Appeal to cellor abol ished. (f) The jurisdiction of the Lord Chancellor at the last moment to refuse to affix the seal is not preserved by the new Act. Formerly an appeal was allowed in certain cases to the Lord Chancellor, but by the new Act no provision is made for appeal from the decisions of the Attorney-General and Solicitor-General for England. Formerly, where there were several applicants for letters patent for similar inventions, whoever first obtained the seal had priority, even if another had applied for the provisional protection before him, unless such applicant were proved to have fraudulently acquired the invention. It has not been unusual for two inventors to have applied for letters patent at almost the same time, and afterwards for both to receive the seal. This arose no doubt from an imperfect system of division of the applications between the law officers. See note (c) to s. 25. Time for leaving complete specification. Complete specifica tion. 8. (1.) If the applicant does not leave (a) a complete specification with his application, he may leave it at any subsequent time within nine months (b) from the date of application. (2.) Unless a complete specification is left within that time1 the application shall be deemed to be abandoned (c). 1 Rules 46 & 47 authorise the comptroller to enlarge the time, if he think fit, for payments and acts done under the rules, but not for leaving specifications. See pp. 200, 201. (a) The deposit of a complete specification with the application will not enable an inventor to obtain priority over an earlier application for a like invention. See s. 7, sub. 5. As the complete specification must end with a distinct statement of the invention claimed (see s. 5, sub. 5), it is not advisable, except under special circumstances, to leave this with the application, but to take time well to consider the claims, and carefully inquire as to the novelty of each separate part of the invention. (b) Under the 15 & 16 Vict. c. 83, unless the complete specification were left with the petition and declaration, there was an express condition inserted in the letters patent that the patentee should, within six months from the date of the letters patent, particularly describe and ascertain the nature of the invention; this specification, except when filed with the application in lieu of a provisional, was not subjected to any kind of examination. ment. (c) As it has been decided that the abandonment of a Abandonprovisional specification before the time for filing a complete is not a publication, it seems an inventor may file a new specification, and proceed to obtain valid letters patent, provided that the application is made before the nine months from the filing of the former specification have expired. Oxley v. Holden, 8 C. B. (N. S.) 666. See s. 10 as to publication. of provi complete 9. (1.) Where a complete specification (a) is Comparison left after a provisional specification, the comptroller sional and shall refer both specifications to an examiner for specificathe purpose of ascertaining whether the complete specification has been prepared in the prescribed manner (b), and whether the invention particularly described in the complete specification is substantially the same (c) as that which is described in the provisional specification.1 (2.) If the examiner reports that the conditions herein before contained 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;2 but any such refusal shall be subject to appeal to the law officer (d). (3.) The law officer (d) shall, if required, hear 3 the applicant and the comptroller, and may make an order determining whether and subject to what conditions (if any) the complete specification shall be accepted. (4.) Unless a complete specification is accepted within twelve months from the date of application, then (save in the case of an appeal having been lodged against the refusal to accept) the application shall, at the expiration of those twelve months, become void (e). (5.) Reports of examiners shall not in any case be published or be open to public inspection, and shall not be liable to production or inspection in any legal proceeding, other than an appeal to the law officer under this Act, unless the Court or officer having power to order discovery in such legal proceeding shall certify that such production or inspection is desirable in the interests of justice, and ought to be allowed. Prescribed manner. 1 For provision as to form of documents, see rule 10; as to drawings, see rules 28, 29, and 30. For form of complete specification, see form C, second schedule to rules, page 223. 2 As to exercise of discretionary power by the comptroller, and hearing of applicant, see rules 11-15. 3 See rules regulating the practice and procedure on appeals to the law officers, page 211. For form of appeal to the law officer, see form T, second schedule to the rules, page 240. (a) For time of leaving complete specification, see s. 8. (b) Under the Act of 1852, unless filed with the application in lieu of a provisional, a complete specification was Drawings must be annexed to both provisional and complete specifications, if required. See s. 5, subs. 3 & 4. complete tions. (c) No examination of the provisional and complete speci- Comparison of provifications with a view to comparing discrepancies between sional and them has hitherto taken place, and it is uncertain at present specificahow this provision will affect the patentee. On the one hand, it may save a patent; on the other hand, valid claims may sometimes be struck out, to the detriment of the patentee, which, under the old system, he might have retained at his own risk. 66 Patentees must therefore carefully consider their provi sional specification with a view to making the complete substantially the same." The statute of 1852 (15 & 16 Vict. c. 83, s. 6) only required that in the provisional specification the nature of the invention" should be described, while it defines the complete specification to be “an instrument particularly describing and ascertaining the nature of the invention, and in what manner the same is to be performed (15 & 16 Vict. c. 83, s. 9), the only examination provided by that statute being that the law officer, "in case the title or the provisional specification be too large or insufficient," might require the same to be amended (15 & 16 Vict. c. 83, ss. 7 & 8). It will thus be seen that there is a wide verbal difference between the Acts of 1852 and of 1883, but it is not anticipated the examiner will require a greater degree of similarity between the two specifications than under the Act of 1852 was necessary to support valid letters patent. A provisional specification, if allowed by the law officer of the Crown, cannot be impeached as being too general. The complete specification must not claim anything different from that which is included in the provisional specification, but need not extend to everything so included. Penn v. Bibby, L. R. 2 Ch. 127. See also Thomas v. Welch, L. R. 1 C. P. 192; Bailey v. Roberton, 3 App. Cas. 1055. In the latter case, the complete specification including more than the provisional, the patent was held invalid. case. The late Master of the Rolls pointed out that a provisional specification was never intended to be more than a mode of protecting an inventor until the time for filing the final specification. It was not intended to contain a complete description of the thing, so as to enable any workman of ordinary skill to make it, but only to disclose the invention fairly no doubt, but in its rough state, until the inventor could perfect its details. Stoner v. Todd, 4 Ch. D. 58. Inventors must, therefore, well consider whether the improvements which they have made in their invention between the filing of the provisional and the complete specification have been foreshadowed in the provisional specification, and can fairly be included in the same patent, bearing in mind that by the new Act each separate invention requires a separate patent. See s. 33. In the telephone Telephone case, Mr. Justice Fry says: "If something were found out during the six months" (now nine months)" to make the invention work better or with respect to the mode in which the operation may be performed, a thing which is very likely to happen when in carrying out his invention the inventor finds that some particular bit will not work so smoothly as he expected, and it is necessary to add a little supplement to it-still the nature of his invention remains the same, and it is no objection that in the complete specification, which comes afterwards, the invention is described more particularly and in more detail,— or even if it be shown that there is more discovery made, and so as to make the invention which he has described really workable. If nothing more than this is done I think it is good; but as soon as it comes to be more than that, and the patentee says in the provisional specification, 'I describe my invention as A,' and in the complete specification, ‘I describe my invention as A and also B,' then as regards B it is void, because letters patent were granted for the invention that was described in the provisional specification, and do not cover the invention that is described in the other." United Telephone Co. v. Harrison, Cox-Walker & Co., 21 Ch. D. p. 744. |