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following variations and exceptions :--As the patent cannot now be granted before the acceptance of the complete specification, there is, of course, no condition, as formerly, as to the non-filing thereof within the prescribed period. The present form finally provides that the patent shall be construed in the most beneficial sense for the advantage of the patentee. This is, in effect, the former provision of the like kind, but with the omission of the words “notwithstanding the not full and certain describing the nature or quality of the said invention, or of the materials thereunto conducing and belonging.” These additional words were probably inserted to meet the case of the invention not being fully and certainly described in the patent itself; for, before such form was used, it seemed the practice to insert the specification in toto in the patent by way of recital (n). The duration of the patent, when sealed, is the full term of Duration of
patent. fourteen years from the time of application, subject to the payment of the fees within the prescribed times (c), and to the other conditions in the patent itself (p).
The new act provides for the assignment of a patent for any Assignment place in or part of the United Kingdom and Isle of Man as effec- rights for a
district. tually as if the patent were originally granted to extend to that place or part only (9). This is a new provision. Formerly, before the Act of 1852, separate patents were granted for England, Scotland, and Ireland. By that act patents for the entirety of the United Kingdom were only granted, but it was provided that
(n) Bythewood & Jarman, Vol. VII. 3rd ed. 1842, p. 480, who confined the additional words to the patent itself, and not to the actual specification, which, of course, stood on its own merits. See also Webs. 42, n.; Hindmarch, 72, 73, 106.
() As to what fees are payable, see second schedule to the act (p. 329, post), Fees. and first schedule of the Rules of 1883 (p. 344, post), and of 1885 (p. 357, post). The second list appears to comprise the former, with additions. (See Rule 4, p. 335, post.) If default in payment of fees is caused by mistake or inadvertence the comptroller may enlarge the time. (Sect. 17.)
(P) Under sect. 25 of the Act of 1852, patents obtained here for inventions Expiration of already patented abroad became void on the expiration of the foreign patent. foreign The new acts have no similar provision, so that it may be presumed that the
patents, how duration of a British patent granted under them, whether on an application British
affecting like pending at or made since the commencement thereof, is unaffected by that of patents. any foreign patent for the same invention. See Lawson, pp. 140, 141 (notes to sect. 45), as to the effect of sect. 113, post, in respect of sect. 25 of the Act of 1852.
(9) Sect. 36.
assignments of such patents might be made separately for each of Assignments the countries. As will be seen hereafter, not only the entirety of of shares, &c. in a patent. the patent and any undivided part or share therein, but also the
entirety of the patent itself, so far as it relates to some distinct or
separate part (if any) of the invention, can be assigned (). Amendments The amendment of the specification, both before and after the of specifications by dis- grant of the patent, is not now restricted to mere rejection, as was claimer, &c.
the case under the former process of disclaimer (8). As amended, however, the specification must not claim an invention substantially larger than or different from the invention as claimed by the specification before the amendment (t); but, with this exception, the amendment may be by way of disclaimer, correction, or explanation (u).
The applicant or patentee (v) first obtains leave from the comptroller or (on appeal) the law officer to make the amendment. The application for leave is advertised in the Official Journal, and may be opposed on the hearing before the comptroller or law officer. The leave, when obtained by the applicant or patentee, is conclusive as to his right to make the amendment, except in case of fraud, and may be given subject to conditions (w). Where any action for infringement, or other legal proceeding in relation to the patent, is pending, the foregoing provisions do not apply (x); but where the action or proceeding is for infringement or revocation of the patent, the owner thereof may, by order of the court or a judge in such action or proceeding, subject to terms (if any) as to costs or otherwise, be at liberty to apply at the Patent Office for leave to amend his specification by way of disclaimer, and the trial or hearing may in the meantime be directed to be postponed (y).
(r) See Chapter on Assignments,” post, p. 110.
(v) This term means the person for the time being entitled to the benefit of the patent, and is so defined by sect. 46. It does not seem, therefore, that the grantee, after he has parted with the whole of his interest, can disclaim or make
other amendment. See old law on this, pp. 6—8, ante. (w) See sect. 18 generally for this and the preceding two statements. The specification must apparently be the coinplete specification, after acceptance at least, as until then there is no publication from the office. (Sect. 10.) The comptroller or law officer is, no doubt, in imposing conditions, guided by the old practice as to disclaimers. See pp. 6—8, ante.
(x) Sub-sect. 10.
(y) Sect. 19. See Fusee Vesta Co. v. Bryant and May (1887), L. R. 34 Ch. D. 458 (Kay, J.), and Bray v. Gardner (1887), L. R. 34 Ch. D. 668 (C.A.), as to the terms on which such an order has been granted.
Subject to such conditions to the contrary as may be imposed on Retrospective the applicant or patentee on his obtaining leave to amend the amendments specification, as before mentioned, it appears that amendments now
of specificahave a retrospective effect. By sect. 19 of the Act of 1852, no action could be brought for an alleged infringement committed before the filing of the disclaimer, unless with the leave of the law officer (s). Under the new act no such leave is required, but no damages will be given in any action in respect of the use of the invention before the amendment was made, unless the court is satisfied that the original claim of the patentee was framed in good faith and with reasonable skill and knowledge (a). The term of a patent may, in certain instances, on petition to Extension of
term of the Queen in Council, be extended for the benefit of the patentee patent. or his assigns (6). The extension will be granted as a matter of favour and not of right (b), and mainly on the ground of the extraordinary merit of the invention and the inadequate remuneration already afforded to the inventor therefrom (C). This was the old law (d), and in the absence of provision to the contrary in the new act, must no doubt still prevail. It is however provided by the new act (e), that the Judicial Committee of the Privy Council, in considering the application, are to have regard to the nature and merits of the invention in relation to the public and to the profits made by the patentee (or his assigns] as such, and to all the circumstances of the case. The intention to apply must be advertised six months at least before the expiration of the term (f). The committee will hear the petitioner and any person who opposes the extension or their respective counsel (f). The extension will not be for more than seven years, but in exceptional cases the committee, in lieu of extending, may order a grant of a new patent “ for the term therein mentioned,” and containing such restrictions, conditions, and provisions as the committee may think fit (9).
