66

Sect. 25. are to have regard to the profits of the patentee as such," refers to the question raised in In re Saxby's Patent, 7 Moo. P. C. C., N. S. 82, and other cases as to including profits made by the patentee as manufacturer in determining whether or not he had been sufficiently remunerated, the tendency of recent cases being to include such profits. Apart from this clause, any change introduced by sub-sect. 5 will be due to the interpretation placed on it rather than to its actual wording.

Grounds of

1. The nature and merits of the invention in relation extension. to the public.

1. Nature and merits of inven

tion.

In considering the merits of the invention, the Judicial Committee require a greater degree of utility to be shown than is necessary in order to obtain a patent (In re Errard's Patent, 1 Web. 559; In re Downton's Patent, ib. 565; In re Saxby's Patent, 7 Moo. P. C. C., N. S. 82). The reason is, that if patents were not granted on slight proof of utility, the public would run the risk of losing inventions, but no such risk is incurred in refusing an extension of a patent, and where the invention is really beneficial to the public, the applicant for extension can easily prove the fact. The application will always be refused where the utility is small (In re Simister's Patent, 1 Web. 721), or where the extension would be detrimental to the public (In re McDougal's Patent, L. R. 2 P. C. 1).

The success of the invention will be inquired into, and the fact that it has not come into public use will raise a strong presumption against its utility (In re Woodcroft's Patent, 2 Web. 29; In re Bakewell's Patent, 15 Moo. P. C. C. 385; In re Allan's Patent, L. R. 1 P. C. 507 ; In re Herbert's Patent, L. R. 1 P. C. 399). This presumption of want of utility may be rebutted by showing that the nature of the invention was such that it would not likely come into immediate use (In re Jones' Patent, 1 Web. 577); or that the non-user was due to the pecuniary difficulties of the patentee (In re Wright's Patent, 1 Web. 575); or that the market for the patent was a limited one (In re Herbert's Patent, L. R. 1 P. C. C. 399).

That the invention has not been carried into practice so as to benefit the public will also be a good ground for refusing the extension (In re Pinkus' Patent, 12 Jur. 233; In re Herbert's Patent, L. R. 1 P. C. 399), even though that be due to disputes relating to the working of the patent (In re Patterson's Patent, 6 Moo. P. C. C. 469); but it is open to the applicant to explain the cause of the delay, and if he gives a reasonable excuse the extension may be granted (In re Norton's Patent, 1 Moo. P. C. C.,

N. S. 339); and strong and unanswered evidence of Sect. 25. utility may be sufficient, though the patent has not been tested by actual employment (In re Hughes' Patent, L. R. 4 App. Cas. 174). As to improvements in a non-used patent, see Otto v. Linford, 46 L. T. 35.

2. Profits

as such.

2. The profits made by the patentee as such. In estimating his profits, the applicant must include of patentee all profits made by him as patentee, such as result from licences or royalties, including too, profits made in another country (In re Johnson's Patent, L. R. 4 P. C. 75); or made by sale for exportation (In re Hardy's Patent, 6 Moo. P. C. C. 441). See also Adair's Patent, L. R. 6 App. Cas. 176.

Profits made by the patentee not "as such "-e.g., by manufacturing the patent article-would under subsect. 15 not be included. See In re Betts' Patent, 1 Moo. P. C. C., N. S. 49; In re Muntz's Patent, 2 Web. 121, and In re Saxby's Patent, 7 Moo. P. C. C., N. S. 82, for the principles on which the Committee have hitherto acted.

The Committee will not go behind the accounts or send them back in order to ascertain what part of the profits the applicant is entitled to as manufacturer and what part as patentee (ibid.). Adair's Patent, L. R. 6 App. Cas. 176.

He is allowed to make certain deductions, e.g., expenses incurred in bringing out the patent (In re Roberts' Patent, 1 Web. 575); or in making experiments (In re Kay's Patent, 1 Web. 572); or in defending the patent (ibid.); or in bringing the invention into use (In re Galloway's Patent, 1 Web. P. C. 729). He may also deduct a sum for the exclusive devotion of time in bringing the patent into notice (In re Carr's Patent, L. R. 4 P. C. 539), as well as a manufacturer's fair profit (In re Galloway's Patent, 1 Web. P. C. 729).

3. Other "circumstances of the case."

3. Other

The Judicial Committee have also been accustomed to circumlook at:

stances.

(a.) The personal merit of the inventor. The personal (a.) Persomerit of the inventor is not exactly the same thing as nal merit the merit of the invention as regards the public. It is tor.

true that in some cases no distinction is drawn between these two kinds of merit; in others merit is attributed to the inventor because of the merit in the invention, but in In re Hill's Patent, 1 Moo. P. C. C., N. S. 258, and In re Norton's Patent, ib. p. 339, the merit of the invention was distinguished from the benefit or utility conferred on the public. Under the head of "merit in

of inven.

