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May send papers by post.
Advised not to have provisional specifi
Old practice as to
The Act, s. 5, contains a useful proviso as to sending the papers by post to the Patent Office.
The first thing an inventor will have to consider under the Act will be whether he will prepare a provisional specification or not; and so far as the Editor can master the effect of the Act, he thinks it will be found that it will be in nearly every case very undesirable and of no practical utility, but rather a source of danger, to file a provisional specification at all. Provisional specifications were introduced by the Patent Act of 1852, now repealed, under the idea that a poor man might, at a cost of £5, get a provisional protection for six months, and which was understood at the time to give him a right to exhibit his invention without danger to a subsequent patent, and also, if the provisional protection was followed up by a subsequent patent, a right to sue all infringers of his invention after the date of his patent, which nearly always corresponded with the date of his provisional protection.
Under the old Acts there was no comparison of the provisional specification with the complete specification by any officer in the Patent Office, and when compared in Court it was very seldom that a patent could be defeated because the complete specification did not agree with the provisional specification.
No right to sue
Under the new Act the only beneficial New practice. effect of a provisional protection will be that, under s. 14, where an application for a patent in respect of an invention has been accepted with a provisional specification, the invention may, during the period between the date of the application and the date of sealing such patent, be used and published without prejudice to the patent to be afterwards granted for the same; but inasmuch as the patentee will have no right to sue for any infringement of his patent committed before his complete specification has been accepted by the office and published of complete (ss. 10 & 13)-and this publication may not take place for many months after the provisional specification is left at the office-it would seem to be dangerous to show any provisional specification, as it might induce persons to infringe it, whilst they could do so without being liable for the infringement; and it is improbable that any person would, under the new Act, buy any patent right under the Act until the complete specification has been accepted and published by the Patent Office; and again, when a complete specification is left after a provisional specification, both specifications will be referred to an examiner for the purpose of ascertaining whether the complete specification has been prepared in the prescribed manner, and whether
Reference to examiner.
the invention particularly described in the complete specification is substantially the same as that which is described in the provisional specification, and as the examiner to whom the two specifications will be referred may, and probably will be, a different examiner to the one to whom the provisional specification was referred, the double examination would seem to increase the chances of some serious objection being taken to the complete specification.
The preparation of the complete specification will require more consideration than hitherto under the old Acts, a complete specification was good without any specific claim as to the invention the patentee wished to secure, and although most modern complete specifications concluded with a claim, it very often was little if anything more than a statement that the inventor claimed the invention thereinbefore substantially described, without saying definitely or distinctly in the claim in what the invention consisted.
Under the new Act (s. 5, sub-sec. 5) the complete specification must end with a distinct statement of the invention claimed, and this provision of the Act would hardly seem to be met by a statement of a claim for the invention "substantially as described."
Every application for a patent, whether
accompanied by a provisional or a complete specification, will be referred, under s. 6, by the comptroller of the Patent Office to an examiner, who will ascertain and report to the comptroller whether the nature of the invention has been fairly described, and the application, specification and drawings, if any, have been prepared in the prescribed manner, and whether the title sufficiently indicates the subject-matter of the invention.
If the examiner reports that the nature of the invention is not fairly described, or that the application, specification and drawings, has not, or have not been prepared in the prescribed manner, or that the title does not sufficiently indicate the subject-matter of the invention, the comptroller may, under s. 7 (1), require that the application, specification or drawings may be amended before he proceeds with the application.
The applicant may appeal from the decision. of the comptroller to the law officer, who, if required, must hear the applicant and the comptroller, and may make an order determining whether and subject to what conditions, if any, the application shall be accepted (s. 7, sub-secs. 2 and 3).
Where a complete specification is left after a provisional specification, the comptroller will provisional refer both specifications to an examiner, for
the purpose of ascertaining whether the complete specification has been prepared in the prescribed manner, and whether the invention particularly described in the complete specification is substantially the same as that which is described in the provisional specification (s. 9, sub-sec. 1).
If the examiner reports that the conditions in the Act before contained (see s. 5) have not been complied with, the comptroller may refuse to accept the complete specification, unless and until the same shall have been amended to his satisfaction, but any such refusal is subject to an appeal to the law officer, and the law officer will, if required, hear both applicant and the comptroller, and may make an order determining whether and subject to what conditions (if any) the complete specifications shall be accepted (s. 9, sub-secs. 2 and 3).
On the acceptance of the complete specifispecification to cation, the comptroller will advertise the acceptance; and the application and specification or specifications, with the drawings, if any, will then be open to public inspection (s. 10).
Opposition to grant of patent.
Any person may, at any time within two months from the date of the advertisement of the acceptance of a complete specification, give notice at the Patent Office of opposition to the grant of the patent, on the ground of the