« PreviousContinue »
In Allen's Patent (c), application was made to amend a specification dated 1885. The opponents asked that a condition should be imposed that Allen should not bring any action or bring any proceedings whatever against them or any of their customers, &c., in respect of any pipes which had been sold or contracted to be sold prior to the amendment. Sir E. Clarke, S.-G., having consulted Sir R. Webster, A.-G., gave the following decision : "I have carefully considered the question whether in allowing this amendment I ought to impose any condition as to the bringing of actions for infringement prior to the date of the amendment. This appears to be the first case in which that question has come up for decision in respect of patents issued since the passing of the Act of 1883. In several cases which came before the law officer shortly after the passing of this Act, I find that they imposed, as a condition of the amendment, that no action should be brought for infringements prior to 1st January, 1884. An examination of these cases, as reported in Griffin's P. C., shows that the reason for their so doing, and in each case (whatever its date) referring back to the 1st January, 1884, was, that they doubted whether sect. 20 would avail to protect persons who were sued for infringements alleged to have been committed prior to the passing of the Act (d). No such question arises here. This patent was dated 20th October, 1885, and if after amendment an action is brought for a prior infringement, it is clear that the Court will have to decide whether the matters referred to in sect. 20 have been established to its satisfaction. I do not think that I am entitled to substitute my opinion for that of the Court. Again, I do not think that I could in strictness attach this as a condition to the allowance of this amendment. I could only require an undertaking from the applicant as was required by Sir H. James, A.-G., in the Westinghouse Case. If he were to refuse to give such an undertaking, I
Journal, new series, vol. 22, p. 69;
(c) Griff. L. 0. C. 3.
(d) Re Hearson, 1 P. O. R. 213; Re Haddan, Griff. L. 0. C. 12; Re Checsebrough, Griff. P. C. 303 ; Re Westing. house, Griff. P. C. 315; Andrew v. Crossley, 9 P. O. R. 168.
do not feel myself entitled by that refusal to deprive him of the opportunity of protecting the real invention described in his specification, by a disclaimer of that which I am satisfied he does not mean to claim. I therefore do not think I can properly impose this condition.”
In Cheeseborough's Patent (e), the conditions were that no action should be brought with reference to any lamps made sold or used before the date of the amendment, and that any lamps so made might be used or sold after the date of the amendment without infringing. In the case of a second disclaimer the law officer will be disinclined to give costs to the patentee even if successful (f).
In the case of applications for leave to amend patents granted under the Act of 1883, the law officer on allowing the application will not impose any conditions except under special circumstances. In Ashworth’s Patent (g), Sir H. Davey, S.-G., said : “If I saw or if there was any evidence before me that the patent had been used for the purpose of endeavouring to obtain a monopoly larger than that which the specification as amended claims, I should consider that a special circumstance. If, for example, the patentees had been threatening persons and endeavouring to prevent persons from making or selling wire hardened and tempered in a mode different from that which is claimed, I should consider that a special circumstance, and under those circumstances, as far as I am personally concerned, I should impose the condition that no action should be brought. for anything done at any time before the amendment” (1).
The specification is considered to be amended from the moment that leave to amend is given, and the conditions imposed, if any, agreed to (i), no written undertaking by the applicant is necessary although it is the practice in the patent office to require some such undertaking as conclusive evidence of the agreement (k),
(e) Griff. P. C. 303 ; see also the terms imposed in Westinghouse's Patent, Griff. P. C. 315.
(f) Haddan's Patent, Griff, L. 0. C. 12.
(9) Griff. L. 0. C. 9.
(h) See also Re Allen's Patent, Griff. L. 0. C. 3 ; Re Haddan, Griff. L. 0. C. 13.
(i) Andrew v. Crossley, 9 P. O. R. 165.
(k) Ibid. at p. 168.
since the written assent precludes the patentee from alleging that he did not accept the condition (1).
The power of the law officer to grant costs is expressly conferred by the 38th sect. of the Act of 1883 (m).
In re Ashworth's Patent (1), the law officer refused to grant costs to the applicant although successful, on the ground that the specification was so loosely framed it was natural that rival traders should oppose an application for leave to amend.
In re Lake's Patent (o), which was an unopposed application for leave to amend, the applicants appealed to the law officer against the decision of the C. G., Sir R. Webster, A.-G., allowed the appeal on the ground that a doubtful amendment ought to be allowed, but refused to give costs. “In fact,” he said, “I may say that I think it would be better, as a matter of practice, that in the absence of very special circumstances the C. G. should neither give nor receive costs.”
In re Morgan's Patent (P), which was a successful appeal to the law officer from the decision of the C. G., application was made for the return of the stamp on the notice of appeal, Sir R. Webster, A.-G., refused this application on the ground that he considered the case to be one in which the C. G. was quite right in declining to allow the amendment in the first instance and to leave it to the law officer.
