The title discloses the object of the invention. It is Sect. 5. part of the specification. The title must not describe TITLE. tion. the invention in wider terms than are found in the remainder of the specification. Where the title is wider than the rest of the specification, the patent is void. On Variance of this ground the patent was held void in R. v. Else, 1 title and Web. 76; Househill Company v. Neilson, ib. 578; Coch- specifica. rane v. Smethurst, Dav. P. C. 354; Campion v. Benyon, 3 B. & B. 5; Felton v. Greaves, 3 C. & P. 611; Croll v. Edge, 9 C. B. 479; cases occurring previous to the Patent Law Amendment Act, 1852. In the following cases the variation was held not to avoid the patent: Sturtz v. De la Rue, 5 Russ. 322; Neilson v. Harford, 1 Web. 331; Nickels v. Haslam, 7 M. & G. 278; Beard v. Egerton, 3 C. B. 97; R. v. Mill, 10 C. B. 379-previous to the Patent Law Amendment Act, 1852; and in Crossley v. Potter, Macr. P. C. 240; Patent Bottle Envelope Co. v. Seymer, 5 C. B. N. S. 164; Wright v. Hitchcock, L. R. 5 Ex. 37-under the Patent Law Amendment Act, 1852. The title may suffice to narrow down the claim in the Title may specification, and so support a patent otherwise void narrow (Newton v. Vaucher, 6 Ex. 866; Oxley v. Holden, 8 C. B. claim. N. S. 666). The probability of a patent being declared void on Title under account of the largeness of the title will henceforth be present much less than formerly, inasmuch as the examiner Act. under sect. 7, is to examine and report whether the title sufficiently indicates the subject-matter of the invention. TION. The complete specification must particularly describe THE and ascertain the nature of the invention, and in what COMPLETE manner it is to be performed. "It is, in a sense, supple- SPECIFICAmental to the provisional specification, not going beyond it or varying from it, as to the nature of the invention, but conveying additional information which may have been acquired during the currency of the provisional specification" (Chelmsford, L.C., in Penn v. Bibby, L. R. 2 Ch. 134). It must, like the provisional specification, begin with a title, and, unlike the provisional specification, end with a claim. It requires a 37. stamp. The more important leading principles relating to the sufficiency of the complete specification are 1. The specification must be intelligible to ordinary 1. Must workmen in the trade or business to which the invention be intelliis applicable, and who possess some knowledge of the gible to ordinary workman Sect. 5. subject-matter (Plimpton v. Malcolmson, L. R. 3 Ch. D. 531). See further as to whom the specification must be intelligible, Neilson v. Harford, 1 Web. 314; The Househill Co. v. Neilson, ib. 676. On this principle the patent has been held void where there was in the trade. (a) No material part of process to be omitted. (b) Not to contain any misleading representation in a material particular. (c) Nor any ambiguous statement. (a.) An omission of a material part of the process, (b.) Any misleading representation in a material 2. Speci- 2. The specification should, where necessary, carefully may be held to claim what is old. Moore, Dav. P. C. 361; Dangerfield v. Jones, 13 L. J. Rep. Sect. 5. N. S. 142.) The principle will not apply to things incidentally referred to and universally known to be old (Tetley v. Easton, Macr. P. C. 82), or to things which manifestly form no part of the invention (Lister v. Leather, 8 E. & B. 1004). In the case of a combination of things themselves not new it is sufficient if the claim be restricted to the combination only (Newall v. Elliott, 10 Jur. N. S. 954). The disclaimer of what is old has hitherto been generally effected in the claim, and the practice will probably continue. As to disclaiming what is old by means of drawings, see Daw v. Eley, L. R. 3 Eq. 500. Every complete specification must now contain a claim of what the invention really is (see note below on Claim). ficial way disclosed. 3. The complete specification must disclose the most 3. The beneficial way known to the patentee for exercising the most beneinvention, otherwise the patent will be void as a fraud of exercison the public. Hence the patent will be void where a ing the material not referred to in the specification is added by invention the patentee in the manufacture (Wood v. Zimmer, 1 must he Web. 82), or where the patentee can carry it out with cheaper materials (Turner v. Winter, 1 Web. 81); or where the easiest method of obtaining the ingredients has not been pointed out (Savory v. Price, 1 Ry. & Mo. 1.) The inventor should therefore disclose all improvements or discoveries made up to the lodging of the complete specification (Crossley v. Beverley, 1 Web. 117). fication 4. The complete specification, including Title and 4. ComClaim, ought not to vary materially from the provisional plete specispecification, so as to practically claim a different in- must not vention. The comparison of the two specifications by vary from the examiner under sect. 9 will tend greatly to prevent provisional patents being upset on the ground of variance between specificathe provisional