not be liable to production or inspection in any legal Sect. 9. proceeding, other than an appeal to the law officer under this Act, 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.

The examiner is to report

Report of (1.) Whether the specification has been prepared in examiner the prescribed manner. As to this see note to sect. 5, on complete sub-sect. (4).

(2.) Whether the invention described in the complete specification is substantially the same as that described in the provisional specification. This provision will prove a most useful one to patentees. Any substantial variation between the two specifications will invalidate the patent (see note to sect. 5). The favourable report of the examiner is not made conclusive as to the absence of any material variation, and whilst the probability of a patent being upset by the allegation of material variation is greatly diminished, it still remains open to defendants to take such an objection.

specifica

tion.

The report of the examiner is not to be published. It Not to be may be used on appeal to the law officer, but it is not published. liable to production or inspection unless by order of the Court or officer having power to order discovery in such legal proceedings. In proceedings before the Queen's Bench Division of the High Court, see as to the person to whom to apply for such certificate, R. S. C. 1883, Ord. XXXI.

law officer.

The practice on appeals to the law officer is the same Appeal to as on appeals from the decision of the comptroller requiring amendment of an application (see note to sect. 7).

When there is an appeal pending against a refusal to Time for accept a complete specification the law officer has power to acceptance. direct when the patent shall be sealed (s. 12, sub-s. (3)).

The fact of an application becoming void by its nonacceptance within twelve months does not make it public, and the same principles that apply to applications deemed to be abandoned under sect. 8 apply to applications deemed void under this section. In short, an application refused, abandoned, or void, does not become public and therefore will not affect a subsequent application for a similar invention, except in so far as sub-sect. (5) and (6) of sect. 7 apply.

Sects.

10, 11.

10. On the acceptance of the complete specification the comptroller shall advertise the acceptAdvertise ance (a); and the application and specification or ment on specifications with the drawings (if any) shall be of complete open to public inspection (B).

acceptance

specification.

Office,

Where a complete specification is lodged in the first instance and accepted, it will be open to inspection as soon as it is advertised (Patents Rules, 26).

The Patent Office is open every week day from 10 to when open. 4, except on Christmas Day, Good Friday, Her Majesty's Birthday, and Bank Holidays (see Patents Rules, 7).

Opposition

11. (1.) Any person may at any time within two to grant of months from the date of the advertisement of the patent. acceptance of a complete specification give notice (7) at 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 representative, or on the ground that the invention has been patented in this country on an application of prior date, or on the ground of an examiner having reported to the comptroller that the specification appears to him to comprise the same invention as is comprised in a specification bearing the same or a similar title and accompanying a previous application, but on no other ground.

(2.) 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 (8) 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

(a) In Official Journal. Patents Rules, 25, 26.

(8) Inspection fee is 1s. See First Schedule to Patents Rules.

(2) For Form of Notice, see Patents Forms, D. The fee on notice is 10s. (See first schedule to Patents Rules.)

(8) Patents Rules, 35-41. Fee on hearing, 17., by both applicant and opponent respectively. (e) See Rules as to Appeals to law officer.

(C) For Form of Request, see Patents Forms, T.

applicant and any person so giving notice and being Sect. 11. in the opinion of the law officer, entitled to be heard in opposition to the grant, and shall determine whether the grant ought or ought not to be made.

(4.) The law officer may, if he thinks fit, obtain the assistance of an expert, who shall be paid such remuneration as the law officer, with the consent of the Treasury, shall appoint.

66

The Patent Law Amendment Act of 1852 permitted Grounds of opposition. persons having an interest in opposing the grant of letters patent" to oppose the grant after the advertisement of the application, but it did not, like this section, enumerate the grounds of objection that might be taken. 1. That the applicant obtained the invention from the 1. Invenopponent or the person of whom he is the legal tion obrepresentative.

tained

from

whom he is

A disclosure to assistants or partners of an invention opponent
whilst it is being perfected under an obligation or the per-
to keep it secret until the patent is taken out son of
is not a disclosure to the public, Morgan v. Sea- the legal
ward, 2 M. & W. 544, approved by Lord Blackburn representa-
in Patterson v. Metropolitan Gas Light and Coke tive.
Co., L. R. 3 App. Cas. 239, and where a partner or
assistant, or any other person in a similar position
applies for a patent for the invention the real
patentee has under this section the means of pre-
venting the grant being made.

