F. CONFIRMATION, RENEWAL, AND EXTENSION OF LETTERS PATENT.

1. Confirmation, 823.

2. Renewal and Extension.

a. Generally, 825.

b. Grant of, to Assignee of Patent, 833. c. Foreign Invention, 835.

d. Account of Profits, 838.

e. Practice on Application for, 841.

G. ASSIGNMENT, SALE, LICENCES, AND ROYAL

TIES.

1. Assignment and Sale, 843.

2. Licences and Royalties, 856.

H. DUTY OF PATENT AGENT, 866.

46 & 47 Vict. c. 57, amends and consolidates the law relating to Patents for Inventions. 60 & 61 Vict. c. 25, is the Patent Office tension) Act, 1897.

A. TO WHOM GRANTED.

When a patent is taken out as for an original invention, the subject of the patent being in fact a communication from a British subject resident abroad, the patent is void. Ib.

On Behalf of Foreigners.] - A patent granted to a British subject in his own name for an invention communicated to him by a foreigner, the subject of a state in amity with this country.. is not void, although such patent is in truth taken out and held by the grantee in trust for such foreigner. Beard v. Egerton, 3 C. B. 97; 15 L. J., C. P. 270; 10 Jur. 643.

In such case, the grantee is the true and first inventor within this realm, within 21 Jac. 1, c. 3. Ib.

Authority of Crown.]-The crown has always exercised a control over the trade of the country; and though restrained by the common law and the Statute of Monopolies (21 Jac. 1, c. 3) within reasonable limits, the crown might grant the exclusive right to trade with a new invention for a reasonable period. The 21 Jac. 1, c. 3, did not create but controlled the power of the crown in granting to the first inventors the privilege of the sole working and making of new manufactures. Caldwell v. Vanclissengen, 9 Hare, 415;

21 L. J., Ch. 97; 16 Jur. 115.

An illegal monopoly is a public grievance. Reg. v. Prosser, 11 Beav. 306; 18 L. J., Ch. 35;

13 Jur. 71.

True and First Inventor.]-The communication, made in England by one British subject to another, of an invention, does not make the person to whom the communication is made the first and true inventor, within 21 Jac. 1, c. 3, so as to enable him to take out letters patent for the invention. Marsden v. Saville Street Foundry, 3 Ex. D. 203; 39 L. T. 97; 26 W. R. 784—C. A. The legal personal representative of a person who has made an invention, but not taken out letters patent for it, cannot take out such letters patent. Ib.

The adoption by an inventor of a suggestion made in the course of experiments of something calculated more easily to carry his conceptions into effect, does not affect the validity of the patent. Allen v. Rawson, 1 C. B. 551.

Information or Importation from Abroad.] -A party availing himself of information from abroad is an inventor within 21 Jac. 1, c. 3, s. 6. Nickels v. Ross, 8 C. B. 679.

So, an importer of an invention from abroad is an inventor within 5 & 6 Will. 4, c. 83. Claridge's Patent, In re, 7 Moore, P. C. 394; Plimpton v. Malcolmson, 45 L. J., Ch. 505; 3 Ch. D. 531; 34 L. T. 340.

Semble, that an agent in this country of an inventor abroad receiving a confidential communication of an invention, not in a practically useful state, may take out a patent for his own benefit, if he, pursuing the idea thus thrown out, discovers a practical way of carrying it into effect. Milligan v. Marsh. 2 Jur. (N.s.) 1083. See Steedman v. Marsh, 2 Jar. (N.S.) 391.

Master and Servant.]-If a servant, while in that invention belongs to the servant, and not to the employ of his master, makes an invention, the master. Bloxam v. Elsee, 1 Car. & P. 558; R. & M. 187; 9 D. & R. 215; 6 B. & C. 169; 5 L. J. (0.s.) K. B. 104; 30 R. R. 275.

Where a master and his foreman both invented certain improvements for which the master sought letters patent:-Held, that they ought only to be granted on the terms of their being vested in trustees for the master and the foreman. Russell, In re, 2 De G. M. & G. 130.

When a servant filed a provisional specification for an invention, after which the master filed a provisional specification for a similar invention, and subsequently filed a complete specification and obtained letters patent:-Held, that the great seal might be affixed to the letters patent for the servant's invention, and that the letters patent might bear the date of his provisional specification. Scott and Young, Ex parte, L. R. 6 Ch. 274; 19 W. R. 425.

