SECTION Scotland; Ireland; &c. 107. Saving for courts in Scotland.... 108. Summary proceedings in Scotland 109. Proceedings for revocation of patent in Scotland 110. Reservation of remedies in Ireland 111. General saving for jurisdiction of courts 112. Isle of Man Repeal; Transitional Provisions; Savings. PAGE 326 327 327 327 327 . 327 113. Repeal and saving for past operation of repealed enactments, &c. ... 328 114. Former registers to be deemed continued.... 115. Saving for existing rules 116. Saving for prerogative 117. General definitions The FIRST SCHEDULE.-Forms of Application, &c. 329 The SECOND SCHEDULE.-Fees on instruments for obtaining Patents, and An Act to amend and consolidate the Law relating to Patents for Inventions, Registration of Designs, and of Trade Marks. [25th August, 1883.] Be it enacted by the Queen's most Excellent Majesty, by and with the advice and consent of the Lords Spiritual and Temporal, and Commons, in this present Parliament assembled, and by the authority of the same, as follows: PART I.-PRELIMINARY. 1. This Act may be cited as the Patents, Designs, and Trade Marks Short title. Act, 1883. 2. This Act is divided into parts, as follows: Part I.-PRELIMINARY. Part II.-PATENTS. Part III.-DESIGNS. Part IV.-TRADE MARKS. Part V.-GENERAL. Division of Act into parts. 3. This Act, except where it is otherwise expressed (a), shall com- Commencemence from and immediately after the thirty-first day of December one ment of Act. thousand eight hundred and eighty-three. (a) See the savings in sect. 45 (existing patents) and sect. 113 (repeal of acts). PART II.-PATENTS. Application for and Grant of Patent. 4.-(1.) Any person, whether a British subject or not, may make an Persons application for a patent (b). (2.) Two or more persons may make a joint application for a patent, and a patent may be granted to them jointly (c). (6) As to who may apply for a patent and the devolution of the right to apply, and as to the joinder of co-applicants by amendment, see ante, pp. 10, 11. Application and specification. Reference of examiner. (c) As to the position inter se of joint grantees or co-owners of a patent, see ante, pp. 118 et seq. By sect. 5 of the Amendment Act of 1885 (post, p. 333), it is declared to the effect that the grant under the Act of 1883 to several persons jointly, some or one of whom only were, was, are, or is the true and first inventors or inventor, was and is lawful. 5.-(1.) An application for a patent must be made in the form set forth in the First Schedule to this Act, or in such other form as may be from time to time prescribed (d); and must be left at, or sent by post to, the patent office in the prescribed manner (e). (2.) An application must contain a declaration (ƒ) 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, claims or claim to be the true and first inventor or inventors (g), and for which he or they desires or desire to obtain a patent; and must be accompanied by either a provisional or complete specification. (3.) A provisional specification must describe the nature of the invention, and be accompanied by drawings, if required (h). (4.) A complete specification, 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, if required (i). (5.) A specification, whether provisional or complete, must commence with the title, and in the case of a complete specification must end with a distinct statement of the invention claimed (j). (d) New forms have been prescribed under P. R. 1883, rr. 6, 8, 9, 10, which are now superseded by Forms A and Al (post, pp. 358, 359), under P. R. 1885, rr. 4, 7. (e) See P. R. 1883, r. 19, post, p. 337. (f) This may be either statutory or not as from time to time prescribed (sect. 2 of Act of 1885, post, p. 332). (g) See note (c) to last section as to sect. 5 of the Act of 1885. The term "inventor" includes " importer" from abroad (ante, pp. 2, 10). (h) See ante, p. 13, as to the nature of a provisional specification, which is the same as under the late practice, except that it need not be under seal. See present Form B. (post, p. 360), under P. R. 1885, superseding Form B. under P. R. 1883. As to drawings, see post, p. 338, n. (i) The drawings, if accompanying the provisional specification, need only be referred to, and not accompany the complete specification (sect. 2 of the Act of 1886, post, p. 333). As to the nature of a complete specification under the late practice, see ante, p. 5. A complete specification need not be under seal (see Form C., post, p. 360). As to drawings, see p. 338, n. (j) This claim was not required under the old law. See ante, p. 12, n. (ƒ). 6. The comptroller shall refer every application to an examiner, application to who shall ascertain and report to the comptroller whether the nature of the invention has been fairly described, and the application, specification, and drawings (if any) have been prepared in the prescribed manner, and the title sufficiently indicates the subject-matter of the invention. Power for refuse ap 7.