« PreviousContinue »
THE Act 46 & 47 Vic. c. 57, intituled “An 46 & 47 Vic. Act to Amend and Consolidate the Law relating to Patents for Inventions, Registration of Designs and of Trade Marks," and the short title for which Act is “ The Patents, Short title. Designs and Trade Marks Act, 1883,” makes many alterations in the Patent Law, and will raise some questions worthy of consideration by inventors.
It is proposed to deal here with some two or three of the principal alterations and questions, leaving the rest of the Editor's observations for the notes, which will be found between the sections of the Act.
And first, it is perhaps desirable to observe Inventors that inventors will not, it is believed, find it pare their own
specifications. easier to prepare their own papers, but, on the contrary, the alterations made by the Act will probably be found to render it more than ever necessary that the inventor should be advised by a skilful patent agent as to the title of his patent and the form of his provisional or complete specification, or of both where he files both.
should not precations.
May send The Act, s. 5, contains a useful proviso as papers by post.
to sending the papers by post to the Patent
Office. Advised not to The first thing an inventor will have to have provi. sional'specifi- 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 Provisional specifications were introduced by the Patent Act of 1852, now repealed, under the idea that a poor man might, at a cost of £5, get a provisional protection for six months, and which was understood at the time to give him a right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. Old practice
Under the old Acts there was no comparison provisional of the provisional specification with the comspecification.
plete 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.
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 No right to sue committed before his complete specification ment until has been accepted by the office and published of complete
specification. (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
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
Reference to examiner.