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Sect. 7. the title does not sufficiently indicate the subject matter of the invention, the comptroller may require that the application, specification, or drawings be amended before he proceeds with the application (a).
ment of application.
(2.) Where the comptroller requires an amendment, the applicant may appeal (3) 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 appli
(5.) If after an application has been made, but before a patent has been sealed, an application is made, accompanied by a specification bearing the same or a similar title, it shall be the duty of the 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 notice to the applicant that he has so reported.
(6.) Where the examiner reports in the affirmative, the comptroller may determine, subject to an appeal to the law officer, whether the invention comprised in both applications is the same, and if so he may refuse to seal a patent on the application of the second applicant.
Where the examiner's report is unfavourable as to any of the three matters to which it may relate, the comptroller may require the application to be amended. He has no power to refuse the application. Before requiring the amendment the comptroller gives fourteen
(a) After hearing applicant. Patents Rules, 11, 14.
(B) Within fourteen days from date of decision. For Form of
Appeal, see Patents Forms, T.
days' notice to the applicant, and within five days from Sect. 7. the time such notice would be delivered in the ordinary course of post the applicant, if he desires to be heard, must give the comptroller notice to that effect in Form T (see Patents Forms). The comptroller may require the applicant to submit a written statement, or to attend before him personally (Patents Rules, 11-13).
If the applicant desires to appeal to the law officer Appeal to against the decision of the comptroller, he must, within law officer. fourteen days from the date of the decision appealed against, file (unless time be enlarged by comptroller or law officer), in the Patent Office a notice of appeal in Form T (Patents Forms) stating 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. A copy of such notice is to be sent to the Law Officer's Clerk, Room 549, Royal Courts of Justice, London. The comptroller, as soon as notice of appeal is filed, will transmit to the law officer's clerk all papers in his possession relating to the appeal. The law officer's clerk will give seven days' notice of the hearing of the appeal, though the law officer may give special leave for shorter notice. Such notice will be given to the appellant and the comptroller, and to the opponent (if any), and, where the appeal relates to two applications pending, to the prior applicant.
The evidence used at hearing will be the same as that before the comptroller: but evidence may be given of matters that have come to the knowledge of either party after the date of the decision appealed against. The law officer may, however, give leave for further evidence to be filed, on special application. Such evidence is subject to the same regulations as apply to procedure before the comptroller (see Patents Rules), unless otherwise ordered. Witnesses who have made affidavits may, on application, be ordered to attend the hearing for crossexamination, a reasonable sum being tendered them for conduct money.
Costs may be ordered to be paid by any party, and if not paid within fourteen days after the amount is ascertained, an order for payment may be made by the law officer under sect. 38, which may be made a rule of Court.
All documents sent to the law officer's clerk may be sent by prepaid letter. (See Rules as to Appeals to law officer).
The acceptance of the application, where it is accom- Notice of
Sect. 7. panied by a provisional specification, will give the applicant provisional protection under sect. 14, and so enable him to use and publish the invention without prejudicing the grant of the patent. If, however, he publishes the invention and it is infringed, he cannot maintain an action for infringement, the patent not having been actually granted (sect. 15).
Where a complete specification is lodged in the first instance and accepted, the applicant will be entitled to protection under sect. 15; but the specification will be open to inspection on advertisement of the acceptance (Patents Rules, 26).
Protection An important alteration in Patent Law is made by against subsequent sub-sects. (5) and (6). Hitherto it has been held that applicants. the filing of a prior provisional specification was not a ground for refusing to allow the filing by a second and subsequent applicant of another provisional specification relating to the same invention: and if the second applicant was the first to obtain a grant of letters patent, no patent would be granted to the first applicant (Redgate's Application, L. R. 4 Ch. 577).
This doctrine was questioned by Cairns, L.C., in In re Deering's Patent, 13 Ch. D. 393, where leave was given to seal a second patent, although a patent for a similar invention had already been granted, both applications having been made on the same day. These sub-sections in such a case empower the comptroller to refuse to grant a patent to the second applicant. The comptroller is to act on the report of the examiner that the title of the specification lodged with the second application is the "same or similar" to the title of the prior specification. It might seem at first sight as if the second applicant could defeat the intention of these sub-sections by affixing a different title to his specification, but it must be remembered that under sect. 6 the examiner has to report, in every case, whether the title fairly describes the invention. The comptroller can require the title to be amended, and then the identity or similarity of the titles of different applications will become apparent.
Before deciding the comptroller is required to give both applicants an opportunity of being heard (Patents Rules, 15). See note above on Amendment of application.
The prior applicant is also protected under sect. 11, as he may on the advertisement of the complete specification of the subsequent applicant, oppose the sealing of the patent.
The prior applicant is still further protected by sect. 13, which practically enacts that if the subsequent 7, 8. applicant obtains the sealing of the patent, that, is not to prevent the sealing of the patent to the prior applicant.
8. (1.) If the applicant does not leave a complete Time for leaving specification with his application (a), he may leave complete it at any subsequent time within nine months from specificathe date of application.
(2.) Unless a complete specification is left within that time the application shall be deemed to be abandoned.
By leaving a complete specification with the application, the applicant will obtain protection under sect. 15 as soon as it is accepted. The disadvantages of adopting this course are, that the applicant is precluded from making further experiments or otherwise improving the invention, and that in case the application be refused the 37. additional fee paid will be lost. The refusal of a provisional specification only entails the loss of a 11. fee.
If the complete specification be not lodged within nine months the application which includes the provisional specification will be deemed to be abandoned. In Oxley v. Holden, 8 C. B. N. S. 666, it was held, that the abandonment of a provisional specification did not make such specification public, so as to prevent the same or another person from lodging another application and obtaining a patent for the same invention, inasmuch as the provisional specification only became public when published by the Patent Office under sect. 2 of the Patent Law Amendment Act, 1852. Subject to the provisions of sect. 7, sub-sects. (5) and (6), the same principle would seem to apply to provisional specifications abandoned under this Act, as a specification, whether provisional or complete, is not published until the acceptance of the complete specification (sect. 10). Where, however, an application is made for the same patent, it would seem to be the duty of the examiner to whom it is referred to report to the comptroller that it comprises the same invention as that contained in the previous application. But see sect. 9, sub-sect. (4), as to
(a) See s. 5, sub-s. (2)
Sects. applications becoming void if the complete specification be not accepted within twelve months.
son of provisional
After obtaining provisional protection a patentee may publish" as well as "use the invention. Where it is "published" and afterwards abandoned, such publication would be fatal to a second application.
9. (1.) Where a complete specification is left after a provisional specification, the comptroller shall refer both specifications to an examiner for the purpose of plete speci- ascertaining whether the complete specification has
been prepared in the prescribed manner, and whether the invention particularly described in the complete specification is substantially the same as that which is described in the provisional specification.
(2.) If the examiner reports that the conditions herein before contained have not been complied with, the comptroller may refuse (a) to accept the complete specification unless and until the same shall have been amended to his satisfaction; but any such refusal shall be subject to appeal (B) to the law officer.
(3.) The law officer shall, if required, hear the applicant and the comptroller, and may make an order determining whether and subject to what conditions, if any, the complete specification shall be accepted (y).
(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 application shall, at the expiration of those twelve months, become void.
(5.) Reports of examiners shall not in any case be published or be open to public inspection, and shall
(a) But only after hearing ap plicant. Patents Rules, 11-14. (8) Within fourteen days of comptroller's decision. Appeal
Rules, 5. For Form, see Patents
(7) See Rules as to Appeals to law officers.