To Two or More Persons Jointly.]-When letters patent are granted to two or more persons, any one of them may use the invention for his own benefit without the consent of the others. Mathers v. Green, 35 L. J., Ch. 1; L. R. 1 Ch. 29; 11 Jur. (N.S.) 845; 13 L. T. 420; 14 W. R. 17.

Where a patent is vested in trustees upon trust for several tenants in common or joins tenants, quære, whether any one of them is at liberty to work the patent on his own account. Hancock v. Bewley, 1 Johns. 601.

Semble, that joint owners of a patent are answerable for losses occasioned by their coadventurers only to the extent of their respective shares. Lovell v. Hicks, 2 Y. & Coll. 481; 6 L. J., Ex. Eq. 85; 5 id. 101.

B. FOR WHAT GRANTED.
1. NEW INVENTIONS.

Principle.]-When the law officer has reported that part of an invention for which a patent is sought is identical with part of an invention which is the subject of an existing patent, a second patent will not, except under special circumstances, be granted for that part, although the validity of the first patent is disputed. Manceaux, Ex parte, L. R. 6 Ch. 272.

Must be New and Useful.]-An invention must be both new and useful, and not confined to the knowledge of the party making it, to be the subject of a patent. Hill v. Thompson, 2 Moore, 424; 8 Taunt. 375; Holt, 636; 3 Mer. 629; 20 R. R. 488; 17 R. R. 156.

It is not every useful discovery that can be made the subject of a patent, but the words new manufacture" in 21 Jac. 1, c. 3, will comprehend not only a production, but the means of producing it. Ralston v. Smith, 20 C. B. (N.S.) 28; 11 H. L. Cas. 223; 35 L. J., C. P. 49; 13 L. T. 1.

R., in his specification, described his patent for improvements in embossing and finishing woven fabrics, as enabling him upon the roller, either spirally or longitudinally, or in a circular form, to groove, or flute, or engrave, or mill, or otherwise indent any design. The fact was, that if the design was engraved longitudinally it would destroy the material. R., therefore, in a disclaimer, altered "upon" into "around the roller" :-Held, first, that the disclaimer was bad, as it sought in effect to extend the specification or to convert a bad specification into a good one by adding words. Ib.

Held, secondly, that the construction of the specification, as amended by the disclaimer, excluded spiral engraving, and confined it to circular engraving or grooves. Ib.

Held, thirdly, the description "or roller of hard metal, or other suitable material," was not too vague as regards material. Ib.

Held, fourthly, that having regard to what was previously known, the subject-matter of the specification was not a new manufacture, though it might be a useful discovery. Ib.

The plaintiff patented an improvement in the "wet spinning of flax and like yarns," which consisted in the introduction of a thin flexible paper tube outside a rigid tube, in substitution for rigid tubes of various kinds previously used, upon which the yarn was wound during the process of spinning, and to which it was claimed the yarn would adhere after being artificially dried. Similar paper tubes of various sizes had been used in cotton and woollen spinning for a number of years before the date of the patent. The purpose for which the tubes were used in cotton spinning was to form a base for the "cop" and keep the hole in it open. In flax spinning the yarn is passed through a trough of water for the purpose of dissolving gum from the yarn, of which it contains a large quantity, and when spun, the flax yarn, which is an inelastic fibre, has to be artificially dried, consequent shrinking taking place. Cotton is an elastic fibre, containing very little gum, and is spun dry-Held, that the plaintiff's process was novel, useful, and involved a sufficient exercise of ingenuity to make it a good subject-matter for a patent, that the patent was valid, and had not been anticipated, that none of the previous patents or processes in which thin paper tubes were used disclosed the practicability or method of using such tubes in wet spinning, and that none of these patents or processes was directed to meet the same difficulty, or followed the same method, or obtained the same advantages as the plaintiff's patent. Pirrie v. York Street Flax Spinning Co., [1894] 1 Ir. R. 417—C. A.

The discovery of a more skilful and efficient mode of working a process already known and in use is not the proper subject of a patent.

Patterson v. Gaslight and Coke Co., 45 L. J., Ch. 843; 2 Ch. D. 812; 35 L. T. 11.