“(5) When no notice of opposition is given, or the person 80 giving notice does not appear, the comptroller shall determine whether, and subject to what conditions, if any, the amendment ought to be allowed.”
The exercise of discretionary power vested in the C. G. by the Patents and Trade Marks Acts is regulated by sect. 94, of the Act of 1883, and Patent Office Rules, 1890, rr. 11–14.
“(6) When leave to amend is refused by the comptroller, the person making the request may appeal from his decision to the law oficer."
A notice of appeal must be filed in the Patent Office within 14 days from the date of the decision appealed against, in every case where appeal to the law. officer from a decision of the C. G. is allowed under the Acts (q); the practice on appeal is regulated by the Law Officers' Rules.
(1) Andrew v. Cros 9 P. O. R. at 1, 169; see also Re Berdan, L. R., 20 Eg. 346. lin) See
also L. O. R. r. xi.
(n) Griff. L. 0. C. 9.
“ (7) The law officer shall, if required, hear the person making the request and the comptroller, and may make an order determining whether and subject to what conditions, if any, the amendment ought to be allowed.
“(8) No amendment shall be allowed that would make the specification as amended, claim an invention substantially larger than or substantially different from the invention claimed by the specification as it stood before amendment."
It will be observed that the amendments under the new Act are to be by disclaimer, correction or explanation, provided the amendment does not cause the specification to claim an invention substantially larger or different. The Act of Will. IV., after using the words “disclaimer” and “alteration,” provided that no extension should take place in the “ exclusive right " granted by the letters patent.
It was always a question of great difficulty whether or not a disclaimer or alteration extended the “exclusive right” of the patentee. For instance, if in his original specification, after describing several improvements in a process of manufacture, he proceeded to claim them all, and it should turn out that one of his improvements was old, the whole patent was bad and the patentee had no exclusive right at all; if he then disclaimed the objectionable portion, his patent became good as to all the rest. There was clearly, therefore, an extension of the exclusive right, notwithstanding that this was the very case the statute was passed to meet. Mr. Justice Maule's view of the Act of Will. IV. was: “Whereas there were previously many small and trifling objections by which, if they were sustained against any one of many important inventions, the whole was avoided. In such cases amendments may now be made by means of a disclaimer" (r).
Romilly, M.R., in the same case (8), at the Rolls, said: “It is (9) L. O. Rules, r. i. ; p. 455, post. page 24 ; 10 C. B. 379 ; 15 Jur. 59 (r) R. v. Mill, 20 L. J., C. P. at (8) 14 Beavan, at page 315.
proper they (patentees) should be allowed to correct errors in their patents by removing from the specification parts which are not material or substantial, or which they have since discovered not to be new inventions; but this power ought to be exercised with great care and discretion.” There is a case reported in Macrory's Patent Cases at page 116, where Sir Richard Bethell, when Solicitor-General, allowed a patentee to enter a disclaimer, the effect of which was to enable him to claim for a combination, the original claim being for the several parts of the described invention. When afterwards he became Lord Westbury he described the words of this statute as vague and indefinite, and said : “Possibly they mean that the patent must not, by the operation of the disclaimer, be made to include or comprehend something which was not originally contained in the patent. The invention claimed may be reduced or diminished, but it must not be extended or enlarged” (t).
The case of Ralston v. Smith (u), shows the difficulty which the Courts had in reconciling a disclaimer which might make a patent valid which was void ab initio, with the prohibition against extending the exclusive right. The judgment of Lord Chelmsford, as reported, is remarkable for its cautious vagueness, and the care which seems to have been exercised not to lay down anything approaching to a general principle. Under the Act of 1883 it is not the exclusive right which must not be extended, but the invention must not be substantially larger or different.
The decision of the law officer is final, and cannot be appealed against (x), consequently in cases of doubt leave to amend will be granted (y) since if the amendment is bad under sub-sect. 8 it can be questioned when the point comes before the Court (s).. Although no one case upon this subject can well be authority for the decision of another, a consideration of a few of the decided
(t) Foxwell v. Bostock, 4 De G. J. & S. at page 306 ; 12 W. R. 723 ; 10 L. T., N. S. 144.
(u) 11 H. L. C. 223; 20 C. B., N. S. 28 ; 13 L. T., N. S. 1.
(ac) Bateman & Moore's disclaimer, M cr, P. C. 116 ; Re Lake's Patent,
Griff. L. 0. C. 16.
(y) Re Lakes Patent, Griff. L. 0. C. 16 ; In re Bateman & Moore's Patent, Macr. P. C. 116.
(z) Re Van Gelder's Patent, 6 P. 0. R. 22.