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Sect. 18. enable an amendment to be allowed which would make the patent larger than it was before.
Leave to amend
The object of a disclaimer is to enable a patentee to omit those parts of a specification which, if retained, would make the patent void (see Ralston v. Smith, 11 H. L. C. 243).
It may be allowed after a judgment adverse to the validity of the patent (Morgan v. Seaward, 2 Carp. P. C. 104).
Matters which form no part of the invention need not be disclaimed (Lister v. Leather, 8 E. & B. 1004).
The disclaimer merely operates to strike out the parts of the specification disclaimed and does not serve to explain what is left (Tetley v. Easton, 2 C. B. N. S. 706). The disclaimer will be deemed part of the specification (sub-sect. 9, see Stocker v. Waller, 9 Jur. 136).
The disclaimer is not retrospective so as to make a person liable for an infringement prior to the disclaimer, 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 (sect. 20).
Sub-sect. (9) deals with the point raised in Foxwell v. Bostock, 4 De G. J. & S. 298, viz., as to the effect of a conclusive. disclaimer which exceeded the provisions of the Statute. This sub-sect. makes the leave to amend conclusive as to the right to amend (except in cases of fraud).
As to amendment during the pendency of legal proceedings, see the following section.
Practice as A request for leave to amend is made in Form F. (Patent Forms). The reasons for making the amendment are to be stated, and the nature of the proposed amendment is to be shown in red ink on a copy of the original specification and drawings which are to accompany the application (Patents Rules, 48). The application requires a 30s. stamp if the patent has not been sealed, if sealed a 31. stamp (see Schedule to Patents Rules).
The application will be advertised in the Official Journal.
Notice of opposition to the amendment may be given in Form G. (Patents Forms). The grounds of opposition are to be stated, an address for service in the United Kingdom is to be given, and the opponent himself must sign the notice. The notice requires a 10s. stamp and is to be accompanied by an unstamped copy.
Within fourteen days after the expiration of one
month from the first advertisement of the application, the opponent is to leave at the Patent Office affidavits in support of his opposition and deliver a list to the applicant. Copies of such affidavits may be obtained by the applicant from the opponent or the Patent Office, and, within fourteen days from the delivery of the above list, the applicant is to leave at the Patent Office his affidavits in answer, and deliver a list thereof to the opponent, who is allowed a period of seven days to leave his affidavits in reply, and deliver a list thereof to the applicant.
No further evidence is allowed, except by leave of the comptroller, obtained (a) on written consent of both parties, (b) specially, after notice to the other side.
The comptroller gives both parties seven days' notice of the hearing. A hearing fee of 17. has to be paid by both parties.
When leave to amend is given comptroller may require new specification and drawings to be left (Patents Rules, 54). The amendment is also advertised (Patents Rules, 56).
As to amendment generally, see Patents Rules, 48–56. The appeal from the decision of the comptroller to the Appeals to law officer is governed by the same rules as other law officer. appeals. For practice, see note to s. 7.
19. (1) In an action for infringement of a patent (a), Power to and in a proceeding for revocation of a patent (B), part of the Court or a judge may at any time order that invention the patentee shall, subject to such terms as to action, &c. during costs and otherwise as the Court or a judge may impose, be at liberty to apply at the Patent Office (7) 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.
This section introduces an important alteration in the law. The 5 & 6 Will. IV. c. 83, s. 1, limited the effect of an amendment entered during action by enacting that no disclaimer or memorandum of alteration enrolled after the commencement of a suit, except proceedings by scire facias, could be given in evidence in such suit.
(a) Ss. 28-31.
(B) S. 26.
(7) Copy order is left with ap
plication. Patents Rules, 55.
A patentee under the present Act cannot apply to the comptroller for leave to amend, unless by leave of the Court or judge, if any action for infringement of the patent or any proceeding for revocation of a patent be pending. The leave to amend may be subject to such terms as may be imposed.
As to giving such amendment in evidence, and its effect on the pending action, see the following section.
