Sect. 19. "In an action for infringement of a patent, and in a proceeding for revocation of a patent, the Court or a judge may at any time order that the patentee shall, subject to such terms as to costs or otherwise as the Court or a judge may impose, be at liberty to apply at the Patent Office for leave to amend his specification by way of disclaimer, and may direct that in the meantime the trial or hearing of the action shall be postponed."

Where more than one action is pending, the leave of the Court must be obtained under this section in each action, otherwise the amendment will not be allowed, and each order must be filed under rule 58 (infra) (z).

"The Court as defined by sect. 117 of the Act, means the High Court of Justice, so would not include the House of Lords (a), and "a judge," of a Court, which, though not a High Court, has jurisdiction to try actions for infringement of a patent, can grant leave under this section, consequently the ViceChancellor of the Palatine Court can grant leave under this section while an action is pending within his jurisdiction (b).

It is to be noticed that while an action is pending the amendments made with the sanction of the Court are limited to disclaimer.

Sect. 19 acts as a limitation upon the general words of subsect. 10 of sect. 18, and when permission to apply has been granted under sect. 19 the provisions of sub-sect. 10 cease to have effect (c), and the procedure in such application is governed by the remaining provisions of sect. 18 (d).

Sect. 19 gives an absolute discretion to the Court or judge in imposing conditions upon which leave to apply to amend will be granted and the Court of Appeal "will not interfere with the exercise of that discretion unless they can clearly come to the opinion that in their view that discretion was exercised absolutely wrongly " (e).

(z) Codd's Patent, Griff. P. C. 305.
(a) Cropper v. Smith, 1 P. O. R.

256.

(b) Winter v. Baybut, 1 P. O. R. 76; see also p. 316, post.

(c) Singer v. Stassen, 1 P. O. R. 121, 123, 124; In re Hall, 5 P. O. R.

312.

(d) In re Hall, 5 P. O. R. 310; Lang v. The Whitecross Co., 7 P. O. R. 392.

(e) Per Lord Esher, M. R., in Allen v. Doulton, 4 P. O. R. 384; see also Bray v. Gardner, 4 P. O, R. 40; Lang

In Bray v. Gardner Lord Justice Lindley said (ƒ). "I do not understand that there is any form of order which is invariably to be followed in all cases when application is made under sect. 19. It appears to me that whenever leave is given to amend under sect. 19 of this Act, care ought to be taken that no injustice is done to the defendant by reason of the amendment, if amendment is made, or if leave to apply for it is granted. Adequate protection may be given to the defendant in various cases in various forms."

It is usually one of the terms upon which the Court grants applications under this section, that the amended specification should not be used as evidence in the action (g), but the words at the end of the section-" and may direct that in the meantime the trial or hearing of the action shall be postponed "-clearly suggest the possibility of cases arising in which the Court would consider it right that the amended specification should be received in evidence at the trial (h).

In Codd v. Bratby (i), in giving liberty to amend under this section, Chitty, J., said, "It is conceded for the applicant, first, that the amended specification is not to be put in evidence at the trial; secondly, that no evidence is to be given of any infringement prior to the amendment of the specification. Besides that, it is conceded that the applicant must pay the costs of this application and all the costs that have been thrown away in the action;" then as to the contention that a condition should be imposed on the plaintiff that he should not sue the defendants on the amended specification for future infringements, his Lordship said, "The result of my acceding to this part of the argument would be, that I should be giving to the defendants practically and substantially a licence to infringe the plaintiff's patent when amended. . . . in the circumstances of this case,

v. Whitecross Wire and Iron Co., 6 P. O. R. 570, 574; 7 P. O. R. 389, 394.

(f) 4 P. O. R. at p. 44; see also Lang v. Whitecross Co., 6 P. O. R. 570, 575; Meyer v. Sherwood, 7 P. O. R. 283, 285.

(g) Gaulard & Gibbs v. Lindsay, 5

P. O. R. 196; see also Lang v. White-
Co., 7 P. O. R. 393.

cross,

(h) Bray v. Gardner, 4 P. O. R. 42; Fusee Vesta Co. v. Bryant & May, 4 P. O. R. 71; Re Hearson's Patent, 1 P. O. R. 213.

(i) Griff. P. C. 56; 1 P. O. R. 209.

that would be going too far. . . There may be cases in which it would be right to impose such a term. I am not satisfied in the case before me on the evidence, that the defendants are right in their attempt to impute knowledge to the plaintiff many years ago of the invalidity of his patent; if that point were made out, I think the case might stand on a different footing, because then I should have the case of a patentee with knowledge of a defect in his patent, lying by until a very few months of the expiration of his patent; and I should have on the other side the defendants saying that they were aware of the invalidity of the patent, that they were advised that the patent was invalid, and that they set up a trade and incurred great expenditure on the faith that the patent was invalid" (k).

Liberty to apply under this section will not be given after judgment (1). Sect. 20. "Where an amendment, by way of disclaimer, correction or explanation, has been allowed under this Act no damages shall be given in any action in respect of the use of the invention before the disclaimer, correction or explanation, unless the patentee establishes to the satisfaction of the Court that his original claim was framed in good faith and with reasonable skill and knowledge."

