the specification appears to be for the invention for which the application is made (q). In Re Smith's Patent (r), Herschell, S.-G., said: "There is no power in the Patent Office to examine into the conformity of the claims put forward by the patentee with the description of the invention which he has given. I should only guard myself by saying this, that if the statement of the invention claimed were such as 'I claim the invention described in the specification,' that would be regarded as a mere colourable compliance with the terms of the statute, and not as a distinct statement of the invention claimed, because it would merely refer back to the previous description." Sect. 9 expressly throws upon the comptroller the duty of deciding whether the provisional and complete specifications describe substantially the same invention, but this section can hardly mean that the comptroller must go into fine questions of construction, but must merely amount to a direction to the comptroller that an application shall not be accepted if the two specifications on the face of them describe inventions which are substantially different (s), since it is always the rule in the Patent Office and of the law officer in questions of doubt to accept an application and leave the sufficiency of the specifications and the other points that arise in that connection for the consideration of the courts, should the question ever come before them (t): Under the provisions of sect. 86, the comptroller may refuse to grant a patent for an invention, of which the use would, in his opinion, be contrary to law or morality. Before exercising any discretionary power adversely to the applicant, the comptroller must give him ten days' notice, so that he may be heard personally or by his agent on the point in question (u). The subject of appeal to the law officer from decisions of the (9) In re C.'s Application, 7 P. O. R. 250. (r) Griff. P. C. 268. (s) In re Anderson's Patent, 7 P. O. R. 323, 325; but see per Lindley, L.J. Gadd v. Mayor of Manchester, 9 P. O. R. 527; also per Lord Herschell in Vickers v. Siddell, 7 P. O. R. 306. (t) Re Chandler's Patent, Griff. P. C. 274; Re Cumming's Patent, Griff. P. C. 277; Edmunds' Patent, Griff. P. C. 283. (u) Sect. 94 of the Act of 1883; see also P. R. 1890, r. 11. comptroller will be dealt with in the chapter relating to opposition to a grant of letters patent. Sect. 8 of the Act of 1883, as amended by the sect. 3 of the Act of 1885, enacts: "(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. A complete specification may be left within such extended time, not exceeding one month after the said nine months, as the comptroller may, on payment of the prescribed fee, allow." "(2) Unless a complete specification is left within that time the application shall be deemed to be abandoned." The nine months allowed by this section for the filing of the complete specification are calendar months (x), and are reckoned exclusive of the day of application (y), and in the event of the last day of such nine months falling on Christmas Day, Good Friday, or on a Saturday or Sunday, or on any Bank Holiday or day of public fast or thanksgiving, the specification may be filed on the day succeeding such excluded day or days (z). An application for enlargement of time for leaving a complete specification must state in detail the grounds upon which such extension is applied for, and the applicant must produce such evidence in support of his application as the comptroller may require (a); the prescribed fee is £2 (b). In the event of an application being abandoned, the specifications and drawings which were left in connection with the application are not published, nor are they at any time open to public inspection (c). Sect. 9 of the Act of 1883, as amended by the Acts of 1885 and 1888, enacts: (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 applica (x) 13 & 14 Vict. c. 21, sect. 4. 574, 582; Williams v. Nash, Beav. 93; 1859, 5 Jur. N. S. 696. 28 (z) Sect. 98 of the Act of 1883; see also P. R. 1890, r. 7. (a) P. R. 1890, rr. 50, 51. (b) P. R. 1892; schedule of fees. (c) 48 & 49 Vict. c. 63, s. 4; see ante, Chap. V., p. 65. tion shall, at the expiration of those twelve months, become void. A complete specification may be accepted within such extended time, not exceeding three months after the said twelve months, as the comptroller may, on payment of the prescribed fee, allow" (d). "(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, 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." Sect. 10 of the principal Act enacts : "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 inspection." The advertisements are published in the Illustrated Official Journal, which is issued every Wednesday (e). Sect. 14 enacts :-" Where an application for a patent in respect of an invention has been accepted, the invention may, during the period between the 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." Provisional protection exists for the purpose of enabling an inventor to work at and improve his invention without thereby avoiding the patent subsequently granted to him on the ground of want of novelty (ƒ); it does not afford him the perfect rights which he obtains when his patent is sealed, since he cannot bring an action in respect of any infringement committed before the publication of his complete specification (g), and further he may not style the invention which is provisionally protected as 'patent," but he may make use of such words as "patent applied for" (h). (d) See schedule of fees, Appendix p. 453, post. (e) P. R. 1890, rr. 21 & 22. (f) Per Earl Cairns, L.C., in In re Dering's Patent, L. R. 13 Ch. D. 395. (g) Sect. 13 of the Act of 1883. (h) Sect. 105; see R. v. Wallis, 3 P. O. R. 1; R. v. Crampton, 3 P. O. R. 367. "The phrase 'to be granted for the same obviously means in this section. for the same invention, and cannot be construed as referring to the application or petition" (i). Sect. 15 enacts:-"After the acceptance of a complete specification, and until the date of sealing a patent in respect thereof, or the expiration of the time for sealing, the applicant shall have the like privileges and rights 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." The effect of sects. 13, 14, and 15 is that no proceedings for infringement may be taken before the patent is sealed, after which time proceedings can only be taken with reference to infringements committed after the acceptance and publication of the complete specification. It has been mentioned above that an inventor may not use the word "patent" with reference to the subject of his invention until his patent is sealed, but it is no offence under the Act to continue to use the word "patent" after the period of protection has expired (k), unless such representation amounts to a suggestion that it is an existing patent. In Cheavin v. Walker (1) the plaintiff's filters bore a tablet which consisted of the words "G. Cheavin's Improved Patent Gold Medal Self-cleaning Rapid Water Filter, Boston, England," above which was a medallion containing the Royal Arms, surrounded by the words "By Her Majesty's Royal Letters Patent." This was held to amount to a representation that the filter was the subject of an existing patent, and disentitled the plaintiff to relief. The effect of the provisions of the Patents, &c., Acts to prevent fraudulent applications, and also of those for the protection of foreign inventors, has already been discussed in an earlier chapter (m). (i) Per Chitty, J. in Lister v. Norton, 3 P. O. R. 207. (k) Cheavin v. Walker, L. R. 5 Ch. D. 850, 862. (7) L. R. 5 Ch. D. 850, 863, 864; see also Leather Cloth Co. v. American Leather Cloth Co., 11 H. L. Cas. 523. (m) See Cap. III., ante. CHAPTER IX. OPPOSITION. SECTION 10 of the Act of 1883 provides that upon acceptance of the complete specification, but before sealing the patent, the comptroller shall advertise the acceptance, and that then the application and specifications, with the drawings, if any, shall be open to public inspection. Section 11, as amended by the Patents, &c., Act, 1888, is as follows: (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 to 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 that the complete specification describes or claims an invention other than that described in the provisional specification, and that such other invention forms the subject of an application made by the opponent in the interval between the leaving of the provisional specification and the leaving of the complete specification, but on no other ground." Prior to the passing of this Act any ground was available for the purpose of opposition which would have been available for the purpose of destroying the validity of the patent. Prior user was a frequent ground of opposition (In re Samuda (a)), so also was an alleged dedication to the public by the inventor himself (In re Adamson's Patent (b)), but it was always considered necessary (a) Hindmarch, at page 534. (b) 6 De G., M. & G. 420; 25 L. J., Ch. 456; 4 W. R. 473. |