(2) See ante, p. 7, as to this.
(d) See Pitman's Patent, L. R. 4 P. C. 37; also Honiball's Patent, 9 Moo. P. C. C. 393; Markwick's Patent, 13 Moo. P. C. C. 313; Derosne's Patent, 2 Webs. 4; and Norton's Patent, 1 Moo. P. C. C. N. S. 339 (all cited in Lawson, 34).
(e) Sect. 23, sub-sect. 4.
Rules of procedure and practice for regulating proceedings on such petitions may be made from time to time by the Queen in Council; and, subject thereto, the procedure and practice of the Judicial Committee, as existing at the commencement of the act, is to
prevail (h). Revocation of
Patents were formerly liable to be revoked or declared void on patents.
account of fraud, false suggestion, non-compliance with the conditions, failure of any of the essential requisites of novelty and utility, or abuse of the privileges granted by the patent(i). Under the new act (j) every ground on which a patent might, at the commencement of the act, be repealed by scire facias, is available by way of defence to an action for infringement, and is also a ground of revocation. In construing this provision, however, allowance must be made for the changes made in the proceedings to obtain patents. Under the old law, as we have seen (k), there was no investigation at the Patent Office of the merits of the complete specification before the grant was made, and the patent was void if such specification turned out insufficient. Proceedings by a process called scire facias (1) were the means to repeal the patent in such event. In the present form of a patent, there is no recital of the result of the investigation, except as to the specification having particularly described the nature of the invention. This “particular” description is perhaps little (if any) more than what is required for a provisional specification (m), and does not include the further requirement of a complete specification, namely, that it should “particularly describe and ascertain .... in what manner it [the invention] is to be performed” (n). As, also, the act does not make the acceptance of the complete specification conclusive
(h) Sub-sect. 6. No rules have been made under this provision. See the rules existing at commencement of the new act, and which are still in force, post, Appendix, p. 362.
(i) Webs. 32; Lawson, 45.
(1) As to the practice upon writs of scire facias, see Hindmarch, 376; Norman, 194.
(m) By No. 10 of the second set of Rules and Regulations under the Act of 1862, the provisional specification was to state distinctly and intelligibly the whole nature of the invention, so that the law officer might be apprised of the improvement, and of the means by which it was to be carried into effect. This must be read in connection with the decisions in the cases mentioned at p. 4, ante.
(n) See sect. 5.
as to its sufficiency, it seems that the insufficiency of the specification would now be a ground of revocation, as it was before the act. It is suggested (6), however, that as by sect. 33 this form is not compulsory, and by sect. 116 the prerogative of the Crown in relation to the grant or withholding the grant of a patent is saved, the Crown may insert a condition making void the patent in case of the insufficiency of the specification. Should this be the case, and the courts decide that the acceptance of the specification is conclusive as to its sufficiency in an application for revocation, the form of a patent would probably be changed so as to insert this condition (p). The old proceeding for revocation by scire facias is abolished, Revocation
now by petiand the present remedy is by petition to the court (9). The tion only; Attorney-General in England or Ireland, or the Lord Advocate in who may
petition. Scotland, or any person authorized by any one of them, may be petitioners. Without such authority, however, any other person may be a petitioner who alleges—(1) fraud in the obtaining of the grant against his rights or those of any person through whom he claims, or (2) that he or any such person was the inventor, or (3) that he or any person through whom he claims an interest in any trade, business, or manufacture, had publicly manufactured, used, or sold within this realm, before the date of the patent, anything claimed by the patentee as his invention (r). Where a patent has been revoked on the ground of fraud, the comptroller may, on the application of the true inventor, grant him a new patent of the same date as that of the revocation, which shall cease on the expiration of the term granted by the revoked patent (s).
(0) Lawson, 131 (note to sect. 33).
(p) The late Mr. J. J. Aston, Q.C., in his work on the new act (Introductory Chapter), considered that this acceptance of the complete specification at the Patent Office would be conclusive as to its sufficiency; and (p. 41) that the law officer may be said to settle the specification. The Messrs. Johnson (Pat. M. p. 112) have the same opinion. Mr. Seward Brice (p. 20) and Mr. Munro (p. 9) have a contrary view. Mr. T. Aston, Q.C. (p. 12) is inclined to think that the official examination would ensure the sufficiency as regards the description of the modus operandi.
(9) Sect. 26. The court is the High Court of Justice in England, subject to the provisions for Scotland, Ireland, and the Isle of Man. (See sects. 107-112.)
(r) Sect. 26, sub-sect. 4. See sub-sects. 5, 6, 7, as to delivery of particulars, evidence, &c.
(8) Sect. 26, sub-sect. 8. In In re Avery's Patent, W. N. 22 Jan, 1887,