-(1.) If the examiner reports that the nature of the invention is comptroller to not fairly described, or that the application, specification or drawings has not or have not been prepared in the prescribed 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. plication or require amendment. (2.) Where the comptroller requires an amendment, the applicant may appeal from his decision to the law officer. (3.) The law officer shall, if required, hear the applicant and the comptroller, 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; 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, whether the invention comprised in both applications is the same, and if so he may refuse to seal a patent on the application of the second applicant. 8.—(1.) If the applicant does not leave a complete specification with his application, he may leave it at any subsequent time within nine months from the date of application (k). (2.) Unless a complete specification is left within that time the application shall be deemed to be abandoned (1). (4) Another month or less may be allowed on payment of the prescribed fee (sect. 3 of the Act of 1885, post, p. 332). (1) Where an application has been abandoned, the specification and drawings shall not at any time be open to public inspection or be published by the comptroller (sect. 4 of the Act of 1885, post, p. 332). The abandonment must be before the acceptance of the complete specification, as publication takes place on such acceptance (sect. 10, post). Under the old law, the abandonment of proceedings commenced with a provisional specification did not establish publication (Oxley v. Holden, 8 C. B. N. S. 666). After such an abandonment, the applicant may, it is presumed, make a new application, if he does not between the date of the abandonment and that of the new application make a public use of the invention (see ante, pp. 13, 14; and sect. 14, post). "Month" means "calendar month" (13 & 14 Vict. c. 21, s. 4). Time for leaving complete specification. complete 9.-(1.) Where a complete specification is left after a provisional Comparison specification, the comptroller shall refer both specifications to an of proexaminer for the purpose of ascertaining whether the complete specifi- visional and cation has been prepared in the prescribed manner, and whether the specification. invention particularly described in the complete specification is substantially the same as that which is described in the provisional specification. (2.) If the examiner reports that the conditions hereinbefore 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; but any such refusal shall be subject to appeal to the law officer. (3.) The law officer shall, if required, hear 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 (m). (4.) Unless a complete specification is accepted within twelve months from the date of application (n), 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. (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 Advertisement on acceptance of complete discovery in such legal proceeding shall certify that such production or inspection is desirable in the interests of justice, and ought to be allowed. (m) It is presumed that, notwithstanding the investigation at the office prior to the acceptance of the complete specification, the patent will still be liable to be revoked for the insufficiency of the specification (see Lawson, 10; and ante, pp. 20, 21). (n) This period is extendible to three months longer at most by sect. 3 of Act of 1885, post, p. 332. 10. On the acceptance of the complete specification the comptroller shall advertise the acceptance; and the application and specification or specifications with the drawings (if any) shall be open to public specification. inspection (o). Opposition to grant of patent. Sealing of patent. (0) See rr. 25, 26, post, p. 338. As to complete protection and patent rights afforded by the acceptance of a complete specification, see sect. 15, post, and ante, P. 15. 11.-(1.) Any person may at any time within two months from the date of the advertisement of the acceptance of a complete specification give notice at the patent office of opposition to the grant of the patent on the ground of the applicant having obtained the invention from him, or from a person of whom he is the legal representative, or on the ground that the invention has been patented in this country on an application of prior date, or on the ground of an examiner having reported to the comptroller that the specification appears to him to comprise the same invention as is comprised in a specification bearing the same or a similar title and accompanying a previous application, but on no other ground (p). (2.) Where such notice is given the comptroller