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dealing with an invention which has proved useful and beneficial to the public, does not exist in the case of an assignee, unless the assignee be a person who has assisted the patentee with funds to enable him to perfect and bring out his invention, and has thus enabled him to bring it into use."

And in Re Pitman's Patent (x) Sir J. W. Colvile said: "There are no doubt cases in which their lordships have granted applications by the assignees of the patentee for extension of the term, and have also considered, in some respects, the expenses incurred by the assignee in bringing the patent into notice, and for the merit as it may be said of the assignee in patronizing the patentee, and in pushing the patent into notice; but the general rule which their lordships entertain in applications on the part of assignees is, as was stated by Lord Broughan in Re Morgan's Patent (y), that by so doing they are, though not directly yet mediately and consequentially, as it were, giving a benefit to the inventor, because, if the assignee is not remunerated at all, it might be said that the chance of the patentee of making an advantageous conveyance to the assignee would be materially diminished, and consequently his interest damnified. For this reason consideration has been given to the claims of the assignee who has an interest in the patent.'"

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It is difficult to estimate the effect of sect. 36 of the Act of 1883 upon this branch of the subject. Sect. 36 provides that: "A patentee may assign his patent for any place in or part of the United Kingdom or Isle of Man, as effectually as if the patent were originally granted to extend to that place or part only."

Will the Privy Council, on the application of an assignee for a portion of the kingdom, extend the patent for that portion, or must all parties to the patent join in the petition?

It is evident that whilst one district assignee of an electric light patent, for example, may have been amply remunerated, another may not have been remunerated at all, owing to the action of local authorities or other matters entirely beyond the assignee's control. How could the committee in justice refuse the latter an extension? On the other hand, how could they grant it to the other?

(x) 8 Moo. P. C., N. S. 293.

(y) 1 Web. P. C. 737.

Then again, if a patent may be extended for one district and not for another, we shall have the enormous practical difficulties and public inconveniences of an article being patented in one county and free in another, a state of affairs which, we venture to say, would be intolerable to the public.

The advertisement of the intention of the patentee to present a petition must be made in the manner prescribed by sect. 4 of 5 & 6 Will. IV. c. 83, that is to say, the petitioner must advertise in the London Gazette three times, and in three London papers, and three times in some country paper published in the town where or near to which he carries on any manufacture of anything made according to his specification, or near to or in which he resides, in case he carries on no such manufacture, or published in the county where he carries on such manufacture, or where he lives, in case there shall not be any paper published in such town (z).

Where the petitioner resided in France but had granted licenses to persons resident and carrying on business in London and Liverpool, advertisements inserted in the Gazette and newspapers published in those places were held to be sufficient (a).

The names of all the parties who join in presenting the petition must be inserted in the advertisements (b).

The advertisements must notify the day on which the petitioner intends to apply for a time to be fixed for hearing the matter of his petition, which day must be not less than four weeks from the date of the last of the advertisements inserted in the London Gazette (c), and the petition must be presented within one week from the insertion of such last advertisement (d), and must be accompanied by affidavits of advertisements having been inserted in accordance with the above provisions (e).

The petition must contain full disclosure, as "a petitioner seeking the grace and favour of the Crown is bound to strict

(z) For form of advertisement, see Appendix D.

(a) Derosne's Patent, 4 Moo. P. C. C. 416; 2 Web. P. C. 1.

(b) Noble's Patent, 7 Moo. P. C. C. 191.

(c) Priv. Coun. Rules, r. 2.

(d) Ibid. r. 3: see In re Hutchinson s Patent, 14 Moo. P. C. C. 364; for form of petition, see Appendix D.

(e) Ibid. r. 4.

truth, and to the utmost candour and frankness, to uberrima fides, in his statement" (ƒ).

Two or more patents if of a similar nature may be the subject of one petition (g).

Any person may enter a caveat against the extension, and may be heard at the bar in support of their opposition (h); and where unreasonable opposition is offered, they will be ordered to pay the petitioner's costs (i). But where the opposition is well founded and successful, costs will be allowed to the opposing party (k). If the petition be abandoned, costs will be given to opposers, and they need not give the petitioner notice of their intended application for the same (7). Where the petitioner had fairly and honestly stated his case, both the things against and the things for him in his petition, and the inquiry had been prolonged by the opposition, the costs of the opposition refused, although the petition had been dismissed on the ground of sufficient remuneration (m).