and complete specifications. The Act contains no provision making the report of the examiner conclusive, and the objection of variance may therefore still be taken (see note to sect. 9). As to what amount of variance will invalidate a patent, see Bailey v. Roberton, H. L. 3 App. Cas. 1055, where the patent was held void, and Penn v. Bibby, L. R. 2 Ch. 127; Thomas v. Welch, L. R. 1 C. P. 192; and Wright v. Hitchcock, L. R. 5 Ex. 37, where the variation was held not to be material. Any part of the provisional specification may be omitted in the complete specification if there be no fraud tion. Sect. 5. and the effect of the remainder is not thereby altered (Thomas v. Welch, L. R. 1 C. P. 192), but the provisional specification cannot be called in to enlarge the complete specification (Mackelcan v. Rennie, 13 C. B. N. S. 52). THE DRAWINGS. Size of original drawings. Hitherto a claim, though usual, has not been necessary, its chief use being rather to disclaim what was old than to claim what was new (Hinks v. Safety Lighting Co., L. R. 4 Ch. D. 607; Dudgeon v. Thomson, L. R. 3 App. Cas. 34; Plimpton v. Spiller, L. R. 6 Ch. D. 426). For the future the complete specification "must end with a distinct statement of the invention claimed.” The claim, like the body of the specification, ought not to exceed the title. The specification, whether provisional or complete, must now be accompanied by drawings if required (sub-sects. (3), (4)). Hitherto drawings might be annexed to a specification, but in no case was this compulsory. In what cases will drawings be "required"? Evidently in all cases where the specification would not, without drawings, enable a workman of ordinary skill to carry out the patent. The drawings may, however, serve other purposes and be useful even where not essential, e.g., they may explain an ambiguity in the specification (Hastings v. Brown, 1 E. & B. 450); or restrict a specification which otherwise is too general (Daw v. Eley, L. R. 3 Eq. 500). The absence of a scale attached to drawings is an imperfection, as a scale in some cases may be of essential importance (Morton v. Middleton, 1 Cr. S. 3rd Ser. 718); but they will suffice if they enable a workman of competent skill to make the machine (Bovill v. Moore, Dav. P. C. 369). The drawings are now to be made on half sheets or sheets of imperial drawing paper, to be within a borderline of 19 inches by 12 inches, or 27 inches by 19 inches, with a margin of half an inch all round (Patents Rules, 28, and Instructions, 12). Copy of A copy of the drawings must also be left. This copy drawings. must be on rolled imperial drawing paper or thin Bristol board, of the same size as the original drawings. No colour must be used. All lines are required to be in Indian black ink. The copy must be delivered perfectly flat or rolled upon a roller (see further Patents Rules, 29). If the application be accepted, the applicant has to furnish a drawing illustrative of the features of novelty constituting the invention, covering a space not more than 16 inches square. It must be accompanied by a concise explanatory statement (Patents Rules, 31, and Instructions, 13). Sects. 6, 7. 6. The comptroller shall refer every application to Reference of applicaan examiner, who shall ascertain and report to the tion to comptroller whether the nature of the invention has examiner. been fairly described and the application (a), specification (B) and drawings (y) (if any) have been prepared in the prescribed manner, and the title sufficiently indicates the subject matter of the invention. Hitherto applications have been referred to the law officer, but his only duty seems to have been to decide if the provisional specification described the nature of the invention (Patent Law Amendment Act, 1852, s. 8). This Act, as originally drawn, empowered the examiner to report whether the invention was the subject-matter for a patent. That part of the section was struck out on what when the bill was in committee, and the report of the examiner examiner is restricted to three things 1. Whether the nature of the invention is fairly 2. Whether the application, specification, and manner. 3. Whether the title sufficiently indicates the subject- reports. lished. The report of the examiner is not to be published or Reports to be open to the inspection of the public. It may be not pubproduced before the law officer where there is an appeal to him from a decision of the comptroller based upon it (sect. 9, sub-sect. (5)). A Court may in certain cases allow its production (see sect. 9, sub-sect. (5)). not conclusive. The report of an examiner is not made conclusive, but Reports the Courts will probably be very reluctant to upset a patent on any ground as to which the examiner has reported favourably. comptroller 7. (1.) If the examiner reports (6) that the nature Power for of the invention is not fairly described, or that the to refuse application, specification, or drawings has not or have application not been prepared in the prescribed manner, or that or require (a) Patents Forms, A, A1. (B) Patents Forms, B, C. (7) Patents Rules, 28-30. amendment. |