, B. 776. 
 has been infringed, or as to which 
 
FORMS. 481 
 
 14. Statement op Defence. 
 
 In the High Court of Justice. 
 
 Chancery [Queen's Bench] Division. 
 
 Between A. B Plaintiff, 
 
 and 
 CD Defendant. 
 
 Statement of Defence. 
 
 1. The defendant did not infringe the patent. 
 
 2. The invention was not new. 
 
 3. The plaintiff was not the first and true inventor. 
 
 4. The invention was not useful. 
 
 5. \_The denial of any other matter of fad affecting the validity 
 of the patent.'] 
 
 6. The patent was not assigned to the plaintiff. 
 Particulars of objections are delivered herewith. 
 
 Signed. 
 
 Delivered the day of , 18 . 
 
 15. Particulars of Objections in Actions for Infringe- 
 ment, AND ON Petition for Revocation (o). 
 
 In the High Court of Justice. 
 
 Chancery \_Queen's Bench'] Division. 
 
 Between A. B Plaintiff, 
 
 and 
 CD Defendant. 
 
 Take notice, that the defendant [or petitioner], will, on the 
 trial of this cause, rely on the following objections to impeach 
 the letters patent in the statement of claim [or petition] herein 
 mentioned. 
 
 1, That the plaintiff [or alleged inventor] was not the first First 
 and true inventor of the said invention within this realm. inventor, 
 
 2. That the alleged invention was not subject-matter of a Subject- 
 grant of letters patent, within the meaning of the Gth section ™''^**'^^- 
 of the Statute of Monopolies (that is, the act of the 21st year 
 
 of King James I. ch. 3). 
 
 (o) See p. 293 et seq. 
 T. II 
 
482 
 
 APPENDIX D. 
 
 Utility. 
 
 Insufficiency of 
 specification. 
 
 Novelty. 
 
 Prior publica- 
 tion in speci- 
 fication. 
 
 Prior publica- 
 tion in book. 
 
 Prior user. 
 
 Part old. 
 
 Combination 
 not distin- 
 guished. 
 
 3. That the alleged invention was not useful to the public. 
 
 4. That the specification of the said invention was not 
 suiUcient, and was unintelligible. 
 
 5. That the alleged invention was not a new invention as to 
 the public use and exercise thereof within this realm. 
 
 6. That the alleged invention was published at the Patent 
 Office in a specification, dated the day of , and 
 numbered , prior to the date of the said letters 
 patent, 
 
 7. That the alleged invention was, prior to the date of the 
 said letters patent, published in a book, which on the 
 
 day of , was in the British Museum Library and open for 
 
 public inspection ; the title of the said book was , and the 
 pages of the said book particularly referred to are numbered 
 and 
 
 8. That the alleged invention was used prior to the date of 
 the said letters patent, in the following manner, that is to say, 
 by , at , on the day of 
 
 9. That a material part of the alleged invention, namely 
 that part which refers to , was not new at the date of the 
 said letters patent, having been used by , at , on the 
 
 day of 
 
 10. That the plaintiff does not sufficiently distinguish and 
 point out in his specification which of the matters and things 
 therein mentioned he claims to have invented, and which he 
 does not claim to have invented, or admits to be old. 
 
 11. The defendant will also rely, as examples of prior publi- 
 cation, upon the following specifications, filed with the Com- 
 missioners of Patents, and will object that the specification of 
 the plaintiff's patent claims some of the matters thereby 
 patented or specified, that is to say [enumerate specifications']. 
 
 Yours, &c., 
 L. 
 Defendant's Solicitor or Agent. 
 To Mr. A. B., 
 
 Plaintiff's Solicitor. 
 
FORMS. 483 
 
 IG. Order for Delivery of Further Particulars of 
 Objections. 
 
 Let the order dated Gth July, 1870, whereby it was ordered 
 that the defendants should on or before the 20th July, 187G, 
 deliver to the plaintiffs further and better particulars of objec- 
 tions, stating therein the names and addresses of the persons 
 by whom, and the places where, and the dates at, and the 
 manner in which the process of, &c., was known and publicly 
 practised in England before the 8th March, 1864 \_date of Utters 
 'patent'], and that in default thereof the words from, and after 
 the words " in a dry state," in the Gth paragraph of the state- 
 ment of defence, which had been delivered in this action, to 
 the end of the said Gth paragraph, should be struck out ; and 
 in that case no evidence should be given by the defendants on 
 the trial of this action of such jjrior publication, and that 
 defendants should pay to the plaintiffs their costs of the appli- 
 cation, to be taxed, &c., be varied, and as varied be as 
 follows : — Let the defendants on or before the deliver to 
 
 the plaintiffs further and better particulars of objections under 
 the paragraph of the statement of defence on which they 
 mean to rely at the trial, stating therein the place or places at 
 or in which, and in what manner, the process of printing upon 
 tin or metal surfaces by direct impression by means of damp 
 stones is alleged to have been used or published prior to the 
 day of , 1864 {p). 
 
 17. Order for Liberty to Amend Particulars of 
 Objections by adding Fresh Objections ufon terms. 
 
 Let the plaintiff, within six weeks from the date of this 
 order elect whether he will discontinue this suit, and if the 
 plaintiff shall elect to discontinue this suit, and shall give 
 notice thereof to the defendants within six weeks from the 
 date of this order, refer it to the taxing master to tax the 
 defendants their costs up to and including the 23rd February, 
 1875 {delivery of the original particulars of ohjection) , and to tax 
 
 {■p) Fhnvcr v. Lloyd, C.A., 2iid 17. Varying order of Y.-V. V>., 
 August, 1876, A. 1523 ; 25 W. R. 6th July, 1876, A. 1252. 
 
 I I 2 
 
484 APPENDIX D. 
 
 the plaintiff's costs of this suit subsequently to the said 23rd 
 February, 1875, to the date of this order, and the taxing 
 master is to set off the costs of the plaintiff and of the 
 defendants to be so respectively taxed, and certify to which of 
 them the balance after such set-ofp is due, and let such balance 
 be paid by the party from whom, to the party to whom the 
 same shall be certified to be due. And if the plaintiff shall not 
 give notice to the defendants of his discontinuance of this suit 
 within the time aforesaid let the defendants be at liberty to 
 add to the particulars of objections to the validity of the 
 plaintiff's letters patent, &c., which have been already delivered 
 by the defendants, the following further objections to be relied 
 on by the defendants at the hearing of this cause, viz. {par- 
 ticulars of new oljecUons proposed to ie introduced hy amend- 
 ment). And let defendants, Monies, &c., Co. pay to the 
 plaintiff, A. F. Baird, his costs of this application to be taxed, 
 &c., liberty to apply {q). 
 
 18. Interrogatories. 
 Interregatories may be delivered in the common form, sub- 
 ject to the Eules of 1883, by either party, notwithstanding 
 the delivery of particulars. Enquiry may be made by the 
 plaintiff as to the names and addresses of the persons by whom 
 prior user is alleged to have been made as well as the places 
 where the prior user has taken place (r). 
 
 19. Order for liberty to apply for Leave to amend 
 Specification while Action pending. 
 That the plaintiff be at liberty to apply to the Patent Office 
 for leave to amend his specification on which his letters patent 
 of the r2th day of February, 1879, No. 558 in the statement 
 of claim mentioned, were granted, and his specification on 
 which his letters patent of the 9th day of June, 1880, No. 2333 
 in the statement of claim mentioned, were granted by way of 
 
 (g) See Baird v. Monies, d-c, Co., {r) Bircli v. Mather, L. R., 22 
 
 L. K. 17 Ch. D. 139 («)• Ch. D. 629 ; see p. 303 et seq. 
 
FORMS. 485 
 
 disclaimer, provided that the specifications as amended shall 
 not be receivable in evidence in this action. And the costs of 
 and occasioned by any such application of the plaintiff shall be 
 the defendant's costs in any event. And it is ordered that the 
 costs of this motion shall be costs in the action. 
 
 20. Order for Reference under Sect. 57 of the 
 Judicature Act, 1873. 
 
 [Fonnal parts. ^ 
 
 Upon hearing counsel for the plaintiff, and for the defendant 
 [or This cause coming on for trial], It is ordered that the fol- 
 lowing questions 
 
 1. As to whether the invention, the subject of his letters Novelty. 
 
 patent of the day of , was or was not, at the 
 
 date of the said letters patent, new as to the public use 
 and exercise thereof within this realm ; 
 
 2. Whether the plaintiff" was the true and first inventor of First 
 
 the said invention ; iuventor. 
 
 3. Whether the specification of the said letters patent in the Sufficiency of 
 
 pleadings mentioned does or does not particularly de- ^pecifacation. 
 scribe the nature of the said invention, and in what 
 manner the same is to be performed pursuant to the 
 proviso in that behalf contained in the said letters 
 patent ; 
 
 4. Whether the defendant has, or has not, infringed the said Infiiugement. 
 
 letters patent, in or by any or either, and which of the 
 apparatus manufactured by him, as in his statement of 
 defence delivered in this action mentioned, or in any 
 other manner ; 
 
 5. Whether the iindisclaimed portions of the said alleged Disclaimer. 
 
 invention were used in the United Kingdom at the 
 
 date of the said letters patent ; 
 be referred, to be tried before one of the official referees [or a 
 special referee], who shall have all the powers as to certifying 
 and amending of a judge at nisi prius, and shall make his 
 report of and concerning the matters ordered to be tried as 
 aforesaid, pursuant to the statute ; and it is further ordered 
 that the said referee shall be at liberty, if he shall think fit, to 
 
486 
 
 APPENDIX D. 
 
 examine the said parties to this action, and their respective 
 witnesses upon oath or affirmation, and that the said parties do 
 and shall produce before the said referee all books, deeds, papers, 
 and writings in their or either of their custody or power, re- 
 lating to the matters ordered to be tried as aforesaid. And it 
 is further ordered, that neither the plaintiff nor the defendant 
 shall bring or prosecute any action against the said referee, or 
 against each other of and concerning the matters ordered to 
 be tried as aforesaid. And that if either party shall by affected 
 delay, or otherwise, wilfully prevent the said referee from 
 making his report, he or they shall pay such costs to the other 
 as the said Court, or any judge thereof, shall think reasonable 
 and just. And it is further ordered, that in the event of the 
 said referee declining to act, or dying before he shall have 
 made his report, the said parties may, or if they cannot agree, 
 one of the judges of the said High Court may, upon application 
 of either side, appoint a new referee. 
 
 Unilertaking 
 to be bound. 
 
 Delivery of 
 obiectioii.'-. 
 
 •21. Order for Trial op a representative Case, for 
 the purpose of determining the question of 
 Validity. 
 
 And the plaintiff, F., by his counsel, undertaking to be bound 
 by the result of the trial hereinafter directed, and the said 
 above-mentioned defendants, by their respective counsel, ad- 
 mitting that the letters patent in the pleadings mentioned are 
 duly vested in the plaintiff, and consenting to be bound by the 
 result of the trial hereinafter directed, and that the said trial 
 shall be conducted by B., G., B. and W., four of the above- 
 named defendants, on behalf of, and as representing all the 
 defendants in the said suit ; let, by consent of all the said 
 several defendants in the above-mentioned suits, the said 
 defendants, B., G., B. and W., be the defendants in the said 
 trial, and let the said defendants, B., G., B. and W., on or 
 before the day of , pursuant to the statute, deliver to 
 the plniutiflf their objections to the validity of the said patents ; 
 and let, l>y the consent of the plaintiff and the said defendants, 
 the follovvmg question be tried before his lordship without a 
 jui}, I'lat is to say, whether the patent in the pleadings men- 
 
FORMS. 487 
 
 tioned, dated, &c., is a valid patent ; and the plaintiflF is to 
 proceed to such trial on such day, &c. Adjourn the considera- 
 tion of the costs on the several applications to the judge and 
 to his lordship until after the said trial ; and let all further 
 proceedings in the above-mentioned causes be stayed until after 
 the said trial, and any of the defendants in any suits com- 
 menced by the plaintifF with respect to infringement of the 
 said patent are to be at liberty to apply to be made parties to Liberty to 
 this order (s). ^^Pi'y- 
 
 22. Final Judgment — Recital of Evidence — Injunction 
 — Inquiry as to Damages — Order for Destruction 
 — Costs as betv^^een Solicitor and Client — Liberty 
 TO Apply. 
 
 The following Order was settled hij the late Master of the Rolls, 
 Sir George Jessel, personallg, in the case of Plimpton v. 
 Spiller, reported L. R. Q Ch. D. U2. 
 
 In the High Court of Justice. 1876. P. 69. 
 
 Chancery Division. 
 
 Thursday the 19th day of April, 1877. 
 Master of the Eolls. 
 Mr. Clowes, Eeg. 
 
 Between J. L. P Plaintiff, 
 
 and 
 A. F. S. and T. C. . . Defendants. 
 This action, coming on for trial the 11th and 12th days of 
 April, 1877, and this day before this Court, in the presence of 
 counsel for the plaintiff and the defendants, upon hearing an 
 order, dated the 4th August, 1876, an affidavit of A. F. S. 
 filed the 15th March, 1876 ; an affidavit of J. I., filed the 16th Evidence 
 February, 1877, the bill, answers, orders, record for trial, and 
 the certificate of the Master of the Rolls, the judge before Certificate 
 whom the questions of fact were tried, that the validity of the 
 letters patent of the 25th day of August, 1865, granted to 
 A. Y. N., and numbered 2190 hereinafter mentioned, came in 
 
 (s) Foxwcll V. Bradbury, <£r., 80 other titles, L.C., 7th December, 1863, 
 A. 2391. 
 
488 
 
 APPENDIX D. 
 
 Proof of 
 breaches. 
 
 Injunctiou. 
 
 question in the cause of P. v. M., 1875, P. 39, and upon hear- 
 ing the said letters patent, and a certified printed copy of the 
 specifications and drawings, filed under the said letters patent, 
 and the indenture of assignment, dated the 10th day of 
 January, 1866, and made between the. said A. V. N., therein 
 described, of the one part, and the plaintiff", J. L. P., of the 
 other part, and registered in the Great Seal Patent Office on 
 the day of the date thereof, the printed shorthand note of the 
 evidence taken orally before this Court,, on the trial of the said 
 action of P. v. M., 1875, P. 39 ; of A. V. N., F. J. B., J. I., 
 J. L. P., E. A. C, R. C. M., W. W. H. and E. J. C W. and 
 the exhibits marked 1, 2, and 4, then produced ; the examina- 
 tion of H. J. A., W. B. P., W. G. A., A. F. S., J. I., T. M. W., 
 G. B., C. P. B. S., E. E., W. S. M. and H. L., taken orally 
 before this Court, on the 11th, 12th, and 19th days of April, 
 1877, and the exhibits marked : 1. 2. 4. A. B. C. D. E. F. G. 
 H. I. L. M. N. 0. P. E. E. 2. S. 1. S. 2. E. E. 1. E. E. 3. W. 
 S. M. 1. W. 1. and W. 2, and the two catalogues and donation 
 book produced to W. G. A., and the volume of the year 1863, 
 of Jewitt's Book of Illustrations to the Report of the American 
 Commissioners of Patent, and the " Scientific American " for 
 the years 1863 and 1865 ; the records from the Court of 
 Bankruptcy of an assignment, dated the 11th August, 1865, 
 by W. S. M., for the benefit of his creditors, and of a composi- 
 tion deed by the said W. S. M., in the year 1869, and what 
 was alleged by counsel on both sides, and this Court being of 
 opinion that the plaintiflF has proved the breaches complained 
 of, in the particulars of breaches delivered by him in this 
 actioD, doth order that an injunction be awarded to restrain the 
 defendants, their servants, agents, and workmen during the 
 continuance of the letters patent, granted to A. V. N., dated 
 the 25th day of August, 1865, and numbered 2190, and any 
 extension of the term thereof from using, or exercising, or 
 causing or permitting to be used or exercised, the invention 
 described in the hereinbefore mentioned specification and draw- 
 ings, filed under the said letters patent, and from selling, 
 letting for hire, or making any profitable use, or permitting 
 the sale, letting for hire, or profitable use of any roller or 
 runner skates nut made by the plaintiff, or his licensees, and 
 having applied thereto rollers or runners in manner described 
 
FORMS. 489 
 
 and for the purposes mentioned in the said specification, or 
 fitted with any apparatus for causing the skate to run in a curved 
 line, in the manner described in the said specifications and 
 drawings, or differing therefrom only colourably, and by the 
 substitution of mere mechanical equivalents, and it is ordered Mechauical 
 that it be referred to the official referee in rotation, to inquire equivalents. 
 what sum of money is fit to be awarded to the plaintiff, to be Knquiry as to 
 paid by the defendants in respect of any damage sustained by " 
 the plaintiff up to the day of the date of this order, from the 
 manufacture, sale, or letting for hire, of skates, being the same 
 as the " Spiller" Skates, and "Wilson" Skates, in the plead- 
 ings in this action, and in the said order dated the 4th August, 
 187G, mentioned, or of any other skates made in infringement of 
 the said letters patent, or otherwise from the sale, or use by the 
 defendants of the said invention, or any apparatus in imitation 
 of, or being only a colourable deviation from the said inven- 
 tion. And it is ordered, that the defendants, A. F. S. and Payment of 
 T. C, do pay to the plaintiff, J. L. P., sucli sum of money as '''™°''"*- 
 upon such inquiry shall be found fit, to be awarded to the 
 plaintiff for such compensation as aforesaid, within twenty-one 
 days after service of the official referee's report of the result of 
 the said inquiry. And it is ordered, that the defendants, Destnictiou. 
 A. F. S. and T. C, do deliver up on oath to the plaintiff, or 
 break up, or otherwise render unfit for use, all roller skates, or 
 parts of roller skates so manufactured, or let for hire by, or by 
 the order, or for the use of the defendants in infringement of 
 the said letters patent as aforesaid, which are in the possession, 
 custody, or power of the defendants, or either of them, or their, 
 or either of their, servants or agents. And it is ordered, that p^n ^^^^^^ 
 the said defendants, A. F. S. and T. C, do pay to the plaintiff, 
 J. L. P., his full costs, to be taxed by the taxing master as 
 between solicitor and client, including all costs, charges, and 
 expenses. And any of the parties are to be at liberty to apply, Liberty to 
 as they may be advised. apply. 
 
 W. C. Entered. 
 
 G. L. 
 Registrar's Office, Entering Lib. B. Seal. 
 
490 
 
 APPENDIX D. 
 
 Injunction. 
 
 Account of 
 profits. 
 
 Destruction. 
 
 Ordinary 
 
 costs. 
 
 23. Judgment for Perpetual Injunction under the 
 Patent Law Amendment Act, 1852, restraining In- 
 fringement OF Patented Skates after Trial with- 
 out Jury, with account of Sales and Profits, 
 Discovery, Delivery up, or Destruction. 
 
 Let an injunction be awarded to restrnin the defendant, his 
 servants, &c,, during the continuance of the said letters patent 
 granted to .N"., dated, &c., from using or exercising, or causing, 
 or permitting to be used and exercised the invention described 
 in the hereinbefore-mentioned specification and drawings of the 
 said N., and from selling, letting for hire, or making any pro- 
 fitable use, or permitting the sale, letting for hire, or profitable 
 use, of any roller or runner skates not made by the plaintiff or 
 his licensees, and having applied thereto rollers or runners 
 in manner described and for the purposes mentioned in the said 
 specification, or fitted with any apparatus for causing the skate 
 to run in a curved line in the manner described in the said 
 specification and drawings, or differing therefrom only colour- 
 ably and by the substitution of mere mechanical equivalents ; 
 and let an account be taken of all roller skates being the same 
 as the skates sold by the defendant to Gr., as in the pleadings 
 mentioned, or otherwise made in infringement of the said 
 letters patent, which have been manufactured, or sold, or let 
 for hire, by or by the order, or for the use or profit of the 
 defendant and also of the gains and profits made by the defen- 
 dant by reason of such manufacture, sale, or letting for hire : 
 and let the defendant within [seven] days after the service 
 upon him of the chief clerk's certificate of the result of such 
 account pay to the plaintiff the amount of such gains and 
 profits, and let the defendant forthwith upon oath deliver to 
 the plaintiff, or break up, or otherwise render unfit for use, all 
 roller skates or parts of the roller skates so manufactured or 
 let for hire, by or by the order or for the use of the defendants 
 in infringement of the said letters patent as aforesaid, which 
 are in the possession, custody, or power of the defendant, or 
 his servants or agents. Defendant to pay to plaintiff costs of 
 suit (/). 
 
 t) Pliviptonx. Malcolm-son, M.R., 28th Jean., 1876, B. 381. 
 
FORMS. 491 
 
 24. Judgment for Perpetual Injunction under the 
 Patent Law Amendment Act, 1852, restraining 
 Infringement as to Patented Articles (Pulleys) 
 
 AFTER REFUSAL OF MOTION FOR NeVV TrIAL AND FOR 
 
 Delivery up of the Articles made by Defendant 
 TO be specified by Affidavit. 
 
 Let an injunction be awarded to restrain the defendant, S., Injunction, 
 during the continuance of the letters patent, and any extension 
 of the term thereof, from using or exercising, &c., and from in 
 any manner infringing the rights and privileges granted by the 
 said letters patent ; defendant within seven days to specify by 
 affidavit what apparatus constructed or arranged according to 
 the said invention and improvements, or only colourably differ- 
 ing from those described in the said specification and drawings, 
 have been manufactured by or by the order or for the use of 
 the said defendant as in the writ mentioned, and are in the 
 possession, custody or power of the said defendant or his ser. 
 vants or agents ; defendant within [seven] days after filing Delivery up 
 such affidavit to deliver up to the plaintiffs all such pullevs or °^ ^^■'^^°^*^''- 
 apparatus (u). 
 
 25. Judgment for Perpetual Injunction under the 
 Patent Law Amendment Act, 1852, restraining 
 Infringement of Patent for Machinery after 
 Trial of Issues by a Jury — Discovery — Account 
 of Profits — Certificate for full Costs. 
 
 And the parties having, on the day of , proceeded to 
 a trial of the questions of fact directed to be tried by the order 
 dated, &c., before this court by a jury, when the jury found 
 that [finding for the pluintiff upon all the issues]. And upon pinjin^s of 
 reading the letters patent, dated, &c., and the complete speci- ji^T- 
 fication, dated, &c., in the writ respectively mentioned, an 
 affidavit of the plaintiff's, &c. [ejiter evidence^, this court doth Eviilcnce 
 order [and'] decree [and adjudge'] that an injunction be 
 awarded to restrain the defendant, 0., his agents, servants, Injunction, 
 &c., during the subsistence [continicance] of the plaintiff's 
 
 (tt) Tangye r. StoU, V.-C. W., 12th Feb., L866, B. 461. 
 
492 
 
 APPENDIX D. 
 
 Order to 
 inspect and 
 mark. 
 
 Account. 
 
 Costs. 
 
 letters patent in the writ mentioned, or any extension thereof, 
 from manufacturing, or selling, or disposing of, or using any 
 machine of the same construction as that supplied to him by 
 the W. B. Co., in the said writ mentioned, or only colourably 
 differing therefrom, or being an infringement of the plaintiff's 
 said patent, and from in any way infringing the plaintiffs said 
 patent; and it is ordered that the defendant, 0,, do, within 
 \_seven] days after service of this decree, make and file an affi- 
 davit stating what machines of the same construction as that 
 supplied by him to the said W. B. Co., including such machines, 
 are in his possession or power ; and the plaintiffs are to be at 
 liberty to inspect and mark the same for the purpose of identi- 
 fication. And it is ordered that an account be taken of the 
 profits made by the defendant by making, using, selling, or 
 disposing of the machines supplied by him to the said W. B. 
 Co., or any other machine of the same construction therewith, 
 or otherwise by an infringement of the plaintiff's patent. And 
 it is ordered that the defendant 0., do, within one month after 
 the date of the chief clerk's certificate, pay unto the plaintiffs, 
 N. and C, what shall be certified to be the amount of such pro- 
 fits. Direction for certificate that the validity of the plaintiff's 
 patent came in question. And it is ordered that the defendant, 
 0., pay to the plaintiffs their costs of this cause up to and in- 
 cluding this hearing, and their costs of the trial by jury of the 
 questions of fact directed to be tried by the said order, dated, 
 &c., including the costs of a special jury ; such costs to be 
 taxed, &c. Liberty to apply in chambers touching subsequent 
 costs, and otherwise to apply as advised {x). 
 
 26. Judgment for the Defendant. 
 
 [Formal parts as ahove.~\ 
 
 The action having on the day of been tried before 
 
 Mr. Justice [and a common or special jury of the county 
 
 of , and the jury having found a verdict for the defendant 
 on the issues] and the said Mr. Justice having ordered 
 that judgment be entered for the defendant on the issues [_cer- 
 
 {x) Nccdham v. Oxlcij, V.-C. W., 24th June, 1863, 1395. 
 
FORMS. 493 
 
 tijicafe as io particulars of objections as inform'] : therefore it is 
 adjudged that the plaintiff recover nothing against the defen- 
 dant, and that the defendant recover against the plaintiff £ , 
 for his costs of defence. 
 
 27. Certificates necessary under Sect. 29, Sub- 
 sect. 6, OF THE Patents, &c., Act, 1883. 
 
 [Form of judymeni for perpetual injunction, accounts of profits 
 and damages as ahove.'] 
 
 It is certified that the plaintiff has proved to the satis- 
 faction of the Court the breaches mentioned in the particulars 
 of breaches delivered by him, and numbered respectively, 1, 2, 
 
 3, 4, and 5, and that the particulars numbered 6 and 7 were, 
 under the circumstances of the case, reasonable and proper. 
 
 \_Form of judgment for defendant as above.] 
 
 It is certified that the defendant has proved to the satisfac- 
 tion of the Court the objections mentioned in the particulars of 
 objections delivered by him, and numbered respectively 1, 2, 3, 
 
 4, and 5, and that the objections numbered 6 and 7 were, under 
 the circumstances, reasonable and proper. 
 
 28. Certificate of Validity under Sect. 31 of the 
 
 Patents, &c., Act, 1883. 
 I hereby certify, pursuant to the 31st section of the Patents, 
 Designs, and Trade Marks Act, 1883 (46 & 47 Yict. c. 57), 
 that upon the trial of this action, the validity of the letters 
 patent, in the pleadings mentioned, dated the 28th November, 
 1878, and numbered 4,847, granted to F. J. C, amended by 
 disclaimer allowed 12th November, 1884, and now vested in 
 the Edison and Swan United Electric Light Co., Limited, came 
 into question. 
 
 Dated this 16th day of July, 1888. 
 
 E. E. Kay. 
 
494 
 
 APPENDIX D. 
 
 II.— FORMS IN AN ACTION TO RESTRAIN 
 
 THREATS. 
 
 29. Indorsement on Writ. 
 
 The plaintiff's claim is : — 
 Injunction. 1. For an injunction restraining the defendant from, by cir- 
 
 culars, advertisements, or otherwise, threatening to take legal 
 or other proceedings against persons manufacturing, using, or 
 selling an alleged invention of the defendants, to wit. 
 The said threats being to the prejudice of the plaintiff. 
 
 2. For damages in respect of the injury sustained by the 
 plaintiff by reason of the circulars, advertisements, or other 
 threats of the defendant to take legal or other proceedings 
 against persons manufacturing, using, or selling the said 
 alleged invention. 
 
 A particular 
 circular. 
 
 30. Interlocutory Injunction to Restrain Threats. 
 Upon motion &c., let an injunction be granted to restrain the 
 defendant personally, or by his servants, agents, and workmen, 
 by circulars, letters, or otherwise, from threatening any person 
 with legal proceedings or liability in respect of the manufac- 
 ture, use, sale, or purchase of a certain tap union of which the 
 plaintiff was the patentee, and from interfering by such threats 
 or otherwise with the manufacture, use, sale, or purchase of 
 the plaintiff's invention {y). 
 
 \_Another Form.'] 
 
 Upon motion, &c., let an injunction be granted to restrain the 
 defendant personally or by his servants, agents, and workmen, 
 until further order, from issuing the circular dated 15th 
 December, 1888, and from, by means of circulars, letters, or 
 otherwise, threatening any person with proceedings or liability 
 in respect of the following papers manufactured by the 
 
 plaintiff (2). 
 
 Other forms in an action to restrain threats are similar to 
 those given under the heading of " Forms in an Action for 
 Infrinsrement." 
 
 {y) Challendcr v. Royic, L. R. 
 36 Ch. D. 425. 
 
 {z) Colley V. Rart, 6 P. 0. R. 17. 
 
FORMS. 495 
 
 in.— FOEMS IN A PETITION FOR REVOCATION. 
 31. Petition for Revocation. 
 
 In the High Court of Justice. 
 
 Cliancciy [or Queen's Bench] Division. 
 In the matter of letters patent granted to of , dated 
 
 , and numbered , and in the matter of the Patents, 
 
 Designs, and Trade Marks Act, 1883, sect, 26. 
 
 To Her Majesty's High Court of Justice. 
 The humble petition of Sir , Her Majesty's Attorney- 
 
 General in England (or Ireland, or Lord Advocate in Scotland) 
 (or other person authorised to petition by sect. 26, sub-sect. 4, 
 of the Patents, &c.. Act, 1883) (a). 
 Sheweth as follows : — 
 
 1. Fowr petil'ioner is duly aidlwrised lij Her i/fyVs/^'s Authority. 
 Attorney- General in England {or Ireland, or Lord Advocate in 
 Scotland) (b). 
 
 1. Letters patent, dated the ,18 , have been granted Grant, 
 to , for [title of invention^. The said letters patent were 
 sealed on the 
 
 2. On the said [date of letters jjatent^, the said [jiame o/ Not first 
 grantee'] was not the true and first inventor of the said invention, inventor. 
 
 3. The said letters patent were obtained by the said [name Obtained in 
 of grantee'], in fraud of the rights of your petitioner, who was ^''^l"? °^ 
 the true and first inventor of such invention, [or, in fraud of 
 
 the rights of J. S., who was the true and first inventor 
 of the said invention. The said J. S. died on the 
 day of , intestate, and letters of administration of his 
 
 estate were granted to your petitioner out of the Probate Divi- 
 sion of this Honourable Court, on the day of ]. 
 
 4. The said invention was not at the time of the date of the Invention not 
 said letters patent a new invention as to the public use and ^^^' 
 
 (a) If tlie petition be presented {b) This clause must be inserted 
 
 by any person under sect. 26, sub- where the petition is presented 
 
 sect. 4 (c), (d), or (e), the name under sect. 26, sub-sect. 4 (b) : 
 
 and address, and description of the Glazhrook v. Gillatl, 9 Beav, 492. 
 petitioner, niust apjiear. 
 
496 
 
 APPENDIX D. 
 
 Had been 
 used by 
 petitioner. 
 
 Not subjecti 
 matter for 
 
 patent. 
 
 exercise thereof within this realm, for the reasons set forth in 
 the particulars of objections herewith (c). 
 
 5. Your petitioner [or persmi under or through whom he 
 claims an interest in any trade, bicsiness, or manufacture'] had 
 prior to the date of the said letters patent publicly manufac- 
 tured, used, or sold within this realm the alle2;ed invention (or 
 a part of the alleged invention, to wit, such part as relates to, 
 &c., &c.), in respect of which such letters patent were granted 
 as aforesaid. 
 
 6. The said alleged invention was not any manner of new 
 manufacture, the subject of letters patent and grant of privi- 
 lege within sect. 6 of the Statute of Monopolies. 
 
 Your petitioner humbly prays that the said letters patent may 
 be revoked, or that such other order may be made in the 
 premises as to this honourable Court shall seem meet. 
 And your petitioner will ever pray. 
 
 It is intended to serve this petition on [d) , 
 Other forms relevant to a Petition for Eevocation will be 
 
 found among the Forms in an Action for Infringement. 
 
