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states that "it shall be lawful for the Court or Judge Sect. 30. upon the application of any party to a cause or matter, and upon such terms as may be just to make any order for the inspection of any property or thing being the subject of such cause or matter, or as to which any question may arise therein, and for all or any of the purposes aforesaid, to authorise any persons to enter upon or into any land or building in the possession of any party to such cause or matter, and for all or any of the purposes aforesaid; to authorise any samples to be taken, or any observation to be made, or experiment to be tried which may be necessary or expedient for the purpose of obtaining full information or evidence."
Inspection of the defendant's works and machinery will only be ordered where the Court is satisfied that the inspection is essential to the plaintiff's case (Batley v. Kynock, (No. 1), L. R. 19 Eq. 229); and may be of a limited nature, e.g., restricted to one machine of each class sold (The Singer Sewing Machine Company v. Wilson, 13 W. R. 560); or may exclude inspection by plaintiff, (Flower v. Lloyd, Seton on Decrees, I. 350).
It was refused where important trade secrets would be disclosed, and the plaintiff could otherwise prove infringement (Piggott v. The Anglo-American Telegraph Company, 19 L. T. Rep. N. S. 46); and where the alleged infringement took place abroad (Neilson v. Betts, L. R. 5 H. L. 1).
An application under the above Rule 3, Order L. How obcannot be made to a Master in the Queen's Bench Divi- tained. sion, Order LIV. r. 12 (e).
It may be made either to a Judge in Chambers by summons, or to a Judge in Court by motion. The latter course is usually adopted. Notice of the application
ust be given (Ord. L. Rule 6), and two clear days must elapse between the service of notice of motion and the day named for hearing unless leave be given to the contrary (Order LII. Rule 5). The plaintiff may make the application after the issue of the writ, and any other person after he enters an appearance, Order L. Rule 6.
For notice of motion or summons, see App. A., or Forms. Daniel's Chancery Forms, p. 945-7. For forms of Orders, see App. A. and Seton on Decrees, p. 350.
On an application for an interlocutory injunction, ACCOUNT. the Court may instead of granting such injunction order Interim an account to be kept of all future sales and profits. An account of
Sect. 30. account of part profits is not generally ordered until final judgment, Vidi v. Smith, 3 Ell. & B. 969.
The Court has an extensive power as to ordering accounts at any stage under Rules Supreme Court, 1883. Order XXXIII. Rule 2, which states that :
"The Court or a Judge may at any stage of the proceedings in a cause or matter direct any necessary inquiries or accounts to be made or taken, notwithstanding that it may appear that there is some special or further relief sought for, or some special issue to be tried as to which it may be proper that the cause or matter should proceed in the ordinary manner." For Form of Order, see App. A. and Seton I. 344. A patentee is not at final judgment entitled to both an account of profits and an inquiry as to damages against Account of the same person, but must elect which he will take (De past profits Vitre v. Betts, L. R. 6 H. L. 321); but he may obtain an account against persons manufacturing, and damages against persons using the articles infringing the patent, Penn v. Biboy, L. R. 3 Eq. 308.
Form of order.
order for account.
The expiration of the patent before the action comes on for hearing will not deprive the plaintiff of his right to an account, Fox v. Dellestable, 15 W. R. 194. Regard will be had to the circumstances of the case, and an account was refused where the plaintiff delayed taking proceedings for three years after the patent had expired, Smith v. London and South Western Railway Company, 2 Eq. R. 428. See also Price's Patent Candle Company v. Bauwen's Patent Candle Company, 4 K. & J. 727, and Betts v. Gallais, L. R. 10 Eq. 392.
One of two joint owners is not entitled to an account as against another joint owner (Mathers v. Green, L. R. 1 Ch. 29); and a patentee cannot obtain an account against a manufacturer, as agent, who was to take a certain sum on each machine for himself and pay a royalty, Moxon v. Bright, L. R. 4 Ch. 292.
As to account between assignee of share of profits and licensee, see Bergmann v. Macmillan, 17 Ch. D. 423 : or between patentee and assigns of assignee, see Werdermann v. Société Générale Electricité, 19 Ch. D. 246. As to proving for profits in bankruptcy, see Watson v. Holliday, 20 Ch. D. 780.
In aid of an account the defendant may be ordered to produce his books for inspection, Saxby v. Easterbrook, L. R. 7 Ex. 207. Proceedings under an account may be stayed pending an appeal, Adair v. Young, L. R. 11 Ch. D. 136. For Form of Order, see App. A. and Seton I. p. 353.