The legal representative of a patentee is under sect. 34
entitled to apply for a patent. Such applica-
tion is required to be made within six months of
the decease of the inventor, and it might be
maintained that the right of the personal re-
presentative to take this objection ought only to be
allowed within such six months, since the real
ground of the objection is that the personal re-
presentative is the one rightly entitled to the
patent. On the other hand, the fact that such an
application would be practically a fraudulent one,
and the declaration that the applicant was the
first inventor would be untrue, may lead the
Court to hold that the personal representative

Sect. 11.

2. Invention already patented on prior application.

3. Comprises

same invention as prior application.

may take the objection even where he himself
is not entitled to a patent.

2. That the invention has been patented in this
country on an application of prior date.
That letters patent had already been sealed for the
same invention has always been a valid objection
to an application, even where they had been
granted on a subsequent application (Ex parte
Bates and Redgate, L. R. 4 Ch. 577), though
Cairns, L. C., stated in In re Deering's Patent,
L. R. 13 Ch. D. 393, that he could never under-
stand the principle on which it was decided, and
declined to follow it where both applications had
been made on the same day. For the future the
objection that letters patent already exist, is by
this section restricted to letters patent granted on
an application of prior date. This provision, in
so far as it limits the objection, is supplemental to
sect. 7, sub-sects. (5) and (6), the object evidently
being to secure the patent to the first applicant.
Great difficulty has hitherto often arisen in de-
ciding on the identity of the patent applied for
with an existing patent. Wherever there has
been any doubt the presumption is in favour of
the application, since the owner of a previously
existing patent has always a remedy in the action
for infringement (In re Fox, 1 Web. 431; In re
Tolson's Patent, 6 De G. M. & G. 422). The fact
that the validity of the existing patent is ques-
toned is immaterial (In re Manceaux's Patent,
L. R. 6 Ch. 272).

3. That the examiner has reported to the comptroller
that the specification comprises the same inven-
tion as is comprised in a specification bearing the
same or a similar title, and accompanying a pre-
vious application.

This provision still further secures the first applicant. The previous part of the section prevents a subsequent applicant who may have obtained a patent objecting to a grant to a prior applicant; this proviso enables a prior applicant, if he so chooses, to prevent a grant to a subsequent applicant. Where both applications are made on the same day, the principle of In re Deering's Patent will probably be followed, and a patent granted to both. In this case neither patentee can maintain an action for in

fringement against the other (In re Deering's Patent, Sect. 11. L. R. 13 Ch. D. 393).

It will be observed that opposition to the acceptance of the complete specification is restricted to these three grounds. An application can no longer be objected to on the ground of want of utility or prior public user. The Crown might refuse to grant a patent on either of these grounds, inasmuch as the alleged invention would not be " any manner of new manufacture" within the meaning of sect. 46; but the Act contains no provision for taking either of these objections before the comp

troller or law officer.

1. Any person may take the second ground of opposi- Persons tion, viz., that the invention has already been who may patented on an application of prior date.

2. Any person may also (as far as this section goes)
take the third ground, viz., that the examiner has
reported that the specification comprises an in-
vention already applied for; but inasmuch as
notice of such report is (sect. 7, sub-sect. (5)) only
given to the applicants, this ground of opposition
is practically restricted to the prior applicant.
3. The real or true inventor (or his personal repre-
sentative) may take the first ground, viz., that the
invention was obtained from him.

oppose.

The person opposing sends to the Patent Office within Practice on two months of the date of the advertisement of the opposition. acceptance of the complete specification, a notice of oppo- Notice. sition in Form T (see Patents Forms), stamped with a 10s. stamp, stating on which of the grounds mentioned. in sect. 11 he intends to oppose. If a ground of opposition be that the invention has been patented in this country on an application of prior date, the title, number, and date of such prior patent must be specified, otherwise opposition on that ground will not be allowed. The notice is also to contain an address for service in the United Kingdom, and be accompanied by an unstamped copy, which the comptroller will send to the applicant.

Within fourteen days after the expiration of two months Evidenc from the advertisement of the acceptance of the complete specification, the opponent is to leave at the Patent Office affidavits in support of his opposition, and send a list of the same to the applicant. The applicant may obtain copies of such affidavits from the Patent Office or the