Under the Statute of Will. IV., no disclaimer or amendment could be given in evidence in any action or suit (save and except in any proceeding by scire facias) pending at the time the disclaimer or amendment was enrolled. The object of this was obvious. It would have been unjust that a defendant should be held guilty of infringing a patent when at the time the action was brought against him the patent was void. The saving clause relating to scire facias was always exercised subject to just provision as to costs, and was inserted with a view to prevent a

(k) See also as to terms imposed under this section: Singer v. Stassen, 1 P. O. R. 121; 50 L. T. 326; Griff. P. C. 207; Fusee Vesta Co. v. Bryant & May, L. R. 34 Ch. D. 458; 56 L. J., Ch. 187; 56 L. T. 110; 4 P. O. R. 71; Bray v. Gardner, L. R., 34 Ch. D. 668; 56 L. J., Ch. 497; 56 L. T. 292 ;

4 P. O. R. 40; Haslam Foundry Co. v. Goodfellow, L. R., 37 Ch. D. at p. 121; Gaulard v. Lindsay, 5 P. O. R. 192; Lang v. Whitecross Co., 6 P. O. R. 570.

(1) Lawrence v. Perry, Griff. P. C. at p. 148.

patent being repealed on account of some trifling error which might have been cured by disclaimer or alteration. The entry of a disclaimer under the old Act did not make a void patent valid ab initio," so as to make any person a wrongdoer by relation," and in Perry v. Skinner (m) it was held, that the words "from thenceforth" must be read into the specification. Proceedings by scire facias are abolished by sect. 26 of the Act of 1883, and a petition to the Court is substituted, the grounds for the petition being the same as heretofore in scire facias. Although we have seen that sub-s. 10 of sect. 18 prohibits any amendment under that section pending legal proceedings (including proceedings by way of revocation), sect. 19 provides machinery for saving a patent in the event of the Court or judge being of opinion that a disclaimer should be allowed upon such terms as may appear just (n). It will be observed that the Court or judge have no power to permit amendment by "correction or explanation" under this section.

Sects. 19 & 20 must be read together (o), and if an application under sect. 18 or 19 is granted without the imposition of terms, the amendment on being made will be retrospective only, if the patentee can show that his original claim was framed in good faith and with reasonable skill and knowledge (p).

In Hopkinson v. St. James and Pall Mall Electric Light Co. (q), judgment was given for plaintiff with the usual relief, the defendants referred to sect. 20, and asked that the account of profits should be kept only from the date of the amended specification; Romer, J. refused the application and said that "he thought it was clear from the evidence which was before him, that the plaintiff's original claim was framed in good faith and with reasonable skill and knowledge."

(m) Hindmarch, p. 207; 2 M. & W. 471; 1 Web. P. C. 250; 6 L. J., Ex. 124.

(n) As to what are just terms, see supra, and In re Smith's Patent, Macr. P. C. 232; In re Medlock's Patent, Newton London Journal, new series, vol. 22, p. 69.

(0) Lang v. Whitecross, 7 P. O. R.

391.

(p) Wenham v. Carpenter, 5 P. O. R. 68; see also Lucas' Patent, Macr. P. C. 235.

(q) 10 P. O. R. 46, 62; see also Meyer v. Sherwood, 7 P. O. R. 283, 286.

In Dudgeon v. Thomson (r), an interdict granted prior to the amendment was refused to be enforced after the amendment, on the ground that the amendment materially altered the patent, and that it was quite possible that there was no infringement of the patent as altered.

Section 21. "Every amendment of a specification shall be advertised in the prescribed manner."

P. R. 1890, r. 59, provides that such advertisement shall be in the official journal of the Patent Office, and in such other manner (if any) as the comptroller may direct.

The effect of sections 18-20 of the Act is summed up in the judgment of A. L. Smith, J., in Re Hall and Others (8): "Sect. 18 gives power to a patentee, when he finds out the blunder in the specification himself, to seek leave to amend his specification by way of disclaimer, correction or explanation, and he can go proprio motu, to the comptroller, and say, 'I want to amend the blunder I have got in my specification as regards disclaimer, correction, or explanation.' Then there are a series of sub-sects. showing what the comptroller is to do; how notice is to be given; what has to be done, and how other parties may come in and object; and the last sub-sect. it seems to me, is most natural: The foregoing provisions of this section do not apply when and so long as any action for infringement or other legal proceeding in relation to a patent is pending' (t). That means this, that where a patent is in litigation, he should not go behind the back of the other party and get these amendments and set himself quite right. What would happen if that had remained there? After litigation had been commenced, if there had been no sect. 19, the patentee, as soon as the writ was issued, would be fixed, no matter what small technical blunder there might be in his specification. But what the Legislature says is this-and I read sect. 19 as a proviso to sect. 18:-'Provided always that a judge or the Court may give liberty,' but only liberty to the patentee to apply

(r) L. R., 3 App. Cas. 34. (s) 5 P. O. R. at p. 312.

(t) This sub-sect. is amended b sect. 5 of Act of 1885.