« PreviousContinue »
Office. Every specification is to conclude with a distinct claim, a practice which, though usual, has not hitherto been necessary. The examination of the specification is, it would seem, merely an office matter. There is nothing in the Act making the examination conclusive as against third parties. It has been questioned whether the old objections. to the specification can still be raised by way of defence to actions for infringement, and in the text will be found reasons for thinking that the law has not been changed in this respect.
In cases of opposition to grant of patents the changes of procedure are very marked. The Comptroller and Law Officer take the place of the Law Officer and Lord Chancellor respectively, and the jurisdiction of the latter, which was reserved specially by the Act of 1852, is not mentioned in this Act, and is probably gone.
Opposition to the grant of a patent is only allowed on certain specified grounds (sect. 11), which do not include such grounds as prior public user by third parties, want of subjectmatter, and the like, which were grounds of opposition under the old law. One of the new grounds of opposition is that the specification comprises the same invention as is comprised in a previous application.
The old practice, under which the parties in opposition cases fought in the dark, neither being able to see his opponent's specification, will, as a general rule, no longer exist, since oppositions can only be entered after the complete specification has been accepted, and the acceptance advertised, when the specification becomes open to inspection (sect. 10); but where the opposition is grounded on the examiner's report that the application conflicts with another application then pending, or where the question is between rival applicants for the same invention (sect. 7 (6)), the parties will still be in the dark before the Comptroller, since it is only on an appeal to the Law Officer (sect. 9 (5)) that the report can be seen.
The Law Officer may examine witnesses viva voce, but as a rule the evidence before him, and before the Comptroller, is to be by declaration. No evidence which was not before the Comptroller is to be brought before the Law Officer without
special leave a marked improvement on the old practice, under which the evidence, being by declaration before the Law Officer and by affidavit before the Lord Chancellor, was practically taken twice over. The witnesses can, by the Law Officers' Rules, be cross-examined before the Law Officer, but there is no power in the Comptroller to allow the examination or cross-examination of witnesses. The Comptroller, as has already been mentioned, has no power over costs.
The rule laid down in Ex parte Bates and Redgate, under which it had become in many cases a practice to refuse to a first applicant a patent for an invention if a second applicant for the same invention had first obtained the Great Seal, is now declared not to be obligatory; and express provision is made (sect. 13) that, in case of more than one application for a patent for the same invention, the sealing of a patent on one of these applications shall not prevent the sealing of a patent on an earlier application. Patents may now be granted to the representatives of deceased inventors, thus obviating a hardship which was felt under the old Acts. Proceedings for amendment are before the Comptroller, and only by way of appeal come before the Law Officer, but he has now power over the costs, which he has not had hitherto.
Proceedings for extension remain practically the same under the new Act as under the old law.
The old action of scire facias is abolished, but instead a simple process for obtaining revocation of the patent is substituted (sect. 26).
The law as laid down in Feather v. The Queen is changed, and patents for the future will bind the Crown; but provisions are introduced into the Act for securing the use of the invention by contractors for the Crown on proper terms (sect. 27).
The old Register of Proprietors is discontinued, but the Register of Patents will practically include all entries which have hitherto been made in the Register of Proprietors.
There is considerable alteration in the matter of fees payable in respect of patents. The fees for obtaining the patent will be 47. instead of 25l. The duties of 50l. and 1007. are continued, but are made payable before the end of
the fourth and eighth year, instead of the third and seventh, as heretofore.
The patentee may, in lieu of the 50l. and 1007., pay the duties by annual instalments, so that he will be able from year to year to judge whether his patent succeeds so as to make it worth while to keep it up. This provision applies to existing patents, but owing to an omission in the Act it is of no avail to a patentee who has already paid a 501. duty. In such a case, since the annual fees are only in place of both the 50%, and 1007., there is no power in the Office to accept annual instalments in place of the 1007. only.
The office of Commissioner of Patents is abolished, and the whole business formerly transacted by the Commissioners is placed under a Comptroller appointed by and acting under the superintendence of the Board of Trade.
An illustrated Journal of Patents is to be issued, with reports of patent cases; but by the Patents Rules the burden is imposed on the patentee of sending to the Office a drawing of his invention, with a description of the feature of novelty, for insertion in the journal, a burden which it is feared will press very hardly on poor inventors.
Applications for patents may be made through the post. Each application is to comprise one invention only. This, though nominally the rule hitherto, is a rule which has not been very strictly enforced, and its strict enforcement may give rise to considerable trouble and expense.
The practice in actions for infringement of patent is little, if at all, altered, except that for the future they are not to be tried by a jury unless the Judge shall otherwise direct, and except also that either party may require the Judge to call in the aid of an assessor (sect. 28 (1)). The Court of Appeal and the Privy Council may also call in such aid (sect. 28 (2) ), and the Law Officer may avail himself of similar assistance (sect. 11 (4)).
There is very little alteration as to the Law of Designs, except that the whole matter is put under the Comptroller. Provisional registration is abolished, and there is no registration of useful designs as such. Such of those designs as are patentable will probably form the subject of patents, while