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Where the defendant has acted in ignorance of the patent, and before action has offered to submit to an account and to pay to the plaintiff the amount of profits, the Court should exercise its discretion in disallowing costs (d), although it may grant the injunction. In such a case the plaintiff will proceed to an account at his peril, running the risk of nothing being found due.
Prior to the Judicature Acts it was held a rule in Courts of Equity, that in consequence of the terms of 21 & 22 Vict. c. 27, no relief could be awarded for damages or an account, unless an injunction could be granted at the same time; all other relief being merely incidental to the injunction (e). Thus, where a patent had expired after bill filed, but before an injunction could be granted, the Court declined to consider the question of damages (). But now, in pursuance of sect. 24, sub-sect. 6, of the Judicature Act, 1873, a Court of Equity may give full relief ; and so, wherever a court of law would, prior to the passing of the Act, have granted damages or an account, similar orders will be made by either branch of the High Court of Justice, irrespective of the question of injunction.
We have seen that the patentee has his remedy in an action for infringement. The public has also a remedy by petition for revocation.
Sect. 26 of the Act of 1883 provides :
“(1) The proceeding by scire facias to repeal a patent is hereby abolished.
“(2) Revocation of a patent may be obtained on petition to the Court.
(3) Every ground on which a patent might, at the commencement of this Act, be repealed by scire facias shall be available by way of defence to an action for infringement, and shall also be a ground of revocation.
“(4) A petition for reiocation of a patent may be presented by :“(a) The Attorney-General in England or Ireland, or the
Lord Advocate in Scotland. “ (b) Any person authorised by the Attorney-General in England
or Ireland, or the Lord Advocate in Scotland. "(c) Any person alleging that the patent was obtained in fraud
of his rights, or of the rights of any person under or
through whom he claims. “ (d) Any person alleging that he, or any person under or
through whom he claims, was the true inventor of any
invention included in the claim of the patentee. “(e) Any person alleging that he, or any person under or
through whom he claims an interest in any trade, business, or manufacture, had publicly manufactured, used or sold within this realm before the date of the patent anything claimed by the patentee as his invention.
(5) The plaintiff must deliver with his petition particulars of the objections on which he means to rely, and no evidence shall, except by leave of the Court or a judge, be admitted in proof of any objection of which particulars are not so delivered.
“(6) Particulars delivered may be from time to time amended by leave of the Court or a judge.
“ (7) The defendant shall be entitled to begin and give evidence in support of the patent, and if the plaintiff gives evidence impeaching the validity of the patent the defendant shall be entitled to reply.
“(8) Where a patent has been revoked on the ground of fraud the comptroller may on the application of the true inventor, made in accordance with the provisions of this Act, grant to him a patent in lieu of and bearing the same date as the date of rerocation of the patent so revoked, but the patent so granted shall cease on the expiration of the term for which the revoked patent was granted.”
Practically speaking, scire facias had fallen into desuetude before the passing of this Act; other methods of disputing the validity of patents were found, or thought to be, more to the advantage of persons opposing them. It is presumed, however, that the new procedure will find more favour, being simpler, more speedy, and more similar to the ordinary action for infringement than the old action of scire facias.
The grounds upon which a patent may be revoked are similar to those upon which it might have been cancelled by scire facias (a). These are in the Fourth Institute said to be : “ Firstly, when the king by his letters patent doth grant by several letters patent one and the selfsame thing to several persons, the former patentee shall have a scire facias to repeal the second patent; secondly, when the king granteth anything that is grantable upon a false suggestion, the king by his prerogative jure regio may have a scire facias to repeal his own grant. When the king doth grant anything, which by law he cannot grant, he jure regio (for the advancement of justice and right) may have a scire facias to repeal his own letters patent.”
And it was held in Sir Oliver Butler's case (6), that “where a (a) 4 Inst. 88.
(0) 2 Vent. 344.
patent is granted to the prejudice of the subject, the king, of right, is to permit him on his petition to use his name for the repeal of it in a scire facias at the king's suit, and to hinder multiplicity of actions upon the case.”
Thus it will be seen that formerly any person might, on behalf of the public, proceed by scire facias to repeal a patent, although security for costs was required. Sub-sect. 4 of sect. 26 has very considerably narrowed and limited this general right.
Practically speaking, any ground which may be set up as a defence to an action for infringement may be employed as a ground for revocation—such as that the person to whom the letters patent were granted was not the first and true inventor, or that the invention was not new or useful, or that it was not true that the invention had not been practised before, or that the said invention did not come within the meaning of the words “ manufacture,” or that the specification was insufficient and did not disclose the nature of the invention.
The petition is to be presented to the High Court of Justice in England or in Ireland. By sect. 109 it is provided : (1)“ Proceedings in Scotland for revocation of a patent shall be in the form of an action of reduction at the instance of the Lord Advocate, or at the instance of a party having interest with his concurrence, which concurrence may be given on just cause shown only.” And in respect to Ireland we find that, by sect. 110, “ All parties shall, notwithstanding anything in this Act, have in Ireland their remedies under or in respect of a patent as if the same had been granted to extend to Ireland only.”
Only persons who come within the provisions of clauses c, d, and e, of sect. 26, sub-sect. 4, are entitled to present a petition
e for revocation as a matter of right; care, however, must be exercised to frame the petition under the proper clause.
In re Avery's Patent (c) was a petition for revocation presented under clause c; it was held by Stirling, J., and the Court of Appeal, that this applied only to cases of actual fraud, and would not be extended to questions of mistake, though the consequences might be to deprive the inventor of his patent rights. Cotton, L. J., said :-"If it is made out that the
(c) L. R., 36 Ch. D. 307.
present petitioner Avery is a person who brings himself within that clause, and satisfies the Court that the patent was obtained in frand of his rights, then we should have to go into the other question, namely, whether the patent is or is not good”
(at p. 325), “an act, to be in fraud of his rights,' to my mind must involve an attempt by the agent to deprive the principal of something, or to gain for himself something at the expense of his principal.” The petition consequently was dismissed, but without prejudice to the right of the petitioner to present a fresh petition framed under clause d.
A person who is entitled to present a petition for revocation without the necessity of first obtaining the fiat of the AttorneyGeneral, may rely upon any lawful ground whereby to impeach the validity of the patent in question, and is not confined to the ground upon which his title to present the petition is based (d).
Where a patent is revoked on the ground that it was obtained in fraud of the rights of the petitioner, the Court will decree that a fresh patent for the invention should be granted to the petitioner (e).
All persons beneficially interested in the patent must be made parties to the petition (f).
No petition for revocation will lie in respect of a patent granted for an invention which the Secretary of State has certified should be kept secret in the interest of the public service (g).
Should a person desire to present a petition for revocation, not being entitled to do so under clauses c, d, or e, he must first obtain the flat of the Attorney-General; in order to obtain the fiat the following documents must be lodged with the Attorney-General's clerk :
1. A memorial drawn up on judicature paper setting out the history of the case and the grounds upon which the application is based; where there have been proceedings taken for infringement, these and their result must be mentioned. This memorial
(d) In re Morgan's Patent, 5 P. O. R. 186.
(e) In re Gale's Patent, 8 P. O. R. 438 ; In re Avery's Patent, L. R., 36 Ch. D. 326.
(f) In re Avery's Patent, 4 P. O. R. 159.
(g) 46 & 47 Vict. c. 57, s. 44, sub-s. 9.