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contains a false suggestion as to utility (z). The fact of an invention not being used is a presumption against its utility (a); but it is not necessary to prove that it has been useful. It is sufficient to show that the invention would be useful, and the evidence of experts on this point will be allowed (b).


of invention

tion for letters


The third consideration for the grant of letters Description patent is that the patentee publishes a description a consideraof his invention in such a manner that he gives sufficient information to the public: Firstly, to enable them to understand fully what they are prevented from using during the period of his protection (a); and, secondly, to enable all the world to have the benefit and use of the invention as soon as the term of the grant is at an end (b). Yet the

(z) Morgan v. Seaward, 1 Webs. P. R. 172, 186; Haworth v. Hardcastle, 1 Bing. N. C. 182. Misrepresentation of utility avoids a patent, Bloxam v. Elsee, 6 B. & C. 178; Turner v. Winter, Dav. P. C. 145; Losh v. Hague (as to the meaning of "improvement"), 1 Webs. P. R. 202.

(a) Morgan v. Seaward, 1 Webs. P. R. 186.

(b) Neilson v. Harford, 1 Webs. P. R. 316.

(a) Macfarlane v. Price,1 Stark. 199; The King v. Arkwright, Dav. P. C. 61; 1 Webs. P. C. 64, per Lord Eldon.

(b) Newberry v. James, 2 Mer. 446; Liardet v. Johnson, Bull N. P. 76, 1 Webs. P. R. 53; The King v. Arkwright, Dav. P. C. 106; Morgan v. Seaward, 1 Webs. P. R. 173; Bovill v. Moore, Dav. P. C. 361; Galloway v. Bleaden, 1 Webs. P. R. 524.

To whom addressed.

Must not necessitate experiment.

description need not be such as to enable unskilled persons to make articles by its aid; for to discard the use of technical terms for popular language would, instead of increasing the clearness, result in inconvenient length and ambiguity. The specification must then be of such a nature as to clearly disclose the invention to such persons of ordinary skill and ordinary knowledge as are engaged in the particular trade to which the invention relates, and to enable them, by bringing that skill and knowledge to bear upon the subject, to construct the machine or make the product by the means of the description given by the patentee (c); provided, however, that they need not have to resort to experiment or exercise their own inventive power (d). In the case of Bädische Anilin Fabrik v. Levenstein,

(c) Morgan v. Seaward, 1 Webs. P. R. 178; Neilson v. Harford, 1 Webs. P. R. 295–374; Elliot v. Aston, 1 Webs. P. R. 224; Arkwright v. Nightingale, Dav. P. C. 56; Hornblower v. Boulton, Dav. P. C. 228; Huddart v. Grimshaw, Dav. P. C. 279; Harmer v. Playne, Dav. P. C. 316; Liardet v. Johnson, Bull N. P. 76; Bickford v. Skewes, 1 Webs. P. R. 218; L. R. 1 Q. B. 938. What amount of skill and knowledge the persons to whom the specification is addressed are given credit for is very clearly pointed out in the judgment of Sir G. Jessel in Plimpton v. Malcolmson, 3 Ch. D. 568.

(d) The King v. Arkwright, Dav. P. C. 106; Morgan v. Seaward, 1 Webs. P. R. 173, 174; Beard v. Egerton, 19 L. J. C. P. 36; Turner v. Winter, Dav. P. C. 152; Crompton v. Ibbotson, Dan, & Lloyd 33 (where the patentee, knowing that only one material was suitable, said that he prefers that material, but that any other suitable material might be used).

Mr. Justice Pearson held that in considering the specification of such a patent as a complicated chemical compound, the standard of knowledge of the persons to whom it was addressed was that of such a chemist as would be in the usual course of events employed in that and similar works (e).

false or

The patentee must not only particularly describe Must give complete inhis invention, but he must state all he himself knows, formation. or his specification will be bad and his patent invalid (ƒ); and also if it be materially false or Must not be defective the patent is against law and cannot be defective. supported (g). When old and new matter is mixed New matter up in the same specification, as, for instance, where tinguished the patent is for an improved process, or a new combination of old parts of a machine, the new must be distinguished from the old (h).

