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cases will show the lines upon which the law officers go in granting or refusing leave to amend a specification.

Where no reason was shown by the patentee for requiring the amendment, in the case of a specification which on the face of it was sufficient without it, the law officer refused the application (a).

In Hampton & Facer (b) the applicants desired to insert a statement in their specification imputing disadvantage to former patents, the Solicitor-General refused the application on the ground that he was not at all satisfied that the faults imputed to those patents did in reality exist.

In Beck & Justice (bb) Sir R. Webster, A.-G., said: "My idea of the function of an explanation within sect. 18 is to explain more clearly what is necessary to understand the meaning of the patentee at the time he patented the invention. I do not think it is intended that he should put in subsequently ascertained knowledge."

An amendment which in effect amounts practically to the rewriting of the whole specification will not be allowed (c), nor an amendment which abandons the original substantive claim and limits the invention to a subordinate and unimportant alternative (d).

The law officer will allow an amendment which upon a fair interpretation tends to limit the scope of the original specification (e), and where a specification is clearly capable of two constructions the patentee by amendment can limit himself to one of them (ƒ).

In Re Bateman & Moore's Patent (g) there was evidence upon the face of the specification that the patentees intended their invention to comprise an entire apparatus, at the end of the specification they claimed the several parts of the apparatus,

(a) Re Morgan, Griff. L. O. C. 17; Re Nordenfelt, Griff. L. O. C. 18. (b) Griff. L. O. C. 15. (bb) Griff. L. O. C. 10.

() Re Nairn, 8 P. O. R. 444. (d) Re Heath & Frost's Patent, Griff. P. C. 311; Re Serrell, 6 P. O. R. 101.

(e) Re Nordenfelt, Griff. L. O. C. 20; Cochrane's Patent, Griff. P. C.304.

(f) Re Rylands, 5 P. O. R. 665; see also other instances, R. v. Mill, 10 C. B. 379; Seed v. Higgins, 8 H. L. C. 550.

(g) Macr. P. C, 116,

Bethell, S.-G., allowed the disclaimer the effect of which was to convert the claim into one for the combination.

The law officer will not in the absence of satisfactory explanation permit repeated applications to be made for the same proposed amendment (1⁄2).

(9) "Leave to amend shall be conclusive as to the right of the party to make the amendment allowed, except in the case of fraud (i), and the amendment shall in all Courts and for all purposes be deemed to form part of the specification."

Leave to amend, although conclusive as to the right of the party to make the amendment, will not give validity to an amendment which is invalid by reason of the provisions of sub

sect. 8.

In Foxwell v. Bostock (k), which arose under the similar provisions of 5 & 6 Will. IV. c. 83, the amended specification claimed an invention substantially different from that described in the original specification for which the patent was granted. Lord Westbury, L.C., in his judgment, said: "The question then arises, Is the patent void or is the disclaimer void? And to this question it is not easy to find an answer. There is no express enactment in statute 5 & 6 Will. IV. c. 83, that the disclaimer, if it transgresses the statutory limit, by extending the exclusive right, shall be void to all intents and purposes; and unless it be so, it must remain enrolled with and always accompany the letters patent in the specification. It might be proper to hold that the disclaimer is inoperative for the excess only, where that excess is clearly distinguishable; and this is the course which I have been most anxious to take in the present

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In Dudgeon v. Thomson, Lord Blackburn, in his judgment in the House of Lords, said: "But when we take, as I apprehend we are entitled to take, the old specification before the disclaimer in order to see what it means, that becomes still clearer. I say we are entitled to take it, for the object of a disclaimer is merely to take out and renounce part of what had been claimed before, and it would vitiate the new specification if by striking out that

(h) Arnold's Patent, Griff. L. O. C. 5. (k) 4 De J. G. & S. 298.

(i) Re Berdan, L. R. 20 Eq. 346.

part you gave an extended and larger sense to what is left so as to make it embrace something which it did not embrace before" (7).

In the Matter of Van Gelder's Patent (m), which was a petition for a writ of prohibition to issue against the law officer on the ground that he had allowed a disclaimer which extended the scope of the patent and consequently ultra vires under subsect. 8, Lord Esher, M.R., in his judgment in the Court of Appeal, said: "In my judgment these two sub-sections have not altered the law in the least. The Attorney-General cannot make a valid amendment if it is to substantially enlarge the invention, or make it a substantially different invention. He cannot do it effectively. That is by virtue of sub-sect. 8. Then, if that be so, sub-sect. 9 has not the effect of making that which he has done invalidly, conclusive, and if what he has done is invalid by reason of sub-sect. 8, whenever anybody attempts to put in force that amendment for any purpose, the Court could say that what the Attorney-General has done has not really altered the original specification. Then the matter must be determined according to the original specification. The amendment would be held to be invalid (n)." Lord Justice Lindley in the same case said: "The amendment referred to (in sub-sect. 9) is not only an amendment made, but an amendment which could be properly made under the Act—an amendment which complies with sub-sect. 8-'such an amendment.' If such an amendment as that is made, then such an amendment becomes, in the language of sub-sect 9, for all purposes, part of the specification. It does not mean any amendment whether authorised by the Act or unauthorised by the Act; that is not the scope of the legislation" (o).