 Previous 
 proceedings. 
 
 IV.— FORMS USED IN OBTAININa THE FIAT OF 
 THE ATTORNEY-GENERAL. 
 
 32. The Memorial of the Petitioner (e). 
 
 In the matter of the Patents Acts, 1883 — 88, 
 
 and 
 
 In the matter of letters patent granted to A. B., for an 
 
 invention entitled No. of 18 . 
 
 1. By judgment delivered 17th March, 1893, in an action in 
 
 Her Majesty's High Court of Justice, Queen's Bench (or 
 
 (c) Any objection -which can im- 
 peach the validity of a patent is a 
 ground for revocation, and should 
 be set forth in the petition. See 
 p. 267 et seq. 
 
 (d) Here insert the names and 
 addresses of all persons who, either 
 as original grantees or by assign- 
 ment, are registered under sect. 23 
 of the Patent, &c., Act, 1883, as 
 interested in the patent. 
 
 A copy of the petition must be 
 
 served personally, unless an order 
 has been obtained for substituted 
 service. The original must be 
 shown if demanded. An order may 
 be obtained for service out of the 
 jurisdiction ; see Daniell's Chancery 
 Practice. 
 
 (c) The memorial must be drawn 
 upon Judicature paper ; see practice 
 on obtaining fiat of A.-G. p. 269, 
 ante, 
 
FORMS. 497 
 
 Chancery) Division, in which the said A. 13. was plaintiff and 
 your memorialist was defendant, the claim in the said action 
 being to restrain infringement of the said letters patent and 
 for damages. The Right Hon. Lord Justice Kay held that 
 the said letters patent were void, for that the specification dis- 
 closed no subject matter for letters patent, and for that the 
 invention in the specification relating thereto described and 
 claimed had been anticipated by one Louis Edward Atkins 
 between October 0th and November 25th, 1882. And also by 
 a specification filed by your memorialist in the Patent Office, 
 No. of 18 , and judgment was given in the said action 
 for the defendant with costs. And upon appeal of the plaintiff 
 from the said judgment to the Court of Appeal, the appeal was 
 dismissed with costs without calling upon the counsel appear- 
 ing for the respondent (your memorialist). 
 
 2. A large number of the manufacturers of drop down small Licensees, 
 arms in the United Kingdom are licensees of the said letters 
 patent, and are therefore estopped from denying the validity of 
 
 the said letters patent. 
 
 3. Your memorialist is the grantee of letters patent, No. Grantee of 
 
 of 18 , for an invention entitled " Improvements in Breech- ^^^tters Patent, 
 loading Fire arms," the infringement alleged in the herein- 
 before-mentioned action (which was admitted) consisted in 
 manufacturing ejecting mechanism for guns in accordance 
 with the specification to tlie said letters patent of 18 , and it 
 is impossible to use your memorialist's said invention of 18 
 without infringing the said letters patent of A. B., assuming 
 the said letters patent to be valid. 
 
 4. Your memorialist is seriously hampered in his trade by Hampered in 
 reason that no persons who are estopped as aforesaid from ^'^^^^^ 
 denying the validity of the said letters patent of A. B. can 
 purchase from your memorialist gun actions and mechanism 
 
 made in pursuance of his said letters patent of 18 
 
 5. The following documents are sent herewith : — Documents. 
 
 The specification of A. B. No. of 18 . 
 
 C. D. No. of 18 . 
 
 No. of 18 . 
 
 Copy writ, pleadings, and objections in the action. 
 Copy judgment of Lord Justice Kay, 17th March, 1893. 
 „ „ of the Court of Appeal, 1st August, 1803. 
 
 T. K K 
 
498 APPENDIX D. 
 
 Application. 6. YouT memorialist humbly requests you will authorise him 
 
 to petition the Court for revocation of the said letters patent 
 ofA. B. No. of 18 . 
 
 33, — Declaration of Applicant verifying Statements in 
 HIS Memorial to Her Majesty's Attorney-General (/). 
 
 In the matter of the Patents, Designs, and Trade-Marks Acts, 
 
 1883—1888, 
 
 and 
 In the matter of letters patent granted to for an invention 
 
 entitled No. , dated 
 
 I , of , do solemnly and sincerely declare as 
 
 follows : — 
 
 That the several statements contained in the paper writing 
 now produced and shown to me and marked A, purporting to 
 be a memorial addressed by myself to Her Majesty's Attorney- 
 General of England {or Ireland, or Lord Advocate of Scotland) 
 are true as therein set forth. 
 
 And I make this solemn declaration conscientiously believing 
 the same to be true and by virtue of the provisions of the 
 Statutory Declarations Act, 1885. 
 Declared at 
 
 31. — Declaration by Applicant that no Proceedings 
 
 ARE PENDING {g). 
 
 [Title as before.'] 
 
 I, A. B., of , do solemnly and sincerely declare as 
 
 follows : — 
 
 That the questions proposed to be raised by the petition and 
 particulars of objections upon which revocation of the said 
 letters patent is sought, are not and cannot be raised in any 
 legal proceedings now pending in the United Kingdom. 
 
 (/) On Judicature paper. {g) On foolscap. 
 
FOUMS. 499 
 
 35. — Certificate of Solicitor (h). 
 
 In the matter of the Patents, Designs, and Trade-Marks Acts, 
 1883—1888, 
 
 and 
 In the matter of letters patent granted to for an invention 
 entitled No. , dated 
 
 Between A. B Petitioner, 
 
 and 
 
 C. B Eespondent. 
 
 I, , of , solicitor for the above-named petitioner, do 
 hereby certify that the said petitioner is a fit and proper person 
 to be a petitioner in this matter, and that he is competent to 
 answer the costs of all proceedings in connection with the said 
 petition. 
 
 v.— FOEMS IN PETITION FOPt EXTENSION OF 
 TERM OF PATENT. 
 
 36. — Advertisement of Intention to Present Petition. 
 
 In the Privy Council. 
 
 In the matter of letters patent granted to , of , and 
 bearing date the day of ,18 , and numbered 
 
 Notice is hereby given that it is the intention of to 
 present a petition to Her Majesty in Council praying that the 
 term of the said letters patent may be extended. And notice 
 is hereby further given that on the day of next, or 
 
 on such subsequent day as the Judicial Committee of Her 
 Majesty's Privy Council shall appoint for that purpose, appli- 
 cation will be made to the said committee that a day may be 
 fixed for hearing the matter of the said petition, and any 
 person or persons desirous of being heard in opposition to the 
 said petition must enter a caveat to that effect in the Privy 
 Council on or before the said day of next. 
 Dated this day of ,18. 
 
 Solicitor for the petitioner. 
 
 (/(.) Ou foolscap. 
 
 K K 2 
 
500 
 
 APFE.NDIX D. 
 
 37. — Caveat. 
 
 In the Privy Council. 
 
 In the matter of letters patent granted to , of , and 
 bearing date the day of , and numbered 
 Caveat issued on behalf of 
 Let nothing be done in reference to the above-mentioned 
 patent without due notice to 
 
 Dated this day of , 18 . 
 
 Solicitor for 
 
 Patent held 
 invalid in a 
 court of law. 
 
 Patent 
 revoked. 
 
 Want of 
 
 novelty. 
 
 "Want of 
 utility. 
 
 Denial of 
 
 merit. 
 
 Title of 
 petitioner. 
 
 38. — Notice of Objections to Extension of Term. 
 
 In the Privy Council. 
 
 In the matter of letters patent granted to , of , and 
 bearing date the day of ,18 , and numbered 
 
 In the matter of the petition of for an extension of the 
 
 term of the said letters patent. 
 
 Notice is hereby given of the several grounds of the objec- 
 tion of to the granting of the prayer of the said petition, 
 that is to say : 
 
 1. The said letters patent are null and void, and a verdict 
 was given against the validity of the said letters patent in a 
 certain cause in the Court of , wherein the petitioner was 
 plaintiflP and defendant. 
 
 2. The said letters patent were repealed by the judgment of 
 the Court of , in a petition for revocation presented 
 
 by . 
 
 3. The alleged invention was not new at the date of the said 
 letters patent. 
 
 4. The alleged invention is of no use to the public, or not of 
 so much public utility as to be a sufficient consideration for 
 any prolongation of the term granted by the said letters 
 patent. 
 
 5. The said petitioner does not possess sufficient merit to 
 entitle him to a prolongation of the term granted by the said 
 letters patent. 
 
 G. The said petitioner is not entitled to (the whole of) the 
 
FORMS. 501 
 
 privilege granted by the said letters patent (by assignment or 
 otherwise). 
 
 7. The petitioner has been sufficiently remunerated and Remmieration. 
 rewarded for all his expenses, labour, and ingenuity respecting 
 
 the said invention. 
 
 8. If the petitioner has failed to obtain a sufficient amount Negligence of 
 of remuneration or reward he has only failed to do so in conse- petitioner. 
 quence of his own gross negligence. 
 
 9. The petitioner has permitted infi'ingements of the said Negligence in 
 
 letters patent, and has not taken any proceedings to restrain restraining 
 
 ^ ^ . '■ infringements. 
 
 such mnnngements. 
 
 10. The specification of the said letters patent does not insufficiency of 
 sufficiently describe the nature of the invention or the manner specification. 
 in which the same is to be performed. 
 
 11. The allegations contained in the said petition are not Denial of 
 true in substance or in fact. statements in 
 
 petition. 
 
 Dated the day of , 18 , 
 
 Solicitor for 
 
 39. Adveetisement of day appointed for hearing 
 Petition. 
 
 {Title as above.) 
 Notice is hereby given that their lordships, the Judicial 
 Committee of the Privy Council, have appointed the day 
 
 of , 18 , at half-past ten o'clock in the forenoon, for 
 hearing the matter of the above petition. 
 
 Solicitor for the plaintiff. 
 
502 
 
 APPENDIX D. 
 
 Invention. 
 
 Grant. 
 
 Specification. 
 
 Advertise- 
 zuent& 
 
 40. Form of Petition for Extension. 
 
 In the Privy Council. 
 
 Presented the day of ,18 . 
 
 To the Queen's most excellent Majesty in Council. 
 In the matter of letters patent granted to formerly of 
 
 , now of , for the invention of , dated the 
 
 day of ,18 , and numbered 
 
 The humble petition of the above-named , formerly of 
 
 , now of 
 Sheweth : — 
 
 1. That your petitioner, previously to the grant of the 
 letters patent hereinafter mentioned, invented, after consider- 
 able personal application and cost, " A new or improved , 
 constructed as a " (hereinafter called " the said inven- 
 tion"), which invention was and is of great utihty, and 
 greatly beneficial to the public. 
 
 2. That your Majesty was graciously pleased by letters 
 patent under the Great Seal of the United Kingdom of 
 Great Britain bearing date the day of , 18 , to 
 grant unto your petitioner, his executors, administrators, and 
 assigns, the sole privilege and authority to use the said inven- 
 tion within the said United Kingdom, the Channel Islands, 
 and Isle of Man, for the term of fourteen years from the date 
 of the said letters patent. 
 
 3. That your petitioner, in compliance with a proviso in 
 the said letters patent contained, duly made and caused to 
 be filed in the Patent Ofiice within nine calendar months 
 from the date of the said letters patent, an instrument in 
 writing under his hand and seal, particularly describing and 
 ascertaining the nature of his said invention, and the manner 
 in which the same was to be performed. 
 
 {Here must he set out in detail all the facts of the case upon 
 the lines indicated in the chapter upon Petition for Extension.) 
 
 That your petitioner humbly submits that under the circum- 
 stances of the case an exclusive right of using and vending the 
 said invention for the further period of seven years will not 
 sufficiently reimburse and remunerate your petitioner. 
 
 That your petitioner has given public notice by advertise- 
 ments caused to be inserted the requisite number of times in 
 
FORMS. 503 
 
 the London Gazette, and in other newspapers, pursuant to the 
 statutes in that case made and provided, that it is his inten- 
 tion to apply to your Majesty in Council that the 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 peti- 
 tioner into your Royal consideration, and to refer this 
 petition 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 Majesty will be graciously pleased 
 to grant to your petitioner a prolongation of the term by 
 the said letters patent granted for the additional term of 
 fourteen years or for such other term as to your Majesty 
 shall seem fit. 
 And your petitioner will ever pray. 
 
504 
 
 APPENDIX E. 
 
 EXAMPLES OF SPECIFICATIONS AND 
 CLAIMS. 
 
 PROVISIONAL AND COMPLETE SPECIFICATION TO 
 A PATENT FOR A NEW MECHANICAL APPLI- 
 ANCE AND MODE OF OPERATING— A VERY 
 GENERAL CLAIM. 1885. No. 6205. 
 
 Note. — These were the specifications contested in Sidclell y. 
 Vickers, L. R. 39 Ch. JD. 92, decision of KeTcetvich, J., 
 affirmed ly the Court of Appcat, Cotto?i, Fry and Lopes, 
 L.J J., and the House of Lords, L. R. 15 App. Cas. 496, 
 holdiny that the provisional spied fie at ion was sufficient and 
 that the claim was sufficient having regard to the tody of the 
 complete specification and to the particular snhject-matter of 
 the invention. — Two sheets of draicings which accompany the 
 specification are not given here (/). 
 
 Title. PeOVISIONAL SPECIFICATION. An ImPEOVED MECHANICAL 
 
 Appliance foe Woeking oe Opeeating on Laege 
 Provisional FoEGiNGS IN Ieon OE Steel. — Tliis Invention relates to the 
 speci ca ion, coi^gtruction and application of an improved and more simple 
 and effective mechanical appliance or means, for working or 
 operating on large forgings in iron or steel, being such forg- 
 ings as are usually made under a hjdraulic forging press or 
 machine. 
 
 My improved appliance consists of a horizontal bar or bars 
 made of suitable metal and fitted with suitable pulleys and 
 hooks, which bar or bars can be placed or fitted on either side 
 of the crosshead of the forging press, or through the " pellet " 
 or key way. 
 
 Clips or grips or ratchets are conveniently arranged so as to 
 fix on or hold the ingot or forging and hooked on the ratchet 
 or clip or grip ; and in operating, when the press lifts up or 
 
 (z) It would not be wise to treat probably the extreme limits to 
 this as a model in ijrej)aring specili- which the courts will go in support- 
 cations, it is given here as bhowing ing a patent. 
 
EXAMPLES OF SPECIFICATIONS. 505 
 
 IS raised, the ingot or forging will be turned as much as 
 required at every stroke or operation of the press. 
 
 The crank bar of the press in connection with the wheel 
 and endless chain thereof will raise the forging from the anvil 
 at the same time that the clip or grip or the ratchet is turning 
 the forging, the ratchet being suitably fixed for turning the 
 crane wheel over which the endless chain passes. 
 
 The ratchet has a chain attached to the crane girder which 
 will travel along a horizontal bar suitably fixed for the purpose, 
 and will turn over the ingot or forging in the furnace. 
 Dated this 20th day of May, 1885. 
 
 Complete Specification. — This invention relates to the Complete 
 
 ,,. ixi.- J Ti- jf • J specification. 
 
 construction adaptation and application oi an improved more 
 simple and effective mechanical appliance or means for working 
 or operating on large forgings in iron or steel, which forgings 
 are such as are usually made under a hydraulic forging press 
 or machine or a steam hammer ; and in order that the carrying 
 out of my invention in practice may be fully understood, I have 
 illustrated it on the accompanying two sheets of explanatory 
 drawings, and have marked the same with letters of reference 
 corresponding with those in the following description thereof, 
 that is to say : — 
 
 Figure 1, on Sheet 1, is an end elevation or view, and Description 
 Figure 2, is a front or face view of one arrangement of my °f ^'"^^^^ss- 
 mechanical appliance for working large forgings. 
 
 A, is the hydraulic forging press or machine. G, is the 
 endless chain which is attached to the crank bar of the press, 
 and which passes over the wheel W, and under the ingft or 
 forging or mandril F, which is being operated upon by the 
 press A. 
 
 The wheel W, is held in position by means of the crane 
 block hook />, and shackle or bridle a ; the crane with the 
 horizontal bar and carriage are not shown on the drawings. 
 
 On or to the centre pin of the wheel W, is attached a double 
 or single lever L, having pawls or ratchets R (one only being 
 shown on the drawings) working on pins. The ratchets 
 engage in teeth provided for them on the wheel W. — When 
 the endless chain G, is slack the ratchet lever L, falls or is 
 forced in towards the centre so as to crank or bend the chain 
 
506 APPENDIX E. 
 
 to any required extent, and when the weight of the forging 
 comes on the chain it tends to straighten it, and the pressure 
 on the end of the lever L, is transferred to the pawl or ratchet 
 E, and thence to the teeth of the wheel, which will cause it to 
 rotate on its axis to the desired extent. An eye or other 
 convenient appliance E, is attached to the end of the ratchet 
 lever L, in order to work the ratchet and rotate or turn the 
 wheel independently of the endless chain G. 
 
 Figure 3, on Sheet 1, shows the appliance arranged and 
 applied in another manner ; the centre pin of the wheel is con- 
 nected with a cranked bar K, or by other convenient means to 
 the pellet or crosshead of the press, whereby the wheel W, and 
 endless chain G, are simultaneously raised when the pellet is 
 lifted. The chain when slack is cranked or bent as before 
 mentioned, and when the pellet rises the ingot or forging rises 
 with it, and the consequent straightening of the chain forces 
 round the wheel W, by means of the ratchet lever (not shown 
 in this Figure) and so turns over the forging at the same time 
 that it rises from the anvil ; or it can be made to turn the 
 forging by means of the eye provided at the end of the ratchet 
 lever L, and thus this arrangement of the appliance can be 
 made either automatic or self-acting, or it can be worked by 
 steam or other powder independently of the appliances shown at 
 Figures 1, 6, and 7 ; for the working of the forging under the 
 steam hammer. 
 
 This appliance can likewise be used to turn over the ingot 
 or forging when in the furnace, and it is operated by the crane 
 as an automatic appliance, or when suspended the forging can 
 be turned by working the ratchet lever L, by any convenient 
 means, such as by steam or other power. 
 
 In the combination and arrangement of the appliance, as 
 shown at Figures 4 and 5 on Sheet 2, a horizontal bar B, is 
 provided and fixed on or through the crosshead or pellet of the 
 press, this bar carries one or more bridles c, and rollers d, with 
 one or more hooks or shackles H attached to them. An adjust- 
 able clip or ratchet grip X, is put on to the ingot or forging or 
 mandril F, and an eye e, on the end of the screw or lever/, is 
 attached to the hook or shackle H. When the pellet or cross- 
 head of the press rises, the clips or ratchet grips X, engage with 
 or grip the ingot or forging or mandril, and the leverage so 
 
EXAMPLES OF SPECIFICATIONS. 507 
 
 obtained will turn over the forging, and when the pellet 
 descends the appliance will release itself and will slip round to 
 obtain a fresh hold for the next lift. 
 
 The wheels and endless chains shown at Figures 6 and 7, on 
 Sheet 2, which are similar to those described as shown at 
 Figures, on Sheet 1, can also be used in combination with the 
 appliances represented at Figuixs 4 and 5, on Sheet 2, and the 
 forging will be lifted up from the anvil and turned over to the 
 required extent, at the same time that the press rises. 
 
 The appliance as shown at Figures 1 and 2, on Sheet 1, can 
 al so be used in combination ; in fact each arrangement of 
 appliance can be used either separately or combined, for the 
 purposes of lifting, slinging, or turning over the ingot or 
 forging when in the furnace, under the press or hammer, or 
 when being otherwise operated on. 
 
 The ratchet appliance has a chain attached to the crane 
 girder, which will travel along a horizontal bar provided and 
 fixed for that purpose, or with the crane carriage, and will turn 
 over the ingot or forging in the furnace. 
 
 Having now particularly described and ascertained the 
 nature of my said invention, and in what manner the same is 
 to be and can be performed, I here declare that I do not limit 
 myself to the precise details of my invention as hereinbefore 
 specified and as illustrated on the accompanying drawings, 
 because equivalent modifications or variations can be made in 
 such details, and quite consistent with the principles or 
 characteristic features of my invention ; and in conclusion I 
 declare that what I claim is 
 
 The general construction, adaptation or application, and the Claim. 
 combination and use of the several parts, in the whole, consti- 
 tuting improved, more simple, and efficient appliances or means 
 for working or operating on iron or steel forgings, substanti- 
 ally as hereinbefore set forth, and as illustrated on the accom- 
 panying drawings. 
 
 Dated this 19th day of September, 1885. 
 
508 APPENDIX E. 
 
 COMPLETE SPECIFICATION FOR A CHEMICAL IN- 
 VENTION.— FOUR PROCESSES.— TWO CLAIMS. 
 1878. No. 786. 
 
 Note. — This is the specification to the Patent in The Badische 
 Anilin, ^-c, Go. v. Levinstein and others, tried before Mr. 
 Justice Pearson, reforted L. R. 24 Ch. D. 156, and held good 
 suhject-matter, sufficient and worlmhle. In the Court of Appeal, 
 hy Boiven and Fry, L.JJ., Baggallay dissenting, L. R. 29 
 Ch. i). 366, to lie lad for anibiguity. In the House of Lords 
 hy Lord Halshury, L.C, Lords Herschell and Macnaghten, 
 L.R. 12 App. Cases, 710, the judgment of Pearson, J., upheld 
 on all grounds. The particulars of objections in this action, 
 after dealing with alleged instances of anticipation, tvere in 
 these terms: — 5. *' That the specification purporting to be filed 
 " in pursuance of the condition in that behalf in the said letters 
 "patent does not sufficiently describe and ascertain the nature 
 " of the said alleged invention, or in what manner the same is 
 " to be performed, and does not sufficiently distinguish which 
 " of the matters and things therein described the said John 
 " Henrg Johnson claims to be new or as being compyrised in 
 " the said letters patent, and ivhich of the same he does not so 
 " claim and admits to be old, the said specification is in other 
 " respects vague atid insufficient, and framed so as to mislead. 
 " 6. That the alleged invention claimed in the said specifica- 
 " lion is not the alleged invention for ivhich the said letters 
 "patent were granted. 7. That the said alleged invention is 
 "not useful. 8 (added at trial). The said itivention is not 
 "proper subject-matter for which letters patent can be validly 
 " granted.^'' 
 
 Comraunica- JoHN Henry Johnson, of 47, Lincoln's Inn Fields, in the 
 tion fromi countv of Middlesex, Gentleman. " Improvements in the 
 
 abroad and -, 
 
 title. production OF COLOURING MATTERS SUITABLE FOR DYEING 
 
 AND PRINTING." A Communication to me fi'om abroad by 
 Heinrich Caro, chemist to the Badische Aniline and Soda 
 Works of Mannheim in the Empire of Germany 
 
 This invention consists in the production of red and brown 
 colouring matters which in chemical language may be termed 
 
EXAMPLES OF SPECIFICATIONS. 509 
 
 the " Sulphoacids of Oxyazoiiapthaliiie " and the following pro- 
 cesses may be employed for their preparation. 
 
 First Process. — Napthylamine is converted into its diazo First process, 
 compound by the action of nitrous acid and in a manner well 
 known to chemists and equal molecules of the diazo compound 
 thus obtained and of napthol or napthylic alcohol are allowed 
 to react upon one another by preference in an alkaline solution. 
 
 According to the employment of either of the two isomeric 
 modifications of napthylic alcohol known as alpha-napthol and 
 beta-napthol the result of this operation is a precipitate con- 
 taining either of the two corresponding and isomeric modifica- 
 tions of oxyazonapthaline and which may be termed " Alpha 
 and Beta-Oxyazonapthaline " respectively. — These azo com- 
 pounds are further converted into their sulpho-acids by any 
 method now in nse for the preparation of organic sulpho-acids 
 such as for instance by heating them with fuming sulphuric 
 acid. The excess of sulphuric acid may then be removed by any 
 of the known means for effecting this purpose and the colour- 
 ing matter may be obtained in a solid state by precipitation or 
 evaporation. 
 
 In this manner brown colouring matters are obtained from 
 alpha-oxyazonapthaline and red colouring matters from beta- 
 oxyazonapthaline. 
 
 As an example of the manner in which this first process may Example, 
 be carried out I proceed as follows : — About ten pounds of 
 napthylamine are mixed with or dissolved in about two gallons 
 of concentrated or strong muriatic acid and about 100 gallons of 
 cold water and thereto an aqueous solution of nitrite of sodium 
 is added containing about 4-8 (four and eight-tenths) pounds 
 of pure nitrite of sodium or as much as will be found necessary 
 to convert the napthylamine into its diazo compound or into 
 hydro-chlorate of diazonapthaline. The solution thus obtained 
 is added to an aqueous and strongly alkaline solution of about 
 tea pounds of either of the two isomeric napthols or of mixtures 
 of the same when a dark red or brown precipitate will be pro- 
 duced consisting of oxyazonapthaline, which is to be filtered, 
 washed, and dried. In order to obtain the sulpho-acids of oxy- 
 azonapthaline I dissolve about ten pounds of tlie oxyazo-naptha- 
 line in about 20 lb. of fuming sulphuric acid containing about 
 80 per cent, of anhydrous sulphuric acid and the mixture is 
 
510 APPENDIX E. 
 
 heated at a temperature of about 100° CentigraJe for about two 
 hours or until a sample of the mixture will be found to pro- 
 duce a solution with water. — The further treatment consists in 
 removing the free sulphuric acid contained in the mixture by 
 any of the known means for effecting this purpose such as for 
 instance by neutralization with caustic lime and the colouring 
 matter may be obtained in a solid state by preference in the 
 state of a sodium salt in a manner well understood by 
 chemists, 
 g , Second Process. — Napthylamine is converted into its diazo 
 
 process. compound as before stated and equal molecules of the diazo 
 
 compound thus obtained and of the sulpho-acids of either alpha- 
 napthol or beta-napthol are allowed to react upon each other 
 by preference in an alkaline solution. In this instance red 
 colouring matters are the result of the operation and may be 
 obtained in a solid state by precipitation or evaporation. 
 
 The above said sulpho-acids of either alpha-napthol or beta- 
 napthol are produced as is well known by heating napthol with 
 excess of sulphuric acid at a temperature of about 100° Centi- 
 grade. — The resulting product is a mixture of several napthol 
 sulpho-acids and as my process may be applied not only to the 
 mono-sulpho-acids of napthol contained in that mixture but 
 also to the other sulpho-acids which result from the treatment 
 of napthol with sulphuric acid I "wish it to be understood that 
 what I consider as my invention under this second process for 
 preparing the sulpho-acids of oxy-azo-napthaline is the action of 
 diazonapthaline upon all sulpho-acids of either alpha or beta- 
 
 „ , napthol and substantially in the manner aforesaid. And as an 
 
 Example. ^ -^ . . 
 
 example of the manner in which I prefer to carry out this 
 second process I take a solution of hydrochlorate of diazonap- 
 thaline prepared from about ten pounds of napthylamiue sub- 
 stantially in the manner described in the first process and the 
 solution of the diazo compound is added to a cold and strongly 
 alkaline solution of the sodium salts of the napthol sulpho-acids 
 such as result from the treatment of about ten pounds of 
 napthol with about twenty or thirty pounds of sulphuric acid. 
 — This mixture which throughout this operation is to be kept 
 alkaline is precipitated with cliloride of sodium and the preci- 
 pitate of the colouring matter thus obtained is filtered washed 
 pressed and dried. 
 
EXAMPLES OF SPECIFICATIONS. 511 
 
 Third Process. — The sulpho acids of napthylamine are Tliird process, 
 converted into their respective diazo compounds and e(|ual 
 molecules of the diazo compounds thus obtained and of either 
 alpha-napthol or beta-napthol are allowed to react upon each 
 other by preference in an alkaline solution and substantially in 
 the manner above described in the first and second processes. 
 In this instance alpha-napthol produces brown colouring 
 matters while red colouring matters result from the employ- 
 ment of beta-napthol. 
 
 As is well known the said sulpho acids of napthylamine may 
 be produced in various ways such as for instance by the direct 
 action of sulphuric acid upon napthylamine or in a less direct 
 manner by treating nitro-napthaline with sulphite of ammonium 
 or by submitting the sulpho acids of nitro napthaline to the 
 action of reducing agents. By the said methods as is well 
 known several modifications of the sulpho acids of napthylamine 
 are obtained chiefly difiering from each other by their various 
 degrees of solubility in water some of them being nearly in- 
 soluble such as the so-called napthionic acid. 
 
 As an example of the manner in which the sulpho acids of Example, 
 napthylamine may be prepared from the sulpho acids of nitro- 
 napthaline I proceed as follows : — One part by weight of nitro- 
 napthaline is mixed with about two parts by weight of rectified 
 sulphuric acid and with about one part by weight of fuming 
 sulphuric acid containing about 80 per cent, of anhydrous sul- 
 phuric acid and the mixture is treated at a temperature of 
 about 100° Centigrade until the conversion into the sulpho- 
 acids of nitronapthaline is perfect or until a sample of the 
 mixture produces a clear solution with an excess of caustic 
 alkali. The result of this operation is then mixed with about 
 ten parts of water and treated with reducing agents such as 
 metallic iron and in a manner well known in order to obtain 
 the sulpho acids of napthylamine which may be further purified 
 in the following manner : — 
 
 The reduction of the nitronapthaline compounds being com- 
 plete the mixture is treated with an excess of milk of lime 
 filtered and the filtered solution of the lime salts is strongly 
 concentrated and decomposed by an excess of muriatic acid 
 when the difficultly soluble sulpho acids will become precipi- 
 
512 
 
 APPENDIX E. 
 
 Example of 
 subordinate 
 process. 
 
 Fourth 
 jirocess. 
 
 Alternative 
 process. 
 
 Claims. 
 
 tated and may be separated from the more soluble modifications 
 by filtration or otherwise. 
 
 As an example of the manner in which the sulpho acids of 
 napthylamine may be prepared by the direct action of sulphuric 
 acid upon napthylamine I proceed as follows : — 
 
 One part by weight of napthylamine is mixed with about 
 three parts by weight of fuming sulphuric acid containing 
 about 80 per cent, of anhydrous sulphuric acid and the mixture 
 is heated at a temperature of about 70° to 80° Centigrade until 
 a sample of the mixture produces a clear solution with an 
 excess of caustic alkali. The result of this operation is then 
 mixed with about twenty parts of water when the difficultly 
 soluble sulpho acids will become precipitated and may be 
 separated from the easily soluble modifications by filtration or 
 otherwise. All these modifications of the sulpho acids of 
 napthylamine may be converted into the corresponding sulpho 
 acids of oxyazonapthaline in the manner above described and 
 thus colours obtained differing in a similar ratio in their 
 various degrees of solubility. 
 
 Fourth Process. — The sulpho acids of napthylamine are 
 converted into their respective diazo compounds and equal 
 molecules of the diazo compounds thus obtained and of any of 
 the various sulpho acids of either alpha-napthol or of beta- 
 napthol are allowed to react upon each other by preference in 
 an alkaline solution and substantially in the manner described 
 in the foregoing processes. In this instance the sulpho acids of 
 oxyazonapthaline thus produced are red colouring matters. 
 
 This invention further consists in the production of similar 
 colouring matters and which may be termed "The Sulpho 
 acids of Dioxyazonapthaline " by substituting dioxynapthaline 
 or the diatomic napthylic alcohol for either of the two isomeric 
 napthols in any of the before-mentioned processes. 
 
 Having now described and particularly ascertained the 
 nature of the said invention and the manner in which the 
 same is or may be used or carried into effect I would observe in 
 conclusion that what I consider to be novel and original and 
 therefore claim as the invention secured to me by the herein- 
 before in part recited letters patent is : — 
 
 First. The production of red and brown colouring matters 
 which in chemical language may be termed the sulpho acids of 
 
EXAMPLES OF SPECIFICATIONS. 513 
 
 oxyazonapthaline by the action of the diazo compounds which 
 may be prepared fi-om napthylamine or from the sulpho acids 
 of napthylamine upon any of the isomeric napthols or of 
 mixtures of the same or upon any of the sulpho acids which 
 may be prepared from either alpha-napthol or from beta- 
 napthol or from mixtures of the same substantially by the 
 processes above described. 
 
