stumbling-block in the way of inventors who have not completed the details of their inventions. If the drawing is merely an illustration of one of many methods of carrying out the invention, it should be so stated in the specification. (h) A complete specification, when filed, is a protection Complete specificaagainst infringement if a patent is granted. See s. 15. tion. For form of complete specification, see first schedule to Act, form C. The express condition, that a complete specification must particularly describe and ascertain the nature of the invention, was formerly inserted in the body of the letters patent, but is now omitted. See form of patent. The specification of a patent is bad if one of the materials to be used is described by a generic term comprising a variety of species, the majority of which would be unsuitable; and is also bad if a skilled mechanic would not, without performing a series of experiments, be able to construct the machine from the description. The generic term used in this case was silica," ," the species was a particularly hard china, such as had hardly been made in Europe during this century. See Wegmann v. Corcoran, 13 Ch. D.65. 66 When a patent is granted, not only in respect of a whole and complete thing described, but in respect also of a subordinate integer of that whole, the invention must be so described as to make it clear in respect of what (the whole or the integer) the patent has been asked for and granted. Clark v. Adie, 2 App. Cas. 315. (i) As it is part of the duty of the examiners to see that Title. the title sufficiently indicates the nature of the invention, great care ought to be taken in the selection of a proper title. It should neither be too general nor too narrow. If it be too narrow and excludes any part of the invention as described in the specification, such part must not be claimed. (j) Although not hitherto required by law it has been Claims. usual to conclude specifications by claims. Their real object was for the protection of the patentee by enabling him to point out that he did not claim as part of his invention matter which he had inserted in his specification C Reference of applica tion to examiner. for the sake of giving a proper description of the invention. Plimpton v. Spiller, L. R. 6 Ch. D. 412, 426. It will be seen by reference to the form of complete specification, first schedule to Act, form B, that a distinct statement of the invention claimed is required to be given by setting out the various parts of the invention in numerical order. When a patentee, in his specification, proposes to do by machinery what has never before been done by machinery, and describes the machinery by which he does it, his claim is not too large on the face of it, because it claims generally to perform the operation by machinery. Arnold v. Brad bury, L. R. 6 Ch. 706. In the case of Cropper v. Smith, W. N. 1883, p. 49, where two of the claims were bad or badly drawn, Mr. Justice Pearson held that the court was not bound to assume that the patentee meant to claim what would avoid his patent. The first claim was sufficient, and the others were superfluous, but did not make the patent invalid. This under sub. 5 of the above section must have been decided otherwise, as a distinct claim is now required. 6. The comptroller shall refer every application to an examiner (a), who shall ascertain and report to the comptroller whether the nature of the invention has been fairly described, and the application (b), specification (b), and drawings (b) (if any) have been prepared in the prescribed manner,1 and the title (b) sufficiently indicates the subject-matter of the invention. 1 For size of documents, see rule 10. For size and methods of preparing drawings, see rules 28-30. (a) It was proposed in the draft bill to extend the duties of the examiners to ascertaining and reporting to the comptroller whether the invention was the subject-matter for a patent, but by the Act his duties are confined to 1. The title sufficiently indicates the subject-matter 2. The documents and drawings (if any) are pre pared in the prescribed manner. 3. The nature of the invention is sufficiently de- 4. When two specifications of patents not yet sealed are lodged bearing similar titles, whether the former comprises the latter. See s. 7, sub. 5. This is a new feature in the procedure of obtaining letters patent. Formerly the application and provisional specification were referred to one of the law officers of the Crown, who had power to call in scientific aid at the expense of the applicant, and to require any title which in his opinion was too large or insufficient to be amended. This examination was, however, owing to the numerous demands on the time of the law officers, necessarily of a perfunctory nature, and it is anticipated that the examiners to be appointed under the new Act will subject the title and specification to a much more rigorous test. It would not, however, be advisable to rely on this examination, as no guarantee is given that the opinion of the examiner would be upheld in the event of litigation; and in the event of an amendment being required much delay would inevitably be caused to the applicant, as in the meantime the comptroller may refuse to proceed with the application. See s. 7, sub. 1. Should this system of examination be found to work well, it is possible that an extension might be made in the direction of an examination as to novelty and utility. (b) See notes to s. 5. comptroller application 7. (1.) If the examiner reports (a) that the Power of nature of the invention is not fairly described, to refuse or that the application specification or drawings or require has not or have not been prepared in the prescribed amendment. manner, or that the title does not sufficiently indicate the subject matter of the invention, the comptroller may require that the application specification or drawings be amended before he proceeds with the application (b).1 (2.) Where the comptroller requires an amendment, the applicant may appeal from his decision to the law officer.2 (3.) The law officer (c) shall, if required, hear the applicant and the comptroller (d), and may make an order determining whether and subject to what conditions, if any, the application shall be accepted. (4.) The comptroller shall, when an application has been accepted, give notice thereof to the applicant. (5.) If after an application has been made, but before a patent has been sealed, an application is made, accompanied by a specification bearing the same or a similar title, it shall be the duty of the examiner to report to the comptroller whether the specification appears to him to comprise the same invention (e); and, if he reports in the affirmative, the comptroller shall give notice to the applicants that he has so reported. (6.) Where the examiner reports in the affirmative, the comptroller may determine, subject to an appeal to the law officer,2 whether the invention comprised in both applications is the same, and if so, he may refuse (ƒ) to seal a patent on the application of the second applicant.3 1 Before exercising a discretionary power given him by this Act the comptroller must give at least ten days' notice to the applicant of the time when he may be heard personally or by his agent by the comptroller. See rules 11-15, page 244. When before the comptroller all the evidence in the possession of either party should be given, as no further evidence is allowed on appeal to the law officers, save as to matters which have occurred or come to the knowledge of either party since the date of the decision appealed against, except by the leave of the law officer. See rule 8 of rules for regulating proceedings before law officers. 2 For rules regulating the practice and procedure on. appeals to the law officers, see page 211. For form of appeal, see second schedule to rules, form T, page 240. 3 Rule 16 permits rival applicants to attend the hearing of the question, whether the invention comprised in both applications is the same, but does not give liberty to either to inspect the specification of the other. See page 190. (a) See ss. 5 & 6. ment. (b) Whether or no the concluding words of sub. 1 would Amendgive any chance to a subsequent application taking precedence of one requiring amendment has been the subject of discussion, but sub. 5 seems framed to include such an application; and as every patent shall be dated and sealed as of the day of application, and as the sealing of one patent shall not prevent the sealing of another patent for the same invention for which application for letters patent had been made earlier, it seems that the inventor whose title or specification is sent back for amendment will only suffer by the delay and the consequent shortening of the time during which he can use his patent privilege. (c) Law officer means Her Majesty's Attorney-General Law officer. and Solicitor-General for England. troller. (d) That the comptroller should have to appear before the Complaw officer to defend his decision seems open to objection. (e) The comparison does not extend to prior patents, but only to applications for patents not yet sealed. See s. 6, note (a), page 19. |