shall give notice of the opposition to the applicant, and shall, on the expiration of those two months, after hearing the applicant and the person so giving notice, if desirous of being heard, decide on the case, but subject to appeal to the law officer. (3.) The law officer shall, if required, hear the applicant and any person so giving notice and being, in the opinion of the law officer, entitled to be heard in opposition to the grant, and shall determine whether the grant ought or ought not to be made. (4.) The law officer may, if he thinks fit, obtain the assistance of an expert, who shall be paid such remuneration as the law officer, with the consent of the Treasury, shall appoint. (p) Prior public user, want of utility, or an objection that the invention is not properly the subject-matter of a patent, was formerly, but is not now, a ground of opposition to the grant (see Lawson, 11, and cases there cited), but may be one for revocation of a patent (see sect. 26, post, and ante, pp. 20, 21, as to revocation of patents). 12. (1.) If there is no opposition, or, in case of opposition, if the determination is in favour of the grant of a patent, the comptroller shall cause a patent to be sealed with the seal of the patent office. (2.) A patent so sealed shall have the same effect as if it were sealed with the great seal of the United Kingdom. (3.) A patent shall be sealed as soon as may be, and not after the expiration of fifteen months from the date of application (q), except in the cases hereinafter mentioned, that is to say (a) Where the sealing is delayed by an appeal to the law officer, (b) If the person making the application dies before the expiration of the fifteen months (r) aforesaid, the patent may be granted to his legal representative and sealed at any time within twelve months after the death of the applicant. (9) See, however, sect. 3 of the Act of 1885 (post, p. 332). It is there provided that if the comptroller allows extra time for leaving or accepting the complete specification (not exceeding one month and three months respectively) a further extension of four months is allowed for sealing in addition to the fifteen months. (r) It is presumed that the extension of time as to sealing as last referred to will also apply as to the death of the applicant. 13. Every patent shall be dated and sealed as of the day of the Date of application (s): Provided that no proceedings shall be taken in respect patent. of an infringement committed before the publication of the complete specification: Provided also, that in case of more than one application for a patent for the same invention, the sealing of a patent on one of those applications shall not prevent the sealing of a patent on an earlier application (t). (8) Semble, no legal assignment can be made of the patent or any legal interest therein (other than a licence), before the actual date of the sealing of the patent (ante, p. 24). As to licences granted before the sealing being legal grants, see also p. 24. (t) As to rival applications at different dates for the same invention, see Lawson, pp. 16-19, and cases under old law there cited. Provisional Protection. 14. Where an application for a patent in respect of an invention Provisional has been accepted, the invention may during the period between the protection. date of the application and the date of sealing such patent be used and published without prejudice to the patent to be granted for the same; and such protection from the consequences of use and publication is in this Act referred to as provisional protection (u). (u) On this section generally, see ante, pp. 13, 14; and as to the nature of provisional protection under the old law (which is the same as under this Act), see ante, p. 4. See also note (1) of sect. 8, ante, as to abandonment of applications. The period of protection above stated will of course be determined on the abandonment of the application, whether under sect. 8 or otherwise. Protection by Complete Specification. 15. After the acceptance of a complete specification and until the Effect of date of sealing a patent in respect thereof, or the expiration of the acceptance of time for sealing, the applicant shall have the like privileges and rights complete specification. as if a patent for the invention had been sealed on the date of the acceptance of the complete specification: Provided that an applicant shall not be entitled to institute any proceeding for infringement unless and until a patent for the invention has been granted to him (v). (v) See ante, pp. 5, 15. Patent. 16. Every patent when sealed shall have effect throughout the Extent of United Kingdom and the Isle of Man (w). patent. (w) The Channel Islands were included in former patents. 17.—(1.) The term limited in every patent for the duration thereof Term of shall be fourteen years from its date (x). patent. |