Where two or more parties have opposed the petition separately and successfully, the committee will sometimes order a fixed sum to be paid by the petitioner to the opponents, to be apportioned between them in lieu of saddling him with several separate sets of taxed costs (n). We thus see that, whilst on the one hand an unwarranted application for an extension may be very costly, unreasonable opposition may be equally so, although costs are given upon the principle that persons should not be discouraged from coming forward to protect the interests of the public (0).

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Patent, 1 Web. P. C. 554.

(1) In re Bridson's Patent, 7 Moo. P. C. C. 499. See, however, In re Milner's Patent, 9 Moo. P. C. C. 39.

(m) In re Muntz's Patent, 2 Web. P. C. 122.

(n) In re Jones' Patent, 9 Moo. P. C. C. 41; also In re Hill's Patent, 1 Moo. P. C., N. S. 258; In re Wield's Patent, 8 Moo. P. C., N. S. 300; Newton's Patent, L. R., 9 App. Cas. 592.

(0) Westrupp & Gibbins' Patent, 1

The Attorney-General always appears in the interest of the Crown (p).

The advertisements should be proved before the case is heard (q); if the advertisements have not been made in the prescribed manner, no extension will be granted. "If the statute requires anything to be done which is not done, the Crown has no power to grant a prolongation" (").

The Attorney-General can at the hearing adduce prior specifications for the purpose of showing want of novelty in the invention of the petitioner, without having previously given notice of his intention to do so (s), and it would seem that it is open for any opponent to do the same, since it is the duty of the petitioner to call attention to every fact whether in favour of or against his petition, and therefore he cannot complain of the introduction at the hearing of any objection to the extension of his patent which he ought to have drawn attention to himself (t).

The practice on petition for prolongation is governed by the Privy Council Rules which were made to regulate the procedure under 5 & 6 Will. IV. c. 83, and are set out at length in the Appendix (u).

An extension of a patent having once been granted, the Privy Council have no jurisdiction to entertain a petition for a further prolongation, their power being exhausted; and this objection may be taken by an opposing party, even though omitted from the objections filed by them (x).

When an order has been made by the Privy Council for an extension of the term of a patent, the person in whose favour such order has been made must leave a copy at the Patent Office, and the order shall thereupon be entered upon the register of patents (y).

Web. P. C. 554; In re Jones' Patent, 9 Moo. P. C. C. 41; In re Wield's Patent, 8 Moo. P. C., N. S. 300; L. R., 4 P. C. 89.

(p) In re Erard's Patent, 1 Web. P. C. 557; In re Smith's Patent, 7 Moo. P. C. C. 133.

(q) In re Perkins' Patent, 2 Web. P. C. 8.

(r) Per Lord Brougham in Noble's

Patent, 7 Moo. P. C. C. at P. 194.

(s) In re Ball's Patent, L. R., 4 App. Cas. 171; In re Stewart's Patent, 3 P. O. R. 7; In re Livet's Patent, 9 P. O. R. 327. (t) Ibid.

(u) See p. 457, post.

(x) In re Goucher's Patent, 2 Moo. P. C., N. S., 532.

(y) P. R. 1890, r. 74.

CHAPTER XV.

CONFIRMATION.

THE statute 5 & 6 Will. IV. c. 83, provided a remedy for cases of hardship, such as, where an invention had been invented or used and subsequently abandoned before the date of the patent in a manner unknown to the patentee at the time of his application. There would be a sufficient prior user to invalidate the patent, and yet there would be great merit probably in the patentee, and a great benefit to the public. The patentee might petition the Privy Council to confirm the patent, that is, to declare it valid, notwithstanding such prior user. The proceedings on such a petition were similar to those upon a petition for

extension.

The Act of 1883 repeals the statute 5 & 6 Will. IV. c. 83, and with it all proceedings for confirmation; and this method of clothing an invalid patent with validity is abolished. In Re Jablochkoff's Patent the Privy Council seemed to be of opinion. that the right to confirmation was retained in the case of patents granted prior to the date of the Act of 1883, by virtue of sect. 113 (a).

It is not strictly the purpose of a law work to criticise the enactments of the legislature, saving in their construction and application from an administrative point of view, otherwise a great deal might be said as to the advisability of abolishing that which was intended for and operated merely as a relief under very hard and exceptional circumstances.

(a) 8 P. O. R. 281, 284; see also remarks of Bowen, L.J., in Singer v. Stassen, 1 P. O. R. at p. 125.

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