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Joint application.

Application and specification.

and might in consequence be invalidly drawn. There would also, in sending the papers to England to be prepared and returned for signature, as provided by first schedule, form A, be great danger of the invention becoming disclosed before the application; and the fear of this would operate as a deterrent from thus obtaining an opinion as to whether the invention is valid subject-matter for letters patent, and the specification properly drawn.

NOTE. Since writing the above the Patents Rules have been published, of which rule 27 authorises applications for patents for inventions communicated from abroad, and a form (A1) for this purpose is set out in the second schedule thereto. But as a patent so obtained is distinctly a trust, which, by s. 85 cannot be registered, or notice thereof received by the comptroller, it is necessary for the inventor to be particular in selecting the person to whom he communicates his invention. See ss. 85 & 86, and notes.

(c) S. 36 of 15 & 16 Vict. c. 83 gave power for more than twelve persons to have a legal interest in letters patent. It is not necessary that every applicant should be an inventor. See s. 5, sub. 2. When two or more persons jointly obtain letters patent, they are not partners, and any one of them may use the invention without the consent of, or being liable to account to, the others. Mathers v. Green, L. R. 1 Ch. 29; In re Russell, 2 De G. & J. 130.

After a patent has been taken out in the name of the inventor, and a partnership to work the invention has been formed, the patentee, who is also the registered owner, cannot hinder the other partners from working the invention. See Kenny's Patent Button-holing Company v. Summerville & Lutwyche, 38 L. T. Rep. (N. S.) 878.

5. (1.) An application (a) for a patent must be made in the form set forth in the first schedule to this Act, or in such other form2 as may be from time to time prescribed (b); and must be left at, or sent by post to (c), the patent office in the prescribed (b) manner.4

(2.) An application must contain a declaration (a) to the effect that the applicant is in possession of an invention, whereof he, or in the case of a joint application, one or more of the applicants (d), claims or claim to be the true and first inventor or inventors (e), and for which he or they desires or desire to obtain a patent; and must be accompanied by either a provisional or complete speci. fication.5

(3.) A provisional specification (f) must describe the nature of the invention, and be accompanied by drawings (g), if required.

(4.) A complete specification (h), whether left on application or subsequently, must particularly describe and ascertain the nature of the invention, and in what manner it is to be performed, and must be accompanied by drawings (g), if required.

(5.) A specification, whether provisional or complete, must commence with the title (i), and in the case of a complete specification must end with a distinct statement of the invention claimed (j).

1 The forms A, B, and C in the first schedule to this Act have been altered or amended by the substitution therefor respectively of the forms A, A1, B, and C in the second schedule to the Patents Rules, 1883. See page 219; also rule 5.

2 An application for a patent must be made either in the form A or Al set forth in the second schedule to the rules. See page 219.

3 See rule 19. Applications sent by post shall, as far as practicable, be opened and numbered in the order in which the letters containing the same have been respectively delivered in the ordinary course of post. See rule 22.

Form of application.

Sending application by post.

+ Applications must be signed by the applicants. See rule 8.

As to size and form of documents, see rule 10.

Applications must be accompanied by an address, to which all notices, requisitions, and communications authorised or required by the Act may be sent. See rule 9. 5 For regulations as to affidavits and declarations, see rule 20; if made out of United Kingdom, see rule 21.

The form B in the second schedule to the rules is to be used if a provisional specification, and the form C if a complete specification, is sent.

6 For sizes and methods of preparing drawings accompanying provisional or complete specifications, see rules 28-30. Care must be taken not to fold the drawings, but to deliver them in a perfectly flat state, or rolled upon a roller so as to be free from creases or breaks, as the process used at the patent office for copying is that of photo-lithography.

(a) The form of application and declaration set forth in the first schedule of this Act would not be suitable in the case of a joint application where one (or more) of the parties was not an inventor, and it will be necessary for the Board of Trade to alter the form to suit any such applications. By the Patent Law Amendment Act, 1852, s. 54 (repealed), this duty was assigned to the Commissioners of Patents. For the power of Board of Trade to make alterations in forms of schedules, see s. 101, sub. 2.

