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Sect. 29. not worded in the same way, is contained in sub-sect. (3), requiring the time and place of prior publication or user to be stated. Under the Patent Law Amendment Act, 1852, it has been held that the defendant must furnish full and sufficient particulars.
Therefore, if prior user by other persons be alleged, the names of some of such persons must be set out (Crossley. v. Tommy, 2 Ch. D. 533), and where the particulars stated that the process had been used by three persons, whose names and addresses were set out, and "other persons in London and Birmingham," it was ordered that the names and addresses of some of such "other persons be given, otherwise that the words be struck out (Flower v. Lloyd, 20 S. J. 860). Places where the user takes place ought to be stated (Birch v. Mather, 22 Ch. D. 629); but where the user relied upon is a general public user, a reference to the place where such user takes place may be sufficient (Morgan v. Fuller, L. R. 2 Eq. 297); but see Palmer v. Wagstaffe, 8 Exch. 840), and remarks of Field, J., in Flower v. Lloyd, 20 S. J. As to prior user in a colony, see Rolls v. Isaacs, 19 Ch. D. 268.
The words "and others" are liable to be struck out, inasmuch as the defendant can always apply to amend his particulars but in Penn v. Bibby, L. R. 1 Eq. 548, the words "amongst other instances" were allowed to remain. As to the words " divers other people" (struck out), see Fisher v. Dewick, 1 Web. 551; "and elsewhere," see Jones v. Benger, ib. 544.
Where evidence of prior public user comes to the knowledge of the defendant after the delivery of his particulars he should apply to amend, and if the trial has begun he may obtain such leave on short notice of motion (Daw v. Eley, L. R. 1 Eq. 38).
Where one of the grounds of defence is that the patentee was not the true and first inventor he need not state in the particulars who the first inventor was (Russell v. Ledsam, 11 M. & W. 647).
Where prior publication is alleged all the books or other publications relied on must be specified (Bentley v. Keighley, 7 M. & G. 652). As to publication in a foreign language, see U. T. Coy. v. Harrison, 21 Ch. D. 720. The pages of the publications should be specified : drawings described so as to enable them to be identified: and specifications of patents should be referred to by their date and the name of the patent, see Plimpton v. Spiller, 20 S. J. 860.
Where fraud or misrepresentation are relied on, the Sect. 29. nature of such fraud or misrepresentation must be stated (Russell v. Ledsam, 11 M. & W. 647).
In regard to other objections the following particulars have been held sufficiently precise. "That the invention is not properly set forth in the specification (Heath v. Unwin, 10 M. & W. 684). "That the specification did not sufficiently distinguish between what was old and what was new (Jones v. Berger, 5 M. & G. 208). That it did not state "the most beneficial method with which he was then acquainted" (Ibid.).
Where the particulars are too general the plaintiff cannot take this objection at the trial, and any evidence within the literal meaning of the particulars will be admitted (Hull v. Bolland, 1 H. & N. 134; Sykes v. Howarth, L. R. 12 Ch. D. 826).
-Particulars of breaches or objections may be amended Amendby leave. Sub-sect. (5.)
Even after trial has begun leave may be given to particu amend particulars of objection (Daw v. Eley, L. R. 1 Eq. 38). As to the effect of leave on the action, see Edison Telephone Co. v. India Rubber Co., 17 Ch. D. 137. Sub-sect. 6 introduces some changes.
By sect. 43 of the Patent Law Amendment Act, 1852, Costs of it was provided that "the plaintiff and defendant respec- particutively shall not be allowed any costs in respect of any particular unless certified by the Judge before whom the trial was heard to have been proved by such plaintiff or defendant respectively."
No alteration is made in the law so far as a certificate is made a condition precedent to the right to the costs of particulars, but,
1. The giving of the certificate is no longer restricted to the judge who tried the action. It may be obtained from "the Court or a judge."
2. The certificate is no longer to be that the particular was proved," but that it was reasonable and proper. Under the Patent Law Amendment Act, 1852, it was held that the certificate was necessary, even in case of a nonsuit (Honiball v. Bloomer, 10 Exch. 538); and in all cases where the action comes on for trial, but not where plaintiff obtained an order before hearing to dismiss his own bill (Batley v. Kynock, L. R. 20 Eq. 632); or where plaintiff abandons the action (Greaves v. Eastern Counties Railway, 1 Ell. & Ell. 961).
30. In an action for infringement of a patent, the Court or a judge may on the application of either inspection, party make such 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.
&c., in action.
Three distinct matters are treated of in this section, 1. Injunction; 2. Inspection, and 3. Account.
