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CHAPTER XIV.

EXTENSION OF TERM OF PATENT.

SECT. 25 of the Act of 1883 provides:

"(1) A patentee may, after advertising in manner directed by any rules made under this section his intention to do so, present a petition to her Majesty in Council, praying that his patent may be extended for a further time; but such petition must be presented at least six months before the time limited for the expiration of the patent."

The period of six months limited by this sub-section will not apply to patents granted before the 1st January, 1884. With regard to such patents, the provisions of 5 & 6 Will. IV. c. 83, will apply, and applications for extension may be made at any time prior to the expiration of the patent; this is by reason of the 113th section of the Act of 1883 (a). But once a patent is extended it becomes a new patent, and the whole of the Act of 1883 applies to it (b).

(2) Any person may enter a caveat addressed to the Registrar of the Council at the Council Office, against the extension.

"(3) If her Majesty shall be pleased to refer any such petition to the Judicial Committee of the Privy Council, the said Committee shall proceed to consider the same, and the petitioner and any person who has entered a caveat shall be entitled to be heard by himself or by counsel on the petition.

"(4) The Judicial Committee shall, in considering their decision, have regard to the nature and merits of the invention in relation to the public, to the profits made by the patentee as such, and to all the circumstances of the case.

(a) Brandon's Patent, L. R., 9 App. 154 Cas. 589; 53 L. J., P. C. 84; 1 P. O. R.

(b) Cocking's Patent, 2 P. O, R. 151.

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(5) If the Judicial Committee report that the patentee has been inadequately remunerated by his patent, it shall be lawful for her Majesty in Council to extend the term of the patent for a further term, not exceeding seven, or, in exceptional cases, fourteen years; or to order the grant of a new patent for the term therein mentioned, and containing any restrictions, conditions, and provisions that the Judicial Committee may think fit."

It is the practice to grant a new patent, such new patent being subject to the conditions in the Act of 1883 (c).

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(6) It shall be lawful for her Majesty in Council to make from time to time rules of procedure and practice for regulating proceedings on such petitions, and subject thereto such proceedings shall be regulated according to the existing procedure and practice in patent matters of the Judicial Committee.

"(7) The costs of all parties of and incident to such proceedings shall be in the discretion of the Judicial Committee; and the orders of the Committee respecting costs shall be enforceable as if they were orders of a division of the High Court of Justice."

These provisions have made no substantial alteration in the law. Prior to the Act 5 & 6 Will. IV. c. 83, there was no power in the Crown to extend the duration of letters patent, and should an inventor have desired to apply for an extension of the term of his grant, he could only do so by applying for and obtaining a special Act of Parliament in his favour. The Act of Will. IV., and the amending Act of 2 & 3 Vict. c. 67, introduced the method of petitioning and obtaining an extension to the Privy Council.

It had been found that the procedure to obtain an Act upon each occasion, when an extension was sought, was too costly and cumbrous, hence the modern course of procedure was devised.

This being shortly the origin of the jurisdiction of the Privy Council, at first an impression gained ground that the Privy Council were to put themselves in the position of Parliament, and not in that of a court of law, in considering the claims of applicants who appeared before them; that they were to weigh the claims of the public interest very heavily in the balance as against the inventor. In Re Soame's Patent (d), Lord Brougham (c) Smith's Patent, Griff. P. C. 263. (d) 1 Web. P. C. 729.

said: "If this case were to be disposed of upon the ground which, in arguing such cases, has sometimes been assumed to be the fit one, that there must not only be merit and benefit to the public, and (which is essential) a want of sufficient remuneration. in the course of using the patent; but that, moreover, the case is to be tried here as on a bill in parliament introduced to prolong the patent; then, I apprehend, there can really be no doubt whatever that in this case no bill would ever have passed through the two houses of parliament."

The true construction is, however, not so severe as that, although still sufficiently severe. In Re Morgan's Patent (e), Lord Brougham said: "It is by no means their (the Privy Council) course to put themselves precisely in the situation of the Legislature, and never to grant an extension where an Act of Parliament would not have been obtained. At the same time there are some limits to this. They are to look to a certain degree at the position in which they are placed, and to consider that they here represent the Legislature, and that they are invested with somewhat similar powers of discretion to those exercised formerly by the whole three branches of parliament."

Such is the spirit in which the Privy Council will approach the subject of an extension, not benevolently to the applicant, but still with not so stern a regard to the interests of the public as parliament would entertain.

In considering their decision the Privy Council will consider :1. The nature and merits of the invention in relation to the public. 2. The adequacy or inadequacy of the profits made by the inventor as such.