The above cited cases all lead to the conclusion that where an amendment substantially enlarges the patent or makes the specification as amended substantially different from the original specification, the defence of disconformity between provisional specification and complete as amended, cannot be relied on in an action.

(7) L. R., 3 App. Cas. 55.

(m) 6 P. O. R. 22.

(n) At p. 27.

(0) At p. 28; see also In re Sharp's Patent, 1 Web. P. C. 643; In re Bateman & Moore's Patent, Macr. P. C. 116.

for infringement, since the amendment is void and the complete specification must be read as it stood prior to amendment.

But in Gaulard & Gibbs' Patent, Lord Justice Lindley said: "We are satisfied that no other construction is worth contending for, and it is, in our opinion, the true construction of the specification as amended. . . . . But this construction of the amended specification renders the patent hopelessly bad in law, for (1) on this construction the invention is not the same as that described in the provisional specification, but an entirely different invention; and (2) on this construction the amendment of the complete specification has greatly extended the scope of the patent. As already shown, the essence of the invention, as described in the complete specification in its original shape, and as set forth in the provisional specification, lay in the use in combination of a specially-constructed electrical generator which the patentees believed to be superior to all others, and, in fact to have magical powers; and if they throw this over, they so far depart from their invention as described in those documents as to render the patent they have obtained for it worthless and incapable of being supported" (p).

In Moser v. Marsden the same Lord Justice said: “An ambiguity of expression is cleared up, but still, if the claim is thereby enlarged so as to make that to be an infringement which would not have been so before, the amendment will avoid the patent" (q).

In The Farbenfabriken v. Bowker (r), the defendants raised the objections, that the comptroller had allowed certain amendments of the specification which had not been properly advertised, and further that when the application was made for amendment there was an action for infringement pending, and that therefore under sect. 18, sub-sect. 10 of the Act of 1883, no amendment ought to have been allowed, Mr. Justice Romer refused to go behind the order of the comptroller.

From the above cases it would seem that it is not yet clearly

(p) 6 P. O. R. 225; see also the same case in the House of Lords, 7 P. O. R. 367, 387.

(g) 10 P. O. R. 359; see also Lane

Fox v. Kensington and Knightsbridge Electric Lighting Co., 9 P. O. R. 221, 239, 413, 419, 421.

(r) 8 P. O. R. 389, 397.

settled, whether, when an amendment extends the scope of the patent, the amendment alone is bad, or whether the whole patent is thereby rendered invalid.

The fact of an amendment being required by the patentee does not necessarily imply that the original patent was void (s), and Lord Cairns, L.C., in Dudgeon v. Thomson, said: "The original specification may have complied with all the exigencies of the law, and been such as is requisite in the case of every patent, but the amended specification may be wanting in all those qualities which are required by the statute " (t).

(10) "The foregoing provisions of this section do not apply when, and so long as any action for infringement or proceeding for revocation of a patent is pending.”

In Cropper v. Smith (u) the comptroller having declined leave to amend a specification by reason of the 10th sub-sect. of sect. 18 on the ground that an appeal was pending to the House of Lords from a decision of the Court of Appeal, declaring the patent in question invalid, and that such appeal was "an action for infringement or other legal proceeding." Application was made to the Court under sect. 19. Chitty, J., held that the words "other legal proceedings " applied to a petition for revocation, and that the words "action for infringement" referred to an action before judgment, and consequently that the appeal to the House of Lords did not deprive the comptroller of the power of amending the specification under sect. 18.

In Codd v. Bratby (x), liberty to amend under sect. 19 was given upon terms by the Court after a previous refusal by the comptroller under sect. 18, but the applicant was ordered to pay the costs of the application to the comptroller.

Should a petition for revocation be instituted while an application for leave to amend is pending, the proceedings before the Comptroller General are thereupon suspended by virtue of the sub-sect., and can only be revived by leave of the Court under sect. 19 (y).

(s) Per Tindal, C. J., in Stocker v. Warner, 1 C. B. 165; 9 Jur. 138. (t) L. R., 3 App. Cas. 38.

(u) 1 P. O. R. 254; L. R., 28 Ch. D. 148; see also Lawrence v. Perry,

2 P. O. R. 179, 188.

(2) Griff. P. C. 56; 1 P. O. R. 209. (y) Re Deeley's Patent, 11 P. O. R. 72, 76.

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