to injure the plaintiffs by asserting a claim of right against his own knowledge that it was without any foundation (c)."

The object of sect. 32 was to remedy the hardship we have described, namely that of a man whose business is paralysed by the threats of the proprietor of a patent, without any opportunity being afforded him of putting the question to the test, the section is addressed to the case "of a patentee who causes damage by disseminating threats which he dare not or will not justify by an action, who is willing to wound but yet afraid to strike (d).”

It is immaterial that the threat was made bonâ fide, the question to be considered is what the defendant said or did, and not what he intended, and if damage is occasioned by the circulation of a threat, it is no reply to an action to say that damage was not intended if the threatener does not bring himself within the shelter of the proviso at the end of the section (e).

"By circulars, advertisements, or otherwise: "-These words. have been held to include any document whatever, which either actually or merely by implication contains a threat of legal proceedings (ƒ), whether written by the defendant himself (g) or his solicitors (h), or in answer to an inquiry made by the plaintiffs (i); and the addition of the words "without prejudice" to the document containing the threat will not absolve the person threatening from liability (k); it would seem that the word "otherwise " includes verbal threats (7).

The publication of a general warning to the whole world such as, "I have a patent for such and such a machine, proceedings

(c) Per Blackburn, J., in Wren v. Weild, L. R., 4 Q. B., at p. 737; Halsey v. Brotherhood, L. R., 15 Ch. D. 519.

(d) Per North, J., in Day v. Foster, 7 P. O. R. 60; see also Challender v. Royle, L. R., 36 Ch. D. 439, 440; Skinner v. Perry, 10 P. O. R. 5, 6.

(e) Day v. Foster, 7 P. O. R. 58; Skinner v. Perry, 10 P. O. R. 8.

(f) Skinner v. Perry, 10 P. O. R. 1; also Crampton v. Patents Investment Co., 5 P. O. R. 393.

(g) Walker v. Clarke, 4 P. O. R.

111; Kensington, &c., Electric Lighting Co. v. Lane-Fox Co., 8 P. O. R. 277.

(h) Driffield v. Waterloo, &c. Co., 3 P. O. R. 46; L. R., 31 Ch. D. 638; Combined, &c. Co. v. Automatic, &c. Co., 6 P. O. R. 502; Day v. Foster, 7 P. O. R. 54, 59; Johnson v. Edge, 9 P. O. R. 142.

(i) Skinner v. Perry, 10 P. O. R. 1, 7; also Challender v. Royle, L. R., 36 Ch. D. 425.

(1) Kurtz v. Spence, 5 P. O. R. 161, 173.

(1) Ungar v. Sugg, 6 P. O. R. 337.

will be taken against any person who infringes it "-will not be actionable (m), but should such warning amount by implication to a suggestion that the manufactures of a certain person are infringements of the patent referred to, and be circulated in the trade to the detriment of such manufacturer, an action will lie under the 32nd section.

In Challender v. Royle, Bowen, L.J., said :-" Suppose that a manufacturer is making and issuing machines which the patentee considers to be infringements of his patent, and the patentee issued a threat really directed against the manufacture and sale of those machines, I do not think he could escape from the section by wording his notice in such terms that according to the letter it was only a general warning to all persons not to infringe his patent (n)."

In the same case the same Lord Justice in his judgment suggested that the language of sect. 32 would not apply to threats relating to future infringements. Commenting upon that portion of the Lord Justice's judgment in Johnson v. Edge, Lindley, L.J., said: "I should like to qualify that a little by saying that I think upon the true construction of this section, the section might apply to an intended infringement, provided that you could make out that the intended infringement, if carried out, would be an actual infringement (o)," and Kay, L.J., in the same case said: "I can easily conceive one case of future infringement which would come entirely within the mischief which this section was intended to provide against. For instance, take this case; suppose a man issued a circular saying: 'I have a patent for such and such an article, I understand that Messrs. A. & Co. have recently erected a large manufactory for the purpose of manufacturing articles which, when made, will be an infringement of my patent.' Can it be said that a case like that would not come within the mischief intended to be provided against by this section (p) ?”

(m) Johnson v. Edge, 9 P. O. R. 149; also Challender v. Royle, L. R., 36 Ch. D. 441; Ungar v. Sugg, 8 P. O. R. 388.

(n) L. R., 36 Ch. D. 441; see also Johnson v. Edge, 9 P. O. R. 142, 148,

149; The Fusce Vesta Co. v. Bryant & May, 4 P. O. R. 191.

(0) 9 P. O. R., at p. 148.

(p) Ib., at p. 149; see also Kurtz v. Spence, 5 P. O. R., at p. 171.

"Any person or persons aggrieved: "-The right of action. under the section is not limited merely to the person threatened, but any person to whom damage is occasioned by the issue of the threats is entitled to relief; so where circulars were issued to the trade intimating that the articles manufactured and sold by the plaintiff were infringements of the defendants' patent and that proceedings would be taken against any person dealing with such articles, and in consequence injury was done to the plaintiff's business, it was held that the plaintiff was a person aggrieved and could maintain an action although no threats were made to him personally (q).

"If the alleged manufacture, &c.: "-In an action brought under this section the validity of the patent may be put in issue. In Challender v. Royle, Cotton, L.J., said: "In my opinion

the question whether the patent of the person making the threats is a valid patent must come into consideration if the plaintiff in the action seeks it, because I cannot see how, if a patent is invalid, there can be any act done in infringement of a legal right when the legal right depends only on the validity of that patent (r)."