P. was one of three referees appointed under an act of parliament to inspect the works of gas companies and investigate the processes of manufacture carried on therein, with the view of ascertaining the means adopted therein for purifying gas, and to ascertain with what degree of purity each company could reasonably be required to make and supply gas, and to prescribe the maximum amount of impurity with which gas should be allowed to be charged, and by the act the gas companies were directed to give to the referees all facilities for the performance of their duties. In the performance of their duties, the referees came to the conclusion that the best results would be obtained by adopting a new system of working the lime purifiers, so as to absorb a larger amount of carbonic acid gas than before:-Held, that this was not the proper subject of a patent. Ib.

The patentee of an invention for a safety skirt for ladies' riding - habits brought an action for infringement. The main feature of the invention was that the skirt had a seam running through the waist to the bottom of the skirt. This had special fasteners which burst open if a slight strain was on them, so that if the rider were thrown and her skirt caught on the pommels, her weight would cause the fastening to give way, and she would fall clear of her skirt and not be in danger of being dragged. The defendants denied infringement, and alleged that the invention was not subject-matter, and was anticipated. It appeared that an earlier patentee had described a safety skirt with a burstable seam part of the way up, so that if this seam caught on the pommels it would burst and release the skirt from entanglement :-Held, that the plaintiff's alleged invention was the mere use of a known contrivance for a known purpose, being only a discovery that if the seam were extended further it would work better, and that it was not good subject-matter of a patent; but that the defendants' skirt was an infringement if the patent had been valid. Nicol v. Swears, 69 L. T. 110.

Results of Mechanism-Improved Result.]A patentee is entitled, not merely to the mechanism described in his specification and thereby claimed as his invention, but also to the results produced by that mechanism, however obtained. The attainment of a better result than had been previously attained constitutes a new result, so as to make an instrument a new invention within the authority of Curtis v. Platt (35 L. J., Ch. 852) and Procter v. Bennis (36 Ch. D. 740), as distinguished from an improvement of an old and known instrument. Thompson v. Moore, 23 L. R. Ir. 599—C. A.

New Principle with Novel Application.]The discoverer of a new principle or new idea as regards any art or manufacture, who shows a mode of carrying it into practice, as by a machine, may patent the combination of principle and mode, although the idea or the machine would not alone be the proper subject of a patent. Otto v. Linford, 46 L. T. 35—C. A.

to which it has not before been applied, this is sufficient ground to warrant an application for a patent; assuming such manufacture to be new, desirable, and of public utility. Dangerfield v. Jones, 13 L. T. 142.

An arrangement of apparatus so constructed as to bring into operation a well-known dynamic agent so as to produce a useful effect for a particular result, constitutes an invention of a combination for which a valid patent may be granted. Cannington v. Nuttall, 40 L. J., Ch. 739; L. R. 5 H. L. 205.

To adopt a combination of machinery or arrangement of apparatus originally directed to one purpose, and to use it for another and additional purpose, is an infringement of the patent which first introduced that combination or arrangement. Ib.

The new application of any means or contrivance may be the subject of a patent, if it lies so much out of the tract of the former use as not naturally to suggest itself, but to require some application of thought and study. Penn v. Bibby, 36 L. J., Ch. 455; L. R. 2 Ch. 127; 15 L. T. 399; 15 W. R. 208.

A claim for a patent for improvements in the mode of doing anything by a known process is sufficient to entitle the claimant to a patent for his improvements when applied either to the process as known at the time of the claim, or to the same process altered and improved by discoveries subsequently published, so long as it remains the same with regard to the improvements claimed and their application. Electric Telegraph Co. v. Brett, 10 C. B. 838; 20 L. J., C. P. 123; 15 Jur. 579.

Before the date of the plaintiff's patent, it was known that hydrated oxides of iron would absorb sulphuretted hydrogen; but it was not known that they could be practically used in the purification of coal gas from sulphuretted hydrogen-Held, that a patent might be had for applying hydrated oxides to absorb sulphuretted hydrogen from coal gas. Hills v. London Gaslight Co., 5 H. & N. 312; 29 L. J., Ex. 409.