In connection with this section, reference may be GENERALLY. made to the following provision of the Judicature Act, 1873, sect. 25, sub-sect. 8:
An injunction may be granted. ... 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." Whatever can be done under this sub-sect. of the Judicature Act may also be done at the final trial of the action (Beddow v. Beddow, L. R. 9 Ch. D. 93). This 8th sub-sect. is wider in its terms than the present 30th sect., inasmuch as the present section is restricted to applications "in an action for infringement of a patent." Hence an application to restrain a threatened infringement (as to which see Frearson v. Lowe, 9 Ch. D. 48), would require to be made under the Judicature Act, 1873, and not under this section, unless it were made "in an action for infringement."
The following new rule relating to injunctions forms Rule 12 of Order L. of R. S. C. 1883.
"In any cause or matter in which an injunction has been or might have been claimed, the plaintiff may, before or after judgment, apply for an injunction to restrain the defendant or respondent from the repetition or continuance of the wrongful act or breach of contract complained of or from the commission of any injury or breach of contract of a like kind relating to the same property or right, or arising out of the same contract and the Court or a judge may grant the injunction, either upon or without terms, as may be just."
The principles on which the Court will grant an interlocutory injunction were discussed by Jessel, M. R., injunction. in Dudgeon v. Thomson, 22 W. R. 464. The plaintiff must be prepared to show :
1. The validity of the patent and in order to prove Sect. 30. this it will be sufficient to show :
(a.) That the patent is old and there has been must show,
(c.) Where the conduct of the defendant is such as
2. Some actual infringement (Bridson v. MacAlpine, 2. Infringe8 Beav. 230). As to a threatened infringement, ment.
see Frearson v. Lowe, L. R. 9 Ch. D. 48, quoted
An interlocutory injunction will not be granted where Must be no there has been any undue delay in coming to the Court delay. (Bovill v. Crate, L. R. 1. Eq. 388).
Where there are numerous persons infringing the Numerous patent the proper course to pursue is for the plaintiff to infringers. proceed against one, asking all the others if they will abide the result (see Bovill v. Crate, L. R. 1 Eq. p. 391).
By R. S. C. Order L. Rule 6, an application for an How interlocutory injunction under sect. 25, sub-sect. 8 of the obtained. Judicature Act, 1873, may be made by the plaintiff by motion, either ex parte or with notice. Generally the injunction will not be granted on an ex parte application except in case of emergency. A notice of motion must be a two clear days' notice, unless special leave be given to the contrary (R. S. C. Order LII. r. 5).
The affidavits in support of the application must clearly and accurately set forth the legal title of the plaintiff; that he believed at the time of making the application (not at the time the patent was obtained)
Sect. 30. the patentee was the first and true inventor, and that the invention had not been practised at the time the patent was granted (Gardner v. Broadbent, 2 Jur. N. S. 1041; Whitton v. Jennings, 1 Dr. & S. 110). The nature of the alleged infringements must also be particularly stated (Hill v. Thompson, 3 Mer. 622).
This section gives a discretionary power to the Court conditions. to grant or withhold an injunction. It may be granted on an undertaking by the plaintiff to be liable for any damages the defendant may incur (Plimpton v. Spiller, 4 Ch. D. 286); or it may be refused upon an undertaking by the defendant to keep an account of profits (Bridson v. McAlpine, 8 Beav. 229: Plimpton v. Malcolmson, L. R. 20 Eq. 37); or it may be ordered to stand over until the trial.
petual in junction.
The injunction will take the form of an Order of the Court (R. S. C., L. 11).
Service of order must be before 6 p.m., or on Saturdays before 2 p.m., see R. S. C., LXIV. r, 11, and it is sufficient if an office copy be exhibited, ib., r. 1.
Notice may be given by telegram in cases of urgency, Ex parte Langley, Re Bishop, 13 Ch. D. 110.
A perpetual injunction is sometimes by consent granted on an application for an interlocutory injunction, but usually it is obtained at the final trial.
Where the obtaining of an injunction is a substantial object of the action, the writ should be endorsed accordingly, Colebourne v. Colebourne, L. R. 1 Ch. D. 690.
The fact that the patentee did not apply for an interlocutory injunction will not preclude him from asking for a perpetual one at the hearing, but if he did not so apply he will be required to establish a clear and unexceptional title, Bacon v. Jones, 4 My. & Cr. 433; Bacon v. Spottiswoode, 1 Beav. 382; Patent Type Founding Company v. Walter, John. 727.
An injunction may be obtained against the threatened infringement of a patent (Frearon v. Lowe, 9 Ch. D. 48), but the application would require to be made under sect. 25, sub-s. 8 of the Judicature Act, 1873, unless made in "an action for infringement."
By Lord Cairns' Act (21 & 22 Vict. c. 27, s. 2), the Court may give damages in addition to or in substitution for an injunction.
The provisions of this section in regard to inspection must be read along with the provisions of Order L. Rule 3 of the Rules of the Supreme Court, 1883. That rule