 Secondly. The production of similar colouring matters and 
 wliicli in chemical language may be termed the sulpho acids of 
 dioxyazonapthaline by substituting dioxynapthaline for either 
 of the two isomeric napthols in any of the processes above 
 described for the preparation of the sulpho acids of oxyazonap- 
 thaline substantially as hereinbefore described. 
 
 In witness whereof I the said John Henry Johnson have 
 to this my specification set my hand and seal this ninth 
 day of August one thousand eight hundred and seventy- 
 eight. 
 
 J. HENRY JOHNSON (l.s.). 
 
 Complete Specification. — A New Prixciple coupled 
 WITH THE Method of carrying the Principle into 
 Effect — Supported by a Combination Claim. 1882, 
 No. 3660. 
 
 Note. — This Specification was attached as disclosing no subject- 
 matter and ivant of utility. Held hy the Court of Appeal, 
 Cotton, Boiven, and Fry, L.J J., affirming Kekewich, J., to 
 he good subject-mat tei' : that the claims were sufficient and the 
 patent valid. 5 P. 0. R. 437. 
 
 Paul Ehrlich, resident at Gohlis, near Leipsic, Saxony, Title. 
 German Empire, "Improvements in mechanical musical 
 instruments." 
 
 This invention relates to that class of mechanical musical Complete 
 instruments in which the notes or sounds are produced by the specification. 
 passage of a perforated sheet or surface across the levers 
 operating the valves of reeds or pipes, and it consists sub- 
 stantially in the employment of a perforated disk of circular 
 
 T. L L 
 
514 
 
 APPENDIX E. 
 
 Description 
 and reference 
 to drawings. 
 
 Description 
 and reference 
 to drawings. 
 
 form or of a number of like semi-circular disks, instead of the 
 ordinary strip or band hitherto used in such instruments. 
 
 The invention is represented on the annexed sheet of draw- 
 ings. Fig. 1 is a sectional elevation, and Fig. 2 a sectional 
 plan of the instrument. Fig. 3, x, y z are three diagrams 
 showing the relative position and arrangement of the air-holes 
 in the reeds or pipes. Fig. 4 is a plan of a perforated circular 
 disk ; Fig. 5 a top view of a part of the instrument ; Fig. 6 a 
 top view of the instrument with semi-circular disks, one of 
 which only is shown, and Fig. 7 a like view with both semi- 
 circular disks in their place. 
 
 The disk a is made of thin sheet metal, card-board, paper or 
 other suitable material, and perforated in the manner required 
 for producing a given melody. The same is carried by a plate 
 h forming the head of the vertical shaft r, and provided with a 
 driving-pin or pins engaging with holes in the disk. The 
 shaft c is slowly rotated fi-om the main shaft c^ by worm-wheel 
 gearing or otherwise. The main-shaft also operates the bellows 
 Ic and F by means of a crank and connecting rods, h are the 
 pipes or reeds. 
 
 The valve-leaders d, which have their fulcrum at s, are pro- 
 vided each with a projecting stud or finger, which bears by 
 virtue of a spring n against the under side of the disk a, so 
 that when, during the rotation of the disk, a perforation 
 thereof comes opposite to one of the said fingers, this finger 
 enters into the perforation, thus permitting the valve to which 
 it belongs, to open, and the note to sound. 
 
 In order to prevent the fingers of the valve levers from lifting 
 the disk and from coming out of line with the perforations 
 with which they are to register, the grates or combs e and e^ 
 are arranged, the former being fixed to a bar / Figs. 1 and 5, 
 the latter to the top of the chest p. The disk a rotates between 
 these grates, while the fingers of the valve levers are guided 
 in the slits between the bars thereof, the said slits registering 
 with the perforations of the disk when these are in a line with 
 the fingers. The latter are thus always guided accurately into 
 the corresponding perforations. The bar / is hinged at one 
 end to the chest j?, while at the other end it is secured in such 
 a manner that it may with facility be released and lifted, in 
 order to allow the disk a to be exchanged. It mav, when 
 
EXAMPLES OF SPECIFICATIONS. 515 
 
 hinged at one end, also be kept in its place by a spring in the 
 manner of a clasp knife. 
 
 The valves r and their levers are arranged in a compartment 
 q hermetically separated from the rest of the inside space of 
 the instrument, and communicating with the outer air by the 
 holes g, g\ g~, g^, &c. 
 
 In case a piece of music be too long for one disk, a number 
 of semi-circular disks A, B, C, &c., Figs. 6 and 7, may be used, 
 each of which contains a part of the notes, and which may be 
 inserted into the instrument one after the other without inter- 
 rupting the playing. The bar/ with the grate e is in this case 
 by preference made of a length as not to reach to the centre of 
 the plate b, as otherwise it would prevent, or at least render 
 difficult the exchange of the disk-parts. 
 
 In perforated music sheets of all kinds it is desirable that the 
 perforations for the lower notes have a comparatively greater 
 length than those for the higher ones. Considering that in the 
 circular disk the length of the perforations for notes of the 
 same duration must be in proportion to the distance of these 
 perforations from their centre of rotation, the disk presents the 
 advantage that the aforesaid condition will be naturally fulfilled 
 simply by the arrangement of the reeds and the valves in such 
 a manner that the outer perforations will correspond to the 
 lower notes, the inner ones to those of higher pitch. 
 
 In order to reduce as much as possible the diameter of the 
 disk, the valve-levers d must be brought together as close as 
 possible. To this effect the reeds or pipes h are placed in 
 vertical ranges, but each reed or pipe is shifted laterally by so 
 much in respect to the one which is below or above it, as is 
 required for allowing the valve-levers to pass freely by the side 
 of each other. 
 
 For the purpose of reducing the requisite lift of the valves, 
 I prefer to provide each pipe or reed with two air-holes as 
 shown in section by Fig. 1, and in front view by Fig. 3 x, or 
 with three holes as in Fig. 3 g, and to form the valve of as 
 many separate bars, each of which is adapted to cover one of 
 the said holes. The valves may also be arranged in the 
 manner of slide-valves, and in some cases two valves may be 
 connected together in order to produce double notes ; see 
 Fig. 3 z. In Figs. 3 x and 3 // is also shown the relative posi- 
 
 L L 2 
 
516 
 
 APPENDIX E. 
 
 Claims 
 
 preforated 
 
 disk. 
 
 Combination. 
 
 tion of the air-holes of the different reeds, T, II, III being the 
 first range, IV, V, VI the second, &c. 
 
 The reeds h communicate with the main chamber T of the 
 instrument. This chamber is hennetically closed and contains 
 the bellows k, Jc^ and the driving mechanism. The air sucked 
 in by the said bellows is delivered into the chamber T, with 
 which is combined the regulating bellows /. The bellows k, k^ 
 may, however, also operate in the contrary manner by sucking 
 the air from the chamber T ; the pipes or reeds and the regu- 
 lating bellows / having, in this case, of course to be arranged 
 accordingly. 
 
 Having thus described the nature and object of my invention 
 and the manner in which it is to be carried out in practice, I 
 hereby claim as new and important features of the same : 
 
 1. In a mechanical musical instrument, the rotative music 
 sheet a, consisting of a disk perforated in accordance with the 
 notes to be produced, and co-operating with the. valve-levers d, 
 substantially as and for the purpose described. 
 
 2. The combination with the valve-levers ^ of a perforated 
 disk consisting of two parts A and B, either of which may be 
 exchanged, as and for the purpose specified. 
 
 In witness whereof, I, &c. 
 
APPENDIX F. 
 
 A FEW PRECEDENTS FOR THE TRANSFER OF 
 INTERESTS IN LETTERS PATENT. 
 
 Sale of Patent Rights to a Peoposed Company. 
 
 1. Preliminary Agreement with Promoter. 
 
 An Agreement made this day of 188 , 
 
 Between A. B. of , C. D. of , and E. F. of 
 
 hereinafter called the vendors of the first part, and X. Y. 
 of hereinaiter called the promoter of the other part. 
 
 Whereas the vendors are the owners of certain letters ijatent Agreement 
 
 to assign to 
 
 dated and numbered , for an invention entitled . company. 
 
 And whereas it is intended that the promoter shall procure 
 forthwith the incorporation by registration under the Com- 
 panies Acts, 1862 to 1883, of a company to be called 
 Limited, and that the vendors shall for the considerations 
 hereinafter mentioned sell and assign the said letters patent to 
 the said Limited. And whereas a print of the memo- 
 
 randum and articles of association of the Limited has 
 
 been approved by the parties hereto and is annexed to this 
 agreement. Now it is agreed as follows : 
 
 1. The promoter shall and will forthwith procure the in- J*i"o™oter 
 
 ^ -"^ _ to procure 
 
 corporation under the above-mentioned acts of the said incorporation. 
 
 Limited, and shall and will duly register as the memorandum 
 and articles of association of the said company the memoran- 
 dum and articles of association hereinbefore referred to and 
 which are set forth in the schedule hereto. 
 
 2. With as little delay as possible after incorporation the Assignment to 
 
 DG GXGCllt)C(.l 
 
 vendors shall execute and the said promoter shall procure the by company, 
 execution by the said Limited of a contract similar to 
 
 that set forth in the schedule hereto or sucli other contract as 
 the parties hereto and the Limited shall agree upon. 
 
 ;:). If the promoter shall not before the day of Notice of 
 
 188 , perform his part of this agreement, then it shall ]^g ' ^ °"^'"''^ '""• 
 lawful for the vendors or either of them to determine the same 
 
518 
 
 APPENDIX F. 
 
 by giving notice in writing of such determination to the pro- 
 moter, and if the said Limited shall at that time have 
 been incorporated also to the said Limited. 
 
 Schedule. 
 
 Recital of 
 above agree- 
 ment. 
 
 to assign. 
 
 Payment of 
 cash and 
 allotment 
 of shares. 
 
 Assignment 
 subject to 
 licences, &c. 
 
 2. Agreement to Assign to the ComiMny. 
 
 An Agreement made this day of 1888, Between 
 
 A. B. of , C. D. of , and E. F. of , hereinafter 
 
 called the vendors of the one part, and the Limited 
 
 hereinafter called the purchasers of the other part. Whereas 
 the vendors are the owners of certain letters patent dated 
 and numbered and entitled . And whereas by 
 
 agreement dated and made between the vendors of the 
 
 one part and therein called the promoter of the other, 
 
 it was agreed that for certain considerations therein and herein 
 mentioned the vendors should sell the said letters patent to the 
 purchasers. Now it is agreed as follows : 
 
 1. The vendors shall upon the completion of the purchase 
 as hereinafter provided for, assign unto the purchasers the said 
 letters patent and all the right, title and interest of the vendors 
 therein, free fi'om all incumbrances save as regards assignments 
 for districts and licences already granted as hereinafter men- 
 tioned, and the vendors shall do all things necessary and 
 execute all documents necessary for rendering the said assign- 
 ment valid and effectual. 
 
 2. The purchasers shall pay to the vendors on or before the 
 
 day of the sum of £ in cash, and shall 
 
 allot to the vendors or to such other person or persons as the 
 vendors shall nominate ftiHy paid up shares in the 
 
 vendors' company, and immediately upon such payment being 
 made and the said shares being allotted the vendors shall 
 assign the said letters patent as in the first clause hereof 
 provided. 
 
 3. The said assignment shall be subject to assignments for 
 districts and licences in the schedule hereof mentioned, but 
 such assignment shall include all the rights and benefits from 
 time to time hereafter accruing to the vendors under or by 
 virtue of such assignments for districts or licences. 
 
PRECEDENTS. 519 
 
 4. The vendors do not warrant or represent the validity of No warranty 
 the said letters patent. °^ ''^^''^'^^• 
 
 5. Should the said purchase price not he paid or the shares Determination 
 not be allotted on or before the said day of the "P°° clefault. 
 vendors shall be entitled to interest upon the said purchase 
 
 pi'ice and upon the nominal value of the said shares after the 
 rate of 5 per cent, per annum until payment and allotment, or 
 at their option to determine this contract by notice under their 
 hands delivered at the registered office of the company. Pro- 
 vided always that the vendors shall not be entitled to sue for 
 or recover damages against the purchasers in respect of the 
 breach of the said agreement. 
 
 6. The said A. B. shall be deemed the agent of the said 
 C. D. and E. F. for the purpose of receiving the said purchase 
 money and shares and giving an effectual discharge for the 
 same. 
 
 Schedule. 
 
 Agreement to Obtain and Assign Letters Patent for 
 AN Invention in Consideration of a Sum of Money 
 AND Delivery of Certain Number of the Patent 
 Articles (k). 
 
 An Agreement made the day of , Between Parties. 
 
 (inventor) of, &c., of the one part and (purchaser) of, &c., 
 of the other part. Whereas the said (inventor) claims to have 
 invented a new and improved kind of , a plan or drawing 
 of which is hereunto annexed. And whereas the said (pur- Agreement to 
 chaser) has arranged with the said (inventor) for the sale to ot)tain and 
 him of the benefit of the said invention in the manner and " 
 upon the terms hereinafter expressed. Now "Witness that in Recital of 
 consideration of the sum of £ to the said (inventoi-) now invention. 
 
 paid by the said (purchaser) the receipt whereof is hereby '^'^^^^*"'^- 
 acknowledged and also in consideration of the agreements tk)n°oT''^r*" 
 hereinafter contained on the part of the said (purchaser) he and of the 
 
 purchaser's 
 covenants, 
 (/;) Extracted by permission of the publishers from Bytliewood and inventor 
 Jarman's Conveyancing. 
 
520 
 
 APPENDIX F. 
 
 covenants with 
 purchaser, to 
 solicit grant 
 of letters 
 patent : 
 
 and to assign 
 letters patent 
 
 to instruct 
 purchaser in 
 the invention. 
 
 Not to use 
 invention 
 without 
 jjurchaser's 
 licence ; 
 
 the said {inventor) hereby agrees with the said {purchaser) in 
 manner following (that is to say) that he the said {inventor) 
 will at any time or times hereafter within the term of fourteen 
 years to be computed from the day of the. date of these presents 
 upon the request and at the cost of the said {jncrchaser), his 
 executors, administrators, or assigns, take and use all such 
 steps, means, and proceedings as shall be requisite or proper 
 for obtaining, and use his the said {inventory s utmost en- 
 deavours to obtain, in the name of him the said {itiveiitor), a 
 patent for the sole and exclusive making, using, exercising, and 
 vending of the said invention within the United Kingdom of 
 Great Britain and Ireland, and the Isle of Man, as the said 
 (purchaser), his executors, administrators, and assigns, may 
 desire, during the term or terms for which patents for inventions 
 are usully granted. And further, that the said (inventor), his 
 executors, or administrators, will at any time or times after 
 obtaining any such patent upon the request and at the cost of 
 the said {purchaser), his executors, administrators, or assigns, 
 make, do, and execute all such assignments, deeds, matters, 
 and things, as the said (purchaser), his executors, adminis- 
 trators, and assigns, shall reasonably require for assigning, and 
 transferring unto the said (purchaser), his executors, adminis- 
 trators, and assigns, for his or their absolute benefit, the said 
 patent, and the full benefit and advantage thereof; And further, 
 that he the said (inventor) will, at any time or times hereafter, 
 upon every reasonable request of the said (purchaser^, his 
 executors, administrators, or assigns, more particularly and 
 sufficiently describe to him or them, or his or their agents or 
 workmen, either in writing or by personal explanation and 
 instruction, or otherwise, the nature of the said invention, and 
 in what manner the same, and every part thereof, and every 
 process relating thereto, are to be performed or carried into 
 effect and used ; And further, that he the said (invejitor), his 
 executors or administrators, will not, nor shall any person or 
 persons claiming by, from, through, or under him or them, at 
 any time or times hereafter, during the term of fourteen years 
 to be computed from the day of the date of these presents^ 
 without the consent or licence of the said (purcliaser), his 
 executors, administrators, and assigns, either alone or in co- 
 partnership, or in any other manner, howsoever, directly or 
 
PHECEDEXTS. 521 
 
 indirectly, make or assist in the making of any of the 
 
 new and improved kind hereinbefore mentioned, or in the con- 
 struction of which the aforesaid invention shall be used ; or 
 (except by any specification or specifications which may have to nor, except by 
 be executed and enrolled for the purposes of the application for to^^i^Xs"^"' 
 the said patent) described, either in writing or otherwise, to inveDtion ; 
 any person or persons other than the said {purchaser), his 
 executors, administrators, or assigns, the nature of the said 
 invention, or in what manner the same is to be performed or 
 carried into efiect, or give any information, or do or permit or 
 be party or privy to, any act, matter, or thing whereby or by 
 means whereof the same respectively may be known by any 
 person or persons other than as aforesaid, or whereby or by 
 means whereof the said (;ini'entor) may be prevented or hindered, 
 from obtaining the said patent for the purposes hereinbefore 
 mentioned. And further, that he the said ('inre?ifor) has not that inventor 
 at any time or times heretofore described, either in writing, or (]^s*clo"°d 
 otherwise, to any person or persons other than the said invention, 
 ( J) iir chaser), the nature of the said invention, or in what pi-evented' 
 manner the same is to be performed or carried into effect, or from obtaining 
 given any information, or done or permitted, or been party or i^**^'^*' 
 privy to, any act, matter, or thing, whereby or by means 
 whereof the same respectively may have been or may be known 
 by any person or persons other than as aforesaid, or whereby 
 or by means whereof he may be prevented or hindered from 
 obtaining the said patent for the purposes hereinbefore men- 
 tioned; And further, that he the said (inventor) will, at any for further 
 time or times hereinafter, upon every request and at the cost of " ' 
 
 the said (purchaser), his executors, administrators, or assigns, 
 make, do, execute, and perfect all such lawful acts, deeds, dis- 
 claimers, amendments, and other matters and things, for the 
 better or more satisfactorily or effectually sustaining or main- 
 taining such patent as aforesaid, and assuring the same, and the 
 full benefit thereof, and of the said invention unto the said 
 ( purchaser), his executors, administrators, and assigns, as by 
 him or them shall be reasonably required. And in considera- purchaser 
 tion of the agreements hereinbefore contained on the part of the '^s^ees to 
 said (inventor), he the said {purchaser) hereby agrees with the number of 
 said (inventor), his executors and administrators, that he the 'y*!'^'^^' ,^"'^ 
 
 ^ 1 ■ • <leliver them 
 
 said (piircliaser), his executors or admmistrators, will, within to the 
 
 inventor ; 
 
522 
 
 APPENDIX F. 
 
 to indemnify 
 inventor from 
 costs of 
 obtaining 
 letters patent. 
 
 Proviso tbat 
 purchaser is 
 to appoint 
 solicitor, or 
 agent, and 
 that inventor 
 shall not be 
 responsible for 
 his default. 
 
 the space of one year, to be computed from the day of the date 
 of the patent to be so obtained as aforesaid, at his or their cost, 
 make and deliver, for and to the said {inventor), his executors 
 and administrators, — complete, perfect, and well made and 
 finished, — of the new and improved kind hereinbefore men- 
 tioned. And will, from time to time and at all times hereafter, 
 save, defend, and keep harmless and indemnified the said 
 {inventor), his heirs, executors, and administrators, and his and 
 their estates and effects whatsoever and wheresover, of, from, 
 and against all costs and charges to be incurred or sustained in, 
 about, or in anywise relating to the obtaining of the said patent, 
 and the preparing any specifications which may be necessary 
 for the purposes of the application for the same, and of, from, 
 and against all claims and demands on account thereof. Pro- 
 vided always, and it is hereby agreed and declared, that the 
 solicitor or agent to be employed in obtaining the said patent, 
 and in preparing any such specification or specifications as 
 aforesaid, shall be appointed by the said {purchaser), his execu- 
 tors, administrators, or assigns ; And that the said {invetitor), 
 his heirs, executors, or administrators, shall not be answerable 
 or accountable for any neglect or default of such solicitor or 
 agent anything hereinbefore contained to the contrary thereof 
 in anywise notwithstanding. 
 As witness, &c. 
 
 Agreement 
 to divide. 
 
 Assignment 
 of district 
 to A. B. 
 
 Ageeement between Joint Ownees of a Patent foe 
 Paetition. 
 
 An Agreement made the day of 188 , Between 
 
 A. B. of of the one part, and C. D. of of the other part. 
 "Whereas the said A. B. and C. D. are joint owners of certain 
 letters patent dated and numbered and entitled 
 
 And whereas they have agreed to divide the special licence, 
 full power, sole privilege, and authority by the said letters 
 patent granted in the manner and upon the terms hereinafter 
 appearing. Now it is agreed as follows : 
 
 1. The said A. B, shall be solely entitled henceforth to use, 
 work and vend the invention ibrming the subject matter of 
 the said letters patent in the following counties and shall 
 
PEECEDENTS. 523 
 
 be solely entitled within the said counties to grant assign- 
 ments for districts or special or general licences upon any terms 
 which the said A. B. shall see fit, and the said C. D. shall when- 
 ever required to do so by the said A. B., execute a valid assign- 
 ment of all his interest in the said letters patent within the 
 said counties to the said A. B. 
 
 2. The said C. D. shall be solely entitled henceforth to use, Assignment 
 work, and vend the said invention in the following counties ^^ q d 
 
 , and shall be solely entitled within the said counties to 
 grant assignments for districts or special or general licences 
 upon any terms which the said C. D. shall see fit, and the said 
 A. B. shall, whenever required to do so by the said C. D., 
 execute a valid assignment of all his interest in the said letters 
 patent within the said counties to the said C. D. 
 
 3. Neither party shall be bound to account to the other for Neither party 
 any profits, royalties, or payments received by him with respect 
 
 to the using, vending, or working the said invention within the 
 counties or districts assigned to him hereby. 
 
 4. The said C. D. shall from time to time and as they become Payment of 
 
 X66S &LC 
 
 due pay the fees for the continuance and renewal of the said ' 
 letters patent, and shall be entitled to recover one moiety of the 
 sums of money so paid from the said A. B. 
 
 5. This agreement and all the provisions thereof shall apply Future patents 
 to any letters patent obtained or acquired by either party hereto ^ ^"^ '^^' 
 
 for any improvements upon the said patented invention, and 
 neither party shall be bound to make any payments in respect 
 of any such improvements to the other. Provided always, 
 that immediately after applying for any such letters patent the 
 party seeking to obtain the same shall give notice in writing 
 to the other of the said improvement and full particulars respect- 
 ing the same, together with a copy of the specification filed, 
 and thereupon the other party shall elect whether he shall take 
 the benefit of the said invention or not, and if he elects to take 
 the benefit thereof shall from time to time pay to the party 
 applying for such letters patent one moiety of all the costs, 
 fees, and charges incurred in obtaining or seeking to obtain 
 such letters patent, and then the said letters patent and the said 
 invention shall be deemed to be within this agreement, but 
 should he elect not to pay the said moiety of costs, fees, and 
 charges, then he shall be deemed to have abandoned all claim 
 
524 
 
 APPENDIX F. 
 
 No amend- 
 meut witliout 
 consent. 
 
 to the said letters patent and invention, and the party applying 
 for such letters patent shall thenceforth be the sole owner thereof. 
 6. Neither party shall apply for leave to amend the specifica- 
 tions to any letters patent within this agreement without the 
 consent of the other first had and obtained. 
 
 7. So far as practicable this agreement shall apply to and be 
 binding on the executors, administrators, or assigns of the 
 parties hereto. 
 
 Parties. 
 
 Recitals of 
 application 
 for patent ; 
 
 of acceptance 
 of specifica- 
 tion ; 
 
 of agreement 
 for arrange- 
 ment as to 
 working, &c., 
 tlie invention. 
 
 Testatum. 
 
 Agreement. 
 
 Capitalist to 
 contribute 
 sum for 
 expenses. 
 
 Inventor to 
 endeavour to 
 olitain patent, 
 and assign the 
 same when 
 required. 
 
 Ageeement for Working and Selling an Invention, 
 in respect or which an application for a patent 
 has been made, for the joint benefit of the 
 Inventor and Another Person (/), 
 
 An Agreement made the day of , 18 , Between 
 
 {inventor), of, &c., of the one part ; and {capUalist), of, &c., of 
 the other part. Whereas the said {inventor) has, under the 
 Patents, Designs, and Trade Marks Act, 1883, made an appli- 
 cation, dated the day of 18 , number , for a patent 
 for an invention of {title of inventioji), which application was 
 accompanied by a complete specification : And whereas the 
 paid complete specification has been accepted : And whereas 
 the parties thereto have agreed to enter into the arrangements 
 hereinafter mentioned in respect of the said invention and ap- 
 plication, and the patent to be obtained thereupon. Now 
 these Presents witness that it is hereby agreed as follows, 
 that is to say : — 
 
 1, The said {capitalist) shall immediately upon the execution 
 of these presents, pay to the said {inventor) a sum of £ , 
 to be applied by him towards the expenses of working and 
 developing the said invention. 
 
 2. In consideration of the payment so agreed to be made as 
 aforesaid, and of the agreements on the part of the said {capi- 
 talist) hereinafter contained, the said {inventor) shall use his 
 best endeavours to perfect the said invention, and to obtain the 
 
 (Z) Extracted by permission of the publishers from Bythewood and 
 Jarmau'.s Conveyancing. 
 
PRECEDENTS. 525 
 
 grant of the said patent in liis own name, and sliall, whenever 
 required by the said (capitalist) after the granting of such 
 patent, assign the same, so that the same premises may be 
 legally and beneficially vested in the said ])arties hereto as 
 tenants in common in equal shares, and the said parties hereto 
 shall as well before as after such assignment, be entitled to the 
 said patent in the shares aforesaid. 
 
 3. The said {inventor) without any farther remuneration Inventor to 
 
 than the monies hereinafter agreed to be paid by the said co^ni^ni'^ate 
 
 ^ 1 J improvements. 
 
 (capitalist), will communicate to the said (cajntalist) all improve- 
 ments which the said {invenlor) has already invented, discovered, 
 or made, or may during the continuance of the said patent, or 
 of any other patent wliich may become subject to the provi- 
 sions of these presents, invent, discover, or make in, or in con- 
 nection with the said invention ; and also all improvements 
 whether patented oi" not in or in connection with the said in- 
 vention, of which the said {inventor) shall become the owner, or 
 have the control. 
 
 4. The said {^inventor) will also, at the expense in the first inventor to 
 instance of the said (capitalist), such expense to be considered ^Pi''/ ^°'' , 
 
 . '- foreign and 
 
 as an advance, and to be reimbursed as hereuiafter mentioned, colonial 
 apply for and endeavour to obtain in such foreign countries, or patents. 
 British Colonies, or depeudencies, as the said {capitalist) shall 
 think proper, and shall require, the like privilege for the inven- 
 tion comprised in the application, and for any such improve- 
 ments as aforesaid ; and will, as far as practicable, at the re- 
 quest and expense, in the first instance, of the said {capitalist), 
 such expense to be considered as an advance, and to be reim- 
 bursed as hereinafter mentioned, render all such foreign and 
 colonial patents, and the said improvements available for the 
 exclusive use of the said parties hereto in equal shares ; and 
 execute and do every act, deed, and thing which may be neces- 
 sary or expedient for effectually vesting the same in the said 
 parties hereto in the shares aforesaid. 
 
 5. The said {capitalist) shall advance from time to time such Capitalist to 
 monies as he shall think fit for working and developing the ^^'^^ advances 
 
 , , . J ,, ,. -IT r D for working 
 
 patent to be obtained on the atoresaid application numbered and developing 
 
 , or the said foreign and colonial patents or like privileges, invention, 
 or any such patents for improvements as aforesaid (all which 
 patents and privileges are collectively referred to as the " said 
 
526 
 
 APPENDIX F. 
 
 Charge of 
 advances on 
 patents. 
 
 Application 
 of 103'alties, 
 proceeds of 
 sale of patent 
 rights, &c. 
 
 patents "), and for defraying the costs and expenses of obtain- 
 ing and completing the said patents respectively, and keeping 
 the same on foot, and for protecting or defending the same 
 from, or obtaining damages or other compensation for infringe- 
 ments or otherwise defending the said patents, or of obtaiuing 
 renewals and extension of the term of the said patents, or 
 amending the specification thereof, or working or developing 
 the working comprised in the said patents (hereinafter referred 
 to as the said patented inventions), or introducing the same to 
 the public, or exercising or using the said patented inventions, 
 or any of them, or any parts thereof respectively, or for any 
 purpose whatever in connection with the said patents, or any 
 of them ; and the said advances, and also the aforesaid sum of 
 £ shall be repaid to the said {capitalist) as hereinafter men- 
 tioned ; and if there shall at any one time during the con- 
 tinuance of this agreement be owing to the said (capitalist) in 
 respect of such advances in the aggregate, the sum of £ , 
 or upwards, then any excess of such advances over the sum of 
 £ , shall carry interest at the rate of £5 per cent, per 
 
 annum fi'om the date when such excess shall have become due 
 to the said (capitalist) until the same shall be paid. 
 
 6. All advances made by the said (capitalist) as aforesaid, 
 and all interest shall be, and the same are hereby charged upon 
 the said patents as a first charge upon the same. 
 
 7. All monies which shall be received by way of royalties, or 
 otherwise, as the consideration for any licence granted for the 
 use of the said patented inventions, or any of them, or any part 
 thereof respectively, or which shall be received as the proceeds 
 of the sale, or other disposition of the said patents, or any 
 share or interest therein, or which shall be received in respect 
 of any working, using, or exercising by or on behalf of the said 
 parties hereto, or either of them, of the said patented inven- 
 tions, or any of them, or any part thereof respectively, or 
 which shall in any manner whatever arise, or be received out of, 
 or in respect of the said patents, or any of them, all which 
 monies are hereinafter referred to as " the proceeds of all the 
 said patents," shall be applied as follows : — that is to say, in 
 the fiist place, in payment of the costs and charges incurred 
 with the consent of the said (capitalist) attending the licence, 
 sale, disposition, or working in respect of which the same 
 
PRECEDENTS. 527 
 
 respectively shall be received ; and in the next place, and as a 
 charge upon the said proceeds of the said patents, and in 
 priority to any other payments hereinafter mentioned, in pay- 
 ment to the said (capifalisf) of all advances made by the said 
 (capitalist) as aforesaid with the interest thereon, in the events, 
 and at the rate, and in manner aforesaid ; and in the next 
 place, in payment of all expenses of working the said patents 
 (hereinafter referred to as the patent expenses, and defined as 
 hereinafter mentioned) ; and the balances which shall remain 
 of the proceeds of the said patents, after making the same pay- 
 ments aforesaid, shall be divided between the parties hereto 
 in equal shares. 
 
 8. For the purposes of this agreement the expression Definition of 
 "patent expenses" shall mean and include all monies which, expenses " 
 with the consent of the said {capiialist), shall be expended for 
 
 any of the purposes mentioned in the 5th clause of these 
 presents, which shall not have been defrayed by monies 
 advanced by the said (cajnfalist). 
 
 9. There shall be set aside yearly out of the aforesaid pro- Reserve fund, 
 ceeds of the said patents and premises, after payment of the 
 
 said costs, charges, and interest (if any), and of the said patent 
 expenses, such a sum not exceeding £ in any one year, as 
 the said {capitalist) shall think proper, as a reserve fund for 
 meeting contingencies, and providing monies for working and 
 developing the patents, or for any of the purposes mentioned 
 in the 5th clause of these presents, and such reserve fund mny 
 from time to time be drawn upon and applied for any of the 
 purposes aforesaid, as and whenever the said (capitalist) shall 
 think fit. 
 
