(i) BESSEMAN v. WRIGHT. [1858]

To an action by a patentee upon a licence for the use of his patent, the licensee may not plead that the patent is void for want of utility or novelty, the contract between them not being for the exclusive use of the patent. Compton, J., said: "I had doubts whether I was right at chambers when I refused leave to add this plea, but now I am satisfied that I was right. In Chanter v. Leese the bargain was for an exclusive right, which could not be given; but here the plaintiff only says, as against me you may use this patent; but he says nothing as against the rest of the world." (6 W. R. 719.)

(j) SMITH v. SCOTT. [1859]

To a declaration by a patentee against a licensee by deed, the defendant is estopped to plead that the said invention was worthless and of no public utility, and was not new as to the public use thereof in England, and that the plaintiff is not the first inventor; and that the defendant never got any benefit under the deed in regard to the said invention, and, at the time of the making of the deed the plaintiff knew the matters aforesaid and the defendant did not, nor is the plea good as a plea of fraud. (6 C. B., N. S., 771; 5 Jur., N. S., 1356; 28 L. J., C. P. 325.)

(k) WALTON v. LAVATER. [1860]

Where, in an action for infringement, the plaintiff is the assignee of a patent taken out by the defendant, the latter is estopped from denying the novelty of the patent. (3 L. T., Rep., N. S., 272.)

(1) NOTON v. BROOKS. [1861]

If a patentee, in consideration of a royalty, grants to another a licence to use the patent invention, and the latter uses it, he cannot plead, as a defence to an action for the royalty, that the invention was not new, or that the patentee was not the first inventor. (7 H. & N. 499; 8 Jur., N. S., 155; 10 W. R. 111.)

(m) THE GROVER & BAKER SEWING MACHINE Co. v. MILLARD Ch. [1862]

The fact of a patent having been found invalid at law, upon proceedings between the patentee and third parties, is no answer to a suit, based upon the same patent, for an injunction and consequent relief against a licensee who has covenanted to pay royalties, and is selling the invention, contrary to his covenant, without payment of the royalties. (8 Jur., N. Š., 714.)

(n) NEWALL v. ELLIOTT. [1863]

In an action for the infringement of a patent, the plaintiff, to a plea that he was not the first and true inventor, replied, that on another charge by the plaintiff against the defendant of infringement of the same patent, the question was referred to arbitration by consent, and the arbitrator found that the letters patent were

not illegal and void :-Held, that the record did not show an estoppel. (9 Jur., N. S., 359.)

(0) CROSSLEY v. DIXON. Ch. [1863]

While a person is using, under a licence, a patent machine and paying a royalty for its use, or the use of its principle embodied in any other machine, he cannot, in a proceeding against him for non-payment of royalties in respect of the use of another machine alleged to embody the principle of the patent invention, set up as a defence that the patent is not valid. He can only be allowed to contend that the second machine does not embody the principle of the patent. (10 H. L. Cas. 293; 9 Jur., N. S., 607; 32 L. J. Ch. 617; 11 W. R. 716; 8 L. T. Rep., N. S., 260.)

(p) TROTMAN v. WOOD. [1864]

One who makes a patent article under a licence from the inventor, cannot, in an action against him for royalties, set up any objection to the novelty or utility of the invention, or the validity of the specification; but, if the claim in the specification is susceptible of two constructions, one of which would make the specification bad, and the other and more natural one would make it good, it is competent to him to insist that the latter is the true construction. (16 C. B., N. S., 479.)

(9) CHAMBERS v. CRICHLEY. Ch. [1864]

Upon the dissolution of a partnership between the plaintiffs and the defendant, the defendant assigned to the plaintiffs all his interest in a patent which formed part of the assets :-Held, that the defendant could not afterwards set up the invalidity of the patent as against the plaintiffs. (33 Beav. 374.)

(r) DANGERFIELD v. JONES. Ch. [1865]

A licensee, on a bill for an injunction to restrain the infringement of a patent, may, after his licence has been determined, dispute the validity of the patent. (13 L. T. Rep., N. S., 142.)

