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But if a man hath brought in a new invention and a new trade in the kingdom in peril of his life and consumption of his estate or stock, &c., or if a man hath made a new discovery of anything, in such cases the king, of his grace and favour in recompense of his costs and travail, may grant by charter unto him that he only shall use such a trade or trafique for a certain time; because at first the people of the kingdom are ignorant, and have not the knowledge or skill to use it. But when that patent is expired the king cannot make a new grant thereof.” This was in 1615.
Then came the Statute of Monopolies, and we have seen that the 6th section of that Act carefully excepted" the sole working or making of any manner of new manufactures within this realm, to the true and first inventor or inventors of such manufactures, which others at the time of making such letters patents and grants shall not use."
Afterwards came the decisions of Darcy V. Allin (y), and Edgebury v. Sterens (:), where it is said, “ for the statute speaks of new manufactures within this realm, so that if it be new here it is within the statute, for the Act intended to encourage new devices useful to the kingdom, and whether learned by travel or by study it is the same thing." See the remarks of Eyre, C.J., in Boulton v. Bull (a).
In the early days of manufacturing enterprise, when true inventors were so exceedingly rare as scarcely ever to be heard of, the word inventor had not acquired the meaning which it has at present, and seems to have been used to designate a first introducer rather than a first inventor. In the early reports shortly succeeding the Statute of Monopolies we do not find the judges in any difficulty in dealing with the words “true and first inventor,” showing that the word inventor had not the precise meaning which it has since acquired.
In Marsden v. Saville Street Co. (b) in the Court of Appeal, Jessel, M. R., said, speaking of imported inventions, “It has been argued that before the Statute of James such patents were valid and were allowed by the judges, and that the statute (y) i Web. P. ('. 6.
(a) 2 H. Bl. 491. (z) 1 Web. P. C. 33 ; 2 Salk. 447, (6) L. R., 3 Ex. D. 203.
merely restricts the duration of the patent and does not destroy the right as it previously existed. Even supposing that were so, the statute defines who are considered to be worthy recipients of the grant of such a monopoly, as it was then called, and the definition so given has been followed ever since. It is difficult to say à priori on what principle a person who did not invent anything, but who merely imported from abroad into this realm the invention of another, was treated by the judges as being the first and true inventor. I have never been able to discover the principle; and although I have often made enquiry of others, and of some who are more familiar with the patent law than even I am, although I cannot pretend not to possess a considerable familiarity with it, I could never get a satisfactory answer. The only answer was, 'It has been so decided and you are bound by the decisions.' But it is an anomaly as far as I know, not depending on any principle whatever. It has never been declared by any judge or anthority that there is such a principle, and, not being able to find one, all I can say is that I must look on it as a sort of anomalous decision which has acquired by time and recognition the force of law.”
The practice of granting letters patent to the first importers of manufactures and inventions new within this realm has been uniformly sustained by our Courts of law (c).
In Milligan v. Marsh (d) it was held by Vice-Chancellor Page-Wood that a person taking out a patent and making a declaration that he is a first inventor, when, in truth, he is only an importer of a communicated invention, makes a false
sugges. tion, and the patent is void.
When the Act of 1883 was passed, doubts were expressed as to whether the effect of sect. 5, sub-sect. 2, was not to do away with the granting of patents for what are known as communications from abroad, these doubts were shared by the author, particularly with reference to the case of Milligan v. Marsh (supra). The question has since been in a manner touched upon in the case of In re Avery's patent (e), where, although in no way deciding the point, it appears to have been considered that such a patent might be granted. Stirling, J. (subsequently affirmed by the Court of Appeal) in giving judgment, said, “The rules which have been framed by the Board of Trade under the power conferred upon them by sect. 101 of the statute contain provisions which the statute itself does not contain, in reference to an application for a grant for an invention which has been communicated from abroad. Rule 27 provides that the application for such a grant shall be in the form 'A' in the 2nd schedule, and that form is different from that which is prescribed by the statute and from the terms in which Lindsay made the application ” (his Lordship read the form, and continued :) “ That form has been framed so as to fit in with sect. 5, sub-sect. 2, of the statute, which enacts that an application must contain a declaration .... that the applicant is in possession of an invention, whereof, he .... claims to be the true and first inventor. That form has not been followed in this case. There is no decision that a patent taken out as for an original invention, when in fact the invention patented was communicated from abroad, is void, though there is in the case of Milligan v. Marsh (supra) what appears to be a dictum of Vice-Chancellor Sir W. Page-Wood, to that effect, nor is there any decision that where an invention is partly original and partly communicated from abroad, the part communicated from abroad ought to be distinguished in the specification; but in the case of Renard v. Levenstein (f), the Lord Justice Knight Bruce expressed great doubt
(c) Plimpton v. Malcolmson, L. R., 3 Ch. D. 555 ; Chappell v. Purday, 14 M. & W. 318 ; Nichels v. Ross, 8 C. B. 723 ; Carpenter v. Smith, 1 Web. P. C.