Sect. 25. the inventor" may be placed those cases in which the Judicial Committee have had regard to the skill and ingenuity shown by the patentee in making the invention (see In re Downton's Patent, 1 Web. P. C. 565; In re Whitehouse's Patent, ib. 473; In re Hill's Patent, 1 Moo. P. C. C., N. S. 258).

(b.) In

utility.

(c.) Effect of prolon gation on public.

(d.) Granting licences.

Conditions

The fact that the applicant was the importer and not the inventor of the patent takes away from personal merit (In re Soames' Patent, 1 Web. P. Č. 733).

An assignee represents the whole merit of the inventor (In re Galloway's Patent, 1 Web. 724; In re Morgan's Patent, ib. 737); but the Judicial Committee will have regard to the personal merit (if any) of the assignee himself, e.g., where he assisted the patentee (In re Whitehouse's Patent, 1 Web. 473).

It is no detraction from the merit of the inventor that others had thrown out suggestions in regard to the invention (In re Betts' Patent, 1 Moo. P. C. C. 49).

(b.) The inutility of the invention.

The Judicial Committee do not raise the question of the utility except in so far as a high degree of merit in the invention must be shown (In re Saxby's Patent, L. R. 3 P. C. 292); and on this ground they refused to extend a patent where from the specification it appeared that the subject matter would not support a valid patent (In re McDougal's Patent, L. R. 2 P. C. 1).

(c.) The effect the prolongation might have on the public. Where the prolongation would be detrimental to the public, the Committee will take that fact into account (In re McInnes's Patent, L. R. 2 P. C. 54).

(d.) The willingness or unwillingness of the applicant to grant licences on reasonable terms. Where an exclusive licence had been granted prolongation was refused (In re Cardwell's Patent, 10 Moo. P. C. C. 488).

The Judicial Committee may order the grant of a new annexed to patent, subject to " any restrictions, conditions, and proextension. visions it may think fit." The following are examples of conditions imposed :

That an annuity should be secured (by the assignee applicant) to the original inventor (In re Whitehouse's Patent, 2 Moo. P. C. C. 496; Russell v. Ledsam, 1 H. L. Cas. 687; In re Markwick's Patent, 13 Moo. P. C. C. 310; In re Pitman's Patent, L. R. 4 P. C. 84); or that a portion of the profits should be secured to the original inventor (In re Hardy's Patent, 6 Moo. P. C. C. 441); or to his widow (In re Herbert's Patent, L. R. 1 P. C. 399) ; that the patented article should be sold at a fixed price

(In re Hardy's Patent, 6 Moo. P. C .C. 441); that licences Sect. 25. should be granted to the public on certain terms (In re Mallett's Patent, L. R. 1 P. C. 308); that the Crown should be at liberty to use the new patent without licence (In re Petitt Smith's Patent, 7 Moo. P. C. C. 133 ; In re Napier's Patent, L. R. 6 App. Cas. 174). The Privy Council refused to impose this last mentioned condition in In re Carpenter's Patent, 2 Moo. P. C. C., N. S. 191 (n.), and in In re Lancaster's Patent, 2 Moo. P. C. C., N. S. 189); that those portions of the original patent not worked out be disclaimed (In re Bodmer's Patent, 8 Moo. P. C. C. 282); that the applicant should secure to the person to whom belonged the right of granting licences under the original patent a similar right of granting licences under the new patent (In re Normandy's Patent, 9 Moo. P. C. C. 452).

By the existing Rules (see Privy Council Rules) the Practice. applicant, after advertising three times in the London Gazette and in three London papers, and three times in a country paper near where he carries on business, is, within one week from the insertion of his last advertisement in the Gazette, to present a petition for extension. The petition must be presented six months before the time limited for expiration of the patent, and be accompanied by affidavits of the above advertisements having been duly inserted.

Any person may enter a caveat addressed to the Registrar of the Council at the Council Office, and will be entitled to be heard on such petition. A copy of the petition must be served on such person. Within one fortnight after being served with the petition, all persons opposing are to send to the Council Office notice of their objections to the granting of the prayers of such petition. The petitioner must, one week before day fixed for hearing, lodge six printed copies of the specification, and four copies of the balance sheet of expenditure and receipts, relating to the patent in question. Such accounts are proved at the hearing.

The petition is to mention a day on which application will be made to fix a day for hearing-such day being not less than four weeks from date of last advertisement in the Gazette. All notices of opposition must be lodged before such day, and persons opposing are entitled to four weeks' notice of the hearing (see Privy Council Rules).

For form of petition, &c., see App. A.

Sect. 26.

Revocation

of patent.

Revocation.

26. (1.) The proceeding by scire facias to repeal a patent is hereby abolished.

(2.) Revocation of a patent may be obtained on petition to the Court.

(3.) Every ground on which a patent might, at the commencement 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 person authorised by the AttorneyGeneral in England or Ireland, or the Lord Advocate in Scotland.

(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.

(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 the objections on which he means to rely, and no evidence shall, except by leave of the Court or a judge, be admitted in proof of any objection of which particulars are not so delivered.