It was also known that sulphuret of iron produced by the action of sulphuretted hydrogen upon hydrated oxide of iron, would be reoxidised by being exposed to the action of atmospheric air. But it was not known that when the sulphuret was produced by exposure of hydrated oxide of iron to the action of sulphuretted hydrogen mixed with coal gas, the reoxidation of the iron might not be prevented by the cyanogen, compounds of ammonia, and tarry matter which would be mixed with it-Held, that a patent might be had for reoxidising the iron by exposure to the air after it had been used in the purification of coal gas. Ib.

An invention, consisting in no more than the use of things already known, and acting with them in a way already known, and producing effects already known, but producing those effects, so as to be more economically or beneficially enjoyed by the public, is properly the subject-matter of a patent. Crane v. Price, 5 Scott (N.R.) 338; 4 Man. & G. 586; 12 L. J., C. P. 81.

A patent cannot be taken out for one particular use of a known machine, though the patentee may have discovered how to use the machine more beneficially than the owner. Ralston v. Smith, 11 H. L. Cas. 223; 20 C. B. (N.S.) 28; 35 L. J., C. P. 49; 13 L. T. 1.

A patent for the mere use of a known contrivance without any additional ingenuity in overcoming fresh difficulties is bad and cannot be supported. But a patent for a new use of a known contrivance is good, if the new use involves practical difficulties which the patentee has been the first to see and overcome. Gadd v. Manchester Corporation, 67 L. T. 569-C. A.

Invention already known in part.] The application of a known article to a new use, the mode of application not being new, cannot be the subject of a patent. Reg. v. Cutter, 3 Car. & K. 215; 14 Q. B. 372, n.

that soft metal had the effect of diminishing friction, and of preventing the evolution of heat when applied to the surfaces in contact with machines in rapid motion, and subject to pressure; and he embodied the application of that discovery to machines in a patent:-Held, that N.'s application of the soft metal differed essentially from that of V., and that N.'s patent was new. Newton v. Vaucher, 6 Ex. 859; 21 L. J., Ex. 305.

The employment of hydrate of lime for the purpose of precipitating the animal and vegetable matter contained in sewage water, and so producing an agricultural manure, is a good subjectmatter for a patent. Higgs v. Goodwin, El., Bl. & El. 529; 27 L. J., Q. B. 421 ; 5 Jur. (N.S.)

97.

When a thing has once been used for a certain purpose, no patent is valid for applying that thing to a similar but not an identical purpose. Jordan v. Moore, 35 L. J., C. P. 268; L. R. 1 C. P. 624; 12 Jur. (N.S.) 766; 14 W. R. 769.

A patent granted for constructing vessels of an iron frame covered with a wooden planking,

when before its date vessels had been built of iron, or of iron and wood combined, is invalid. Ib.

Where an invention consists of the discovery of particular means for attaining a result, which result is already perfectly well known, the invention is only for the means; and the invention of one set of particular means does not interfere with the invention of another set of means to the same end, provided that the two sets of means are distinct, and the latter does not involve a colourable imitation of the former, or an incorporation of the former with additions. Curtis v. Platt, 11 L. T. (N.S.) 245—L. C.

Where there are two things similar in form used for a similar object, and capable of the same application, one of them having been known to mechanics, the introduction of the other into use will not constitute a good ground for a patent. Harwood v. G. N. Ry., 11 H. L. Cas. 654; 35 L. J., Q. B. 27; 12 L. T. 771; 14 W. R. 1.

A slight difference in the mode of application is not sufficient for such a purpose, nor will it be sufficient to take a well-known mechanical contrivance and apply it to a subject to which it has not been hitherto applied. Ib.

Hoops of whalebone, cane, and other substances, suspended from the waist and forming a petticoat, had long since been used by ladies. A person took out a patent for using, for the same purpose, hoops made of steel watch springs: -Held, that this was not an invention which could properly be made the subject of a patent. Thompson v. James, 32 Beav. 570.

The application of a known article to a purpose analogous to that to which it had before been applied, is not the subject of a patent, although the result of the application may be the production in a cheaper and a better manner of a known article. Horton v. Mabon, 12 C. B. (N.S.) 437; 31 L. J., C. P. 255; 6 L. T. 289; 10 W. R. 582. Affirmed, 16 C. B. (N.S.) 141; 9 L. T. 815; 12 W. R. 491-Ex. Ch.

does not afford a ground on which to grant a patent. Ormson v. Clark, 13 C. B. (N.S.) 337; 32 L. J., C. P. 8; 9 Jur. (N.S.) 749; 7 L. T. 361; 11 W. R. 118. Affirmed, 14 C. B. (N.S.) 475; 32 L. J., C. P. 291; 10 Jur. (N.S.) 128; 11 W. R. 787-Ex. Ch.

