Page images

the question of the grant of Letters Patent, and it was only in exceptional cases and on special grounds that the jurisdiction of the Lord Chancellor was ever invoked.

The present Act substitutes an investigation by the Comptroller for the investigation by the Law Officer under the old practice, and gives to the latter a power of reviewing the Comptroller's decision, and throws on the Law Officer very much the same duties as the Lord Chancellor formerly performed. The change is thus, in effect, merely the substitution of one officer of the Crown for another as its final adviser in applications for patents.

But the other point to which attention has been called is a much greater departure from established usage.

In patent matters the jurisdiction as to compulsory licences is by the Act given to the Board of Trade, while in the case of designs and trade marks the Board of Trade is thereby constituted a Court of Appeal from the refusal of the Comptroller to register a design or a trade mark, and there is no expressed right of appeal froin the decision of the Board. The case of compulsory licences is a new matter altogether; and the enactment as to designs is a return to the practice under the Act of 1843 before the transfer (made in 1875) of the control over designs to the Commissioners of Patents; but in the case of trade marks, if the decision of the Board of Trade is found to be in fact without appeal, an important change in the law has been effected, and the final decision on the right to register—in itself an important right, and on which other important matters, such, for instance, as the power of bringing actions for infringement (sect. 77), depends -has been taken from the ordinary jurisdiction of the Courts, and handed over to a Government Department.

Although, however, the Act contains ro provisions as to an appeal from the Board of Trade, it may be that indirectly a review of the decision can in some cases be obtained. The orders of the Board as to compulsory licences are to be enforced by mandamus (sect. 22). It is not probable that the Court will consider its duties as merely ministerial, and that it is bound to issue the writ without inquiry, and on the application for a mandamus to enforce an order for a licence, the patentee may perhaps be able to reopen the question.

Again, the 90th section gives large powers to the Court to rectify the Register in cases which seem to include refusal of an application to register a design or trade mark, and it would seem probable that if a person can show himself "aggrieved" within that section, the Court will exercise the powers thereby conferred, whether the decision of the Comptroller has or has not been affirmed by the Board of Trade.

But it is to be observed that if the decision of the Board of Trade can be reviewed as above suggested, then, at all events in the cases of designs and trade marks, a needless burden will have been thrown on an applicant by the interposition of a step between the office of the Comptroller and the Court.

Upon this question it may be further noticed that while in the cases of designs and trade marks the Act provides (sects. 47 (7) and 62 (4) ) that the Board of Trade shall hear the applicant and Comptroller, there is no such provision in the case of compulsory licences for the use of patented inventions. The omission has, however, been supplied in the Patents Rules 57-63, by which directions (which have the force of an Act of Parliament) (sect. 101 (3)), have been given for the hearing of the parties in certain cases.

No machinery for the hearing of the appeal to the Board of Trade is, in designs and trade mark cases, given by the Act, but directions on this point are contained in the Rules. The Act (sect. 62 (5)) empowers the Board of Trade in trade mark cases to refer the appeal to the Court if it shall appear expedient.

A more important point is the omission from the Act of all power to the Comptroller or the Board of Trade over the costs of proceedings. In cases relating to the grant of patents and amendments, costs can only be obtained before the Law Officer, a provision which may have the effect of encouraging unfounded oppositions, since it may be worth while to oppose before the Comptroller on the chance of success when it is certain that the Comptroller cannot order payment of costs in the event of failure.

In the case of compulsory licences the absence of a power

« PreviousContinue »