 10. The said {inventor) shall give as much time and atten- inventor 
 tion as may be necessary for working and developing the said to devote 
 patented inventions, and shall use his best endeavours to pro- workino-'^ 
 mote the success thereof, but the said {capitalist) shall not be patent, 
 bound to give more time or attention thereto than he shall 
 
 think proper. 
 
 11. During the continuance of the arrangement hereby Neither party 
 made neither of the said parties hereto shall, without the tp g*'-^"* 
 consent of the other of them, grant or agree to grant any witbout "' 
 licence for working the patented inventions, or any of them, or consent of 
 any part thereof, or sell or dispose of his share or interest in 
 
528 
 
 APPENDIX F. 
 
 Inventor 
 alone to work 
 the patent ; 
 rendeiing 
 ai'counts to 
 capitalist. 
 
 Inventor to 
 take all 
 proceedings 
 necessary for 
 protecting 
 patents. 
 
 the said patents or any of them, or any part thereof, or use or 
 exercise the said invention, or make any payment, or incur 
 any expenses, debts, or liabilities in respect of the said patents 
 or patented inventions, and in case any payment, debt, or 
 liability shall be so made or incurred without such consent, 
 the same shall be made or incurred on the separate and indi- 
 vidual account of the party making or incurring the same, and 
 shall be borne by him exclusively, without any right to resort 
 to the proceeds aforesaid of the said patents, and the other of 
 the said parties hereto shall be indemnified by him in respect 
 of the same. 
 
 12. The said patents, patented inventions, and premises 
 shall be worked, and the business thereof shall be carried on 
 in the name of the said (inre?itor) alone as patentee ; and 
 proper accounts shall be kept by him of all payments made, 
 and monies received, and liabilities incurred in respect thereof, 
 and of all transactions relating thereto, and all monies received 
 in respect of licences, sales, and disj^ositions or otherwise in 
 respect of the said patents, shall be paid into a bank to an 
 account to be kept in the joint names of the said parties 
 hereto, and shall not be paid out except upon the joint cheque 
 of both parties. The books of account and other documents 
 shall be kept in the custody of the said {inventor) at his office 
 or such other place in London as the said parties hereto may 
 agree upon, but so as that the said {capitalist) may at any time 
 have access thereto. The accounts relating to the said patents, 
 patented inventions, and premises shall be made up and 
 balanced half-yearly on the day of , and the day 
 of , or oftener if the said parties hereto shall so agree. 
 
 13. The said {inventor) shall, during the continuance of the 
 arrangements hereby made, take all such proceedings as the 
 said {cajjitalist) shall require for keeping up the said patents 
 and protecting and defending the same from and obtaining 
 damages or other compensation for infringement or otherwise 
 defending the said patents or any of them, obtaining renewals 
 or extensions of the term of the said patents or any of them, 
 or amending the specifications thereof, and the costs and 
 expenses of all such proceedings as last aforesaid shall be 
 defrayed in the first instance by the said {capitalist), and shall 
 be considered as advances by him within the meaning of the 
 
PRECEDENTS. 529 
 
 5th clause of these presents, and so far as not defrayed by the 
 
 said {capitalist) shall be considered as part of the patent 
 
 expenses as hereinbefore defined. 
 
 14. Nothing herein contained shall be construed as consti- clause 
 
 tutinff a partnership between the said parties hereto. negativing 
 
 - mi 1 • • • partnership. 
 
 lo. ihe arrano-ement hereby entered mto shall remain in p, ,. . 
 ° -^ Duration of 
 
 force until the expiration of the term of the patent to be arrangement, 
 granted in respect of the said application numbered afore- 
 said, and of any renewal or extension thereof, and during any 
 further patents, whether British, colonial, or foreign, to be 
 obtained for the said invention, or any such improvements as 
 aforesaid in case both the said parties hereto shall so long 
 live. Provided always that it shall be lawful for the said Proviso for 
 
 (capitalist) at any time hereafter to determine the said arrange- determining 
 ^ -^ '' -I o arrangement 
 
 ment upon giving to the said {inventor), or leaving for him at by notice, 
 his last known place of business or abode in England, 
 calendar months' previous notice in writing of an intention so 
 to do ; And in the event of the said arrangement being deter- 
 mined by the death of either party, or by notice as aforesaid, 
 the said patents and any extension or renewal thereof, and the 
 proceeds of the said patents to be received in respect of any 
 licences, sales, working, or using of the patented inventions 
 which have been granted, effected, or taken place previously to 
 such determination as aforesaid shall, subject to the payment 
 thereout of the costs, charges, advances, interest, and patent 
 expenses as aforesaid (subject to any charge thereon under the 
 provisions hereinbefore contained in favour of the said 
 {capitalist) for unpaid advances and interest) belong to the 
 said parties hereto in equal shares, and each of the parties 
 hereto, or their respective executors, administrators, or assigns, 
 shall thenceforward be at liberty and entitled to work, use, and 
 exercise the said patented inventions, and to grant licences 
 (not being exclusive licences) for working and using the same, 
 or to sell, assign, or otherwise dispose of his share and interest 
 in the said patents without being liable to account to the other 
 of such parties, his executors, administrators, or assigns, for 
 the profits, royalties, or moneys to be derived from the same. 
 As witness, &c. 
 
 T. M M 
 
530 
 
 APPENDIX F. 
 
 General 
 recitals. 
 
 Testatum. 
 
 Assignment of a Patent. 
 
 This Indenture made the day of 18 , Between 
 
 A. B. of of the one part, and C. D. of of the other 
 
 part. 
 
 Whereas by letters patent under the seal of the Patent 
 Ofhce, numbered and dated day of ,18 , and 
 
 entitled " Improvements, &c. ," Her Majesty the Queen 
 
 gave and granted unto the said A, B., his executors, administra- 
 tors, and assigns, Her Majesty's especial licence, full power, sole 
 privilege and authority, that he the said A. B., his executors, 
 administrators, and assigns, and every of them during the term 
 therein expressed should and lawfully might make, use, exercise, 
 and vend his said invention within the United Kingdom of 
 Great Britain and Ireland and the Isle of Man, and the whole 
 profit and advantage from time to time accruing by reason of 
 the said invention during the term of years therein mentioned 
 to have, hold, exercise and enjoy the said licence, power, privi- 
 leges, and advantages thereinbefore granted unto the said 
 A. B., his executors, administrators, and assigns, for and during 
 and unto the full end and term of fourteen years from the date 
 of the now reciting letters patent next ensuing subject to the 
 conditions and provisoes therein contained. And whereas the 
 said A. B. has agreed for the sum of £ to assign unto the 
 
 said C. D. the said invention and the said letters patent and 
 all the licence, power, privilege and advantage thereby granted, 
 and any extension of the same, together with all improvements 
 and additions useful to the manufacture, the subject-matter of 
 the said letters patent now already in the knowledge or posses- 
 sion of or which may hereafter be made by the said A. B. 
 
 Now this Indenture witnesseth that in pursuance of the 
 said agreement and in consideration of the sum of £ , this 
 day paid by the said C. D. to the said A. B. (the receipt 
 whereof is hereby acknowledged) he the said A. B. as beneficial 
 owner (m), doth hereby assign unto the said C. D., his executors. 
 
 (m) By the Conveyancing Act, 
 1881, s. 7 (a), it is provided " In a 
 conveyance for valuable considera- 
 tion, other than a mortgage, the 
 following covenant by a person who 
 
 conveys and is expressed to convey 
 as beneficial owner (namely) : — 
 ' That, notwithstanding anything 
 by the person who so conveys, or 
 any one through whom he derives 
 
PRECEDENTS. 
 
 531 
 
 administrators and assigns, all that the said special licence, 
 full power, sole privilege and authority, and the said invention 
 and all and every of the rights, privileges, profits, benefits, 
 commodities and advantages in and by the said hereinbefore 
 recited letters patent granted, together with the said herein- 
 before recited letters patent, and also all the right, title, 
 interest, claim and demand whatsoever of him the said A. B., 
 his executors, administrators and assigns, or any of them, to 
 
 title, otherwise than by purchase 
 for value, made, done, executed, or 
 omitted, or knowingly suffered, the 
 person who so conveys, has, with 
 the concurrence of every other 
 person, if any, conveying by his 
 direction, full power to convey the 
 subject-matter expressed to be con- 
 veyed, subject as, if so expressed, 
 and in the manner in which it is 
 expressed to be conveyed, and that 
 notwithstanding anything as afore- 
 said that subject matter shall re- 
 main to and be quietly entered 
 upon, received and held, occupied, 
 engaged and taken by the person 
 to whom the conveyance is ex- 
 pressed to be made and any person 
 deriving title under him, and the 
 benefit thereof shall be received and 
 taken accordingly without any law- 
 ful interruption or distm'bance by 
 the person who so conveys or any 
 person conveying by his direction 
 or rightfully claiming, or to claim 
 by, through, under, or in trust for 
 the person who so conveys or any 
 person conveying by his direction 
 or by, through, or under anyone, 
 not being a person claiming in 
 respect of an estate or interest 
 subject whereto the conveyance is 
 expressly made through whom the 
 person who so conveys derives title 
 otherwise than by purchase for 
 value ; and that freed and dis- 
 charged from or otherwise by the 
 person who so conveys sufficiently 
 indemnified against all such estates, 
 incumbrances, claims and demands 
 other than those subject to which 
 the conveyance is expressly made 
 as either before or after the date of 
 the conveyance, have been or shall 
 be made, occasioned or suffered by 
 that person or by any person con- 
 veying by his direction or by any 
 
 person rightfully claiming by, 
 through, under, or in trust for the 
 person who so conveys or by, 
 through, or under any person con- 
 vejang by his direction or by, 
 through, or under any one through 
 whom the person who so conveys 
 derives title otherwise than by pur- 
 chase for value, and further that tlie 
 person who so conveys and any 
 person conveying by his direction 
 and every other person having or 
 rightfully claiming any estate or 
 interest in the subject matter of 
 conveyance other than an estate or 
 interest subject whereto the con- 
 veyance is expressly made by, 
 through, under, or in trust for the 
 person who so conveys or by, 
 through, or under, any person con- 
 veying by his direction or by, 
 through, or under any one through 
 whom the person who so conveys 
 derives title otherwise than by 
 purchase for value will from time 
 to time, and at all times after the 
 date of the conveyance on the re- 
 quest and at the cost of any person 
 to whom the conveyance is ex- 
 pressed to be made or of any person 
 deriving title under him execute 
 and do all such lawful assurances 
 and things for further or more 
 perfectly assuring the subject 
 matter of the conveyance to the 
 person to whom the conveyance is 
 made and to those deriving title 
 under him subject as if so expressed 
 and in the manner in which the 
 conveyance is expressed to be made 
 as by him or them or any of them 
 shall be reasonably required : (in 
 which covenant a purchase for 
 value shall not be deemed to in- 
 clude a conveyance in consideration 
 of marriage).' " 
 
 M M 2 
 
532 
 
 APPENDIX F. 
 
 Habendum. 
 
 Covenant as 
 
 to validity 
 
 and as lo 
 specification 
 being 
 sufficient, &c. 
 
 apply and petition for, obtain and procure a prolongation, or 
 extension of the said licence, privilege and authority, and of 
 the said term of fourteen years granted by the said hereinbefore 
 recited letters patent, and to apply and petition for, obtain and 
 procure any new or other letters patent to be granted for any 
 new or additional term or terms of years. 
 
 To have, hold, and receive, take, exercise and enjoy the 
 said especial licence, sole privilege and authority, invention, 
 letters patent, rights, privileges, and all and singular the 
 premises hereby assigned or intended so to be unto and by the 
 said C. D., his executors, administrators and assigns for and 
 during all the rest, residue and remainder which is now to 
 come and unexpired of the said term of fourteen years granted 
 and created by the said hereinbefore recited letters patent and 
 for and during all other the term right and interest of him the 
 said A. B. under or by virtue of the said hereinbefore recited 
 letters patent or otherwise howsoever to and for the sole use, 
 benefit and advantage of the said C. D,, his executors, adminis- 
 trators and assigns. 
 
 And the said A. B. for himself, his heirs, executors and 
 administrators doth covenant with the said C. D., his executors, 
 administrators and assigns, by these presents in manner follow- 
 ing, (that is to say) that notwithstanding any act, deed, matter 
 or thing by the said A. B. done, executed or permitted, the said 
 hereinbefore recited letters patent are at the time of the sealing 
 and delivery of these presents, good, valid and sufficient in the 
 law for all and every of the purposes therein mentioned and 
 expressed, and that the same letters patent or the grant therein 
 expressed or contained have not been and are not surrendered, 
 forfeited or become void or voidable in anywise whatsoever [n). 
 
 And that the specification filed by the said A. B. at the 
 Patent Office pursuant to the conditions upon which the here- 
 inbefore recited letters patent were granted, well and suffici- 
 ently describes and ascertains the nature of the invention 
 mentioned in the said letters patent, and in what manner the 
 same is to be performed, and that the same specification was 
 
 (n) It is obvious that this is a 
 stringent covenant on the part of 
 the patentee, inasmuch as it renders 
 him responsible should it hereafter 
 appear that for any reason such as 
 
 anticipation, &c., the letters patent 
 were invalid, this covenant and the 
 next should be carefully considereil 
 before they or either r)f them are 
 inserted. 
 
PEECEDENTS. 533 
 
 truly and duly made and filed according to and well, truly, 
 fully and sufficiently performed and complied with the condi- 
 tions in that behalf in the same hereinbefore recited letters 
 patent expressed and contained. 
 In witness. 
 
 Additional Recitals. 
 
 And whereas the said A. B. has agreed for the sum of Substituted 
 £ , and for other sums by way of percentage as hereinafter a-rreement for 
 mentioned, and subject to the contracts on the part of the said a sum down 
 C. D., hereinafter contained to assign {&c., as before). payments. 
 
 See Covenant 
 and Condi- 
 .,,_, Tin iiL-T tions in such 
 
 And whereas the said A. B. has applied for and obtained ^ case, 
 letters patent or a Brevet d'Invention, for the said invention Foreign and 
 in the following foreign states and countries and colonial 
 
 PtlL GUI'S 
 
 in the following British Colonies whereby recital. 
 
 the said A. B., his executors, administrators and assigns, have 
 acquired the sole right privilege and authority to work, use, or 
 vend the said invention in the said Foreign States and British 
 Colonies for the terms of years limited respectively by the said 
 letters patent and Brevet d'Invention, and whereas in con- 
 sideration of the sum of money hereinbefore expressed, the said 
 A. B. has agreed to assign the said letters patent and Brevet 
 d'Invention to the said C. D. 
 
 And whereas the said A. B. has represented himself to the True and first 
 said C. D. to be to the best of his knowledge, information and I'^^'^n^'O'"- 
 belief, the true and tirst inventor of the said invention within 
 this realm. 
 
 And whereas the said A. B. has assigned the said letters Previous 
 patent and all the rights, powers, privileges and advantages of fo,!'|j"™°°*^ 
 he the said A. B. in the said letters patent, and the said inven- tricts [o), 
 
 (o) See special covenant uecessary in such cases as to applications to 
 amend, &c., &c. 
 
534 
 
 APPEXDTX F. 
 
 tion for the conntie? of to G. H. his executors, administra- 
 tors or assisrns, and for the counties of to J. K. his execu- 
 tors, administrators or assigns, kc, &c. 
 
 aud of inten- 
 tion to assign 
 for other 
 district. 
 
 And whereas the said A. B. contemplates and intends to 
 assign the said letters patent and all the rights, powers, 
 privileges and advantages of he the said A. B. in the said letters 
 patent and the said invention for other districts so soon as a 
 purchaser shall be found therefor. 
 
 Recital of 
 
 lic«Bce 
 
 CTanted. 
 
 And whereas the said A. B., by indenture dated , has 
 granted a licence unto E. F. of , his executors, administra- 
 tors and assigns, to manufacture, use and vend the said inven- 
 tion during the continuance of the said letters patent or any 
 extension or renewal thereof, upon certain terms and conditions 
 as to the payment of royalties imd otherwise in the said 
 indentture made and provided (/'). 
 
 Suhsti toted 
 recital of 
 aCTeement to 
 assign for a 
 district. 
 
 And whereas the said A. B. has agreed in consideration of 
 the sum of £ to assign unto the said C. D., benefit of the 
 said letters patent so far as the same relates to the counties 
 of , but not elsewhere, and so far as the same relates to the 
 said coimiies, all the licence, power, privilege and advantage 
 thereby granted, and any extension of the said letters patent 
 together with all improvements and additions useful to the 
 manufacture the subject matter of the said letters patent now 
 already in the knowledge or possession of or which may here- 
 after be made bv the said A. R 
 
 Assignment for Now this Indenture witnesseth that in pursuance of the 
 
 a coan^(g). ^^ agreement, and in consideration of the sum of £ this 
 
 day paid by the said C. D. to the said A. B. (the receipt 
 
 ( p) This mar be varied by recit- 
 ing "'an exclusive Ucence" or "an 
 exclnsiTe licence for the county 
 
 of -■' 
 
 {q^ See proviso restricting actions 
 for inlrin.qement. 
 
PRECEDENTS. 535 
 
 whereof is hereby acknowledged) the said A. B., as hcru'fmal 
 owner, doth hereby assign unto the said C. D., his executors, 
 administrators and assigns, all that the said special licence, 
 full power, sole privilege and authority, and the said invention, 
 and all and every the rights, privileges, profits, benefits, com- 
 modities and advantages in and by the said hereinbefore recited 
 letters patent granted so far as the same relate to the counties 
 of , and not elsewhere. 
 
 Together with all licence, powers, privileges, and advantages Foreign and 
 granted to the said A. B., his executors, administrators, and p°^^°^^J ,^v 
 assigns : by virtue of the said recited lietters Patent and 
 Brevets d'Invention for Foreign States and British Colonies. 
 
 Together with all the rights, royalties, benefits and advan- Assignment of 
 tages of the said A. B., under and by virtue of the said recited benefit of 
 
 llCf*llCGS 
 
 licence granted by the said A. B. unto E. F., his executors, 
 administrators, and assigns. 
 
 Additional Covenants. {See Recitals.) 
 
 And the said C. D. hereby covenants with the said A. B. Covenant as 
 that if and so soon as the said C. D., his executors, administra- ^ per<^itage 
 
 ' ' when sucn is 
 
 tors, or assigns, shall have received out of the net profits (to be stipulated for 
 calculated as hereinafter mentioned) arising from or by means ^ vendor, 
 of the said invention, or such improvements as aforesaid 
 (patents for which improvements shall have been assigned to 
 or become vested in the said C. D., his executors, administra- 
 tors, or assigns, or from or by means of any sales, or licences, 
 or dispositions of, or dealings with the same invention, or 
 patented improvements, or otherwise, from, or by means of the 
 using, exercising, vending, or making the said invention, or 
 any such patented improvement as aforesaid, or the said patent, 
 the sum of £ , he, the said C. D., his executors, adminis- 
 
 trators, or assigns, shall pay to the said A. B., his executors, 
 administrators, or assigns, at the times and in the manner 
 
 (r) See covenants as to maintaining such foreign patents. 
 
536 APPENDIX F. 
 
 hereinafter mentioned, such a sum or sums of money as shall 
 be equal to a percentage of £ per cent, upon the net pro- 
 fits (to be calculated as hereinafter mentioned), arising as afore- 
 said, from the time when the said 0. D., his executors, adminis- 
 trators, or assigns, shall have received the aforesaid sum of 
 £ , and thenceforth during the remainder of the period in 
 
 which the said patent hereby assigned, or any such patent for 
 improvements as aforesaid as shall be assigned to or become 
 vested in the said C. D., his executors, administrators, or 
 assigns, shall continue in force. And further, that the said 
 C. D., his executors, administrators, or assigns, will, so soon as 
 he or they shall liave received from the net profits arising as 
 aforesaid the sum of £ thenceforth twice in every year on 
 
 the . day of , and the day of , or within 14 days 
 thereafter respectively, furnish to the said A. B. an account 
 showing the amount for the half year in respect of which the 
 account is furnished, of the net profits arising as aforesaid ; 
 and shall within one calendar month after the date up to 
 which such half-yearly account is furnished, pay to the said 
 A. B., his executors, administrators, or assigns, the percentage 
 by the said account appearing to be due. 
 
 Covenant not And the said C. D. covenants with the said A. B. that he 
 to apply for the Said C. D., his executors, administrators and assigns, will 
 
 leave to amend , i p n . i i , i 
 
 applicable to ^ot ^PP^J ^^^ leave to amend, or amend, or cause to be 
 assignments amended, the said specification or the drawings thereof, in any 
 
 for fi (li^» 
 
 trict (<). way whatsoever without the consent of the said A. B., his 
 
 executors, administrators, or assigns, in writing, first had and 
 obtained — such consent not to be unreasonably withheld (s). 
 
 (,s-) In some cases where the dis- not only amongst themselves but 
 
 trict assigned is large a converse with the original patentee, but 
 
 covenant on the part of the assignor still all possessing only one original 
 
 should be inserted. patent and one specification. It 
 
 (t) A great difficulty is introduced was clearly not the intention of the 
 
 by section 36 of the Act of 1883 : legislature that the specification 
 
 ' ' A patentee may assign his patent might be split up and amended in 
 
 for any place in or part of the one county and not in another and 
 
 United Kingdom or Isle of Man as so on ; but on the other hand the 
 
 effectually as if the patent were whole validity and value of a 
 
 originally granted to extend to patent may very often depend upon 
 
 that jilace or part only." It will the question of amendment or non- 
 
 be observed that under this section amendment — if one assignee amends 
 
 a ])ateiitee can create innumerable he might by doing so ruin all the 
 
 patentees all with coequal rights, others, on the other hand by refus- 
 
PRECEDENTS. 537 
 
 And that in ease he, the said A. B., shall obtain letters Covenants by 
 
 ,,. ,p • iiTi.- , T assignor as to 
 
 patent in respect oi any improvements, additions to, or dis- takint^ future 
 covery useful to the manufacture the subject-matter of the said patents in 
 recited letters patent, he shall, at the expense of the said C. D., foj. * district 
 his executors, administrators, or assigns (if and when requiring °"'y- 
 him to do so), execute and do all such assurances and things as 
 shall be necessary or convenient for vesting the same letters 
 patent, and the exclusive benefit thereof, /or the said counties in 
 the said C. D., his executors, administrators, or assigns. 
 
 And also that he the said A. B., his executors, administra- Covenant to 
 tors, or assigns, will pay all fees necessary for the renewal of r^,[ewaf when 
 the said letters patent respectively during the respective terms patent assigned 
 comprised therein one calendar month at least before the times q°\^ 
 provided by the Patents, &c., Act, 1883, or the rules made in 
 pursuance thereof in that behalf, but in case of non-payment 
 thereof as aforesaid, will, if required by the said C. D., his 
 executors, administrators, or assigns, permit him or them to 
 pay the same, and any sum if so paid by him or them shall be 
 repayable on demand, together with interest thereon at the rate 
 of 5 per cent, per annum from the time of payment thereof and 
 until repayment, and shall together with the interest aforesaid, 
 be a charge upon the interest of the said A. B. and his execu- 
 tors, administrators, or assigns, in the said letters patent 
 respectively. 
 
 And the said A. B. hereby covenants with the said C. D. Covenant to 
 that the said A. B. will without any further remuneration or communicate 
 
 ., • T /-I T-w ^^^^ assign 
 
 royalties communicate to the said C. D. all improvements futuie im- 
 which the said A. B. may during the continuance of the said Pavements, 
 patent invent, discover, or make for or in connection with the 
 said invention, and also all improvements, whether patented or 
 not, of which the said A. B. shall become the owner or of which 
 the said A. B. shall have the control, and will, so far as practi- 
 cable, at the request and expense of the said C. D., render the 
 same available for the exclusive use of the said C. D., and do 
 
 ing to consent to an amendment instances, but it is chiefly intro- 
 
 he might do the same thing. The duced to call the attention of 
 
 author has drafted a precedent conveyancers to the difficulty of 
 
 clause which might do for some the position. 
 
538 
 
 APPENDIX F. 
 
 every act, deed, and thing which may be necessary or expedient 
 for obtaining and perfecting patents for all or any such 
 improvements, and for assigning or vesting the same to or in 
 the said C. D, 
 
 Conditions to 
 be inserted 
 when a jjer- 
 centage is to 
 be paid as 
 well as a sum 
 down. 
 
 And it is hereby further agreed and declared between 
 
 and by the said parties hereto as follows : 
 
 ] . For tlie purpose of calculating the moneys to be derived 
 as aforesaid, there shall be deducted from the gross moneys re- 
 ceived from or by means of the said inventions, or such patented 
 improvements as aforesaid, or any sales, or licences, or other 
 dispositions and dealings with the same, or otherwise, from, or 
 by means of the using, exercising, vending, or working the 
 invention, or patented improvements, or patent, which 
 moneys are hereinafter called the gross receipts, all costs, 
 charges, losses, damages, and expenses whatsoever, which the 
 said C. D., his executors, administrators, or assigns, may have 
 already paid or incurred, or may hereafter pay or incur, in or 
 about the obtaining, or endeavouring to obtain, or the keeping 
 in force any such patent for improvements as aforesaid, or the 
 assigning the same to the said C. D., his executors, adminis- 
 trators, or assigns, or in or about the introducing to the public 
 the said patents, inventions, and patented improvements, or 
 any of them, or in or about any such sales, licences, or other 
 dispositions, or dealings as aforesaid, or in or about any legal, 
 or other proceedings, which may be taken for the purpose of 
 restraining infringement of the said patents, or any of them, 
 or for recovering damages for infringements, or which may be 
 taken in respect of any sale, or proposed sale of the said 
 patents, or any interest therein, or any licence or proposed 
 licence for working the said invention and patented improve- 
 ments, or any of them, or any part thereof ; or generally in 
 any manner in or about the said patents, or any of them, or 
 the using, exercising, vending, or working the said invention, 
 or patented improvements, or any of them, or patents, all which 
 costs, charges, losses, damages, and expenses are hereinafter 
 referred to as patent expenses, together with interest at the rate 
 of £ per cent, per annum, upon such patent expenses 
 
 respectively from the time of the payment thereof, and the 
 diifereuce between the gross receipts for any half year and the 
 
PRECEDENTS. 539 
 
 patent expenses for the same half year, shall be the net profits 
 arising as aforesaid, upon which the percentage aforesaid is to 
 be paid. 
 
 2. Proper baoks of account shall be kept by the said C. D., Keeping 
 his executors, administrators, and assigns, in which true, plain ^<^<'°"°*'-^- 
 and perfect entries shall be made of all the payments, expenses, 
 
 and gross receipts aforesaid, and such books of account shall 
 at all reasonable times be open to the inspection of the said 
 A. B., his executors, administrators, or assigns, or any agent 
 duly appointed by him or them in writing. 
 
 3. Nothing herein contained shall be construed as obliging Assignee not 
 the said C. D., his executors, administrators, or assigns to l^ alpiy^ior 
 obtain, or endeavour to obtain, any patent for any such patent tor 
 improvements as aforesaid, or to accept any assignment of i^P'o^'^'^^*^^*'^- 
 any patent for such improvements, or to pay the stamp duty 
 
 upon, or to defend, or maintain the said patent hereby assigned, 
 or any such patent for improvements as aforesaid, which may 
 be assigned to, or become vested in him or them, in perform- 
 ance of the covenants in that behalf hereinbefore contained, or 
 to take any steps for restraining infringements of the same 
 patents, or any of them, or recovering damages for any in- 
 fringement, or to make any sale or sales of the said patents, or 
 any interest therein, or to grant any licence, or licences for the 
 use of the said invention, or any such patented improvements 
 as aforesaid, or any part thereof respectively, or in any manner 
 to use, exercise, vend, or work the said invention, improve- 
 ments or patents, or any of them ; it being hereby expressly 
 agreed and declared that the said C. D., his executors, adminis- 
 trators or assigns, is and are and shall be the absolute owners 
 of the said patent hereby assigned and of any patent or patents 
 for improvements which may be assigned to or vested in him 
 or them as aforesaid, or which he or they may under the 
 covenants aforesaid, require to be assigned to him or them ; 
 and that the said C. D., his executors, administrators, or 
 assigns, shall not in regard to the said patents, or any of them, 
 be subject to any control or interference whatsoever of the said 
 A. B., his executors, administrators or assigns. 
 
 4. During the continuance of the said patent hereby Assignor not 
 assigned, and during the continuance of any patent or patents inteS*^ 
 for improvements which may be assigned to or become vested without 
 
 consent. 
 
540 
 
 APPENDIX F. 
 
 Assignee not 
 to reassign 
 without 
 consent. 
 
 No partner- 
 ship. 
 
 No warranty, 
 of validity. 
 
 Proviso to be 
 inserted in 
 assignment 
 for a district 
 of certain 
 inventions (w). 
 
 in the said C. D., his executors, administrators, or assigns as 
 aforesaid, the said A. B., his executors, administrators, or 
 assigns, shall not sell or dispose of the percentage payable to 
 him or them as aforesaid without the consent in writing of the 
 said C. D., his executors, administrators, or assigns ; nor shall 
 the said C. D., his executors, administrators, or assigns, sell, or 
 dispose of the said patents, or any of them, without the con- 
 sent in writing of the said A. B., his executors, administrators, 
 or assigns. 
 
 5. Nothing herein contained shall be considered as con- 
 stituting a partnership between the said parties hereto. 
 
 6. Nothing herein contained shall be construed as a 
 warranty by the said A. B., of the novelty or utility of the 
 said invention, or of the validity of the said patent hereby 
 assigned. 
 
 Provided always, and it is hereby further agreed and de- 
 clared, that no action at law or equity shall be brought by the 
 said C. D. against any person or persons to restrain infringe- 
 ments or to recover damages in respect of the mere user of 
 {collar studs made in pursuance of the said patented invention) 
 within the said county of provided that such user be not 
 
 for profit or for sale, or in the way of trade. 
 
 Non-exclusive Licence to use Patented Invention in 
 consideration of an annual payment and the 
 Purchase of the Patented Articles from the 
 Inventor. 
 
 Parties. This Indenture made the day of 18 , between 
 
 A. B., of , hereinafter called the patentee of the one part, 
 
 and C. D. of , hereinafter called the licensee of the other 
 
 part. 
 
 Recitals. Whereas the patentee is in possession of and entitled to the 
 
 (u) It is evident that some suck 
 proviso as this is of the utmost 
 importance, when the patent is for 
 an article of common use. The 
 words of section 36 are: — "A 
 patentee may assign his patent for 
 any place in or part of the United 
 Kingdom or Isle of Man as effectu- 
 ally as if the patent were originally 
 
 granted to extend to that place or 
 part only." It would create great 
 confusion and injury to all parties 
 if a man travelling from Loudon to 
 York were liable to actions by 
 different assignees of the districts 
 through which he travelled on 
 account of wearing a particular 
 collar stud. 
 
PRECEDENTS. 541 
 
 full benefit of certain letters patent dated and numbered 
 
 for an invention entitled , And whereas the patentee 
 has agreed to grant to the licensee a licence to use the said 
 invention at , in the course of his trade and business as a 
 
 upon the terms and conditions hereinafter set forth. 
 Now this Indenture witnesseth that in pursuance of the 
 said agreement and in consideration of the payments and 
 covenants hereinafter reserved, contained, and on the part of 
 the licensee to be paid and performed, he the patentee grants 
 to the licensee full and free licence and authority during all 
 the residue now to come and unexpired of the term of fourteen 
 years by the said patent to use the said invention in the course 
 of his trade and business as a , upon the terms and con- 
 
 ditions following, that is to say : 
 
 1. The licensee shall pay to the patentee upon the execution Payments by 
 of this indenture the sum of £ , and further shall once in ^^<^^'^^^^- 
 every year during the continuance of the said letters patent, 
 including any extended term thereof, pay the sum of £ , 
 
 the first of such payments to be made on or before the day 
 of , 18 . 
 
