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must be accompanied by all specifications and documents referred to.

2. A declaration by the petitioner verifying the statements in the memorial; this also should be upon judicature paper. 3. Two copies of the proposed petition on brief paper.

4. Two copies of the particulars of objections.

5. A certificate by counsel on foolscap, that in his opinion the petition is a proper one for the grant of the fiat of the AttorneyGeneral.

6. A certificate by a solicitor that the applicant is a proper person to present the petition, and that he is competent to answer the costs of all proceedings in connection with the petition.

7. A declaration by the applicant that the questions proposed to be raised by the petition, are not, and cannot be raised in any legal proceedings then pending in the United Kingdom (h).

The fees payable on lodging these documents amount to 21. 13s. 4d.

It is submitted that the seventh of the above-mentioned documents, is one which ought not to be insisted upon by the Attorney-General, since if the fiat is to be refused when an action for infringement is pending and the questions proposed to be raised will in consequence be then considered, the public may be deprived of one of the greatest benefits which arise from the provisions of the legislature for the revocation of patents, for although the defendant may be successful in the action brought against him for infringement, it will still remain open to the patentee to amend his specification by abandoning a portion of his claim, and subsequently to bring a fresh action against the same defendant for infringement of the patent as amended; thus if the public are to be deprived of the power to revoke a patent simply because an action for infringement may be pending, in such a case as that stated above, a man against whom the action is brought either will be liable to a succession of actions or at the least will have to incur the expense of two actions, first as defendant in the infringement action, and secondly as

(h) For forms of these documents see Appendix D.

petitioner for revocation, to enable him to carry on his business in security (2), whereas by replying to an action brought against him by presenting a petition for revocation, the two actions would be consolidated into one, as was done in the recent case of Weir v. Denny (k), and the validity of the patent would be decided once and for all.

The Attorney-General has absolute discretion in granting or refusing his fiat; if the applicant shows sufficient interest, and makes out a good case, the Attorney-General will grant his fiat without hearing the patentee (1), but in some cases he will direct notice to be given to the persons interested in the patent, and will hear both parties and give his decision in the ordinary way (m); Sir H. James, A.-G., decided that he had no power under sect. 38 to give costs in these cases (n).

The form of the fiat of the Attorney-General will be found in the Appendix of Forms.

There are no provisions in the Patents Acts or elsewhere regulating the procedure in a petition for revocation, not even for filing an answer on the part of the patentee.

The practice is to take out a summons for directions, nominally for hearing, whereby the respondent is compelled to appear; a patent may be revoked at this stage when a clear case is made out (o), but the usual course is for the judge to give directions as to the filing of an answer, and also as to interrogatories, inspection, discovery, etc., and the manner of trial, after which the petition stands adjourned.

Where the patentee or other person interested in the patent is out of the jurisdiction, notice must be given to such person that

(i) This occurred in Re Deeley's Patent; for report of the infringement action see Westley Richards v. Perkes, 10 P. O. R. 181, 382; for proceedings on application for leave to amend the patent, Deeley's Patent, 11 P. O. R. 72. The petition for revocation was heard in December, 1894, before Romer, J., in which judgment was given for the petitioner, 12 P. O. R. 65. (k) 11 P. O. R. 657.

(1) Goulard and Gibbs Patent, Griff. P. C. 320; Rothwell's Patent, Griff. P. C. 320.

(m) Bell & Coleman's Patent, Griff. P. C. 320; Martin's Patent, Griff. P. C. 320; Siddell's Patent, Griff. P. C. 320; Watling's Patent, Griff. P. C. 320.

(n) Martin's Patent, Griff. P. C. 320. (0) Vaisey's Patent, 11 P. O. R.

591.

the petition has been presented (p), as the Court will not decree the revocation of a patent without giving all interested parties an opportunity of being heard, but the mere fact that the patentee is out of the jurisdiction will not prevent the institution of proceedings for revocation (q).

A respondent residing out of the jurisdiction will not be ordered to give security for costs (r).

The practice as to particulars is precisely similar to that in an action for infringement. It will, however, be observed that the judge has no power of certifying under sect. 31 that the validity of the patent came in question, nor will a certificate granted in a previous action for infringement affect the question of costs in proceedings for revocation, the words of sect. 31 being "in any subsequent action for infringement."