(8) GOUCHER v. CLAYTON. Ch. [1865]

Judgment was given by consent before declaration filed in an action by a patentee against the members of a partnership firm for an infringement, and the defendants immediately took a licence to use the invention. A suit to restrain a subsequent alleged infringement having been brought by the patentee against the defendants at law and two fresh partners:-Held, that the defendants in equity were not estopped by the judgment at law from disputing the validity of the patent. (11 Jur., N. S., 107; 34 L. J., Ch. 239; 13 W. R. 336; 11 L. T. Rep., N. S., 732.)

(t) AXMANN v. LUND. Ch. [1874]

The plaintiff and defendant had worked in partnership an alleged patent, the property of the defendant:-Held, that the plaintiff by so doing had not debarred himself from disputing

the patent after the termination of the partnership. (L. R. 18 Eq. 330; 22 W. R. 789.)

(u) HEUGH v. CHAMBERLAIN. [1877]

The rule that an assignor of a patent is estopped from disputing its validity, does not prevent his partner from raising that defence in a separate statement of defence to an action for infringement. (25 W. R. 742.)

(v) CROPPER v. SMITH. H. of L. [1885]

The defendant Hancock, who had taken out a patent for improvements in lace machines, went into liquidation, and his patent was assigned by his trustee to the plaintiff. Subsequently Hancock took out another patent for improvements in lace machines, and went into partnership with Smith, the defendant, to work it. In an action for infringement, Hancock set up that the first patent was invalid on the ground of (inter alia) want of novelty:-Held, that he was not estopped from disputing the validity of the patent, either by matter of record, on the ground that the letters patent were of record, or by deed, by reason of the specification being by deed, or by matter in pais, on the ground of the statements in his petition to the Crown, there being nothing to show that the plaintiffs bought on the faith of those statements. (26 Ch. D. 700; 10 App. C. 249.)

If a patentee becomes bankrupt and his trustee in bankruptcy assigns the patent, the patentee is not estopped from afterwards denying the validity of the patent as against the assignee. (10 App. C. 249.)

(w) PROCTOR v. BENNIS. C. A. [1887]

In an action for infringement by the plaintiff as patentee against Bennis and other defendants, who had purchased the machines alleged to be infringements from Bennis, it appeared that before such purchases the plaintiff had gone to the other defendants and asked them to try his machine, saying that they would find it better than Bennis's, without giving any intimation that he considered Bennis's machine to be an infringement of his, although he admitted that he considered it to be so, and intended to take proceedings when he was in funds:-Held, that the plaintiff had not by acquiescence or estoppel lost his right_to sue, it not being the duty of a patentee to warn persons that what they are doing is an infringement, and plaintiff's conduct not amounting to a representation that it was not an infringement. (36 Ch. D. 740.)

(x) EDISON & SWAN ELECTRIC LIGHT COMPANY v. HOLLAND. C.A. [1889]

Where a patent has already been before the Court, the former decision, so far as it decides the construction of the patent (e.g., that the invention claimed was a combination of any carbonised filament, with any receiver of glass through which leading wires

pass and from which the air is exhausted), must be followed; but whether the claim is too wide or proper subject matter, and whether the invention is useful and novel, are questions depending partly on fact, and must be decided de novo. (6 O. R. 243.)

(y) THOMSON v. MOORE. [1889]

A defendant, who in an action for infringement has consented to a perpetual injunction, restraining him from infringing and to pay damages, is estopped from questioning either the validity of the patent or the fact of the previous infringement. (6 O. R. 426.)

Evasion. See Infringement, Colourable Evasion, p. 183, seq.

Evidence. See Practice, Evidence, pp. 358 to 367.

Exclusive Licence.

immaterial in how many persons vested, p. 211 (t)
or what is the extent of, p. 211 (†).

Exclusive Licensee.

has a right to sue for infringements, p. 288 (w)

may use patentee's name to restrain infringement, p. 288 (w)
estoppel in actions by patentee against, pp. 90 (i), 211 (u).

Executor.

of assignee may petition for extension, p. 101 (k).

Exhibition.