Casting in iron an article which has never been cast before, if no new method of casting is adopted in the process, is not the subject of a patent. Ib.

One part of an invention was described as a novel arrangement and mode of fitting and working sliding sashes, glass frames, blinds and shutters for railway and other carriages, "which consisted of a metal plate with a slot and a stud or pin working in a groove on each side of the sash or frame, and the patentee claimed the metal fittings, and the mode of applying the same described herein as the second part of my invention":-Held, that this was a claim not for the metal fittings themselves, but for the mode of applying them, and consequently that the patent was sustained by proof that the application was new, though the stud and plate themselves were old. Oxley v. Holden, 8 Ĉ. B. (N.S.) 666; 30 L. J., C. P. 68; 2 L. T. 464; 8 W. R. 626.

A patent is not invalid because part of the invention claimed has been anticipated, so long as there is sufficient amount of utility and advantage to be derived from what remains after striking out the part so anticipated; and in such a case the remaining part is a proper subject for the grant of letters patent. Frearson v. Loe, 9 Ch. D. 48; 27 W. R. 183.

Where a patent is taken out for an invention, consisting of two distinct parts, one of which is not new, the whole is void. Kay v. Marshall, 5 Bing. (N.C.) 492; 7 Scott, 548; 2 Arn. 78; 8 L. J., C. P. 261. S. C., 1 Beav. 535; in Dom. Proc., 8 Cl. & F. 245; West, 682; 5 Jur. 1028.

Before the grant of the plaintiff's patent, the reach in spinning machines varied from less than an inch, to thirty-six inches, according to the length of the fibre of the material. The plaintiff discovered a new and improved mode of

A patent cannot be supported for the application of a process already known, producing a known result, unless the object to which the process is applied is different from the object to which it was formerly applied; and the question whether the object is different is one of fact for the jury. Steiner v. Heald, 6 Ex. 607; 20 L. J., Ex. 410; 17 Jur. 875-Ex. Ch.

The application of a known process to a new article, the mode of application not being new, cannot be the subject of a patent. Brooke v. Aston, 8 El. & Bl. 478; 27 L. J., Q. B. 145; 4 Jur. (N.S.) 279; 6 W. R. 42. Affirmed, 28 L. J., Q. B. 175; 5 Jur. (N.s.) 1025-Ex. Ch.

But this principle does not apply where the process is chemical. Young v. Fernie, 4 Giff. 577; 10 Jur. (N.S.) 926; 10 L. T. 861; 12 W. R. 901.

The application of a well-known tool to work previously untried materials, or to produce new forms, is not the subject of a patent. Bottle Envelope Co. v. Seymour, 5 C. B. (N.S.) 164; 28 L. J., Ĉ. P. 22; 5 Jur. (N.s.) 174.

An old mode of operation, more extensively than hitherto applied to a well-known article,

which process the fibre became shortened, and the length of the reach in spinning it was necessarily diminished. The plaintiff obtained a patent first for thus preparing the flax and other fibrous substances; and, secondly, for spinning it at a shorter reach than had been done before-namely, at two-and-a-half inches :Held, that the second part of the patent could not be supported, and that the patent was therefore invalid. Ib.

If a patent is taken out for several inventions, and one of them is not an improvement, the patent is altogether void. Morgan v. Seward, 2 M. & W. 544; M. & H. 55; 6 L. J., Ex. 153; 1 Jur. 527.

A patent being granted upon a specification that the machine was capable of performing all the operations necessary to the perfection of the proposed invention; and it appearing that a second patent was taken out for improvements necessary to the efficient operation of the original machine:-Held, that the consideration of the first patent having failed, both patents were void. Bloxam v. Elsee, 9 D. & R. 215; 6 B. & C. 169; 1 Car. & P. 558; R. & M. 187; 5 L. J. (0.s.) K. B. 104; 30 R. R. 275.

When a machine for which a patent had been granted was shown to produce work more ex