(b) "Prescribed" means prescribed by any of the schedules to this Act, or by any general rules under or within the meaning of this Act. See s. 117.

(c) The sending of applications or specifications by post is one of the novel features introduced by this Act. It will be for the patentee to determine whether he will adopt the facilities given him for obtaining the grant of a patent privilege without the assistance of an experienced patent agent, bearing in mind that the validity of a patent will be much more frequently attacked than formerly, and proceedings taken for its revocation become common, owing to the abolition of the cumbrous mode of proceeding by

scire facias to repeal a patent. See s. 26. Documents sent through the post by a prepaid letter shall be deemed to have been left at the time when the letter containing the same would have been delivered in the ordinary course of post. S. 97, sub. 1.

inventors

for patents jointly with inventors.

(d) The words " or in case of a joint application one or Persons not more of the applicants" were not in the draft bill, but were may apply added to give persons who, although not actually the inventors, have an interest in the patent, a share in the patent without the necessity of the inventor granting an assignment. This subsection will enable an inventor or capitalist more easily to make arrangements in the initial stages of the invention. Workmen ought, however, to remember that either of the joint owners of a patent has power to use the invention without the consent of the other, and to take steps to prevent such masters as would take advantage of the law in this respect, depriving them of their fair share of the benefit. Mathers v. Green, L. R. 1 Ch. 29.

(e) An opinion has been expressed that by the operation Importers. of this and the former section "the importer of an invention from abroad cannot as heretofore obtain a patent' an "importer" not being a "true and first inventor" as required by s. 5, sub. 2. This may not, however, be the true interpretation of the Act, for in s. 46" invention " is defined to be "any manner of new manufacture the subject of letters patent and grant of privilege within s. 6 of the Statute of Monopolies (21 James I., c. 3), and includes an alleged invention." And for the further and stronger reasons that the sixth section of the Statute of Monopolies is not repealed (see third schedule to Act, page 178, and note to s. 47); and that the form of patent contains this express condition. "Provided.... that the said invention is not a new invention as to the public use and exercise thereof within our United Kingdom of Great Britain and Ireland, and Isle of Man, or that the said patentee is not the first and true inventor within this realm as aforesaid; these our letters patent shall forthwith determine and be void to all intents and purposes, not withstanding anything hereinbefore contained. See first schedule to Act, form D, page 172. Before the passing of the

Provisional specifications.

Drawings.

Statute of Monopolies it was decided in the Case of Monopolies (Darcy v. Allein, Noy. 182) that the importer of an invention which has never been before used in this country had from the earliest times been considered an inventor and entitled to letters patent. In the Clothworkers of Ipswich Case it is laid down that the king may make a grant to whomsoever hath brought a new invention and a new trade within the Kingdom. Godbolt, 252 & 254. Following these cases the preamble of the Statute of Monopolies clearly pointed out that the grants intended to be rendered void were such only as would be void at common law independently of the statute; and the courts, in interpreting the 6th section of that statute, have held the importer of a foreign invention to be the true and first inventor “within the realm." Since the case of Edgebury v. Stevens (1 Webs. P. R. p. 35) this construction of the section has not been questioned, and as there appears to be nothing in the Act of 1883 to alter its meaning, an importer may support a patent for a foreign invention, and, until some other definition of "true and first inventor" be laid down by the courts, will continue to hold that privilege, except where international or colonial arrangements have been made as provided by ss. 103 & 104. It may here be noticed that among the grounds on which it is allowed to give notice of opposition to a patent there is the following: "That the invention has been patented in this country on an application of a prior date." See s. 11, sub. 1.

(f) A provisional specification is not a protection against infringement, but enables the inventor without detriment to use and publish the same.

In drawing provisional specifications it should be remembered that the examiner is required to compare it with the complete. See s. 9, sub. 1.

(g) Drawings have hitherto been frequently attached to specifications, and almost always in mechanical inventions, the specification of which in some instances has merely consisted of a drawing and its description; but the furnishing of drawings, if required, with the provisional specification is, for the first time, made compulsory. This may prove a

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