 2. The licensee shall purchase of the patentee and the Covenant to 
 patentee shall sell and deliver to the licensee all the (Aere insert purchase 
 
 '■ patented 
 
 name and description of patented articles) which the licensee shall articles, 
 fi-om time to time require, paying for the same after the rate of 
 per {dozen or gross) with net cash within one month after 
 delivery. 
 
 3. The licensee shall not manufacture or vend any of the Covenant 
 said , but shall only be entitled to use the same in the "°* *° 
 course of his trade or business, and the licensee shall not pur- or sell, 
 chase or otherwise acquire any of the said other than of the 
 patentee. 
 
 4. The licensee shall be at liberty upon giving months' Power to 
 notice in writing to the patentee to determine the licence and ''^'^"^ee to 
 
 T T • p -111 determine 
 
 all the terms and conditions thereor, provided always that upon licence. 
 any such determination the licensee shall deliver to the patentee 
 free of charge all the which at that time shall be in his 
 possession, or in the possession of any of his servants, agents, 
 or customers. 
 
 .5. In the event of the infringement of the said patent by Covenant by 
 any person or persons the licensee shall at the cost of the J-e'i^je^*^ *° 
 
542 APPENDIX F. 
 
 assistance patentee render to him all the information and assistance in 
 
 in actions!^ ^^^s power to enable the patentee to restrain further infringe- 
 
 Proviso ments of the said patent, and to recover damages for any past 
 
 patentee not infringements thereof : Provided always that nothing herein 
 
 to be bound • i i i, , t t • , , 
 
 to take action, contamed shall be construed as placing the patentee under any 
 
 obligation to take proceedings for the purpose of restraining or 
 
 recovering damages for inftingements, or as in any manner 
 
 exonerating the licensee from payment of the amounts and 
 
 observance of the covenants herein reserved and contained by 
 
 reason that the profits of the licensee from the use of the said 
 
 invention may be diminished on account of such infringements 
 
 being permitted. 
 
 Determination 6. Should the licensee make default in the payment of the 
 
 def luirr °° annual sum hereinbefore provided for, within twenty-one days 
 
 licensee. after the same shall have become due, or commit any breach of 
 
 the covenants herein contained as on his part to be observed, it 
 
 shall be lawful for the patentee by writing under his hand to 
 
 give to the licensee, or leave at his usual or last known place 
 
 of business in England notice of the patentee to determine 
 
 this present licence, and thereupon this licence shall be deemed 
 
 to be determined, and the licensee shall deliver to the patentee 
 
 as soon as practicable, free of charge, all the wliich at that 
 
 time shall be in his possession or in the possession of any of 
 
 his servants, agents, or customers. 
 
 Determination 7. If during the Continuance of the licence hereby granted 
 
 on patent {^j^g grj^jjj patent shall be pronounced to be invalid by a decision 
 
 bemr; declared „ , ^ ^ t t ,i , ^ ii ^ -i . ,i 
 
 invalid. of the Housc of Lords, these presents shall be void as to the 
 
 future operation thereof, but without prejudice to any rights or 
 liabilities which shall be then subsisting on either side with 
 respect to any prior breach of any of the covenants and agree- 
 ments herein contained. 
 Reduction of 8. If whilst this licence is in force the patentee shall at any 
 payments to ^j^^g grant any licence or premium to any other person or 
 
 b.-vel of other ^ •' ■ -, ■ . . , „ • n tt-. 
 
 licences. pcrsons for the use oi the said invention m the United King- 
 
 dom, and shall reserve any annual payment or charge any 
 price for the said lower than the annual payments and 
 price reserved under and by virtue of this indenture, then that 
 the annual payments and price thenceforward payable to the 
 patentee shall be reduced to an amount equal to the lowest 
 
PRECEDENTS. 543 
 
 price reserved and payable for the use of the said invention by 
 such other person. 
 
 9. The patentee shall be at liberty from time to time, and at Power of 
 all times hereafter, without the consent or concurrence of the fo!^,"^^,^ 
 licensee to apply for and procure the amendment of the specifi- specification, 
 cation or specifications of the said invention, whether by way 
 
 of disclaimer, amendment or alteration. 
 
 10. The word patentee herein shall include the patentee, his Transmission 
 executors, administrators, or assigns, and he shall be deemed ^^^^^^ ^^'^ 
 to covenant as beneficial owner with like effect as if this inden- " beneficial 
 ture were a conveyance within the meaning of the Convey- °^"^'^' 
 ancing and Law of Property Act, 1881. The word licensee 
 
 shall include the licensee, his executors, administrators, and 
 assigns. 
 
 11. Nothing in this indenture contained shall preclude or Licensee not to 
 estop the licensee from disputing the validity of the said '^?^ estopped 
 patent after the determination of the licence by notice or mination of 
 otherwise. licence. 
 
 12. If any dispute, question, or difference shall arise between Arbitration 
 the parties to these presents, touching these presents or any ^''^"^'^• 
 clause or thing herein contained, or the construction hereof, or 
 
 any matter in any way connected with these presents, or the 
 operation hereof, or the rights, duties, or liabilities of either of 
 the said parties hereto in connection with the premises then 
 and in every or any such case the matters in difference shall be 
 referred to two arbitrators or the umpire, pursuant to and so 
 as with regard to the mode and consequences of the reference, 
 and in other respects to conform to the provisions in that 
 behalf contained in the Common Law Procedure Act, 1854, or 
 any other subsisting statutory modificacion thereof, and upon 
 evei-y or any such reference the arbitrators and umpire shall 
 respectively have power to examine the parties and witnesses 
 upon oath or affirmation, and either to fix, settle, and deter- 
 mine the amount of cost of the reference and award respec- 
 tively or incidental thereto to be paid by both parties or either 
 party, or to direct the same to be taxed either as between 
 solicitor and client, or otherwise to direct and award when, by 
 and to whom such costs shall be paid. 
 As witness, &c. 
 
544 
 
 APPENDIX F. 
 
 Exclusive Licence for a District. 
 
 Recitals. 
 
 Grant. 
 
 Considei'ation 
 and roj'alty 
 reserved. 
 
 This Indentiire made the day of 188 , Between 
 A. B. of , hereinafter called the grantor of the one part 
 and C. D. of hereinafter called the grantee of the other 
 part. Whereas the grantor is the registered legal owner of 
 certain letters patent dated and numbered granted for 
 an invention entitled . And whereas the grantor has 
 agreed to grant to the grantee the sole and exclusive licence to 
 make, use, exercise, or vend the said invention within the 
 counties of upon the terms and conditions hereinafter 
 appearing. Wow this Indenture witnesseth and it is agreed 
 as follows : — 
 
 1. The grantor as heneficial owner and with like effect as if 
 these presents were a conveyance, doth hereby grant unto the 
 grantee, his executors, administrators and assigns, the sole and 
 exclusive licence to make, use, exercise or vend the said inven- 
 tion within the counties of and during the continuance 
 of the said letters patent or any extended time thereof, together 
 with all improvements and additions useful to the manufacture 
 the subject-matter of the said letters patent now already in the 
 knowledge or possession of or which may hereafter be made by 
 the grantor. 
 
 2. The grantee shall upon the execution of these presents 
 pay to the grantor the sum of <£ , and shall further pay to 
 the grantor during the continuance of the licence once in every 
 year on the day of or within twenty-one days there- 
 after the suHQ of £ by way of annual royalty. Provided 
 always that in the event of the said letters patent being 
 adjudged invalid by any court of competent jurisdiction and 
 within months of the said judgment the grantor, his 
 executors, administrators, or assigns, shall not have done all 
 things necessary for the purpose of appealing from the said 
 judgment, or in the event of the said letters patent having been 
 adjudged invalid by the House of Lords, then that these 
 presents shall be deemed to be cancelled, and all payments 
 accruing thereafter from the grantee to the grantor shall cease, 
 but without prejudice to the recovery by the grantor of any 
 moneys then already due. 
 
PRECEDENTS. 545 
 
 3. The grantor shall not without the consent of the grantee, Grantor not 
 his executors, administrators or assigns, in writing first had 
 
 and obtained apply for leave to amend the specification to the 
 said letters patent in any way whatsoever (x). 
 
 4. The grantee shall be at liberty upon giving months' Grantee to be 
 notice in writing to the grantor to determine this licence and |]ieterm?ne*^° 
 all the terms and conditions thereof, and thereupon the said 
 
 letters patent for the district hereinbefore defined, and all the 
 rights and privileges thereby granted, shall revert in the 
 grantor absolutely, and the annual payments hereinbefore 
 provided for shall cease. 
 
 5. The grantee shall be at liberty either in his own name or As to actions 
 in the name of the grantor, or both, as he may be advised, to 
 
 bring any action or proceeding for the purpose of restraining 
 the infi'ingement of the said letters patent within the district 
 hereinbefore defined. Provided always that before in any 
 way making use of the name of the grantor in any such action 
 or proceeding the grantee shall give security to the satisfaction 
 of the grantor to indemnify him in respect of any costs or 
 damages which he may become liable for by reason of any such 
 action or proceeding. 
 
 6. The grantor shall pay all fees necessary for the renewal Payment of 
 and maintenance of tlie said letters patent during the term ^^^^> ^'^' 
 comprised therein one calendar month at least before the times 
 provided by the Patents, &c. Act, 1883, or the rules made ia 
 pursuance in that behalf thereof, and in case of non-payment 
 thereof as aforesaid, the grantee shall be at liberty to pay the 
 
 same and to deduct any monies so paid by him from the 
 annual payments hereinbefore provided for, or to recover the 
 same from the grantor at the grantee's option. 
 
 7. Should the grantor during the continuance of this licence 
 obtain letters patent in respect of any improvements, additions 
 to, or discovery useful to the manufacture of the subject-matter 
 of the said letters patent, he shall at the expense of the grantee 
 grant to him an exclusive licence to make exercise use or vend 
 the invention the subject-matter of the said further letters 
 patent within the said district without any extra or additional 
 
 (a") See last preceding precedent power to amend, but in an exclusive 
 for the converse — in a general licence it is obviously otherwise, 
 licence the patentee sliould reserve 
 
 T. N N 
 
546 
 
 APPENDIX F. 
 
 Default in 
 payment of 
 royalty. 
 
 No warranty 
 of validity. 
 
 payment on the part of the grantee. Provided always that 
 the grantor shall not be bound to maintain or keep in force 
 the said further letters patent by payment of the prescribed 
 fees or otherwise. 
 
 8. Should the grantee make default in the payment of the 
 annual royalty reserved by the second clause hereof as therein 
 provided, it shall be lawful for the grantor to serve upon the 
 grantee by leaving the same at his last known place of business 
 or abode notice in writing determining these presents, and 
 thereupon the licence hereby granted shall cease but without 
 prejudice to the right of the grantor to sue for and recover any 
 arrears of the said annual royalty which may then be due. 
 
 9. The licensor notwithstanding anything herein to the con- 
 trary shall not be deemed in any way to warrant or represent 
 the validity of the said letters patent. 
 
 In witness, &c. 
 
 Parties. 
 
 Recitals. 
 
 Testatum. 
 
 Assignment 
 
 Mortgage of a Patent. 
 
 This Indenture made the day of 188 , Between 
 A. B. of , hereinafter called the mortgagor of the one part, 
 and C. D. of , hereinafter called the mortgagee of the 
 other part. Whereas the mortgagor is the registered owner of 
 certain letters patent dated 188 and numbered for an 
 invention entitled " Improvements, &c. ." And whereas 
 the mortgagee has agreed to lend to the mortgagor the sum of 
 £ to be secured together with interest thereon by mortgage 
 of the said letters patent as hereinafter expressed. Now this 
 Indenture witnesseth that in consideration of the sum of 
 £ this day paid by the mortgagee to the mortgagor (the 
 receipt whereof is hereby acknowledged) the mortgagor doth 
 covenant with the mortgagee that he the mortgagor will pay to 
 the mortgagee on the day of 188 , the sum of £ 
 together with interest thereon at the rate of £ per cent, 
 per annum. And this Indenture also witnesseth that for 
 the consideration aforesaid the mortgagor as hetieficial owner 
 doth hereby assign to the mortgagee the said letters patent 
 and the sole and exclusive benefit thereof and all extensions 
 thereof and all the rights, privileges, profits, benefi Is, commo- 
 
PRECEDENTS. 
 
 547 
 
 dities and advantages by the said letters patent granted to 
 have and to hold the same to the mortgagee subject to the 
 proviso for redemption hereinafter contained. Provided Proviso for 
 always that if the mortgagor shall pay to the mortgagee the 
 sum of £ with interest for the same at the rate aforesaid 
 then that the mortgagee will at any time thereafter at the 
 request and cost of the mortgagor re-assign to him the said 
 letters patent and the sole and exclusive benefit thereof And 
 the mortgagor doth hereby covenant with the mortgagee that 
 if the said sum of £ or any part thereof shall remain un- 
 paid after the said day of 1 8 , he the mortgagor will 
 pay to the mortgagee so long as the said sum of £ or any 
 part thereof shall remain unpaid interest upon such sum as 
 shall from time to time remain unpaid after the rate of £ 
 per cent, per annum by equal half-yearly payments on the 
 day of and the day of in every year. Provided 
 
 also that if the mortgagor shall on every day of and 
 
 day of until the day of 18 , or within 
 
 days after the said days respectively pay to the mortgagee all 
 interest then due and shall perform and observe all the cove- 
 nants on his part to be performed or observed then the 
 mortgagee will not before the day of 18 call in the 
 principal sum aforesaid or any part thereof. Provided also 
 that the mortgagor shall not before the day of 18 
 compel the mortgagee to receive the said principal sum or any 
 part thereof. And that the mortgagor during the continuance 
 of the security will take all steps necessary for the protection 
 of the said letters patent and maintaining the same in full force 
 and effect and for the prevention of any infringement thereof 
 and will pay all fees necessary for the continuance of the said 
 letters patent one calendar month at least before the same shall 
 become due and payable and will whenever required to do so 
 produce to the mortgagee or his agent the receipts for the said 
 fees and in default of the mortgagor taking any such steps as 
 aforesaid or protecting the said letters patent from infringe- 
 ment or making payment of the said fees it shall be lawfal for 
 the mortgagee to do or pay the same either in his own name or 
 in the name of the mortgagor as he the mortgagee shall elect 
 and to sue for and recover from the mortgagor any costs, 
 charges or expenses which he may incur in so doing or at his 
 
 N N 2 
 
548 
 
 APPENDIX F. 
 
 Mortgagor to 
 be at iberty 
 to use and 
 work inven- 
 tion, 
 
 and grant 
 licences. 
 
 Mortgagor 
 to supjily 
 copy to 
 mortgagee. 
 
 Proviso for 
 foreclosure. 
 
 Communica- 
 tion of im- 
 provements. 
 
 As to amend- 
 ments. 
 
 As to applica- 
 tion for ex- 
 tension. 
 
 option to allow the same to remain on the security hereof as 
 monies advanced as aforesaid. Provided always that until 
 the mortgagee shall become entitled to exercise the power of 
 sale to be implied herein the mortgagor shall be at liberty to 
 use and work the said invention without interruption from the 
 mortgagee and also may (but so that he shall in each case give 
 to the mortgagee days at least notice in writing of his in- 
 tention so to do and of the particulars thereof) with the con- 
 sent of the mortgagee in writing but not otherwise grant 
 licences to use and work the said invention as from the dates 
 thereof respectively for the whole or any part of the term com- 
 prised in the said letters patent. And further the mortgagor 
 shall within fourteen days after the execution of every such 
 licence furnish the mortgagee with a copy of the same. 
 Provided also that from and after the time when the mort- 
 gagee shall first become entitled to exercise the statutory power 
 of sale to be implied herein but subject to any licences which 
 may have been granted as hereinbefore authorised it shall be 
 lawful for him alone to work the said invention and to grant 
 licences in respect thereof or to assign the said letters patent 
 and invention for districts or otherwise to deal with the same 
 in any manner that he shall think fit. And the mortgagor 
 doth hereby further covenant with the mortgagee that he 
 will communicate to the mortgagee during the continuance of 
 this security all improvements which he may discover or make 
 in connection with the said invention and also all improve- 
 ments which during the said time he shall have control of or 
 acquire by purchase or otherwise and whether patented or not 
 and such improvements and letters patent if any shall be 
 deemed to be comprised within this security and the mortgagor 
 will execute all documents and do all things necessary to 
 extend the operation of this security to all such improvements 
 or letters patent. And that during the continuance of this 
 security the mortgagor will not without the consent of the 
 mortgagee first had and obtained amend or apply for leave to 
 amend the specifications to the said letters patent or either of 
 them in any way whatsoever. And lastly that it shall be 
 lawful for the mortgagee if the monies secured hereby shall 
 not have been repaid within one year from the expiration of 
 the term of fourteen years for which the said letters patent 
 
PRECEDENTS. 549 
 
 were originally granted to apply for an extension of such term 
 in his own name or in the name of the mortgagor or of both of 
 them as he shall think fit and the mortgagee shall do all acts 
 and things and execute all documents and prepare all accounts 
 necessary for such application. And it is hereby declared that Transmission 
 except where the context requires a different interpretation, 
 each of the expressions " the mortgagor " and " the mortgagee " 
 shall whenever used herein be also applicable as far as possible 
 to the executors administrators and assigns of the person 
 designated thereby. 
 In witness, «&;c. 
 
INDEX. 
 
 ♦ 
 
 Abandoned, application for patent, 131, 349, 351. 
 
 Abeidgments of specifications, 362, 387. 
 
 Acceptance, 
 
 of complete specification, 131. 
 advertisement of, 132. 
 effect of, 133. 
 of application, 132. 
 
 effect of, 132. 
 
 notice of, to applicant, 129. 
 
 Accession of British Government to International Convention, 
 420. 
 declaration of acceptance of, 421. 
 
 AcciDENTAx Discovery 
 
 sufficient to support a patent, 71. 
 
 Account of Profits, 
 
 right of an assignee of a share of profits to, 1 85. 
 
 plaintiff not entitled to both damages and, 261. 
 
 distinction between damages and, 261. 
 
 amounts to condonation of infringement, 264. 
 
 not so advantageous as damages, 264. 
 
 not allowed, where patentee was guilty of delay, 264. 
 
 not allowed when no profit was made, 264. 
 
 when defendant offered before action to submit to, 265. 
 
 interlocutory injunction granted on terms of keeping, 257. 
 
 Accounts, 
 
 to be filed with petition for extension, 203. See Extension 
 of Term. 
 
 Action, 
 
 for infringement. See Infringement, etc. 
 to restrain threats. See Threats. 
 
 of reduction, petition for revocation in Scotland to be in 
 form of, 390. 
 
 Addition to known machine producing new result may be 
 patented, 34. See Combination. 
 
 Address, 
 
 of letters patent, 144. 
 
 form of notice for alteration of, in register, 450. 
 statement of, must accompany application, 424. 
 statement of, must accompany notice of opposition, 432 
 
552 INDEX. 
 
 Administeatok, 
 
 meaning of, in s. 11, 137. See Executor. 
 
 Advertisement, 
 
 of acceptance of specification, 132. 
 of a proposed amendment, 158. 
 
 reasons for required amendment to be advertised, 158. 
 of amendment allowed, 174. 
 
 of intention to petition for extension, 211, 499. See Ex,- 
 tension of Term. 
 
 Aefidavit, 
 
 on motion for injunction, 259. 
 
 what it must state, 259. 
 in support of application for inspection, 314. 
 for use under Patents Eules, 426. 
 after trial, 260, 263. 
 
 Agent. See Patent Ayent. 
 
 of applicant cannot sign the application, 126. 
 may be emploj'ed in other communications with the Comp- 
 troller, 126. 
 
 need not be a patent agent, 126. 
 
 must be duly authorised, 126. 
 of prior patentee cannot oppose in his own name, 141. 
 of foreign inventor may be patentee, 23. 
 
 is not entitled to benefit of international arrangements, 
 25. 
 
 resident abroad may not apply in Form Al, 24. 
 to sell, cannot maintain action for infringement, 217. 
 infringement by, 235. 
 
 discovery after judgment of name of agents infringing, 308 . 
 of Crown, right of, to use patented inventions, 151. 
 
 Agreement, 
 
 to preserve a secret, unenforceable, 147. 
 
 fraudulent, will be set aside, 181. 
 
 to assign, enforceable as an equitable assignment, 177. 
 
 to assign future patents, 179. 
 
 by licensee, not to manufacture without using invention, 179. 
 
 Alien, 
 
 may obtain patent, 8, 346. 
 
 enemy, qucere, 8. 
 communication from, 23. 
 
 communication from, to another also resident abroad, 24. 
 patent may be held in trust for, 23. 
 liable for infringement, 218. 
 
 Ambiguity, 
 
 in specification, effect of, 104, 109. 
 
 interpretation of, 98. 
 latent, in licence, how explained, 183. 
 
INDEX. 553 
 
 Amendment, 
 
 of application, 129. 
 
 where two inventions contained in the application, 128. 
 of documents generally, 426. 
 of particulars of breaches, 287. 
 of particulars of objections, 303. 
 of accounts in petition for extension, 205. 
 
 Amendment of the Specification, 
 rules relating to, 434. 
 compulsory, 152. 
 
 limited to matters of form, 153. 
 at instance of C. G., 152, 348. 
 duties of examiner as to, 153. 
 appeal to L. O., 152. 
 of clerical errors, 154. 
 
 by Master of the IMls, 154. 
 
 disclaimer filed without consent of patentee, 155. 
 by C. G., 155. 
 at instance of patentee, 154. 
 
 prior to the Act of 1883.. .155. 
 
 provisions of Act of 1883 relating to, 156 ct seq., 353. 
 must be made under s. 18, 156. 
 
 application for, between filing and acceptance of com- 
 plete specification, 156. 
 no provision for amending title or provisional, 157. 
 
 course to pursue, 157. 
 "correction or explanation," meaning of, 157. 
 reasons for amendment must be filed, 157. 
 effect of, 157. 
 application dismissed if no ground is shown 157 
 
 165. ' 
 
 form no part of amendment itself, 157. 
 may be of letterpress or drawings, 158. 
 application and reasons must be advertised, 158. 
 application may be oi)posed, 158. See Opposition, 
 where no opposition, discretion of 0. G., 162. 
 power of C. G. to impose conditions, 162. 
 appeal to L. O., 162. See Appeal. 
 decision of L. O. final, 164. 
 proliibition does not lie to L. 0., 158. 
 must not enlarge the scope of the patent, 163. 
 
 questions to be considered, 163, 164. 
 instances where application was refused, 165. 
 insertion of subsequent knowledge, 165. 
 imputing disadvantages to former patents, 165. 
 rewriting whole specification, 165. 
 conversion of claim of parts into claim for a combina- 
 tion, 165. 
 repeated applications for same amendment, 166. 
 second amendments discoui-aged, 161. 
 leave granted, conclusive of right to make the amend- 
 ment, 166. 
 except in the case of fraud, 166. 
 if amendnient enlarges scope of patent is the amend- 
 ment void or is the patent void ? 166 — 169. 
 
554 INDEX. 
 
 Amendment of the Specification— cowimwec^. 
 at instance of patentee — continued. 
 
 necessity for, does not necessarily imply that original 
 
 patent was bad, 169. 
 if action for infringement or petition for revocation is 
 pending, 169. 
 leave of Court or Judge necessary, 170. 
 if more than one action is pending leave of each 
 
 Court must be obtained, 170. 
 House of Lords has no jui-isdiction, 169, 170. 
 effect of judgment of Court of Appeal in petition 
 
 for revocation, 273. 
 Palatine Court has jurisdiction, 170. See Lancaster, 
 
 County Palatine Court of. 
 Court has absolute discretion, 170. 
 usual terms imposed, 171. 
 where no terms are imposed, effect, 173. 
 amendment may be by disclaimer only, 170. 
 procedure after leave of the Court has been ob- 
 tained, 170, 435. 
 when allowed, shall be advertised, 174. 
 action brought while proceedings before C. G. were 
 
 pending, effect, 169. 
 after judgment, leave of Court not necessary, 172. 
 injunction granted before, unenforceable after, 174. 
 retrospective effect of, 172. 
 effect of provisions of Act for, summed up, 174. 
 forms relating to. See Table of Contents. 
 
 Analogous Puepose, 
 
 application of old contrivance to, 35 et seq. 
 
 Anticipation, 
 
 by prior secret user by inventor, 54 et seq. 
 
 by prior secret user by others, 54 et seq. See Prior User 
 
 by manufacture, 52. 
 
 by offer for sale, 52. 
 
 by incomplete and practically useless machine, 53 
 
 by scientific curiosity, 53, 67. 
 
 by experiments, 57. 
 
 effect of profit resulting, 57. 
 by manufacture and delivery of samples, 58. 
 by publication of invention, 58. 
 
 amount of information necessary, 59. 
 
 in specification, 61. 
 
 in a book or newspaper, 61. 
 
 in foreign book or newspaper, 63. 
 
 by a drawing, 64. See Prior Publication. 
 
 App^iRENT Possession, doctrine of, does not affect patent right, 
 176. 
 
 Appeals, 
 
 from C. G. 
 
 provisions as to, 141, 159, 455. See Laio Officer's 
 
 Pules. 
 evidence used on, 141, 456. 
 
INDEX. 555 
 
 Appeals — contimied. 
 from C. G. 
 
 witnesses may be called, 141 . 
 
 question of fraud may not b e raised for the first time 
 
 on, 140. 
 experts may be called in to assist L. 0., 142. 
 
 remuneration of, 142. 
 none from decision that invention is illegal or immoral, 
 
 146. 
 I'eturn of stamp on notice of appeal refused to success- 
 ful appellant, 162. 
 decision of Law Officer is final, 164. 
 costs follow the event, 138. 
 costs will not generally be awarded for or against the 
 
 C. G., 162. 
 form of, 450. 
 to Court of Appeal, 338. 
 
 further evidence on, when allowed, 338. 
 amendment of pleadings and particulars, 339. 
 stay upon judgment pending, 338. 
 to House of Lords, 339. 
 
 Applicant. See also Application ; True and First Inventor. 
 who may be, 
 
 infant, 8. 
 
 married women, 8. 
 
 lunatic, 8. 
 
 alien, 8. 
 
 legal representative of deceased inventor, 10. 
 
 two or more persons jointly, 9. 
 
 first importer, 19, 23. 
 who may not be, 
 
 clergyman, 8. 
 
 member of official commission, 8. 
 rights of, prior to sealing, 133. 
 powers of agent of, 126. 
 xmder International Convention, 24, 68. 
 
 Application, 
 
 for a patent, 126, 346. 
 
 rules relating to, 424. 
 form of, 440. 
 
 when communicated from abroad, 24, 126, 441. 
 
 under international arrangements, 126, 441. 
 
 where wrong form is used, effect of, 21, 126. 
 must be signed by applicant or applicants, 126. 
 statement of address must accompany, 424. 
 declaration required, 127. See Declaration. 
 by post, 127. 
 by legal representative of deceased inventor, 127. 
 
 must be within six months of decease of inventor, 
 127. 
 
 must be accompanied by copy of the will, 427. 
 on behalf of incapable person, 127. 
 must be accompanied by a specification, 127. 
 must comprise one invention only, 128. See Invention. 
 
556 INDEX. 
 
 Applic ATIO N — con tin ued. 
 for a patent — continued. 
 
 reference to an examiner, 129. 
 
 comparison of provisional with complete, 129. 
 
 report of examiner, effect of, 129. 
 
 reports of examiners not published, 132. 
 
 Comptroller may refuse or require amendment, 129. 
 
 jurisdiction to consider disconformity between 
 claims and specification, 130. 
 accepted in cases of doubt, 130. 
 in fraud of first inventor, 18. See Opposition. 
 two for the same invention, provisions as to, 129. 
 contrary to law or morality will be refused, 130, 146. 
 appeal from C. G.'s decision to Law Officer. See 
 
 Appeals. 
 abacdoned if not accepted within prescribed time, 131, 
 
 132. 
 if abandoned, specification not published, 131, 351. 
 acceptance of, advertisement of, 132. 
 
 eflPect of, 133. 
 for enlargement of time for filing complete, 131. 
 
 evidence in support of, 131, 434. 
 
 fees payable on, 131. 
 for leave to amend, 152. See Amendment. 
 
 opposition to, 158. See Opposition, 
 for liberty to apply to amend, 170. See Amendment. 
 
 Apportionment of costs, 333. 
 
 Abchitect, 
 
 when not liable for infringement, 218. 
 
 Arms (Eoyal), 
 
 unauthorized use of, 390. 
 
 Assessor, 
 
 at trial, 358. 
 
 before Court of Appeal, or Judicial Committee, 358. 
 
 remuneration of, 358. 
 
 Assignee, 
 
 of patent is patentee, 7. 
 
 without warranty, is estopped from denying validity, 
 
 177. See Warranty of Validity. 
 with covenant to pay royalties, lapse of patent through 
 
 fault of assignee, 178. 
 subsequent assignee of, with notice of covenants, 178. 
 for a district, rights of, 178. See Joint Owners. 
 extension of term of, quwre, 210. 
 of share of profits, title to an account, 185. 
 merit of, in relation to petition for extension, 198. 
 
 Assignment of Patent. See Devolution. 
 precedent for, 530. 
 by opei'ation of law, 176. 
 right of, created by patent itself, 177. 
 must be by deed, 177. 
 
i:nt)Ex. 557 
 
 Assignment of Patent — nndinucd. 
 
 parol agreement for, operates as equitable assignment, 177. 
 
 by dissolution of partnership, 189. 
 
 may be to any person, 177. 
 
 may be to two or more as tenants in common, 177. See 
 
 Joint Owners. 
 may be of the whole patent, 177. 
 may be for limited area, 177. 
 
 rights of assignee for, 178. See Assignee. 
 by executors before registration of probate, 177. 
 carries with it no implied warranty, 177. 
 
 effect, 178. See Esto'ppel. 
 
 when warranty of validity will be implied, 178. See 
 Warranty of Vuliditij. 
 with notice of covenants and licences, 178. 
 fraudulent agreement for, 181. 
 of future patent rights, 179. 
 registration of, 185. 
 
 agreement must be complete, 186. 
 to Secretary of State for War, 362. 
 
 Attorney-Genek^vIj. See also Laiv Officer; Appeals. 
 
 fiat of, when necessary for revocation of letters patent, 
 267. 
 how obtained, 267. 
 appears on behalf of Crown, in petition for extension, 213. 
 
 Authorization, 
 
 of agent to appear before the C. G., 126. 
 form of, 441. 
 
 BaL AN CE- SHEET, 
 
 must be lodged on application for extension, 203, 458. 
 See Accounts. 
 
 Bank Holiday, 
 
 Patent Office not open on, 131. 
 
 effect of, on period for filing complete specification, leaving 
 documents, and paying fees, 131. 
 
 Bankruptcy of patentee, effect of, 176. 
 
 Beneficed Clergyman, 
 
 as grantee of letters patent, qucere, 8. 
 
 Benevolent Construction. See Specifimtion. 
 
 Board of Trade, 
 
 power of, to grant compulsory licences, 354. 
 power of, to reduce fees, 355. 
 power of, to make rules, 386. 
 appointment of officials at Patent Office by, 382. 
 certificate of, conclusive evidence, 388. 
 
 powers exercisable by President, Secretary, or Assistant 
 Secretary of, 388. 
 
 Body Corporate, 
 
 cannot be sole original patentee, 9. 
 
 may be registered as proprietor and assignee, 8. 
 
558 INDEX. 
 
 Bona Fides. See Specification. 
 
 necessary to support a patent, 55, 56, 113. 
 considered in relation to ambiguity in specification, 116. 
 required of action brought under the proviso to sect. 32 o 
 Act of 1883, 279, 280. 
 
 Breach of Injunction, 260. 
 
 Breaches. See Particulars of Breaches. 
 
 British Possession, 
 
 provisions for protection of inventors in, 389. 
 definition of, 393. 
 