When the Court makes an order under this section an
tion, how official or verified copy of such order is to be left at the Patent Office, along with the application for leave to amend (Patent Rules, 55): otherwise the application is made and the same procedure is adopted as in the ordinary application for amendment. See note to preceding section.
The fee on application is 37.
20. Where an amendment by way of disclaimer, of damages. correction, or explanation, has been allowed under this Act, no damages shall be given in any action in respect of the use of the invention before the disclaimer, correction, or explanation, unless the patentee establishes to the satisfaction of the Court that his original claim was framed in good faith and with reasonable skill and knowledge,
Under this Act an amendment may be allowed in two cases (1) by the comptroller, under sect. 18; (2) by the Court or judge, under sect. 19.
This section does not say that the amendment may not be given in evidence where the alleged infringement occurred previous to the amendment, but only that in such a case damages are not to be given, except as provided by the last proviso. A patentee may be able to establish the validity of the patent as amendeda matter of some importance in view of the provisions of sect. 31.
Unless the patentee can satisfy the Court that his original claim was framed in good faith and with reasonable care and knowledge, it may be better not to amend until the action is at an end-inasmuch as the result of the action will show the patentee where his specification is wanting. It is quite possible for the Court to give
leave to amend, for the amendment to take place, and Sects. yet for the patent to be upset in the action.
21. Every amendment of a specification shall be Advertiseadvertised in the prescribod manner,
The advertisement will be in the Official Journal of the Patent Office and in any other manner if the comptroller so directs (Patents Rules, 56).
Board to order grant
22. If on the petition (a) of any person interested Power for it is proved to the Board of Trade that by reason of the default of a patentee to grant licences on reason- of licences. able terms
(a.) The patent is not being worked in the United
(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 (B), and any such order may be enforced by mandamus.
This section is new. The President of the Board of Trade, in moving the second reading of the Bill, explained the object of and the reasons for adopting the clause as follows:-"The next point was the question of licensing. Their position was, that while the inventor was entitled to a reward, he was not entitled to anything in the nature of unreasonable amount, and it had been pointed out, especially in an interesting memorial presented on behalf
(a) For form of petition and application, see Patents Forms,
H1, and H. Fee is 57.
Sect. 22. of the chemical industry, that under the present law it would have been possible, for instance, for the German inventor of the hot-blast furnace, if he had chosen to refuse a licence to one in England, to have destroyed almost the whole iron industry in this country and to have carried the business bodily over to Germany. Although that did not happen in the case of the hot-blast industry, it happened in a certain manufacture connected with the coal products, and the whole of that had gone to Germany, because they would not grant a licence in this country."
Applies This section applies only to letters patent granted on only to applications made after the 31st Dec., 1883, and does patents granted not affect (1) patents granted before that date, or (2) after 31st patents granted after that date on applications made December, previous to such date.
An application is made in Form H (Patents Forms) bearing a 57. stamp.
A petition is framed in Form H1 (Patents Forms) stating the title of the invention, the petitioner's interest therein, the grounds upon which relief is claimed with reference to those mentioned in the section, the circumstances that show that the grounds relied on are due to the default of the patentee to grant licences on reasonable terms, and the purport of the order asked for.
The application, with an unstamped duplicate copy, the petition, with an examined copy, accompanied by affidavits or other evidence, are left at the Patent Office.
If the Board of Trade are of opinion that a primâ facie case is made out thay will give the petitioner directions as to further proceedings. On or before a day to be named by them the petitioner is to deliver to the patentee copies of the petition and affidavits or other evidence left in support. Within fourteen days from day of delivery of such delivery the patentee is to give notice in Form I (Patents Forms), stamped with a 51. stamp, if he intends to oppose, and to leave at the Patent Office his affidavits in opposition and deliver copies to petitioner. Within fourteen days from such delivery the petitioner is to leave at the Patent Office his affidavits in reply and deliver copies to the patentee.
Further proceedings will be fixed by the Board of Trade (see Patents Rules, 57-63).
Mandamus. As to enforcing an order by mandamus under this section, see Rules Supreme Court, 1883, Order LIII.