530, 535 ; Edmunds' Patent, Griff. P. C 283; Moser v. Marsden, 10 P. O. R. 359.
(d) 2 Jur. N. S. 1083.
upon the point.” .... And at p. 318: “That being so notwithstanding that the invention was founded on a communication received from abroad it appears to me that it well might be held that the statutory declaration made by the applicant was true in point of law."
Lindley, L.J., in the case of Moser v. Marsden (9), in his judgment in the Court of Appeal, said: “Then it was suggested that, as the English patentee had himself improved Grosselin's inven
(e) In re Avery's Patent, L. R., 36 Ch. D. 316.
(f) 10 L. T., N. S. 177.
tion, the specification ought to have shown this on its face; and that, as the whole invention was not communicated to the plaintiff by Grosselin, as stated by the plaintiff, the patent is bad. This point has been raised before, but as yet it has not found favour in any Court. Nor ought it; there is no substance in it. The patentee is the true and first inventor within the meaning of the patent laws, whether he invents himself or whether he simply imports a foreign invention. I cannot see how he is anything but a true and first inventor if he does both; that is, if he both imports a foreign invention and improves it himself.”
A patent granted to a British subject, in his own name for an invention communicated to him by a foreigner, the subject of a state in amity with this country, is not void, although such patent be in truth taken out and held by the grantee in trust for such foreigner (h).
The person who takes out the patent need not be a meritorious importer, he may be merely the clerk or agent to whom the communication was made for any special purpose by the foreign inventor, as for the purpose of enabling him to take out the patent for the benefit of such foreigner (().
The importer of a new manufacture or invention will be considered the true and first inventor, even though he is not the assignee of the foreign inventor, and he may be the foreigner himself, if the Crown chooses to grant him a patent (k).
Sect. 23 of the Act of 1883 provides for the registration of owners of patents. Sect. 85 prohibits the registration of any trust. This does not abolish trusts, but merely prohibits the registration of trusts.
The importer of an invention need not have acquired the information from a foreigner resident abroad, but may have done
a so from a British subject abroad ().
But a communication made in England by one British subject to another, of an invention, does not make the person to whom the communication is made the first and true inventor within the
(h) Beard v. Egerton, 3 C. B. 129 ; 15 L. J., C. P. 274 ; 10 Jur. 643.
(i) Ib. 15 L. J., C. P. 274.
Chappell v. Purday, 14 M. & W. 318; see also Beard v. Egerton, 3 C. B. 130.
(1) Nickels v. Ross, 8 C. B. at p. 710, per Wilde, C.J.
meaning of 21 Jac. I. c. 3, so as to enable him to take out letters patent for the invention (m).
It was decided in In re Wirth's Patent (n) that a patent could be granted to a foreigner resident abroad for an invention communicated to him by another foreigner also resident abroad. This, however, will no longer be the case, a direction having been made that only persons resident in the United Kingdom may apply for a grant of letters patent in Form A 1, this regulation being expressly intended to prohibit agents living abroad from making the declaration in Form A. 1 (o).
“ The merit of an importer is less than of an inventor and it is an argument against the patent, that it was imported and not invented. I do not say it takes away the merit, but it makes it much smaller.” Per Lord Brougham in In re Soames' Patent (p).
It is provided by 46 & 47 Vict. c. 57, s. 103, as amended by 48 & 49 Vict. c. 63, s. 6, that any person who has applied for protection for any patent in any foreign state with whom we have entered into international arrangements for mutual protection of inventions, shall be entitled to a patent for his invention in this country in priority to other applicants, and such patent, on registration, shall have the same date as the date of the protection obtained in such foreign state, provided that his application is made within seven months from his applying for protection in the foreign state with which the arrangement is in force.
In an application for a patent in respect of an invention communicated from abroad, the circumstances under which the invention was obtained by the importer will not be inquired into (q), and the object of sect. 103 is to preserve to the foreign inventor a priority for a certain period over persons who might otherwise have anticipated him by filing an application for a patent for his invention without authority to do so.
The rights under this section are purely personal to the
(m) Marsden v. Saville Street Co., C. A., L. R., 3 Ex. D. 203.
(n) L. R., 12 Ch. D. 303 ; 23 W. R. 329.
0) P. O. J., 9th May, 1884.
(p) 1 Web. P. C. 733.
(9) Edmund's Patent, Griff. P. C. 283 ; Re Lake, 5 P. O. R. 415 ; Re Bairstow's Patent, 5 P. O. R. 288.