By doing so he misled others into trying experiments which he
knew must fail. See also Stevens v. Keating, 2 Ex. R. 772;
Simpson v. Holliday, 13 W. R. 578; Plimpton v. Malcolmson,
L. R. 3 Ch. D. 568.

(e) 48 L. T. (N. S.) 822; 24 Ch. D. 156 (not reported on this point).

(f) Lewis v. Marling, 4 C. & P. 52; 10 B. & C. 26; Liardet v. Johnson, 1 Webs. P. R. 53; Bovill v. Moore, 2 Coop. C. C. 56; Hinks & Son v. Safety Lighting Company, 4 Ch. D. 607.

(g) The King v. Arkwright, 1 Webs. P. R. 64; Turner v. Winter, 1 Webs. P. R. 77; Crossley v. Potter, Mac. P. C. 240; Betts v. Neilson, L. R. 3 Ch. 429.

(h) Bovill v. Moore, Dav. P. C. 404–413; Parkes v. Stephens, L. R. 8 Eq. 265; Titley v. Castor, Macr. P. C. 48; Harrison v. The Anderston Foundry Company, L. R. 1 App. Cas. 574; Foxwell v. Bostock, 4 De G. J. & S. 298; Clark v. Adie, L. R. 2 App. Cas. 328.

must be dis

from old.

tion of


Many cases could be quoted to show that the Construc specification will be construed by a court of law specifica- liberally and in favour of the inventor; but this is not necessary, for the form of letters patent for inventions ends with these words: "And, lastly, we do by these presents, for us, our heirs, and successors, grant unto the said patentee that these our letters patent shall be construed in the most beneficial sense for the advantage of the said patentee” (i). Claims must be construed with reference to the whole context of the specification (j).

The construction of the specification, like that of all written documents, belongs to the court (k); but the jury have to decide whether the specification itself is intelligible (1) or not, and to interpret technical terms of art and phrases used in trade.

(i) The most recent of these cases are: Plimpton v. Spiller, 6 Ch. D. 412; Otto v. Linford, 46 L. T. (N. S.) 35; Dudgeon v. Thomson, L. R. 3 App. Cas. 34; The United Telephone Company v. Harrison Cox-Walker & Company, 21 Ch. D. 720; Cropper v. Smith, W. N. 1883, p. 49. As to construction of words, see Bloxam v. Elsee, 1 C. & P. 58, 568; Derosne v. Fairie, 2 C. M. & R. 476; Neilson v. Harford, 8 M. & W. 806; 1 Webs. P. R. 340, 363, 373; Beard v. Egerton, 19 L. J. C. P. 36; Elliott v. Turner, 2 C. B. 446; Hills v. Evans, 21 L. J. Ch. 457. See form of patent, first schedule to Act, form D.

(j) Clark v. Adie, L. R. 10 Ch. 667, L. R. 2 App. Cas. 315. For decisions and notes as to claims and title, see s. 5 and notes.

(k) Hinks & Son v. Safety Lighting Company, 4 Ch. D. 612; s. 5, sub. 5, p. 13.

(7) Hills v. Evans, 31 L. J. Ch. 457; 4 De G. F. & J. 288.

Drawings are subsidiary to the written part of the Drawings. specification, but all that has been said as to the verbal description applies to the drawings. It is not sufficient to rely upon the drawing alone for the description, there must be some explanatory words in the specification (m).


the distinc


Under the repealed Acts relating to designs there Abolition of was a double classification into ornamental and useful tion between designs, and the designs coming under these heads and useful. were respectfully registered under separate Acts. Although the provisions of these Acts were very similar, much difficulty was frequently found in determining to which class a design belonged. This will no longer be experienced, inasmuch as by the present Act this distinction is abolished, and “any new and original design, not previously published in the United Kingdom," may be registered as a design.* Where a useful design embraces a mechanical invention it then becomes proper subject-matter for letters patent; and as the fees for a patent are reduced from £25 for three years to £4 for four years (£10 being charged for the registration of a useful design under the repealed Acts), there will not be any

(m) Neilson v. Harford, 1 Webs. P. C. 295.

This was stated in the memorandum to the Bill on which the present Act is framed.

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