Section 100 of the Judicature Act defines "pleading" as including any petition or summons, and also as including the statements, in writing, of the claims or demand of any plaintiff, and of the defence of any defendant thereto, and of the reply of the plaintiff to any counter-claim of a defendant.

Order XXXI. r. 1 of the rules of the Supreme Court, gives power to the Court, or a judge, to permit interrogatories "in any cause or matter," to be delivered by either party to the other. It is presumed that leave will be given to the respondent (called defendant in the Patent Act, 1883) to deliver interrogatories to the petitioner, and circumstances may arise when it would be just to permit the petitioner to examine the respondent. The rules as to interrogatories will be similar to those in an action for infringement.

Section 28, sub-sect. (1), provides that the mode of trial of a petition for revocation shall be similar to that of an action for infringement.

(p) Drummond's Patent, 6 P. O. R. 576; L. R., 43 Ch. D. 80; La Compagnie Générale d'Eaux Minérales Trade Marks, 8 P. O. R. 446; L. R., 1891, 3 Ch. 451; F. King & Co.'s Trade Mark, 9 P. O. R. 350; L. R.,

1892, 2 Ch. 462; Kay's Patent, 11 P. O. R. 279.

(q) Ib.

(r) La Société Anonyme Trade Mark, 10 P. O. R. 290; Miller's Patent, 11 P. O. R. 55.

And the parties are entitled to have the petition heard as vivâ voce evidence (8).

The evidence which will be required of the respondent (defendant), in the first instance, will be very slight, and will be similar to that which he would give as to the validity of the patent were he plaintiff in an action for infringement. The petitioner will then have to prove the case he alleges in his petition and particulars, and the respondent has the right of reply. It is merely to preserve this right to reply, that the respondent is made practically plaintiff at the trial.

By virtue of section 19 of the Act of 1883, in a proceeding for revocation of a patent, the patentee may at any time by leave of the Court apply to amend his specification by disclaimer, consequently after a decision has been given in favour of the petitioner in the Court of First Instance, the patentee may, pending appeal, obtain leave of the Court of Appeal to apply at the patent office for leave to strike out any portion of his claim which the judgment of the Court below may have convinced him to be incapable of being supported. But after judgment has been given by the Court of Appeal revoking the patent their power to give leave under section 19 is gone, and in consequence, it is submitted that, although only one claim may have been held invalid, the patent is ipso facto revoked and can only be revived by a successful appeal to the House of Lords, who, as we have noticed above, have no jurisdiction to give leave to apply to amend, not being included in the term Court in section 19 of the Act of 1883.

(s) Gaulard & Gibbs' Patent, L. R., 34 Ch. D. 396; 56 L. J., Ch. 606; 56 L. T. 284.

T.

T

CHAPTER XX.

ACTION TO RESTRAIN THREATS.

"Where any

SECT. 32 of the Patents Act, 1883, provides, person claiming to be the patentee of an invention, by circulars, advertisements, or otherwise, threatens any other person with any legal proceedings, or liability in respect of any alleged manufacture, use, sale or purchase of the invention, any person or persons aggrieved thereby may bring an action against him, and may obtain an injunction against the continuance of such threats, and may recover such damage (if any) as may have been sustained thereby, if the alleged manufacture, use, sale, or purchase, to which the threats related, was not in fact an infringement of any legal rights of the person making such threats: Provided that this section shall not apply if the person making such threats, with due diligence, commences and prosecutes an action for infringement of his patent."

Prior to the Act of 1883, the proprietor of a patent might issue threats of proceedings for infringement broadcast without rendering himself liable to account for any of the damage which he might occasion thereby, provided such threats were made bonâ fide (a), in such a case the only remedy open to an injured person was to apply for an injunction to restrain the patentee from continuing to threaten him, and in this he could only be successful after showing that the statements made were in fact untrue (b).

In the case of malicious threats an action for damages lay similar to that of slander of title, when the plaintiff would have to show that the threat made amounted to a "malicious attempt

(a) Halsey v. Brotherhood, L. R., 15 Ch. D. 514, 517; Wren v. Weild, L. R., 4 Q. B. 730,

(b) Halsey v. Brotherhood, L. R., 15 Ch. D. 520.

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