31. In an action for infringement of a patent, the Sects. Court or a judge may certify that the validity of the 31, 32. patent came in question; and if the Court or a Certificate of validity judge so certifies, then in any subsequent action for questioned infringement, the plaintiff in that action on obtaining and costs a final order or judgment in his favour shall have his full costs, charges, and expenses as between solicitor and client, unless the Court or judge trying the action certifies that he ought not to have the same.
The provisions of sect. 43 of the Patent Law Amendment Act, 1852, that the certificate should be given by the judge who tries the action, and be certified " on the record," that the "record with the certificate" should be given in evidence in the subsequent action, and that it might be used for a similar purpose in a proceeding by scire facias, are not found in this section.
The certificate may be given by "the Court or a judge," and it is not required to be given in evidence in the subsequent action.
The certificate does not apply to the costs of the first trial in which it is given, but only to subsequent suits, (Penn v. Bibby, L. R. 3 Eq. 308); and may be granted though the validity of the patent is not disputed in the second action, Davenport v. Rylands, L. R. 1 Eq. 302. See Stocker v. Rodgers, 1 C. & K. 99, as to refusal of certificate where verdict was taken by consent, no evidence being given.
32. Where any person claiming to be the patentee Remedy in of an invention, by circulars, advertisements, or other- case of groundless wise threatens any other person with any legal pro- threats of ceedings or liability in respect of any alleged manu- legal profacture, use, sale, or purchase of the invention, any person or persons aggrieved thereby may bring an action against him, and may obtain an injunction against the continuance of such threats, and may recover such damage (if any) as may have been sustained thereby, if the alleged manufacture, use, sale, or purchase to which the threats related was not in fact an infringement of any legal rights of the person making such threats: Provided that this section shall
Sects. not apply if the person making such threats with due 32, 33. diligence commences and prosecutes an action for infringement of his patent.
Patent for one invention only.
In Halsey v. Brotherhood, L. R. 15 Ch. D. 514, it was decided by Jessel, M.R. (affirmed on Appeal, 19 Ch. D. 386) that a patentee who threatens other persons with legal proceedings in the event of their purchasing articles alleged to be an infringement of his patent is not liable to an action for damages by the vendor, even though the statements are untrue, unless he acted malâ fide, i.e., without reasonable and probable cause, though he might be restrained by injunction against the continuance of such threats.
This section does away with the necessity of showing reasonable and probable cause where damages are sought, and if the alleged infringements are really not infringements, both damages and an injunction may be obtained. Any person" aggrieved" may bring the action.
The last proviso is to meet the case of the manufacture, use, or sale being an actual infringement. See Axmann v. Lund, L. R. 18 Eq. 330.
33. Every patent may be in the form in the First Schedule to this Act, and shall be granted for one invention only, but may contain more than one claim (a); but it shall not be competent for any person in an action or other proceeding to take any objection to a patent on the ground that it comprises more than one invention.
The form of patent has been considerably altered to bring it into conformity with the provisions of the Act.
It is not always easy to decide whether a patent contains one invention or more than one. The examiner under sect. 6 is not required to report specially on the point whether the specification contains more than one invention, but where it does it may be open to him to report that the specification has not been prepared in the "prescribed manner," since the forms are only really applicable to "an invention."
A claim is not necessary in a provisional specification, sect. 5 (5).
(a) See s. 5.
34. (1.) If a person possessed of an invention dies Sects. without making application for a patent for the in- 34, 35. vention, application may be made by, and a patent Patent on for the invention granted to, his legal representa- application tive (a).
(2.) Every such application (B) must be made of deceased within six months of the decease of such person, and must contain a declaration by the legal representative that he believes such person to be the true and first inventor of the invention.
This section is new. Hitherto the personal representative of a deceased inventor not being the first and true inventor could not obtain a patent, Marsden v. The Saville Street Foundry and Engineering Company (Limited), L. R. 3 Exch. D. 203.
Where such personal representative dies without making any application, his personal representative would not be qualified to apply for the patent, inasmuch as sub-sect. (6) requires the applicant to declare that the person from whom he obtained the invention was the first and true inventor, but where such first mentioned personal representative had duly applied within the six months, there seems to be no reason why the provisions of sect. 12, sub-sect. (6), should not apply, and the patent be granted to his personal representatives.
35. A patent granted to the true and first inventor Patent to shall not be invalidated by an application in fraud of first invenhim, or by provisional protection obtained thereon, or invalidated by any use or publication of the invention subsequent app by applicato that fraudulent application during the period of fraud of provisional protection.
By sect. 11 the true and first inventor can oppose the grant of a patent to a person who may fraudulently or otherwise have obtained the patent from him.
This section aims at protecting the first and true inventor after he has obtained a patent from the consequences of any fraudulent application. Its provisions were more applicable to the state of things existing (B) See Form A (Patents Forms).
(a) See Patents Rules, 24.