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acts committed after the publication of the complete specification.
On the sealing of the patent, the name of the See p. 35. patentee will be entered in the register. All persons who obtain subsequently any rights in the patent, e.g., by way of licence or mortgage, or under any agreement, ought at once to register the document in question, inasmuch as by sect. 87, the registered proprietor has, subject to any rights appearing, from the register to be vested in other persons, and to any existing equities, "power absolutely to assign, grant licences as to, or otherwise deal with the same." Unregister- Under the Patent Law Amendment Act of 1852, ed assignee. See p. 113. it was held that an unregistered assignee could not
bring an action for infringement. The rights of registered proprietors are not defined in the present Act in the same words as in the Act of 1852. And it would seem from the wording of sect. 87, that registration is no longer necessary as a condition to an assignee suing in respect of an infringement, though the point is by no means clear.
Important changes have been introduced in regard to the powers of amendment given to a patentee. Clerical errors in or in connection with an application may be amended by the Comptroller on payment of a nominal fee. By a curious oversight, no express provision seems to have been made for the correction of clerical errors in the letters patent themselves; as sect. 91 and Rule 18 do not seem to apply after sealing.
The specification may be amended before sealing, after sealing, or even during action. The leave of the Comptroller must be obtained in each case, and
where an action is pending, the permission of the Court is required to apply for such leave. The request for amendment is advertised, and any person may oppose. If leave be refused, the applicant may appeal to the law officer. In no case is an amendment to be allowed which would make the amended specification claim an invention substantially different from that in the original specification, but no objection can afterwards be taken as to the amendment exceeding that which the Act allows, inasmuch as the leave to amend is conclusive as to the right to amend (sect. 18).
As to amendment during action, it is not likely that patentees will often avail themselves of the provisions of the Act, inasmuch as they cannot recover damages in the action, save where they satisfy the court that the claim was framed in good faith, and with reasonable skill and knowledge.
See p. 37.
How far the attempt to define the principles on Extension. which the Judicial Committee of the Privy Council are to act in considering applications for the extension of a patent, will result in more favourable decisions, as far as the applicants are concerned, remains to be seen. Looking at the speech of Mr. Chamberlain on the second reading of the Bill (quoted at p. 39), the object of the framers of the Act in defining such principles seems to have been to alter the rule that where "the inventor had made a sum of £10,000, no application for an extension of the patent should be granted," and to lay down the principle that regard should be had to the profits of the "patentee as such, and not as manufacturer.” As regards the amount of remuneration to be
allowed, no special direction is given in sect. 25, the widest discretion is still left to the Judicial Committee, as the clause ends by the very general direction that they are to have regard to the circumstances of the case. As to the profits of the patentee as manufacturer, though the clause may tend to prevent the Judicial Committee taking manufacturer's profit into account, as they have done in the more recent cases, it does not, nor could it, meet the difficulty that patentees are under in separating profits as patentee from profits as manufacturer.
As a rule, patentees do not from the first contemplate the extension of a patent. If they keep accounts, and often they do not, they are usually kept in such a manner as to render it almost impossible to present them in a proper form, much less to distinguish between profits derived as patentee and profits derived as manufacturer. The words of Lord Chelmsford in Betts' Patent (a), ought never to be forgotten by patentees. "There can be no difficulty in the patentee beginning from the first to keep an account distinct and separate from any other business in which he may happen to be engaged. He knows perfectly well that if his invention is of public utility, and he has not been adequately remunerated, he will have a claim for an extension of the original term of his patent. It is not, therefore, too much to expect that he should be prepared when the necessity arises to give the clearest evidence of everything which has been paid and received on account of his patent."
(a) 1 Moo. P. C. N. S. 91; quoted with approval in Adair's Patents, L. R. 6, App. Cas. 176.
In order to obtain an extension of a patent for more than seven years, it is no longer incumbent on the applicant to shew that a prolongation for such an extra time is necessary to reimburse and to remunerate him, the committee are authorised to extend a patent for 14 years in "exceptional cases," as the extension may be made subject to "any restriction, conditions and provisions that the Judicial Committee may think fit," it would be within the power of Judicial Committee to require that the Crown should be at liberty to use the patent without payment, notwithstanding the new proviso of sect. 17, that patents are to bind the Crown. The provision of sect. 25 of the Patent Law Amendment Act, 1852, that where an invention had been patented abroad before being patented in this country, the English patent should cease on the determination of the foreign patent has not been re-enacted, but doubtless the Judicial Committee will still consider, as an element in the case, the existence of foreign patents for the same invention.
Legal proceedings in connection with patents are Legal prosimplified. An action for infringment is to be tried See p. 47. without a jury unless otherwise ordered, and either party may call in an assessor. The certificate of validity may be obtained after trial. Revocation takes place by petition to the High Court (sect. 26), and in the case of an action against a patentee who threatens legal proceedings against those who purchase articles which he alleges to be an infringement, the vendor of such articles is not required to establish mala fides on part of the patentee (sect. 32).
The chief remaining alterations made by the Act are as follows:
1. Limitation of patent to one invention made. statutory; with a proviso that it shall not be competent in an action or other proceeding to object to a patent on the ground that it comprises more than one invention (sect. 33).
2. Extension of provisional protection from six to fifteen months, or from application to sealing of patent (sect. 14).
3. Extension of first term of a patent from three to four years. The duration of patents will continue to be 14 years (sect. 17).
4. Specification to contain distinct statement of claims (sect. 5).
5. Deposit of complete specification before the grant of the patent and within nine months from date of application (sect. 8).
6. Appointment of Comptroller General, and of Examiners, (a.) to examine applications for the purpose of seeing that the application is properly prepared and that nature of invention is fairly described, (b.) to compare complete specifications with provisional ones (sects. 9, 83).
7. Appeal from Comptroller to Law Officer (sects. 7, 9, 18).
8. Protection of prior applicants (sects. 7, 10, 13). 9. Power to grant patent to personal representatives of inventor (sect. 34), or of applicant (sect. 12).