PATENTS ACT, 1883. Sect. 39. The exhibition of an invention at an industrial or international exhibition, certified as such by the Board of Trade, or the publication of any description of the invention during the period of the holding of the exhibition, or the use of the invention for the purpose of the exhibition in the place where the exhibition is held, or the use of the invention during the period of the holding of the exhibition by any person elsewhere, without the privity or consent of the inventor, shall not prejudice the right of the inventor or his legal personal representative to apply for and obtain provisional protection and a patent in respect of the invention or the validity of any patent granted on the application, provided that both the following conditions are complied with, namely,

(a) The exhibitor must, before exhibiting the invention, give the
comptroller the prescribed notice of his intention to do so; and
(b) The application for a patent must be made before or within six
months from the date of the opening of the exhibition.

PATENTS ACT, 1886. Sect. 3. Whereas by section thirty-nine of the Patents, Designs, and Trade Marks Act, 1883, as respects patents, and by section fifty-seven of the same Act as respects designs, provision is made that the exhibition of an invention or design at an industrial or international exhibition, certified as such by the Board of Trade, shall not prejudice the rights of the inventor or proprietor thereof, subject to the conditions therein mentioned, one of which is that the exhibitor must, before exhibiting the invention, design, or article, or publishing a description of the design, give the Comptroller the prescribed notice of his intention to do so:

And whereas it is expedient to provide for the extension of the said sections

to industrial and international exhibitions held out of the United Kingdom, be it therefore enacted as follows:

It shall be lawful for Her Majesty, by Order in Council, from time to time to declare that sections thirty-nine and fifty-seven of the Patents, Designs, and Trade Marks Act, 1883, or either of those sections, shall apply to any exhibition mentioned in the Order in like manner as if it were an industrial or international exhibition certified by the Board of Trade, and to provide that the exhibitor shall be relieved from the conditions, specified in the said sections, of giving notice to the comptroller of his intention to exhibit, and shall be so relieved either absolutely or upon such terms and conditions as to Her Majesty in Council may seem fit.

PATENT RULES, 1890. 15. Any person desirous of exhibiting an invention at an industrial or international exhibition, or of publishing any description of the invention during the period of the holding of the exhibition, or of using the invention for the purpose of the exhibition in the place where the exhibition is held, shall, after the Board of Trade have issued a certificate that the exhibition is an industrial or international one, give to the comptroller notice in writing of his intention to exhibit, publish, or use the invention, as the case may be.

For the purpose of identifying the invention in the event of an application for a patent being subsequently made the applicant shall furnish to the comptroller a brief description of his invention, accompanied, if necessary, by drawings, and such other information as the comptroller may in each case require.

Existing Patents.

PATENTS ACT, 1883. Sect. 45. (1.) The provisions of this Act relating to applications for patents and proceedings thereon shall have effect in respect only of applications made after the commencement of this Act.

(2.) Every patent granted before the commencement of this Act, or on an application then pending, shall remain unaffected by the provisions of this Act relating to patents binding the Crown, and to compulsory licences.

(3.) In all other respects (including the amount and time of payment of fees) this Act shall extend to all patents granted before the commencement of this Act, or on applications then pending, in substitution for such enactments as would have applied thereto if this Act had not been passed.

(4.) All instruments relating to patents granted before the commencement of this Act required to be left or filed in the Great Seal Patent Office shall be deemed to be so left or filed if left or filed before or after the commencement of this Act in the Patent Office.

Experiment, publication by. See under Novelty, pp. 261 to 265. specification should be sufficient without. See under Specification, p. 421, seq.

made to assist the Court, p. 95 (c)

user only by way of, is no infringement, pp. 94 (z), 95 (u), 157 (w), 160 (e).

(z) MUNTZ v. FOSTER. N.P. [1844]

Action for the infringement of a patent for "an improved manufacture of metal plates for sheathing the bottom of ships." The patentee described his invention as consisting in making the said plates of an "alloy of foreign zinc," and of "best selected copper;" the metals being melted together in certain stated proportions. Tindal, C.J., told the jury that if the