3. The circumstances of the case.

In Re Erard's Patent (f), Lord Lyndhurst said: "In cases of this kind we expect a very strong case of hardship to be made out as well as a strong case upon the utility of the invention;" and the same privy councillor in Soame's case (g) said: "We consider the invention as very meritorious, the result of a great deal of labour, care, and science, and that it is extremely useful in its effects. We are satisfied by reasonable evidence that the (g) 1 Web, P C. 729.

(e) 1 Web. P. C. 737. (f) 1 Web. P. C. 557.

party has sustained very considerable loss, and under these circumstances we think that the period ought to be extended.”

It will be observed that the three considerations for the Privy Council laid down by the Act of 1883 are almost identical to the grounds of extension as given by Lord Brougham in Re Derosne's Patent (h): "The parties must show in the first place some invention, in the next place a benefit to the public, and in the third place that they have not had adequate remuneration.”

It is immaterial whether or not the application is opposed. The Privy Council will require every necessary ground for extension to be strictly proved before they advise an extension (i), and this even though the Crown through the attorney-general consents (k). "The merit of an importer is less than of an inventor. We are sitting judicially, and it is an argument against the patent that it is imported and not invented. I do not say it takes away the merit, but it makes it much smaller (1).

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Where it appeared that the imported invention had great commercial value, and that the petitioners had embarked a large capital in bringing the patent into use, whereby they had sustained a loss of nearly £10,000, an extension for six years was granted (m).

Extension of the term will be granted to assignees, as they have, so to speak, purchased the merit of the original inventor, but the argument against importers will apply with equal force against assignees (n).

In Whitehouse's Patent (o), the inventor was a mechanic in the employ of the petitioner, the petitioner was the assignee of the patent, and had expended large sums of money on the necessary plant and machinery; an extension was granted for six years, on condition that the petitioner secured to Whitehouse an annuity of £500 during the term of the patent.

(h) 2 Web. P. C. 4.

(i) In re Perkin's Patent, 2 Web. P. C. 6.

(k) In re Cardwell's Patent, 10 Moo. P. C. C. 488; see also Darby's Patent, 8 P. O. R. 380, 383.

(1) Per Lord Brougham, In re Soame's Patent, 1 Web. P. C. 729.

(m) Berry's Patent, 7 Moo. P. C. C.

187.

(n) See In re Napier's Patent, 13 Moo. P. C. C. 543. See also Norton's Patent, 1 Moo. P. C., N. S. 339; Pitman's Patent, L. R., 4 P. C. 84; 8 Moo. P. C., N. S. 293.

(0) 1 Web. P. C. 473; see also Hardy's Patent, 6 Moo. P. C. C. 441.

"Merit" bere means the consideration which has been given to the state for the patent; it does not mean the merit of the inventor, but the merit of the consideration which he has given. An inventor may have diligently worked for years in a most deserving manner, and yet have produced an improvement of the most trifling nature—the merit of the person in this case will not be considered. On the other hand, the invention, although a great one, may have been handed to him from abroad without thought or trouble on his part. This is what Lord Brougham contemplates when he says that the merit of an importer is less than that of an inventor. Again, the invention may have been a very simple one, produced by an inventor with a moment of thought, and yet of great importance to the world. This latter case would be one of merit-simplicity of an invention being an element of its value (p).

In Bailey's Patent (q), Lord Blackburn said: "What the statute says is that the judicial committee shall, in considering their decision, have regard to the nature and merits of the invention before that evidence has been called which shows what can hardly be disputed, viz., that the invention which is the subject of the patent is a beneficial invention; but as to the petitioner showing that there was any special or peculiar advantage in the invention in relation to the public to entitle the patentee to the large reward of an extension of his patent, their lordships are of opinion that he has totally failed to do so."

To sustain a petition for prolongation, a greater degree of merit must be shown, than that which would be sufficient to support the patent in a court of law (r).

The Privy Council will not inquire into the novelty or utility of a patent, except in so far as such novelty or utility may form elements in the consideration of the merit of the invention (s), unless the patent is clearly invalid (†).

(p) In re Muntz's Patent, 2 Web. P. C. 113.

(q) Griff. P. C., at p. 254.

(r) Per Sir W. Grove, In re Stoney's Patent, 5 P. O. R. 520; see also Saxby's Patent, L. R., 3 P. C. 292, 294.

(s) In re Saxby's Patent, L. R., 3 P. C. 292; Stewart's Patent, 3 P. O. R. 7; Kay's Patent, 1 Web. P. C. 568; 3 Moo. P. C. C. 24.

(t) Erard's Patent, 1 Web. P. C. 557; Woodcroft's Patent, 2 Web. P. C. 18.

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