To constitute a defence to an action under this section, not only must it be shown that the act complained of was an infringement of the patent in question, but also that it was an infringement of the legal rights of the defendant, that is to say, the defendant must be the legal owner of the patent and not merely possessed of a beneficial interest; so in The Kensington, &c., Electric Light Co. v. Lane-Fox Co. (8), where it appeared that an agreement had been entered into whereby the patentee had agreed to assign the patent alleged to have been infringed to the defendant company, but no assignment had in fact been executed, it was held that the defendants having only a beneficial interest in the patent, had no legal right in it capable of being infringed, and consequently the plaintiffs were entitled to judgment without

(g) Kensington, &c. Electric Lighting Co. v. Lane-Fox Co., 8 P. O. R. 277, 279; see also Walker v. Clarke, 4 P. O. R. 111, 114; Burt v. Morgan, 4 P. O. R. 279, 280; Johnson v. Edge, 9 P. O. R. 142, 145.

(r) 4 P. O. R., at p. 371; L. R., 36 Ch. D., at p. 435; see also Kurtz v. Spence, 4 P. O. R. 427, 430; Herrburger v. Squire, 5 P. O. R. 581, 589. (s) 8 P. O. R. 277.

entering into the consideration of the validity or invalidity of the patent.

The clause of section 32 now under consideration is a condition precedent to the right of the plaintiff to recover damages in respect of the threats complained of (t), consequently, primâ facie, the burden of proof is on the shoulders of the plaintiff that what he has done is not an infringement of the defendant's patent. As to how far he must establish this will depend upon the facts of each particular case (u).

"Provided that this section shall not apply, &c.: "—In this proviso lies the most important part of the section, and many points arise in its consideration of considerable difficulty. It is proposed to deal with it first in detail, after which the effect of the proviso as a whole will be more easily understood. To take the last portion first, it is necessary that the person making such threats should commence and prosecute an action for infringement of his patent; it is not clearly provided against whom the action is to be brought, nor whether an action for a different form of an infringement from that complained of would be sufficient, and in the decided cases alone can an interpretation be found. As has been pointed out above, the beneficial owner of a patent cannot shelter himself under the saving clause; for similar reasons an action brought by the legal owner for infringement of his patent will not be such an action as to entitle the beneficial owner to the benefit of the proviso in an action in restraint of threats brought against him by alleged infringers (x). The action must be in respect of infringements which were alleged in the threats circulated by the patentee (y), and must be brought against some one of the persons threatened (≈).

In Day v. Foster (a) the plaintiff, after threatening the defendant, who was a licensee under the plaintiff's patent, and also Messrs. Barrett & Elers, brought an action against the

(t) Barney v. United Telephone Co., 2 P. O. R. 174.

(u) Challender v. Royle, 4 P. O. R., at p. 371.

(x) Kensington, &c. Electric Light Co. v. Lane-Fox Co., 8 P. O. R. 277. (y) Combined Weighing, &c. Co. v.

Automatic, &c. Co., L. R., 42 Ch. D., at p. 670.

(z) Challender v. Royle, 4 P. O. R., at p. 373; L. R., 36 Ch. D. at p. 439.

(a) 7 P. O. R. 54.

defendant for infringement and royalties; he being a licensee, was unable to dispute the validity of the patent, and, consequently, Messrs. Barrett & Elers were anxious to be joined as codefendants to the action. This being refused by the plaintiff, they instituted proceedings under section 32. North, J., held that the action of Day v. Foster was an action for infringement within the meaning of the proviso, and in accordance with the interpretation laid down by Cotton, L.J., in Challender v. Royle (supra): "That in order to bring the case within the proviso the action must be an honest action, honestly brought in order to test the validity of the patent, or the fact of infringement, whichever may be in question;" and in consequence held that the action was vexatious, and directed that all further proceedings in it should be stayed.

As is pointed out in the judgment of Cotton, L.J., quoted above, the action must be brought bonâ fide (¿), and the onus of proof rests on the other party to show that the action was not in fact an honest one (c).

"With due diligence commences and prosecutes."-In considering whether such an action is brought with due diligence, the time of issuing the threats, and not the time when the party bringing the action first knew of the acts which he alleges to be infringements, is the period to be looked at (d), and it is immaterial whether the action is brought before or after the commencement of the threats action (e).

Where threats of proceedings were made by the patentee to another for the space of three years, after which continuous negotiations took place between the parties and further complaints made, it was held that an action for infringement brought on the termination of those negotiations by the patentee disclosed no lack of due diligence (ƒ).

The section does not require that the action should be prose

(b) Challender v. Royle, L. R., 36 Ch. D. 438, 439; 4 P. O. R. 373, 375; Day v. Foster, 7 P. O. R. 60; Colley v. Hart, 7 P. O. R. 112.

(c) Colley v. Hart, 7 P. O. R. 112. (d) Challender v. Royle, L. R., 36 Ch. D. 425, 437; Day v. F ster, 7

P. O. R. 60.

(e) Combined Weighing-Machine Co. v. Automatic, &c. Co., 6 P. O. R. 502; Challender v. Royle, supra.

(f) Edlin v. Pneumatic Tyre, &c. Agency, 10 P. O. R. 311.