 Burden of Proof, 
 
 of prior user lies with infringer, 48. 
 
 that alleged infringing articles were made by the patented 
 
 process lies on plaintiff, 245, 320. 
 of infringement generally, 320. 
 sufficiency of specification, 320. 
 of utility and legality of patent, 320. 
 novelty, 322. 
 
 when shifted on to defendant, 323. 
 in an action to restrain threats, 278. 
 
 Capitalist may join inventor to obtain grant, 9. 
 
 Carriers, 
 
 of infringing articles, action may be brought against, 252. 
 
 Caveat, 
 
 en-try of, against grant of extension, 356. 
 form of, 500. 
 
 Certificate, 
 
 of Comptroller is primd facie evidence, 385. See Comp- 
 troller. 
 required for obtaining fiat of Attorney-General, 270. 
 of validity, 328. 
 
 provisions relating to grant of, 328. 
 
 prior to, 1883, 329. 
 object of, 328. 
 
 must be applied for at trial, 329. 
 not granted twice for the same patent, 329. 
 quaere, whether it can be granted in an action to re- 
 strain threats, 329. 
 plaintiff and country are parties to grant of, 330. 
 should not be granted unless validity of the patent is 
 really proved, 330. 
 this question discussed, 330. 
 no appeal from decision of the Judge or Court, 331. 
 efi'ect of, 328. 
 "in any subsequent action for infringement," 331. 
 
 does not affect an action commenced prior to grant 
 
 of certificate, 331. 
 does not include petition for revocation, 272. 
 where validity is not disputed in the second action, 
 
 332. 
 disputed upon different grounds, 332. 
 
INDEX. 559 
 
 Certificate — contin tied, 
 of validity — continued. 
 
 discretion of the judge as to whether solicitor and client 
 costs shall bo allowed, 332. 
 •where second action was vexatious, 332. 
 litigation natural result of vagueness of the speci- 
 fication, 332. 
 burden is on defendant to show cause why he should 
 not pay solicitor and client costs, 332. 
 of particulars of breaches and objections, 333. 
 effect of, 333. See Costs. 
 must be applied for at the trial, 334. 
 effect of omission to do so, 334. 
 where action abandoned before trial, 335. 
 where action is not tried out, 335. 
 in petition for revocation, 335. 
 of Board of Trade, 369, 388. 
 of Secretary of State, 363. 
 of payment or renewal, 447. 
 
 application for, form of, 447. 
 
 Chemical Compound, 
 
 may be subject matter, 32. 
 
 Christmas Day. See Bank Holiday. 
 
 Claim. See Specification. 
 
 Clergyman, 
 
 as grantee of letters patent, qucere, 8. 
 
 Clerical Errors, 154. 
 
 jurisdiction of M. R. to amend, 154. 
 
 disclaimer filed without consent of patentee, 155. 
 jurisdiction of C. G. to amend, 155. 
 
 Co-assignees. See Joint Owners. 
 
 Co-grantees. See Joint Oivners. 
 
 Co-licensees. See also Licence. 
 rights of, inter se, 7. 
 
 Colonial, 
 
 arrangements as to patents, 389. 
 
 Colony, 
 
 use of invention in, no bar to subsequent grant of patent 
 in England, 69. 
 
 Colourable Imitation, 232. See Infringement. 
 
 Combination, 
 
 as subject matter, 43. 
 definition of, 43. 
 tested by the result, 44. 
 
 substantial improvement must be effected, 44, 46, 
 ingenuity essential, 45. 
 
560 INDEX. 
 
 Combination — contimied. 
 
 omissiou from an old process of a part previously thouglit 
 
 essential, 44. 
 substitution of a newly-discovered mechanical equivalent, 
 
 44. 
 substitution of well-known mecbanical equivalent is not 
 
 subject matter, 45. 
 of two well-known contrivances without ingenuity not 
 
 subject matter, 45. 
 must be claimed as such, 118. 
 infringement of, 227. See Infringement. 
 
 Commercial Success, 
 
 as evidence of novelty, 68. 
 
 as evidence of utility, 72, 74. 
 
 as evidence of invention, 40, 42, 43. 
 
 Committal for breach of injunction, 260. 
 
 Committee, 
 
 of incapable person, application for patent by, 127. 
 declaration of, 127. 
 
 Common Knowledge, 
 
 objection on ground of, 301. 
 distinguished from prior publication, 301. 
 specifications are not, 301. 
 
 Common Law, 
 
 Statute of Monopolies declaratory of, 3. 
 
 Communication. See True and First Inventor. 
 
 from abroad not abolished by Act of 1883... 21, 22, 23. 
 
 not entitled to benefit of the international arrange- 
 ments, 25. 
 from British subject abroad patentable, 23. 
 from one foreigner resident abroad to another also resident 
 
 abroad, 24. 
 may be held in trust for the foreigner, 23. 
 in England by one subject to another, not patentable, 23. 
 whei e improved upon by patentee, 22. 
 opposition to grant of patent for, 137. 
 with patent agent not privileged, 306. 
 
 Company. See Body Corporate. 
 
 directors of, personally liable for infringement, 217, 337. 
 
 Competition, 
 
 when considered in estimating damages, 261 . 
 
 Complete Specification. See Specif cation. 
 
 Compound Substance, 
 
 may be subject-matter, 32. 
 
 Comptroller, 
 
 ma J' refuse to accept unamended specification, 129. 
 may refuse illegal patent, 130. 
 
 no appeal froia this decision, 146. 
 
INDEX. 561 
 
 Comptroller — rontin ued. 
 
 exercise of discretionary poTver by, provisions as to, 130. 
 
 notice of hearino; by, 130. 
 
 in case of concurrent applicants, 129. 
 
 may amend clerical errors, 155, 384. 
 
 other amendments must be made under s. 18. . 156. See 
 Amendment of Specification. 
 determines when amendment is allowable, 156. 
 
 power to impose conditions, 159. 
 
 no power to give costs, 159. 
 rules relating to opposition before, 432. See Opposition. 
 power of, to apply to law officer in cases of difficulty, 385. 
 power of, to dispense with evidence, 439. 
 no jurisdiction over costs, 159. 
 certificate of, is jtrimd facie evidence, 385. 
 form of certificate of, 449. 
 illustrated journal to be issued by, 361. 
 general duties of, 362. 
 under superintendence of Board of Trade, 382. 
 
 Compulsory Licences, 
 
 provisions relating to grant of, 181, 354. 
 
 practice on petition for grant of, 435. 
 
 order for grant of, enforceable by mandamus, 355. 
 
 Concealment, 
 
 in specification by patentee, 113 ei seq. 
 
 Conditions, 
 
 of grant, 149. See Grant. 
 
 failure of, 149. See False Suggestion. 
 power of C. G. and L. 0. to impose, on allowing amend- 
 ments, 159. 
 
 instances of conditions imposed, 160. 
 
 only imposed under special circumstances, 161. 
 imposed before acceptance of complete specification, 138. 
 
 insertion of disclaiming clauses, 139. 
 
 special and general disclaimers, 139. 
 
 principles upon which disclaimers are inserted, 139. 
 imposed on extension of term of a patent, 356. 
 
 Confirmation of letters patent, 214. 
 
 Consideration for grant. See also Subject Matter. 
 what is, 10. 
 
 mental labour essential part of, 16, 17. 
 failure of, avoids patent, 12, 74. 
 is entire and indivisible, 67. 
 must move from the patentee, 25. 
 
 Construction, 
 of grant, 151. 
 of specification, 93 et seq. See Specification. 
 
 Constructive Notice, 
 
 entry on register of patents does not amount to, 187. 
 in case of fraudulent entry upon registpr, 187. 
 
 T. O 
 
562 INDEX. 
 
 CONTEACTOR, 
 
 liable for infringement, 150, 217. 
 
 CoJsrVENTiON, International. See International Arrangements 
 for protection of industrial i^roperty. 
 
 Co-owist;rs of patent. See Joint Owners. 
 
 Copies, 
 
 six, of specification, to be filed on petition for extension, 203. 
 four, of balance-sheet, to be filed on petition for extension, 
 
 203. 
 of will, must accompany application on behalf of deceased 
 
 inventor, 427. 
 of documents in Patent Office to be fnrnished by Comp- 
 troller, 438. _ 
 admitted as evidence, 383. 
 
 COEPORATION. See Body Corporate. 
 
 Correction of specification. See Amendment of Specification. 
 
 Costs, 
 
 Comptroller has no power over, in proceedings before him, 
 
 159. 
 of proceedings before the Law Officer, 138, 162. 
 not generally granted to or against C. G., 162. 
 not granted in the case of a second disclaimer, 161. 
 not granted where specification was very loosely 
 framed, 162. 
 terms as to, upon which Court will grant for leave to apply to 
 
 amend, 171. 
 of opposition to petition for extension, 212. See Extension 
 
 of Term. 
 security for, by licensee suing in name of patentee, 217. 
 as between solicitor and client, 328. 
 
 discretion of judge to refuse, 328. See Certificate of 
 Validity. 
 apportionment of, 333. See Certificate. 
 principle of, 333. 
 the issues must be distinct, 334. 
 infringement admitted before trial, 334. 
 when plaintiff abandons at the trial his case with 
 
 regard to one of two patents, 334. 
 where action is not tried out, 334. 
 where action is abandoned before trial, 335. 
 none given when defendant was successful by amendment 
 
 of particulars of objections at the trial, 335. 
 where damages are less than 40s., 336. 
 on the higher scale, 336. 
 when allowed, 336, 
 cases of very unusual difficulty, 337. 
 not often allowed, 337. 
 
 not allowed where the difficulty arose from the vague- 
 ness of the specification, 337. 
 no appeal from decision of the Judge, 337. 
 personal liability of directors of a company, 337. 
 
INDEX. 563 
 
 Costs — contin ued. 
 
 provisions in the minutes of judgment for, should be in- 
 serted when an account is directed, 338. 
 
 of appeal to House of Lords, 339. 
 
 of " threats " action when defendant has brought action for 
 infringement, 282. 
 
 County Court, 
 
 has no jui'isdiction to try validity of a patent, 318. 
 
 CounT, 
 
 definition of, 170. 
 
 does not include House of Lords, 170. 
 power of, to impose terms on granting liberty to apply to 
 
 amend, 171. 
 questions for, 325 
 variance, 82. 
 construction of specifications, 93, 325. 
 
 when for the jury, 98, 325. See Questions for 
 Court and Jury. 
 
 Court of County Palatine of Lancaster. See Lancaster, 
 Court of County Palatine of. 
 
 Covenant. See Warranty of Validity ; Agreement. 
 
 by assignee to pay royalties, eflFect of lapse of patent, 178. 
 subsequent assignee with notice of prior, 178. 
 to assign future patent rights, 179. 
 
 by licensee not to manufacture without using invention not 
 void as in restraint of trade, 179. 
 
 Crowtj, 
 
 patent to bind, 151. 
 
 use of invention by servants of, 151. 
 
 by contractor of, 150. 
 
 power of purchase by, 150. 
 
 right of user without payment abolished, 151. 
 
 terms of user by, 151. 
 
 arrangements with other governments by, 411. 
 
 royal prerogative preserved, 147. 
 
 Custodiers, 
 
 discovery of the names of defendant's, 304. 
 
 Damages, 
 
 when allowed after amendment, 172. 
 
 may be refused, when prescribed fees have not been paid, 
 
 352. 
 when plaintift' entitled to. 261. See Injunction. 
 plaintiff must elect between an account and, 261. See 
 
 Account. 
 distinction between account and, 261. 
 measure of, in an action for infringement, 261. 
 
 commercial competition, how far considered, 261. 
 extent of infringement considered, 262. 
 where a part only of machine is an infringement. 263. 
 where licences had been granted, 263. 
 
 O o 2 
 
564 INDEX. 
 
 Damages — continued. 
 
 must be proved, 321. 
 
 against whom recoverable, 263. 
 
 discovery in aid of, 263. 
 
 do not depend on right to an injunction, 265. 
 
 recoverable by one of several joint owners of a patent, 180. 
 
 Date of patent, 143. 
 
 applied for under the international arrangements, 24. 
 
 Days, 
 
 when Patent Office is closed, 424. 
 
 when Eegister is not open to the public, 438. 
 
 Death, 
 
 of inventor before application, 10. 
 
 of inventor before sealing of patent for his invention, 143. 
 
 of opponent to grant of a patent while the opposition is 
 
 pending, 142. 
 of patentee when co-plaintiff with licensee, 184. 
 of patentee pending petition for extension, 209. 
 
 Deceased Inventor, 
 
 application may be made on behalf of, 127. 
 
 official copy of will must accompany application, 427. 
 
 Declakation, 
 
 rules relating to, 426. 
 
 must accompany application, 127. 
 
 under international arrangements, 428. 
 
 by legal representative of deceased inventor, 10, 127. 
 
 on behalf of incapable person, 10, 127. 
 
 by first importer, 21. 
 must be made by one of the applicants, 9. 
 where invention is partly communicated from abroad and 
 
 partly original, 21, 22. 
 exem^Dt from stamp duty, 127. 
 by opponent to grant, 136. 
 
 rules as to, 136. 
 by opponent to amendment, 1 59. 
 
 of acceptance of British accession to International Conven- 
 tion, 421. 
 
 Deductions, 202. See Petition for Extension. 
 
 Deed, 
 
 assignment of patent must be by, 177. 
 
 Defence, 
 
 of licensee to an action for recovery of royalties, 191. See 
 
 Estoppel. 
 with warranty of validity, may dispute validity of the 
 
 patent, 191. See Warranty o/ Validity. 
 may refer to state of public knowledge at date of 
 
 patent to show ambit of specification, 192. 
 may sh(jw that the patent has expired, 192. 
 fraud, 192. 
 that he has not worked the invention, 192. 
 
INDEX. 565 
 
 Defence — continued. 
 
 of licensor's want of title, but fraud must be shown, 192. 
 
 secus in the absence of fraud, 193. 
 to an action for infringement, 292. 
 
 Definitions, 
 
 a new invention, 26, 365. 
 
 public use, 51. 
 
 prior publication, 58. 
 
 novelty, 50. 
 
 utility, 73. 
 
 inventor, 23. 
 
 legal representative, 137. 
 
 patent, 365. 
 
 patentee, 365. 
 
 correctiou or explanation, 157. 
 
 hypothetical workman, 106. 
 
 mechanical equivalent, 233. 
 
 using, to amount to infringement, 239. 
 
 British possession, 393. 
 
 "injunction" in Scotland, 365. 
 
 Coui't, 170. 
 
 Delay, 
 
 in taking proceedings to restrain infringement, 
 bar to interlocutory injunction, 257. 
 may bar an injunction, 253. 
 account of profits refused in case of, 264. 
 no bar to inspection, 313. 
 
 course to pursue where there are several infringers, 
 253. 
 in sealing a patent, 143. 
 
 Delivery, 
 
 up of infringing articles, 259. 
 
 Description, 
 
 quality of, required in specification, 109. 
 error in, eS'ect of, 104. 
 distinguished from claim, 117. 
 
 of applicant's invention in opponent's specification but not 
 claimed, 138. 
 
 Designs, 365. 
 
 Destruction op Infringing Articles, 259. 
 when ordered, 259. 
 
 Details, 
 
 suggested by workman, 11 ei seq. 
 
 Determination, 
 
 of patent on non-payment of fees, 150. 
 
 Devolution. See Assignment ; Licence, 
 hy operation of laiv, 176. 
 upon bankruptcy, 176. 
 upon death, 176. 
 
566 INDEX. 
 
 Devolution — continued. 
 
 by assiginittiit inter vivos, 177. 
 
 absolute, 177. 
 
 for limited area, 177. See Joint Owners. 
 
 by way of mortgage, 177. See Assignment ; MorUjayee. 
 
 dissolution of partnership, effect of, 180. 
 hy grant of licences, 181. See Licence. 
 
 Directions, 
 
 summons for, in petition for revocation, 271. 
 
 DiRECTOKS of a company, 
 
 liable for infringement, 217. 
 liability of, for costs, 337. 
 
 Disclaimer. See Amenchnent of Siiccification. 
 
 filed without consent of patentee, struck out by M. E., 155. 
 general and special, 139. See Conditions. 
 amendment limited to, when action for infringement or 
 petition for revocation isj^ending, 170. 
 
 DiSCONFORMlTY. See Variance. 
 
 Discovery. See Interrogatories. 
 
 in aid of inquiry as to damages, 263. 
 
 Doctrine, 
 
 of mechanical equivalents, 223, 224. 
 
 of apparent possession in relation to letters patent, 176. 
 
 Documents, 
 
 sent to Patent Office, size of, &c., 424. 
 amendment of, 426. 
 
 sent to Patent OflBce by post, provisions as to, 426. 
 which passed between patentee and patent agent, discovery 
 of, 306. 
 
 Drawings, 
 
 provisions of statute as to, 347. 
 
 must accompany either provisional or complete specification, 
 
 if required, 77. 
 size of, 429. 
 
 optional before 1883. ..124. 
 omission of, effect, 124. 
 are ior purpose of elucidating text, 125. 
 may be read into specification, 125. 
 may not extend scope of claim, 125. 
 amendment of, 1 58. 
 
 insertion of, to illustrate amendment, 158. 
 anticipation of invention by, 64. 
 
 Duplicates, 
 
 of lost patent, when granted, 360. 
 
 fo7'nt of application for, 448. 
 of documents required by Comptroller, 425. 
 
 Dtjbation of patent, 147. 
 
INDEX. 567 
 
 Enlargement of Time, 
 
 for filing complete specificatiou, 131, 434. 
 
 form of application for, 451. 
 
 fee payable on application for, 131. 
 for payment of fees, 352, 434. 
 
 when allowed, 352. 
 
 limitation of, 352. 
 
 effect of, as regards infringements committed in the 
 interval, 353. 
 
 form of ai^plication for, 447. 
 in other cases, 434. 
 
 Entry of grant on register, 436. 
 
 Eqtjitable, 
 
 assignment of patent, 177. 
 
 rights under, enforceable, 383. 
 
 Equity, 
 
 none of patent, 232. 
 
 Equr^alents, 
 
 substitution of known, not subject matter, 45. 
 substitution of unknown, may be subject matter, 44. 
 well-known, included in a specification, 104. 
 infringement by, 2^'i et seq. 
 doctrine of mechanical, meaning of, 223. 
 definition of, 233. 
 
 Errors, in a specification. 
 
 may or may not vitiate the patent, 104. 
 clerical, 154. 
 
 jurisdiction of M. E. to correct, 155. 
 
 jurisdiction of 0. G. to correct, 155. 
 
 Essence of an invention, 
 
 for impi'ovod method of attaining old object, 224. 
 for new method of attaining new result, 225. 
 for a new combination, 228. 
 
 Estoppel, 
 
 of assignor, 188. 
 
 may not set up defence of invalidity, 188. 
 
 not prevented from giving evidence in action bi'ought 
 
 by assignee against third party, 191. 
 by operation of law, none, 188. 
 of record between Crown and grantee, 188. 
 
 none against Crown, 188. 
 of assignee, 188. 
 on dissolution of partnership, 189. 
 
 when partners will be estopped from denying validity 
 of a patent, 189. 
 of licensee, 189 et seq. 
 
 judgment obtained by third parties, effect, 194. 
 
 none, after termination of licence, 190, 193. 
 
 none, where licensor gave a warranty of validity, 191. 
 
 See Warranty of Validity. 
 none in case of fravid. 192. See Defence. 
 
568 INDEX. 
 
 Estoppel — continued, 
 hy judgment, 193. 
 
 does not operate in petition for revocation, 193. 
 none by arbitrator's award, 19-4. 
 
 Evasion, 
 
 of patent, 231. Qqq Infringement. 
 
 Evidence, 
 
 on opposition to grant, 141, 432. 
 
 on application by legal representative, 427. 
 
 on application under international arrangements, 428. 
 
 on application for leave to amend, 158, 435. 
 
 on application for compulsory licence, 436. 
 
 before Law Officer, 141, 456. 
 
 statutory declarations, how made, 426. 
 
 power of Comptroller to dispense with, 439. 
 
 in support of application for interlocutory injunction, 259. 
 
 in support of application for inspection, 314. 
 
 in petition for extension, 458. 
 
 not received from petitioner, 204. 
 in action for infiingemeut or petition for revocation. 
 
 commercial success as evidence of invention, 40, 42, 43. 
 
 of novelty, 68. 
 of utility, 72, 74. 
 for purpose of construction of specification, 96. 
 scientific and technical literature distinguished, 102. 
 expert evidence, 96, 321. 
 
 question that may be put in cross-examination of, 
 321. 
 of common knowledge, 301. 
 limited to particulars, 290, 301. 
 seal of Patent Office judicially noticed, 144. 
 certificate of Comptroller prm« /rtcre evidence, 385. 
 extracts from register certified by Comptroller, 320. 
 repoi-ts of examiners may be ordered for production by 
 Court, 349. 
 
 Examiner, 
 
 appointment of, 382. 
 
 reference of application and specifications to, 128, 347. 
 
 duties of, 128, 129. 
 
 jurisdiction of, 153, 154. 
 
 report of, 128, 129. 
 
 not published except by order of the Court, 349. 
 
 effect of, 129. 
 
 does not bind judgment of C. Q-., 129. 
 
 Exclusive Licensee. See Licensee. 
 
 Execution, stay of, 338. 
 
 Executor, 
 
 is the legal rejiresentative, 137. 
 
 may take out patent on behalf of deceased inventor, 10. 
 
 may maintain action for infringement, 217. 
 
INDEX. 569 
 
 Exhibitions, 
 
 provisions of statute relating to exposure of iuventions at, 
 
 361. 
 rules relating to, 425. 
 
 Existing Patents, 
 
 provisions relating to, 364. 
 
 EXPERIMENTAIi USER, 
 
 what does not amount to anticipation, 53, 57. 
 
 by inventor, 57. 
 
 by one on behalf of inventor, 57. 
 
 effect of profit resulting from, 57. 
 
 sending out samples, 58. 
 what does amount to anticipation, 57, 226. See Experiments. 
 statement of the law on this subject, 57. 
 what amounts to infringement by, 237. 
 
 Experiments. See Experimental User. 
 
 abandoned as unsatisfactory, effect on subsequent patent, 
 
 53. 
 necessary to make earlier description workable, effect on 
 
 subsequent patent, 61. 
 necessary to practise invention satisfactorily, patent may or 
 
 may not be invalidated thereby, 110. 
 for manufacturing evidence in view of litigation, looked on 
 
 with distrust, 322. 
 
 Expert, 
 
 may be called in by Law Officer, 142. 
 
 remuneration of, 142. 
 witness, 321. See Evidence. 
 
 Explanation. See Amendment of Specification. 
 
 Exposure, 
 
 for sale, constitutes prior publication, 52. 
 
 for sale of book containing description constitutes prior 
 
 publication, 63. 
 for sale, may not amount to infringement, 243. 
 
 Extension of Term of Patent, 
 provisions for, 195, 356. 
 former practice as to, 196. 
 form of petition for, 502. 
 origin of jurisdiction of Privy Council, 196. 
 spirit in which Privy Council approaches subject of, 197. 
 considerations which guide the Privy Council, 197. 
 immaterial whether opposed or not, 198. 
 grounds for, must be strictly proved, 198. 
 
 in spite of consent of Crown, 198. 
 two or more patents of similar nature may be subject of one 
 
 petition, 212. 
 for a limited area, qiuere, 210. 
 
 patents granted prior to 1883, governed by provisions of 
 5 & 6 Will. 4, c. 831.. 95. 
 application for extension of, may be presented any 
 tinae before expiration of patent, 195. 
 
570 INDEX. 
 
 Extension or Term of Patent — continued. 
 
 application for, granted since 1883, must be presented 
 
 within six months of expiration of patent, 195. 
 who may j^etition for, 209. 
 patentee, 209. 
 
 executor or administrator, 209. 
 assignee, 209. 
 public company, 209. 
 executor of assignee, 209. 
 equitable owner of patent, 209. 
 mortgagee should be a party, 209. 
 death of patentee pending petition for, 209. 
 who may oppose petition for, 212. 
 
 Attorney- General appears for Crown, 213. 
 reasonable opposition encouraged, 212. 
 grounds for petition for, 197 
 merit, 199 
 
 meaning of, 199, 200. 
 of a company, 200. 
 of importer, 198. 
 of assignee, 198, 209. 
 
 terms sometimes imposed in case of, 198. 
 limit of inquiry into novelty and utility, 199, 207. 
 non-user as presumption against, 200. 
 part meritorious, part not so, 200. 
 sufficiency of remuneration, 201. 
 estimation of profits, 202. 
 
 expenses of experiments, 202. 
 
 costs of litigation in supporting patent, 202. 
 
 expenses of taking out patent, 202. 
 
 expenses of pushing invention, 202. 
 
 personal expenses of patentee, 203. 
 
 salary of patentee, 203. 
 
 agents' commissions, 203. 
 
 profits as manufacturer and profits as 
 
 patentee, 201, 202. 
 profits by exportation, 203. 
 profits made abroad, 203. 
 profits made by licensees, 203. 
 profits made by assignees of a part, 203. 
 profits arising from foreign patents, 205. 
 accounts, 203. 
 
 provisions for filing, 203. 
 
 perfect, may be excused, 204. 
 
 must be clear and precise, 204. 
 
 condition precedent, 205. 
 
 where j3rimd /ac?e unsatisfactory, 204. 
 
 where books of patentee were lost during 
 
 bankruptcy, 204. 
 absence of books, effect of, 205. 
 evidence by petitioner, 204. 
 may be amended, 205. 
 all the circumstances of the case, 205 
 objections, 205 
 
 patent not brought into public use, 205. 
 
INDEX. 571 
 
 Extension of Term of Patent — coniinued. 
 
 all the circumstances of the case — continued. 
 objections — continued. 
 
 negligence of patentee in restraining infringe- 
 ment, 205. 
 patent useless as originally described, 205. 
 absence of profits through, fault of patentee, 
 
 206. 
 false statements in prospectus of company, 
 
 206. 
 insufficiency of specification, 206. 
 grant of exclusive licence, with covenant to 
 
 continue, 206. 
 patent obviously bad, 207. 
 that patent had been prolonged before, 213. 
 special circumstances. 
 
 non-user of patent satisfactorily explained, 
 
 205. 
 patentee incapacitated by an accident, 206. 
 Court of First Instance held patent bad, appeal 
 
 pending, 208. 
 foreign patents, 208. 
 practice on petition for, 213, 457. 
 advertisements required, 211. 
 
 in case of petitioner resident abroa.d, 211. 
 names of all the parties must be inserted in, 211. 
 must be proved before case is heard, 213. 
 provisions as to, 211. 
 disclosure required in petition, 212. 
 
 documents to be lodged by petitioner, 458. 
 caveat against, 212. 
 
 notices required of opponent, 458. 
 hearing, 213. 
 
 objections raised for first time at, 213. 
 . costs — 
 
 in discretion of Judicial Committee, 196. 
 unreasonable opposition, 212. 
 successful opposition, 212. 
 abandoned petition, 212. 
 
 in case of two or more separate opponents, 212. 
 forms. See Appendix D. 
 granted, becomes a new patent, 195. 
 power to impose conditions, 356. 
 limit of, is fourteen years, 196. 
 not granted a second time, 213. 
 order for, entry upon register of, 213. 
 
 Extension of Time. See Enlargement of Time. 
 
 Extent of Patent, 147. 
 
 Extracts from Register of Patents, how obtained, 438. 
 
 Extraneous Matter in Specification, 
 avoids patent if inserted mala fide, 116. 
 may or may not avoid patent if inserted bondjide, 116. 
 
572 INDEX. 
 
 False Suggestion, 
 avoids i^atent, 144. 
 
 not first inventor, 144. 
 
 title not disclosing nature of invention, 145. 
 
 want of novelty, 144. 
 
 want of utility, 74. 
 
 imperfect complete specification, 146. 
 
 patent contrary to law or morality, 146. 
 is the ground for revocation of a patent, 267. 
 distinguished from insufficient description, 146. 
 
 FAIiSIFICATION, 
 
 of entries upon the register, 385. 
 
 Fees, 
 
 schedule of, 453. 
 
 determination of patent on non-payment of, 150. 
 non-payment of, through accident or mistake, 352. 
 failure to pay within prescribed time, effect upon damages 
 
 for infringement in the interval, 352. 
 rules relating to payment of, 452. 
 certificate of payment of, 434. 
 enlargement of time for payment of, 352. 
 
 form o/ application for, 447. 
 entry of payment or non-payment upon register, 438. 
 power of Board of Trade to reduce, 355. 
 payable upon applying for fiat of Attorney-Q-eneral, 270. 
 schedule of, to Eegister of Patent Agents' Rules, 467. 
 
 Fiat, 
 
 of Attorney- General in proceedings for revocation, how 
 obtained, 269. 
 
 First Importer. See True and First Inventor ; Communication. 
 merit of, 19—21. 
 
 Foreign Applicant, 
 
 under international arrangements, 24. 
 has double right, 69. 
 rights of, 24. 
 purely personal to, 24. 
 effect of prior abortive application by, 25. 
 effect of English application prior to date of inter- 
 national arrangements, 25. 
 opposition by, to EngUsh application, 140. 
 
 Foreign Patent, 
 
 how far considered, in petition for extension, 205, 208 . 
 
 Foreign Vessels, 
 
 use of patented invention upon, 362. 
 
 Foreigner. See Alien. 
 
 international arrangements for protection of, 411. 
 
 infringement by, 218. 
 
 resident abroad, petition for extension by, 211. 
 
 Forms. See Table of Contents. 
 
INDEX. 573 
 
 Fraud, 
 
 of first inventor, application in, 18. 
 
 question of, raised for first time upon appeal to Law Officer, 
 
 140. 
 no amendment allowed in case of, 1 66. 
 as ground for petition for revocation, 269. 
 defence by licensee to action for royalties, 192. 
 patent revoked on ground of, now patent will be granted, 
 
 267. 
 
 Fraudulent Agreement, 
 
 to assign a patent will be set aside, 181. 
 
 Franchise, 
 
 includes letters patent, 1. 
 
 General Disclaimers, when required by C. G., 139. See 
 
 Conditions. 
 
 Good Friday. See Banh Holiday. 
 
 Grant of Letters Patent, 
 
 application for. See Application. 
 
 opposition to. See Opposition. 
 
 rights conferred by, 9. See Letters Patent. 
 
 for one invention only, 128. 
 
 Eoyal prerogative preserved, 147. 
 
 form of, 394. 
 
 the recitals in, 144 et seq. 
 
 contain the suggestions, 144. 
 the grant, 146 et seq. 
 
 creates property in invention, 147. 
 the pi'ohibition, 148. 
 the conditions, 149 et seq. 
 
 novelty of invention, 149. 
 
 rights of Crown limited in, 149. 
 the construction, 151. 
 
 extension of term of, 201. See Extension of Term. 
 revocation of, 266. See Revocation, 
 
 Grantee, ^qq Applicant; True and First Inventor, &c. 
 
 Holiday. See Bank Holiday. 
 
 House of Lords, 
 
 not included in word " Court " in Patents Acts, 170. 
 
 Ignorance, 
 
 no excuse for infringement, 220. 
 
 Illustrated Journal, 
 
 to be issued by Comptroller, 361. 
 
 Imitation, 
 
 colourable, 232. See Infringement. 
 
 Immoral, 
 
 subject, refusal of application for patent for, 130. 
 no appeal from, 146. 
 
574 INDEX. 
 
 Impoetation, 
 
 mere, no infringement, 243. 
 
 of invention sufficient to support grant, 20. 
 
 Imported Invention, 
 
 good subject matter, 21. 
 
 not abolislied by the Patents Acts, 23. 
 
 Importer, 
 
 has the merit of invention, 23. 
 
 but If^ps than true inventor, 24. 
 
 need nut be a meritorious importer, 23. 
 
 circumstances which occurred abroad not inquired into 
 by C. G., 137. 
 has no rights under international arrangements, 25. 
 
 Improvement, 
 
 may be good subject matter, 34. 
 
 by addition or subtraction from a known machine, 34. 
 
 by substitution of mechanical equivalents, 34, 44. 
 
 by new application of old invention, 35 et seq, 
 
 on subject of existing patent, 34. 
 
 could only be used with licence, 34. 
 
 not proof that original invention is useless, 73. 
 accidental, immaterial, 46. 
 obvious after made, immaterial, 46. 
 ingenuity essential, 45. 
 must be clearly ir.dicated by the claim, 121. 
 discovered after filing the provisional must be incorporated 
 in the complete, 87. 
 
 unless it amount to a new invention, 88. 
 
 or merely a better way of using the invention, 90. 
 suggested by a workman, 14. 
 
 test to be applied, 14. 
 infringement of, 224. See Infringement. 
 
 Incapable, 
 
 person, application on behalf of, 127. 
 declaration on behalf of, 386. y 
 
 Independent Inventors, 15. 
 
 Indorsement on Writ. See Writ, &c. 
 form of, 470. 
 
 Industrial or International Exhibitions. See Exhi- 
 
 hitions. 
 
 Ineant, 
 
 may obtain a patent, 8. 
 declaration on behalf of, 127. 
 
 Infringement, 
 
 no proceedings may betaken for, until patent is sealed, 133. 
 
 prior to sealing of patent, how far actionable, 133. 
 
 efiect of non-payment of fees within presciibed time. 353. 
 
 definition of, 219. 
 
 prohibited by royal command, 219. 
 
INDEX. * 575 
 
 Infringement — continued. 
 
 is a question for the jury, 219. 
 
 noue of au iuvalid patent, 220. 
 
 ignorance of patent immaterial, 220. 
 
 intention immaterial, 221. 
 
 by several persons, course to pursue, 253. 
 
 what amounts to, 224. 
 
 must be of something claimed, 230. 
 
 taking pith and essence of the invention, 224, 232. 
 
 substantial imitation considered, 230, 232. 
 of patents effecting old and new results considered, 222 
 
 et seq. 
 immaterial that patent is improved upon, 225, 
 distinction between user amounting to anticipation and 
 
 amounting to, 225. 
 of part of invention, 226. 
 by user for a different object, 229. 
 of patent for a combination, 227 — 233. 
 
 only by taking essence of the combination, 228. 
 
 colourable imitation, 228, 232. 
 
 addition, 229. 
 
 subtraction, 229. 
 
 substitution, 229. 
 
 use for a different object, 229. 
 
 another combination of same materials may not amount 
 to, 231. 
 
 another method of effecting combination may not 
 amount to, 231. 
 by use of a mechanical equivalent, 233 et seq. 
 
 definition of mechanical equivalent, 233. 
 taking out a patent does not amount to, 235. 
 making, 235. 
 
 and selling elements of a combination, no, 236. 
 
 and selling constituent parts of a machine, may be, 237. 
 
 giving orders for, 237. 
 
 upon instructions of plaintiff's agent, 237. 
 
 by way of exj^eriment, 237. 
 
 by servants of the Crown, 239. 
 using, 239. 
 
 definition of, 239 
 
 mere possession, does not necessarily amount to, 241, 
 
 for a different purjjose, 237, 241. 
 
 on foreign vessels, 242. 
 
 on British ship abroad, 242. 
 
 by agents for transhipment, no infringement, 242. 
 
 innocent carriers, 243, 
 
 custom hoixse ofiicers, 242. 
 
 by way of experiment, 237. 
 
 for purposes of instruction, 238. 
 selling, 243. 
 
 lending is not, 243. 
 
 mere purchase, exposure for sale, or importation, no, 
 243, 
 
 patented article made abroad, 243, 
 
 burden of proof that articles were made by patented 
 process, 245. 
 
576 « INDEX. 
 
 Intrtngement — continued, 
 selling — continued. 
 
 substances to be used for purposes of infringement, 
 
 245. 
 constituent parts of infringing macliine, 237. 
 article bought from patentee, 246. 
 
 eifect of existence of exclusive licensee for a dis- 
 trict, 247. 
 effect of limited license, 247. 
 article bought from a licensee, 247. 
 parties to action for. See Parties. 
 practice in action for. See Writ ; Particulars, &c., &c. 
 injunction, remedy by, 248. See Injunction. 
 damages for, 261. See Damages. 
 account of sales and profits, 264. See Account. 
 costs of action for. See Costs ; Certificate. 
 trial of action for. See Trial. 
 
 Infringing Articles, 
 
 right of property in, 260. See Destruction of ; Delivery 
 up of. 
 
 Ingenthty, 
 
 necessary to support a patent, 42, 45. 
 tested by the result, 42, 44. 
 commercial success as evidence of, 42. 
 
 amount of, requii-ed to support patent for a new use of an 
 old machine, 39 et seq. 
 
 Injunction, 
 
 remedy for infringement by, 248. 
 basis of, is the threat to infringe, 248. 
 
 what amounts to a threat to infringe, 241, 249. 
 
 wrongful act, not necessary, 251, 252. 
 principle upon which granted, 251. 
 granted against innocent carriers, 252. 
 effect of delay in prosecuting infringers, 253. 
 course to pursue in case of several infringers, 253. 
 in Scotland means " interdict," 365. 
 interlocutory, when granted, 255. 
 
 sometimes ex parte, 254. 
 
 how obtained, 254, 259, 
 
 Master of Q. B. D. has no power to grant, 255. 
 
 evidence used on application for, 259. 
 
 prirnd facie case of validity, 255. 
 
 patent upheld in previous action, 255. 
 
 long undisputed enjoyment, 256. 
 what amounts to, 256. 
 
 where defendant has admitted validity of patent, 256. 
 
 where defendant is estopped from denying validity of 
 patent, 256. 
 
 where no substantial defence was put forward, 257. 
 
 refused in case of new patent, 256. 
 
 refused when patentee was guilty of delaj^ 257. 
 
 balance of convenience, how far considered, 257. 
 
 preservation of status quo, aimed at, 258. 
 
 may be granted or refused on terms, 257. 
 
INDEX. 57/ 
 
 Injunction — continued. 
 
 interlocutory — continued. 
 
 form of notice of motion for, 470. 
 of affidavit in Kui)23ort, 471. 
 of refusal on terms, 473. 
 of order for, 472. 
 stay of, on grounds of public convenience, 260 
 falls with expiry of joatont, 260. 
 
 but not as to previously made articles, 260. 
 mandatory, when granted, 2G0. 
 not enforced, when specification was amended after judg 
 
 ment, 174. 
 committal on breach of, 260. 
 
 Inspection, 
 
 power of Court to grant, 310. 
 object of the Court, 311. 
 ^jrjmci/acze case necessary, 311, 313. 
 granted when essential, 310, 312. 
 of secret process, 311. 
 
 strong pri7nd facie case necessary, 312. 
 
 by scientific men, 311. 
 samples may be ordered for, 313. 
 
 effect of delivery of, 313. 
 mutual, when ordered, 313. 
 laches no bar to, 313. 
 
 of alleged infringing machine at work, 313. 
 of articles not within the control of the defendant, 313. 
 of exhibits of the defendant's witnesses, 313. 
 right to, depending uj^on a contract, the matter in dispute, 
 
 313. 
 application for, on motion, or by summons, 314. 
 
 at any stage of the proceedings, 314. 
 
 evidence in support of, 314. 
 
 E. S. C. relating to, 314. 
 of register of patents, 438. 
 forms, relating to, 473 et seq. 
 
 Insufficiency. See Specification, 
 
 Intelligibility. See Specification. 
 of sj^ecification , 99 et seq. 
 of description of nature of the invention, 100. 
 
 of the manner in which it is to be performed, 101, 
 
 Intention, 
 
 of party infringing immaterial, 220. 
 
 Interdict, 365. 
 
 Interlocutory Injunction. See Injunction. 
 
 International Arrangements, 
 
 for mutual protection of inventions, 24, 25, 68, 69, 411. 
 provisions of Act relating to, 388. 
 
 personal to applicant in foreign country himself, 24. 
 importer has no rights under, 25. 
 effect of, 25, 388. 
 foreign patentee has double rights, 69. 
 
 T. P P 
 
578 INDEX. 
 
 Interrogatories, 
 
 provisions for, 304. 
 
 in a petition for revocation, 272. 
 
 in an action for infringement, 304. 
 
 security for costs of, 304. 
 not allowed before delivery of the defence, 304. 
 must be relevant to the issue, 304. 
 for the examination of difendunt, 304. 
 
 as to the alleged infringement, 304. 
 
 as to the defendant's customers, 304. 
 
 framed upon the description in sj)ecification step by 
 step, 305. 
 
 depending upon construction of specification, 305. 
 
 upon particulars of objections, 305. 
 
 plea of secret process, effect of, 306. 
 
 denial of infringement on oath by defendant, effect of, 
 306. 
 
 answer that articles complained of were similar to 
 those relied upon for prior user, 306. 
 
 fishing disallowed, 307. 
 
 must be answered fully, 307. 
 
 when permitted after trial, 308. 
 for examination of plaintiff , 308. 
 
 principle of, 309. 
 
 on different footing from those for examination of 
 defendant, 308. 
 
 as to difference between plaintiff's and prior specifica- 
 tions, 308. 
 
 as to correspondence with third parties, 309. 
 
 as to communications with patent agent, 306. 
 
 upon particulars of breaches, 307. 
 costs of, 309. 
 
 Introducer, first. See Importer. 
 
 Invalid, 
 
 patent, no infringement of, 220. 
 
 Invention. See Ingenuity ; Novelty ; Subject Matter, &c. 
 
 defined by the Act, 3. 
 
 monopoly in, is created by the patent, 1. 
 
 reason why monopolies are granted, 2. 
 
 one only may be the subject of an application, 128. 
 
 test as to whether application comprises more than one, 
 128. 
 
 patent not void by reason of comprising more than one, 128. 
 
 contrary to law or morality, 130. 
 
 Department of Science and Art may require models of, 362. 
 
 assignment of, to Secretary of State, 362. 
 
 protection of, under International and Colonial arrange- 
 ments, 388. See International Arrangements. 
 
 infringement by use of, 239. See Infringement. 
 
 Inventor, 
 
 definition of term, 11. 
 
 employment of woikman to carry out ideas of, 11 ef seq. 
 application on behalf of deceased, 127, 427. 
 applicatiou made in fraud of first, 18. 
 
INDEX. 579 
 
 Ireland, 
 
 jurisdiction of Courts in, 391. 
 
 summary conviction in, definition of, 393. 
 
 Isle of Man, 
 
 jurisdiction of Courts in, 391. 
 
 Joint Applicants, 9. 
 
 Joint Owners, 
 
 each, is entitled to work the patent, 179. 
 
 each may assign his share, 180. 
 
 each may sue for infringement, 178, 180. 
 
 grounds upon which he may sue, 180. 
 each can grant licences, 180. 
 each may sue for royalties, 180. 
 
 queer e, whether he must account to the other in respect 
 of the licences, 180. 
 as to right of survivorship, 180. 
 
 JOUKNAL, 
 
 issue of, by Comptroller, provisions for, 361. 
 
 Judgment, 
 
 effect of, upon a subsequent action for infringement, 99, 
 
 193. 
 minutes of, 337. 
 
 when a stay of, will be allowed, 338. 
 form of, 487 et seq. 
 
 Judicial Committee, 
 
 jurisdiction of, 356. See Extension of Term. 
 
 may call in an assessor, 358. 
 
 rules to be observed in proceedings before, 457. 
 
 Jury, 
 
 questions for, 
 
 novelty, 51, 58, 327. 
 
 intelligibility of the specification, 93. 
 
 sufficiency of the specification, 93, 327. 
 
 comparison of two documents after a judicial interpre- 
 tation has been placed upon them, 95, 96, 326. 
 
 construction of specification, how far, 98, 325. 
 
 utility, 71, 327. 
 
 infringement, 327. 
 when ordered, in an action for infringement, 316. 
 
 Known, 
 
 material, application of, to new purpose, 35. 
 instrument, to ditto, 35 et seq. See Subject Matter. 
 
 Labour of Mind, 
 
 in relation to consideration for the grant, 16 
 
 Laches, 
 
 bar to grant of interlocutory injunction, 257. 
 no bar to order for inspection, 313. 
 
 P P 12 
 
580 INDEX. 
 
 Lancaster, Court of County Palatine of, 
 jurisdiction of, 316. 
 
 Law Officer, 
 
 powers of, 360. 
 
 proceedings before, 141, 162. See Appeals. 
 
 power to order attendance of witnesses, 141. 
 
 power to examine witnesses on oath, 142. 
 
 may obtain assistance of expert, 142. 
 
 power of, over costs, 162. 
 
 power to impose conditions, 159. See Opposition, 
 Amendment. 
 decision of, is final, 164. 
 prohibition does not lie to, 158. 
 power of, to make rules, 142. 
 rules relating to proceedings before, 455. 
 
 Law Officers' Eules, 
 notice of appeal, 455. 
 
 must be lodged within fourteen days, 455. 
 
 must state decision appealed against, 455. 
 
 copies of, to whom to be sent, 455. 
 
 Comptroller shall transmit all papers relating to the 
 matter, 455. 
 seven days' notice of hearing appeal to be given, 455. 
 evidence to be used on appeal, 456. 
 as to documentary evidence, 456. 
 witnesses may be summoned, 456. 
 
 expenses of witnesses, 456. 
 as to costs, 456. 
 
 non-payment of, 456. 
 notices, &c., may be sent by post, 456. 
 
 Legal Eepresentative, 
 meaning of, 137, 176. 
 grant of patent to, 127. See Application. 
 
 Letters Patent, 
 are franchises, 1. 
 origin and history of, 2 et seq. 
 granted for the benefit of the public, 3, 48. 
 granted by exercise of Eoyal prorof?ative, 3. 
 gi-anted for one invention only, 128. See Subject Matter, &c. 
 persons entitled to apply for, 8 et seq. 
 
 joint applicants for, 9. 
 form of application for, 440. 
 declaration required, 9, 426. See Ajiplication. 
 specifications, requirements of, 78 et seq. See Speci/lcatioji. 
 duties of Examiner and Comptroller on application for, 128. 
 
 See Examiner, &c. 
 appeal to Law Ofiicer, 455. See Appeal ; Law Officer. 
 opposition to grant of, 134. See Opposition. 
 sealing of, 143. See Grant. 
 term of, 147. 
 
 fees payable to maintain, 452. 
 comi^ulsory licences, I'^l. 
 register of, 185. 
 
INDEX. 581 
 
 Letters Patent — conUn tied. 
 
 extension of term of, 195. See Extension. 
 
 revocation of, 266. See Revocation. 
 
 rights of Crown, 150. 
 
 rights conferred on patentee by grant of, 179. 
 
 loss or destruction of, 360. 
 
 illustrated journal of, 361. 
 
 museum, 362. 
 
 form of, 394. 
 
 LlBKARY, 
 
 publication deposited in, when wiU anticipate a subsequent 
 patent, 65, 
 
 Licence. See Licensee ; Royalties. 
 
 distinction between assignment and, 181. 
 compulsory, provisions for granting, 181. 
 may be for sole right, 182. 
 may be for an exclusive area, 182. 
 may be in conjunction with others, 182. 
 should be under seal, 182. 
 
 is not a deed, 182. 
 when parol, effect, 1 82. 
 
 total failure of consideration for, instance of, 183. 
 latent ambiguity in, may be explained by parol, 183. 
 not assignable, 183. 
 determinable at will, 184. 
 
 subject to agreement to the contrary, 184. 
 
 express notice to revoke is necessary, 184. 
 
 mere plea that licence has been abandoned, insuffi- 
 cient, 184. 
 agreement to determine, if patent held invalid, effect, 1 Sn., 
 entry of, on register of patents, 355, 438. 
 to use and sell is implied on sale of a patented article, 246. 
 
 may be limited in any way the patentee chooses, 247. 
 but notice is necessary, 247. 
 form of, 540 et seq. 
 
 Licensee, 
 
 is estopped from denying validity of the patent, 189. See 
 
 Estoppel. 
 cannot take advantage of judgment obtained by third 
 
 parties declaring patent bad, 194. 
 is entitled to have most favourable construction put upon 
 
 specification, 194. 
 agreement by, not to manufacture without applying inven- 
 tion, not void as in restraint of trade, 179. 
 duties of, 183. 
 
 must pay agreed royalties, 183. 
 rights of, 183. 
 
 may sell articles made in pursuance of the invention, 
 
 183. 
 to recover royalties, in case of fraud, 182. See 
 Defence, 
 
582 INDEX. 
 
 TiTCENSEE — continved. 
 
 exclusive, is not patentee, 7. 
 
 may sue in name of patentee, 7, 184, 216. 
 
 security for costs by, 217. 
 liability of, in respect of threats of legal proceedings, 
 277. 
 rights of, 183. 
 
 to restrain importation of articles sold outside the 
 district, 183, 187, 246. 
 rights of vendee of, 247. 
 
 Licensor, 
 
 rights and obligations of, 183 — 185. 
 
 Lost Patent, 
 
 how supplied, 360. 
 
 Lunatic. See Incapable. 
 
 Making, 
 
 infringement by, 235. See Infringement, 
 
 Mat. A Fides, 
 
 in specification, 115. See S})ecification, 
 
 Mandatory Orders, 
 
 only granted after trial, 260. 
 
 Mantjfactttre, 
 
 what is a new, 26. See Subject Matter, &€. 
 infringement by, 235. 
 anticipation by, 52. 
 
 Mantjeacturer, 
 
 distinguished from an inventor, 11. 
 
 profits of, distinguished from patentees, 201. See Petition 
 for Extension. 
 
 Married Wom^an, 
 
 may obtain patent, 8. 
 
 Master, 
 
 liable for infringement by his servant, 217. 
 
 how far entitled to improvements suggested by servant, 15. 
 
 Master of the Eolls, 
 
 jm-isdiction of, to amend clerical errors, 154. 
 
 Mechanical Equivalents. See Equivalents. 
 
 Memorandum, 
 
 of War Office to inventors, 468. 
 
 Merit, 
 
 of importer, 23, 198. 
 pait of consideration for grant, 72. 
 
 in relation to petition for extension, 199. See Ejiension of 
 Term. 
 
INDEX. 583 
 
 Misrepresentation, 
 
 in specification, fatal, 109. 
 
 Mistake, 
 
 in specification, 104. See Error. 
 
 by including more than one invention in an application, 
 128. 
 
 Models, 
 
 may be required from patentee, 362. 
 
 Monopolies, Statute of, 341. 
 
 declaratory of the common law, 3. 
 
 Mortgage, 
 
 form of, 546. 
 
 Mortgagee, 
 
 is not patentee, 7. 
 
 need not be joined as a party in an action, 7, 181. 
 should be party to petition for extension, 209. 
 should be party to petition for revocation, 271. 
 rights of, 7. 
 
 Motion, 
 
 for inspection, 314. 
 
 for interlocutory injunction, 254. 
 
 Munitions of War, 
 
 patents for, assignment, to Secretary of State of, 362. 
 War Office memorandum to inventor, 4:68. 
 
 Museum, Patent, 
 
 models to be supplied to, 362. 
 
 New Use of Known Contrivance, 35. See Subject Matter, 
 
 Non-user of Patent, 
 
 how far, presumes want of utility, 72. 
 as ground for refusing extension, 205. 
 
 Notice, 
 
 of acceptance of application, 129, 427. 
 
 of opposition to grant, 136, 430. 
 
 of amendment, 158, 434. 
 
 of opposition to amendment, 158, 434. 
 
 of appeal to the Law Officer, 141, 455. 
 
 by exhibitor, 68, 425. 
 
 form of, 449. 
 warning infringers, unnecessary, 219, 282. 
 of trust not allowed on register, 185. 
 to respondent to petition for revocation, 271. 
 of covenants, subsequent assignee of patent with, 178, 247. 
 registration at Patent Office, does not amount to, 183. 
 of limited licence attached to a patented article, 247. 
 
584 INDKX. 
 
 Novelty. See also Consideration for Grant ; Prior User ; Prior 
 
 Publication ; Subject Matter, 
 is part of consideration for grant, 48. 
 test of, 49, 50. 
 
 whole invention must be considered, 50. 
 want of, in material part of invention, 67. 
 want of, in subsidiary part of invention, 67. 
 production of article in abundance which previously was 
 
 only scientific curiosity, 67. 
 commercial success as evidence of, 68. 
 is a question of fact, 51. 
 objections on ground of want of, 296. See Particulars of 
 
 Objections. 
 
 Oath, 
 
 Law Officer can examine witnesses on, 142. 
 
 Object, 
 
 of the creation of monopolies, 3. 
 of the grant to first importers, 20. 
 of provisional protection, 83, 132. 
 of a provisional specification, 83. 
 of complete specification, 91. 
 of sect. 32, 275. 
 of particulars of breaches, 287. 
 of particulars of objections, 297, 300. 
 of interlocutory injunction, 25S. 
 of the patent, old, invention construed strictly, 33. 
 of the patent, new, doctrine of mechanical equivalents will 
 apply, 33. 
 
 Objections. See Particulars of Objections. 
 
 Offences, 
 
 falsely representing article to be patented, 133, 389. 
 unauthorised use of Eoyal arms, 390. 
 
 continued use of word " patent" after expiration of protec- 
 tion no offence, 133., 
 may be under certain circumstances, 133. 
 falsification of entries in registers, 385. 
 under the Act in Scotland, to be prosecuted in the Sheriff 
 
 Court, 390. 
 committed in Isle of Man, 391. 
 
 OFFiciAii Commission, 
 
 member of, may not patent the subject of investigation, 17. 
 
 Official Journal. See Advertisement. 
 publication of, 361. 
 
 Old. See Known. 
 
 One Invention, 
 
 application must comprise only, 128. 
 test to be applied, 1 28. 
 
 separate patents may be applied for if application is refused 
 on that ground, 128. 
 
INDEX. 585 
 
 Onus. See Burden of Proof . 
 
 Opponent. See Opposition, 
 to grant of patent, 
 
 must have a direct interest, 141. 
 jurisdiction of C. G. to consider title of, 135. 
 material contribution to invention by, 136. 
 part of invention obtained from, 137. 
 dies before date of hearing, notice of opposition may 
 be amended, 142. 
 
 Opposition, 
 
 to grant of patent, 
 
 who may oppose, 141. See Optponent. 
 
 C. Gr. may not consider title of opponent to be 
 heard, 135 
 evidence in support of, 136, 432. 
 procedure in, 134, 136. 
 grounds of, 134, 350. 
 
 limited to statements in notice of opposition, 433. 
 before the Act, 134. 
 notice of, requirements as to, 136, 430. 
 form of, 444. 
 
 must be signed by opponent, 136. 
 notice to be given to the applicant, 141, 432. 
 where the question is one of doubt, will not succeed, 
 
 135, 
 when, will be successful, 135, 138. 
 
 considerations which guide the L. 0., 138. 
 on first ground, 136. 
 
 when successful, 136. 
 
 terms imposed, 136. 
 
 " obtained the invention," meaning of, 136. 
 
 master and servant, 136. 
 
 in case of communication from abroad, 137. 
 
 events outside United Kingdom, not inquired 
 
 into, 137. 
 where part of invention was obtained fi-om 
 
 opponent, 137. 
 when deemed to be abandoned, 433. 
 " legal representative," meaning of, 137. 
 on second ground, 137 et seq. 
 particulars required, 432. 
 immaterial that the earlier patent is in dispute, 
 
 137. 
 provisional protection obtained does not give oppo- 
 nent locus standi, 138. 
 where described but not claimed in opponent's 
 
 specification, 138. 
 considerations which guide the L. O., 138. 
 general disclaimers, when required to be inserted, 
 139. 
 principles which guide L. O., 139. 
 special disclaimers, when required to be inserted, 
 139. 
 principles which guide L. O., 139. 
 
586 INDEX. 
 
 Opposition — continued. 
 
 to grant of patent — continued. 
 
 on second ground — continued. 
 
 question of mechanical equivalents may be con- 
 sidered, 139. 
 question of disconformity between opponents pro- 
 visional and complete will not be considered, 
 139. 
 question of fraud will not be entertained for tbe 
 
 first time on appeal, 140. 
 where opponent's complete specification was filed 
 
 after filing of applicant's provisional, 140. 
 immaterial that opponent's patent has expired, 
 
 140. 
 where opponent's patent is antedated under inter- 
 national arrangements, 140. 
 on third ground, 140. 
 object of, 140. 
 effect of, 141. 
 appeal from C. Q-. See Appeal. 
 costs of, before L. O. follow the event, 138. 
 in the absence of, the patent will be sealed, 142. 
 to app>licati(m for leave to amend, 158. 
 provisions relating to, 158, 434. 
 who is entitled to oppose, 159. 
 notice of, 158, 434. 
 
 must state grounds, 158. 
 
 must state opponent's address for service, 158. 
 notice by C. G. to applicant, 159, 435. 
 hearing of, before C. G. , 159. 
 evidence, 432, 435. 
 
 power of 0. G. to impose conditions, 159. 
 C. G. has no power over costs, 159. 
 ajipeal to the L. O., 159. See Appeal. 
 rules relating to, 455. 
 power of L. O. to impose conditions, 159. 
 power of L. O. to grant costs, 162. 
 costs will not be granted to or against C. G. ex- 
 cept under special circumstances, 162. 
 return of stamp on notice of appeal refused to 
 successful appellant, 162. 
 to petition for extension, 212. See Extension of Term. 
 
 Orders, 
 
 forms of. See Appendix D. 
 
 of Privy Council or Court, entry of, on Eegister of Patents, 
 437. 
 
 Palatine Court. See Lancaster, Court of County Palatine of. 
 
 Part of Invention, 
 
 infringement of, 227, 230. See I)fringement. 
 want of utility in, 74. See Utility. 
 want of novelty in, 67. See Noudfy. 
 obtained from opponent to grunt, 137. 
 extension of term for, 200. 
 
INDEX. 587 
 
 Particulars, 
 
 in an action to restrain threats, 284. 
 
 Partictilars of Breaches, 
 
 must accompany statement of claim, 286. 
 
 when required in action to restrain threats, 284, 291. 
 
 object of, 287. 
 
 requirements of, 287. 
 
 and of particulars of objections, distinguished, 287. 
 need not place a construction upon plaintiff's patent, 
 
 287. 
 must indicate the part of the patent infringed, 288. 
 
 unless patent is of a simple nature, 289. 
 must indicate the infringing part of defendant's 
 
 machine, 288. 
 when type of infringement will be sufficient, 289. 
 when general words will be allowed, 289. 
 where defendant is the vendor and not manufactui'er, 
 290. 
 instances of sufficient and insufficient particulars, 289. 
 further particulars may be postponed to discovery, 289. 
 any evidence will be admitted at the trial which comes 
 
 within, 290. 
 amendment of, 287. 
 form of, 478 et seq. 
 
 Particulars of Objections, 
 
 must be delivered with statement of defence, 293. 
 
 or by order of the Court, 293. 
 
 in petition for revocation, 272. 
 
 in an action for infringement, 293. 
 
 provisions of statute, 293. 
 
 rules of Court, 294. 
 
 in an action brought to enforce agreement to assign a 
 
 patent, 294. 
 where there are several defendants, 294. 
 object of, 297, 300. 
 
 distinguished from particulars of breaches, 287. 
 that grantee was not the true inventor, 295, 300. 
 that specification is insufficient, 295, 296. 
 variance between provisional and complete, 296. 
 in case of fraud, 296. 
 want of novelty, 296 et seq. 
 
 of part of the invention, that part must be clearly 
 indicated, 298, 301. 
 prior riser, 296. 
 
 time, place, and persons, 296. 
 
 present addj-esses, 296. 
 
 general words inadmissible, 298. 
 
 the time should be clearly defined, 298. 
 prior puhlkation, 299. 
 
 details which must be given, 299. 
 
 particiilars of prior specification, 299. 
 
 when lines and pages will be required, 800. 
 
588 INDEX. 
 
 Particulaes of Objections — continued, 
 common knoivledge, 301. 
 
 what is, 301. 
 
 specifications are not, 301. 
 evidence -will be admitted, if -within the language of the 
 
 particulars, 301. 
 evidence will be limited by, 302. 
 
 discretion of the judge to allow evidence beyond, 302. 
 cmendment of, 302. 
 
 may be allowed at the hearing of the trial, 303. 
 but costs will be refused, 303. 
 
 terms upon which allowed, 303. 
 
 pending appeal, 303. 
 form of, 481. 
 form of order for further particulars, 483. 
 
 liberty to amend particulars, 483. 
 
 Parties, 
 
 to action for infringement, 
 plaintiff, 
 
 patentee, 215 
 
 licensee may not be, 216. 
 
 assignee, 215 
 
 assignee of a pai't, 215. 
 
 assignee for a district, 216. 
 
 one of several joint owners, 216. 
 
 trustee in bankruptcy, 217. 
 
 executors and administrators, 217. 
 
 mortgagee may not be, 217. 
 
 agent may not be, 217. 
 defendant, 
 
 any person infringing, 217, 263. See Infringe- 
 ment. 
 
 contractor, 217. 
 
 servant, 217, 235. 
 
 master for infringement by servant, 217. 
 
 directors of a company, 217. 
 
 architect specifying invention not liable, 218. 
 
 aliens, 218. 
 
 person ordering in England for sale abroad, 218. 
 
 company to whom business of defendants was 
 assigned pending action not liable, 218. 
 
 person indemnifying defendants, 218. 
 
 innocent carriers, 218. 
 joinder of third, 218. 
 to petition for extension, 209. See Extension of Term. 
 to petition for revocation, 268. See Revocation. 
 
 Partners, 
 
 estoppel of retiring, 189. 
 
 plea of invalidity, when allowed, 189. 
 
 right of, to patent on dissolution of partnership, 1 80. 
 
 Patent. See Letters Patent. 
 
 letters, to and by whom granted, 1—10. 
 conditions of grant, 4, 149. 
 
INDEX. 589 
 
 Patent — continued. 
 
 effect of grant of, 352. 
 
 distinction between trade mark and, 147. 
 
 form of applicatio ii for, 9. 
 
 what it must disclose, 9. See Application, 
 granted for the benefit of the public, 10, 48. 
 is a bargain between public and patentee, 144. 
 may not be applied to articles before the patent is sealed, 
 
 132. 
 no offence if used after expiration of period of protection, 
 133. 
 unless amounting to a representation that the patent 
 is still subsisting, 133. 
 determines on non-payment of fees, 150. 
 
 non-payment through accident or mistake, 352. 
 confirmation of, abolished, 214. 
 
 Patent Agent, 
 
 definition of, 394. 
 
 communications with, not privileged, 306. 
 registration of, provisions relating to, 394. See Register of 
 Patent Agenfs Rules. 
 
 Patent Museum, 362. 
 
 Patent Office, 
 
 provision relating to, 382. 
 when open, 424. 
 
 Patent Eules, 
 
 as to discretionary power of Comptroller, 425. 
 relating to ai^plicatious for patents, 424 et seq, 
 powers of agent of applicant, 424. 
 statement of address must accompany application, 424 
 as to documents sent to Patent Office, 424. 
 by post, numbering of, 426. 
 comprising more than one invention, 427. 
 by representative of deceased inventor, 427. 
 under international arrangements, 428. 
 drawings, 429. 
 relating to opposition to grant, 431 ct seq. 
 statement of address, 432. 
 notice to applicant, 432. 
 opponent's and applicant's evidence, 432. 
 hearing, 433. 
 certificate of payment of fees, 434. 
 application for enlargement of time, 434. 
 international or industrial exhibitions, 425. 
 statutory declarations, provisions as to, 426. 
 amendment of specifications, 434. 
 application for, 434. 
 
 advertisement of, 434. 
 opposition to, 434. 
 notice of, 434. 
 
 must state grounds of, 434. 
 must be signed by opponent, 435. 
 copy for applicant, 435. 
 evidence on, 435. 
 
590 INDEX. 
 
 Patent Etjles — continued, 
 
 amendment of specifications — continued. 
 
 requirements thereon, 435. 
 
 leave by order of the Court, 435. 
 
 advertisement of, 435. 
 compulsory licences, 435. 
 register of patents, 436. 
 
 entries on, 436. 
 
 production of proof of title, 437. 
 
 entry of order of Privy Council or of the Coui't, 437. 
 
 entry of payment of fees, 438. 
 
 entry of licences, 438. 
 
 when open to the public, 438. 
 
 copies of entries in, 438. 
 power to dispense with evidence, 439. 
 
 Patentee. See also True and First Inventor ; Co-owners ; 
 Licensee, 
 definition of, 7. 
 who may be, 8, 9. 
 
 infants, 8. 
 
 married women, 8. 
 
 lunatics, 8. 
 
 aliens, 8. 
 
 body corporate, 8. 
 
 original grantee, 7. 
 
 legal representative of deceased, inventor, 10. 
 who may not be, 8. 
 
 clergymen, 8. 
 
 alien enemy, 8. 
 mortgagee is not, 7. 
 exclusive licensee is not, 7. 
 
 Penalties. See Offences. 
 
 Peepetual Injunction. See Injunction. 
 
 Petition, 
 
 to Coiu't substituted for scire facias, 266. See Revocation. 
 to extend term of patent, 195. See Extension of Term. 
 for compulsory licence, 181, 435. 
 
 Pith of Invention. See Essence of Invention. 
 
 Possession, 
 
 of patent, how far a presumption of validity, 255, 256. 
 British, definition of, 393. 
 
 Post, 
 
 application and notices sent by, 127, 385. 
 proof of posting, 127, 385. 
 
 Practice. See Infringement ; Injunction ; Trial, etc. 
 on petition for revocation, 269 et seq. 
 
 Precedents. See Appendix F, 
 
 Prejudicial Concealment by Patentee, 113. 
 
INDEX. 591 
 
 Prerogative of Crown, 
 
 preserved by Patents Act, 188li...4. 
 
 President of the Board of Trade, 
 powers of, 388. 
 
 Presumption, 
 
 given rise to, b}' non-user of patent, 205. See Petition for 
 Extension. 
 
 Principle, 
 
 is not subject matter for a patent, 26. 
 
 coupled with a mode of application, may be, 26, 27, 
 
 28. 
 claim for every method of application, is not, 29. 
 new, scope of patent for application of, 26 — 28. 
 old, scope of patent for application of, 29. 
 infringement of patent for application of new, 225. 
 
 Prior Publication. See also Prior User. 
 definition of, 58. 
 question is one of fact, 58. 
 
 requisites of, to invalidate subsequent patent, 58 — 63. 
 to whom intelligible, 62. 
 must contain clear description, 58, 59, 60. 
 
 need not have been put in practice, 58, 59, 60. 
 vague hints do not amount to, 58, 60. 
 of description of useless machine, 59, 226. 
 may be by any form of document, 6 1 . 
 may be in any language, 63. 
 a mosaic of extracts will not amount to, 66. 
 document coutaiuiug, 
 need not be sold, 63. 
 exhibition for sale of, 63. 
 sent to bookseller to be published, 63. 
 in foreign language, 63, 64. 
 single copy of, open to public inspection in England, 
 
 63, 64. 
 not open to inspection, 63, 6-4. 
 by a drawing, 64. 
 
 by inventor in prior specification, 64, 65. 
 in prior provisional, 65, Q>5. 
 
 no publication of invention between dates of first 
 
 and second application, 65, 
 when invention put in practice between those two 
 dates, 66. 
 in British colony, 69. 
 objection on ground of, 299. See Particulars of Objections. 
 
 Prior User. See also Prior Puhlication. 
 question for juiy, 51. 
 secret, 50. 
 
 distinguished from public use, 53, 54. 
 
 by inventor, effect of, 55, 56. 
 public, 51. 
 
 definition of, 51. 
 
592 INDEX. 
 
 Prior User — continued. 
 public — continued. 
 
 by any one person, 51. 
 
 of machine made for export, 52. 
 of one sample of invention only, 52. 
 where injunction to secrecy, 51. 
 information obtained from one under injunction to 
 secrecy, 52. 
 an offer to sell though no sale effected, 52. 
 mere manufacture without sale, 52, 54, 55. 
 long before date of patent, how far important, 52, 53. 
 of machine, which was useless, 53. 
 or incomplete, 53. 
 or abandoned as unsatisfactory, 53. 
 or exj^erimental only, 53. 
 or mere scientific curiosity, 53. 
 where disclosure of material would disclose means of making 
 
 it, 54, bb, 56. 
 where disclosure of material would not disclose means of 
 
 making it, 54, 55, 56. 
 in place to which public did not have access, 54, 226. 
 experimental, 57. 
 
 what constitutes, 57, 58. 
 by inventor himself, 57. 
 by persons to whom he lent machine for that purpose, 
 
 57. 
 where pecuniary profit resulted, 57. 
 question of fact, 57. 
 by sending out samples, effect of, 58. 
 in industrial exhibitions, provisions as to, 68. 
 protection of foreign inventors. See International Arrange- 
 ments. 
 in British colony, 69. 
 
 objection on the ground of, 296. See Particulars of 
 Objections, 
 
 Privileged, 
 
 communications with patent agent are not, 306. 
 
 Privy Council. See Extension of Term. 
 power of, to revoke a patent, 149. 
 
 Privy Council Pules, 
 
 as to advertisements, 457. 
 as to notice of hearing, 457. 
 general, 458. 
 
 Probate, 
 
 assignment of patent by executor before registration of, 
 
 i-;7. 
 
 Process, 
 
 may be good subject matter, 30. 
 
 new, to effect an old object, scojio of patent for, 33, 224. 
 new, to effect new object, scope of patent for, 33, 225. 
 distinction between process and new substance, 29, 30. 
 secret. Sec Secret {Process). 
 
INDEX. 593 
 
 Product, 
 
 as subject matter for a patent, 29, 33. 
 
 Pbofits, 
 
 made by grant of licences by joint owners, liability to 
 
 account for, ISO. 
 assignee of a share of, right to an account, 185. 
 account of, 26-1. See Account, 
 considered on petition for extension, 201. See Extension. 
 
 Prolongation of Patents. See Extension, 
 
 Property, 
 
 right of, in infringing articles, 2G0. 
 
 Prosecutes with due diligence, 
 meaning of, in sect. 32, 279. 
 
 Protection, 
 
 by provisional specification, 132. Qee Provisional Protection, 
 by complete, 133. 
 
 Provisional Protection, 352. 
 rights afforded by, 132. 
 object of, 83, 132. 
 use of invention during, does not amount to publication, 
 
 65. 
 improvements made during, must be incorporated in 
 complete, 88. 
 unless amounting to a new invention , 88. 
 
 Provisional Specification. See Specification. 
 
 Public Convenience, 
 
 injunction stayed on grounds of, 260. 
 
 Public Use, 
 
 definition of, 51. 
 
 experimental, 57. 
 during period of provisional protection, 65. See Prior 
 Publication. 
 
 Publication. See Prior Publication. 
 
 Purchase, 
 
 mere, of patented articles no infringement, 243. 
 
 Queen's Birthday. See BanJv HoUdcvy. 
 
 Questions for Court and Jury, 325. See Court; Jury. 
 
 Eebutting Evidence by Plaintiff, 323. 
 
 Eecitals in Patent, 
 
 are four in number, 144. 
 
 false suggestion in, 145. See False Suggestion. 
 
 Eectification of Eegister. See Eegister. 
 
 T- Q Q 
 
594 INDEX. 
 
 Eeduction, 
 
 revocation in Scotland is in form of action of, 3^0. 
 
 Ekfeeexce, /or7;z of order for, 485. 
 
 Eegister of Patents, 
 
 provisions of statute relating to, 185, 355, 382. 
 Patent Eules as to, 436. 
 
 all documents affecting proprietorship must be entered on, 
 186. 
 
 docviments containing an agreement must be complete, 
 186. 
 fraudulent entries in, 187. 
 notice of trust, inadmissible, 185. 
 entry of documents dated prior to grant may be refused, 
 
 186. 
 entry of grant, 436. 
 
 entry of order of Privy Council or of the Court, 437. 
 entry of interest in patent by assignment, 383. 
 
 practice, 436. 
 entry of licences, 438. 
 
 practice, 438. 
 entry of payment or non-payment of fees, 438. 
 is 2^1' "rt«/«c?e evidence, 355, 383. 
 
 does not amount to notice to the whole world, 187. 
 certified copies of entries in, 438. 
 
 will be received in evidence, 383. 
 body corporate may be entered by its corporate name, 437. 
 rectification of, 186, 383. 
 
 clerical errors, 384. 
 
 form of request, 449. 
 form of request to enter name upon, 447. 
 form of request to enter notification of licence in, 448. 
 form of notice for alteration of address in, 450. 
 form of application to enter order of Privy Council in, 450. 
 hours and days of inspection of, 438. 
 
 Registek of Patent Agent's Eules, 459. 
 
 Eegtstration. See Register of Patents. 
 at Patent Office, jDrovisions for, 185. 
 does not amount to notice to the whole world, 187. 
 of patent agents, 459. 
 
 Eenewal of English after Expiry of Foreign Patent, 208. 
 
 Eepeal of Statutes, 396. 
 
 Eeports, 
 
 of patent cases, provisions for publication of, 361. 
 annual, of Comptroller, 387. 
 
 Restraint of Trade, 
 
 covenant not to manufacture without patented invention, 
 not in, 179. 
 
INDEX. 595 
 
 Revocation or Letters Patent, 
 scire facias, abolished, 26G. 
 by Privy Council, 149. 
 on petition to the Coui-t, 266. 
 
 grounds for, 267. See False Suggestion. 
 
 " in fraud of his rights," meaning of, 260. 
 who may petition as of right, 268. 
 
 title to petition must bo established, 260. 
 not confined to grounds upon which his title is 
 founded, 269. 
 with fiat of Attorney- General, 269. 
 how obtained, 269. 
 
 discretion of Attorney- General, 271. 
 hearing of application for fiat before Attorney- 
 General, 271. 
 fiat maj' be granted ex parte, 271. 
 all persons beneficially interested must be parties, 269. 
 practice, 271. 
 
 suramous for directions, 271. 
 patentee out of the jurisdiction, 271. 
 security for costs, not ordered from respondent resid- 
 ing out of the jurisdiction, 272. 
 particulars, 272. See Particulars of Ol>/ection.<^. 
 
 certificate as to, 335. 
 interrogatories, 272. See Interrogatories. 
 trial, 272. 
 jurisdiction of Scotch and Irish Courts, 268. 
 
 of Palatine Court, 317. 
 right to begin and reply at the trial, 267, 273. 
 certificate of validity not granted, 272. 
 effect of certificate of validity granted in previous pro- 
 ceedings, 272. 
 amendment of specification pending petition, 169, 273. 
 effect of judgment of Court of Appeal, 273. 
 patent revoked on ground of fraud, grant of fresh patent, 
 269. 
 new patent ceases on expiration of term for which 
 revoked patent was granted, 3o8. 
 proceedings for, in Scotland, 390. 
 
 none, where Secretary of State has certified that inven- 
 tion must be kept secret, 364. 
 estoppel does not operate in petitions for, 193. 
 
 Rival Applicants, 129. 
 
 Royal Arms, 
 
 unauthorized use of, 390. 
 
 Royalties, 
 
 recovery of, from licensees of subsequent assignee with 
 
 notice, 178. 
 paid by licensees not recoverable in the absence of fraud, 
 
 182. 
 payable even if patent void and licence not under seal, 183. 
 
 secus, if licensor knew that patent was void, 183. 
 not payable in event of total failure of consideration, 183. 
 on grant of compulsory licence, 181. 
 
596 INDEX. 
 
 EULES, 
 
 Patents, 424. 
 
 second set, 452. 
 Law Officers', 455. 
 Privy Council, 457. 
 Register of Patent Agents, 459. 
 power of Board of Trade to make, 386, 391. 
 
 to be laid before Parliament, 387. 
 power of Law Officers to make, 360. 
 publication by Comptroller of, 388. 
 
 Sale, 
 
 infringement by. See Infringement. 
 
 Samples, 
 
 sending out, held not to amount to publication, 58. 
 inspection of, 313. 
 
 Saturday. See Bank Holiday. 
 
 Scientific Curiosity, 
 
 no anticipation by, 53. 
 
 Scire Facias. See Revocation. 
 proceedings by, abolished, 266. 
 
 Scope of Patent, 
 
 enlarged by amendment, is patent void or is amendment 
 
 void ? 166 ei seq. 
 for application of new principle, 26. 
 for application of old principle, 29. 
 for new process to effect new obje.t, 33, 225. 
 for new process to effect old object, 33, 224. 
 
 Scotland, 
 
 legal proceedings in, 390. 
 
 Seal, 
 
 of Patent Office, 144. 
 when affixed to patent, 143. 
 eflfect, 143. 
 provisions relating to sealing patent, 351. 
 
 Secret, 
 
 list of invention prior to grant of patent, 55. 
 trade, no exclusive right in, 147. 
 
 no means of enforcing agreement to preserve, 147. 
 
 if subject of intended patent, secus, 148. 
 process, plea of, in answer to interrogatories, 306. 
 
 inspection of, 311, 312. 
 
 defendant pleading, trial heard in camerd, 325. 
 invention to be kept, when so certified by Secretary of 
 State, 363. 
 
 Secretary of State, 
 
 assignment of inventions to, provisions relating to, 363. 
 
 discretionary power of, 364. 
 
 no revocation of patent certified bj', 364. 
 
INDEX. 597 
 
 Security for Costs, 
 
 not required from respondent to petition for revocation 
 resident out of the jurisdiction, 272. 
 
 Servant, 
 
 right of master to improvements suggested by, 15. 
 master liable for infringements committed by, 217. 
 
 Ships, 
 
 use of invention by foreign, 242. 
 by British, abroad, 242. 
 
 Size of Documents, 
 
 to be lodged at Patent Office, 424. 
 of drawings, 429. 
 
 Solicitor, 
 
 communications between patentee and, are privileged unless 
 qiid patent agent, 300. 
 
 Solicitor- General. See Lmu Officer. 
 
 Solicitor and Client Costs, 328. See Certificate. 
 
 Special Disclaimers, 
 
 when insertion of, required by G. G., 139. See Conditions. 
 
 Specific Performance, 
 
 of agreement to assign a patent, 177. 
 
 Specification. See Words ; Evidence ; Amendment of Bjx'cifi ca- 
 tion. 
 provisions of Act of 1883 as to, 76 et seq., 346. 
 part of consideration for grant of patent, 70, 92. 
 is the disclosure of the invention, 76. 
 not published until application is accepted, 350. 
 transmission of copies of, to ScotlunJ, Ireland, and Isle of 
 
 Man, 386. 
 title of, 78. 
 
 requisites for, 78. 
 
 amendment of, 157. 
 
 must be read into specification, 78. 
 
 claims limited by, 78. 
 
 effect of, where no claim, 78. 
 
 must not be too extensive, 78, 79. 
 
 vagueness in, effect of, 79, 81. 
 
 if too extensive, amounts to fraud on Crown, 79. 
 
 must be consistent with invention, 81. 
 
 variance between title and specification fatal, 81. 
 
 technical objections to, 81, 82. See Variance. 
 Provisional, 83. 
 
 creation of, 83. 
 
 object of, 83. 
 
 description of invention required in, 83 — 85. 
 
 relation to complete, 85. 
 
 requisites for, 83. 
 
 object of legislature, 84. 
 
 must disclose nature of the invention, 85, 87. See 
 Variance. 
 
 is an extension of the title, 89. 
 
 amendment of, 157, 348. 
 
598 INDEX. 
 
 Specification — contin ned. 
 Provisional — continued, 
 form of, 443. 
 protection by, 132. 
 Complete, 90. 
 
 is disclosure of the invention, and the manner in which 
 
 it is to be performed, 90. 
 must include improvements discovered since filing 
 
 provisional, SS. 
 object of, 91. 
 protection by, 133. 
 form of, 443, 
 time within which it must be lodged, 131, 349. 
 
 how reckoned, 131. 
 advertisement of acceptance of, 132. 
 comparison of, with provisional, provisions relating to, 
 349. 
 eflfect of, 89. ^^qq Application ; Opposition, &c. 
 -_ construction of, 93. 
 
 is for the Court, 93. 
 
 benevolent, as to, 93 — 95. 
 
 like any written instrument, 95. 
 
 as a whole, 95, 98. 
 
 with reference to state of knowledge at its date, 
 
 98, 101. 
 provisional may be looked at, 98. 
 words bear ordinary meaning, 96. 
 technical terms, 96. 
 intention of patentee, 96. 
 evidence which is admissible, 96. 
 patentee presumed not to claim what he must 
 have known to be old, 97. 
 unless clearly claimed, 97. 
 Court will give effective meaning to each part if 
 
 possible, 99. 
 effect of judicial construction upon a subsequent 
 action, 99. 
 requisites of, 
 
 must be intelligible and sufficient, 96. 
 intelligibility, 99—100. 
 question of fact, 93. 
 to whom intelligible, 96, 99—105. _ 
 of description of nature of invention and that of 
 manner in which it is to be performed dis- 
 tinguished, 100, 101. 
 sufficiency, 106 — 116. 
 
 is a question of fact, 93. 
 
 must contain any improvement since filing pro- 
 \'isional, 8*7, 88, 90, 114. 
 unless such improvement amounts to a fresh 
 
 invention, 88, 90, 91. 
 ormerely better way of using the invention, 90. 
 may contain less than provisional, 89. 
 
 but must not be inconsistent with it, 89. 
 must disclose all the inventor knows, 90. 
 when invention is communicated from abroad, 1 1 
 
INDEX. 
 
 599 
 
 Specification — contiuutd. 
 Compute — continued. 
 
 sufficiency — continued. 
 
 must be hand Jide, full and complete, 90. 
 
 mcdd fides and insufficiency distinguished, 1 lb. 
 must disclose precise method of working the 
 
 invention, 90, 92. . 
 
 need not distinguish between the merits ot various 
 
 claims, 115. i i -u j i/>-> 
 
 well-known apparatus need not be described, 10^. 
 known mechanical equivalents need not be 
 
 described, 104, 
 must distinguish new from old, 106, 107. _ 
 
 where claim is for a combination or improve- 
 ment, 107. 
 degree of, required, 108. 
 test of, 110. 
 
 depends on facts of each case, 111. 
 error in, effect of, 104. 
 
 when not fatal, 104. 
 ambiguity in, when fatal, 108, Ho. 
 when not fatal, 109, 111. 
 if hand fide and not misleading, 110. 
 if maid fide and not misleading, 116. 
 suppression or false suggestion fatal, 109.^ 
 unnecessary details inserted, effect of, 115, 116. 
 prejudicial concealment fatal, 113. 
 bond fides essential, 113 — 115. 
 Claim, 116—124. 
 
 not essential but advisable, 124. 
 
 when no claim, effect, 124. 
 requisites of, 116. 
 
 must not claim too much. 111, 116. 
 must claim sufficient, 116. 
 distinction between claiming too much and describing 
 
 too much, 117. 
 for improvement, 118. 
 
 the improvement must be defined, 121. 
 for combination, 118 — 120. 
 
 each subordinate part must be claimed specifacally, 
 otherwise not protected, 119, 122. 
 for every method of applying a principle bad, 122. 
 everything not claimed is disclaimed, 122. 
 comprehensive words in, effect of, 122. 
 one repetition of another, effect of, 122. 
 want of novelty in subordinate claim, 123. 
 draivings, 124 — 125. _ ,1.,. 
 
 are for the purpose of elucidating the text, 12o. 
 may not extend the meaning of the letterpress, 125. 
 provisions as to, 77. 
 
 size of, 429. j ,-1 
 
 not published, if application is abandoned, 3ol. 
 indexes and abridgments of, 362. 
 
 anticipation by, 58. ■, l -u 
 
 in particulars of objections, when lines and pages must be 
 given, 299. 
 
600 INDEX. 
 
 Spec ipication — continued. 
 
 does not constitute common knowledge, 301. 
 amendment of. See Amendment. 
 
 Stamp Duty, 
 
 statutory declaration accompanying application exempt 
 from, 127. 
 
 Statement of address for service, 
 
 must accompany application, 424. 
 
 must accompany notice of opposition, lc'8. 
 
 Statement of claim, 285. 
 form of, 476. 
 of defence, 292. 
 
 that i^laintiff was not true inventor, 293. 
 
 judgment moved for upon admissions in, 293. 
 
 Statute of Monopolies, 
 origin of, 3. 
 
 declaratory of the common law, 3. 
 
 definition of " invention " in, preserved by Act of 1883... 4. 
 same essentials required to-day for a grant of letters patent 
 
 as at date of, o. 
 text of, 341. 
 
 Statutes, 
 
 consolidation of, 345. 
 
 Statutory Declaration. See Declaration. 
 
 Subject I^Iatter. ^qq also Combination ; Communication ; Im- 
 provement ; Principle; Process; Product. 
 definition of, 26. 
 
 new manufactures, classification of, 30. 
 chemical compound may be, 30, 32. 
 
 application of an old material to a new purpose may be, 35. 
 application of known machine to analogous jjuri^ose without 
 
 invention is not, 35 — 38. 
 application of known machine to a new purj^ose with 
 ingenuity may be, 35, 39 — 42. 
 depends upon facts of the case, 35, 36. 
 test to be supplied, 42. 
 
 commercial success as evidence of ingenuity, 40, 42, 43. 
 method of using an old machine in a new way may be, 43. 
 improvement, 
 
 by addition to or subtraction from known machine, 34. 
 by substitution for some part of an old process, 44. 
 of mechanical equivalent, 34, 44. ^qg Improvement. 
 new combination, 43. See Comhination. 
 summary of what may be good, 46. 
 
 Substance, 
 
 new, subject matter for a patent, 29, 33. 
 of invention, infringement of, 224. See Infringemetd • 
 Essence of the Invention. 
 
INDEX. 601 
 
 Subtraction, 
 
 from kuowu macliine, may bo subject matter, 34. 
 
 Sufficiency, 
 
 of specification, 106. See i^peclficatiou. 
 test of, 110. 
 question of fact, 93. 
 
 Suggestions, 
 
 made by others to the patentee, effect of, \\ et seq, 
 
 in publications, effect upon subsecj^uont patent, 58 d seq. 
 
 in recitals, 144. See Fahe Sncjfjedion. 
 
 Sunday. See Bank IloUduij. 
 
 Suppression of information by patentee, 109, 113. 
 
 Taxation of costs. See Costs. 
 
 Technical objections to title, 81. 
 
 Tenants in common. See Joint Owners. 
 
 Term of patent, 147. 
 
 Test to be applied, 
 
 to question of true and first inventor, 14. 
 to question of new use of known appliance, 42. 
 to question of novelty, 50. 
 to question of prior experimental user, 57. 
 to question of utility, 71. 
 
 to question of intelligibility of the specification, 100. 
 to question of sufficiency, 110. 
 
 to question whether specification contains more than one 
 invention, 128. 
 
 Threats of legal proceedings, 
 
 pending action for infringement, 281. 
 action to restrain, 274. 
 law relating to, prior to Act of 1883... 274. 
 provisions of Act of 1883 as to, 274. 
 
 object of, 275. 
 
 effect of, 282. 
 
 immaterial that threat was made hondfide, 275. 
 how they may be made, 275. 
 
 by implication, 275. 
 
 by defendant's solicitor, 275. 
 
 in answer to inquii'ies by plaintiff, 275. 
 
 parol, 275. 
 
 effect of words " without prejudice," 275. 
 general warnings, 275. 
 
 may amount to a threat, 276. 
 relating to future infringements, 276. 
 " any person aggrieved " may bring an action, 277. 
 validity of the patent may be put in issue, 277. 
 defence to action to restrain, 277. 
 
 act complained of was an infringement, 277. 
 
 defendant must be the legal owner of the patent, 277. 
 
 T. Tt R 
 
602 INDEX. 
 
 Threats — continued. 
 
 burden of proof, 278, 279. 
 the proviso, 278. 
 
 test of action required by, 279. 
 
 the action must be in respect of the infringements com- 
 plained of, 278. 
 must be brought against one of the persons threatened, 
 
 278. 
 effect of, on threats by beneficial owner of the patent, 
 
 278. 
 effect of action against licensee, 279. 
 "with due diligence, &c.," 279. 
 instances of, 279, 280. 
 
 time of issuing threats to be looked at, 279. 
 immaterial if brought after threats action, 279. 
 course to pursue when brought after commence- 
 ment of threats action, 282. 
 action need not be prosecuted to a successful termina- 
 tion, 279. 
 hond fides necessary, 280. 
 
 onus of proof of want of bona fides, 279. 
 delay in bringing and prosecuting action for infringe- 
 ment, 281. 
 effect of complying with, 281. 
 interlocutory injunction to restrain, 283. 
 
 points to be considered in a motion for, 283. 
 conflict of testimony as to fact of infringement, 284. 
 the fact that defendant has not brought an action for 
 infringement will be considered, 284. 
 practice in an action to restrain, 284. 
 particulars of threats may be ordered, 284. 
 particulars of patents to which the threats relate, 284. 
 particulars of agents by whom it was alleged the threats 
 were made, 284. 
 
 Title. See Specification. 
 
 Trade Marks, 370. 
 
 difference between patent and, 147. 
 
 Trade Secret. See Secret. 
 no exclusive right in, 147. 
 
 Trial, 
 
 of action for infringement, 314. 
 
 constitution of Court, 314. 
 
 power to employ assessors, 315. 
 
 when by jury, 316. 
 
 Palatine Court of Lancaster, jurisdiction of, 316 et seq. 
 
 in a petition for revocation, 318. 
 County Court, jurisdiction of, 318. 
 postponement of, on ground of presentation of petition for 
 
 revocation, 318. 
 right of opening and replying at, 319. 
 issues on plaintiff at, 319 — 323. See Burden of Proof . 
 prima facie evidence by plaintiff, 319 — 323. 
 
INDEX. 603 
 
 Tkial — contvn ued. 
 
 expert witnesses, 321. See Evidence. 
 
 questions that may be put to, 321. 
 points considered by the Court, 322. 
 experiments made with a view to litigation, 322. 
 when plaintiff may produce rebutting evidence, 323. 
 defendant cannot adduce further evidence, 324. 
 no objection to particulars allowed at, 324. 
 in camera, defendant alleging secret process, 325. 
 
 Tetje and Fikst Inyentoe, 
 who is, 11. 
 
 test of, 14. 
 must have invented the pith of the invention, 11 — 14. 
 improvement suggested by another, 11 — 15. 
 details worked out by another, 13, 14. 
 dominant mind, 12. 
 
 relationship of master and sei'vant, effect of, 13 — 15. 
 independent inventor, 15. 
 
 first applicant entitled to the grant, 16. 
 application in fraud of, 18. 
 first importer is, 19, 23. 
 
 reason why, 19 — 21. 
 application for grant by, 126. See Application. 
 
 Trust, 
 
 notice of, not receivable on register, 23. 
 patent may be taken out and held on behalf of foreigner in, 
 23. 
 
 Trustee in Bankruptcy, 
 
 patent passes to, on banki-uptcy of patentee, 176. 
 may maintain action for infringement in his own name, 
 217. 
 
 Use, 
 
 what constitutes anticipation by, 51. See Prior User. 
 what constitutes infringement by, 239. See Ivfringement. 
 
 Utility, 
 
 meaning of, 70, 71. 
 
 essential part of consideration for grant, 70, 74. 
 
 test of, 71. 
 
 very slight amount of, sufficient, 73. 
 
 without novelty and invention cannot support a patent, 73. 
 
 absence of, avoids patent, 74. 
 
 want of, for one of purposes claimed, 74. 
 
 in essential part of the invention, 74. 
 
 in unessential part of the invention, 74. 
 when claimed as essential, 74. 
 
 in most cases but not in every case that might occur, 
 74. 
 
 in a second and subsidiary claim, 74. 
 process enormously expensive, no proof of want of, 72. 
 
 unless cheapness is part of the claim, 72. 
 patent never put in practice, no proof of want of, 72, 73. 
 
604 INDEX. 
 
 Utility — continued. 
 
 one method claimed preferred to the others, no proof of 
 
 want of, 75. 
 commercial success strong proof of, 74. 
 commercial failure, no proof of want of, 72. 
 when commercial failure will be taken in consideration, 72. 
 the fact that invention is improved upon, no proof of want 
 
 of, 73. 
 must be considered with reference to state of things at the 
 
 date of the patent, 72. 
 use of invention by infringer, strong evidence of, 75. 
 question of, must be decided on facts of each particular 
 
 case, 72. 
 is a question for the jury, 71. 
 how far, considered by Privy Council, 199. See Extension. 
 
 Yagtjeness, 
 
 in title not fatal, 79. 
 
 in the complete may be fatal, 108, 116. 
 
 Validity, 
 
 certificate of, 328. See Certificate, 
 
 Vabiance, 
 
 between title and specification fatal, 78 — 82. 
 vagueness in title does not necessarily amount to, 79—81. 
 must be decided on facts of each particular case, 82. 
 between provisional and complete specifications fatal, 84, 
 8i9. 
 what amounts to, 85, 86, 88. 
 what does not amount to, 85 et seq. 
 
 the nature of the invention must be the same, 85, 
 
 89. 
 the rule in Siddell v. Viclcers, 89. 
 effect of provisions for comparison by the C. Gr., 89. 
 
 Vendee, 
 
 of patentee, rights of, 246. 
 of licensee, rights of, 247. 
 
 Verbal, 
 
 agreement to assign, 177. 
 licence to use the invention, 182. 
 
 Vessel, 
 
 foreign, user for navigating, no infringement, 242. 
 British, user abroad on, 242. 
 
 War, 
 
 patents for improvement in munitions of, 363. 
 Office memorandum to inventors, 468. 
 
 Warranty of Validity, 
 
 none implied in assignment of a patent, 177. 
 
 what amounts to, 177. 
 
 instances of implied, 178, 192. 
 
 instances where it was held there was no, 178, 191. 
 
INDEX. 605 
 
 Witness, 
 
 power of Law Officers to examine, 141. See also Evidence. 
 
 Words, 
 
 " to be granted for the same" in sects. 8 and 9, 66. 
 "obtained the invention " in sect. 11, sub-s. 1, 136. 
 "legal representative" in sect. 11, sub-s. 1, 137. 
 " to be granted for the same " in sect. 14, 133. 
 "correction or explanation" in sect. 18, sub-s. 1, 157. 
 claims, 
 
 " as above described," 97, 98. 
 
 " Improved Turning Table as hereinbefore described " 
 
 held not to be a claim for a combination, 107. 
 "Apparatus as fully set forth and described, &c.," 
 
 held to be a claim for a combination, 122. 
 " Applicable for other purposes," amounts to claim for 
 more than one invention, 128. 
 
 WOEKMAIT, 
 
 assisting master in invention, 12 et seq., 136. 
 opposition to grant by, 136. 
 
 Writ, 
 
 form of indorsement on, 470 
 
 in action for infringement, 285. 
 
 to restrain threatened infi-ingement, 285. 
 
 in action to restrain threats, fonn of, 494. 
 
 THE END. 
 
 BKADEURY, AONEW, & CO. LD., PRINTERS, WHITEFRIARS. 
 
 T. S S 
 
") 
 
 »u 
 
til 
 
 UC SOUTHERN REGIONAL LIBRARY FACILITY 
 
 AA 000 835 442 5 
 
i