CHAPTER VII. PROCEDURE TO OBTAIN A PATENT. First Steps Jurisdiction of the Comptroller-General and Law Officers, p. 101-Mode of Application, p. 104-With Provisional Specification, p. 105-Steps after Provisional Protection, p. 109-The Complete Specification, p. 110-Reference to Examiners, p. 115-The Act of 1902, p. 116-Acceptance, p. 117-Inventions relating to War, p. 117. First Steps. WHEN an inventor has thought of a new invention, he should, as far as possible, try it experimentally, as well as work it out theoretically, before applying for a patent, so that there be less risk of a wrong description in the first instance. In most cases, however, experiments cannot be carried out, nor models made, without disclosing the nature of the invention to persons employed. Although such disclosure under a promise of secrecy is not publication, yet there is always the risk of unauthorized or accidental disclosure to others by the persons confidentially employed (ante, p 25). When the inventor cannot proceed further without risk of publication, he should at once apply for a patent, and file a provisional specification. If the invention be of such a nature that there is great probability of rival inventors being also engaged on the problem and working on the same lines, as, for instance, where it consists of the application of newly discovered natural phenomena, e.g. X rays, or electric vibrations of the ether, it is of the greatest importance to secure provisional protection at the earliest date possible. The inventor should take all steps possible to ascertain if his invention is a novel one before applying for a patent, or immediately provisional protection has been obtained. He may search at the Patent Office library, where all British specifications are available classed and abridged to facilitate reference. Specifications of United States patents, and abridgments of those of other countries, can also be seen there.1 He should also refer to scientific and technical journals relating to the art in question. These investigations may be conducted by an agent. Such research is greatly facilitated by consulting professional advisers, as consulting engineers (electrical or mechanical), consulting chemists, and patent agents, many of whom, in addition to the knowledge of their profession, are experts in various arts and manufactures. Consulting experts keep themselves abreast of the knowledge of the day. The Jurisdiction of the Comptroller-General and Law Officers. Letters patent for inventions were formerly issued under the Great Seal. The Lord Chancellor, as custodian of the Great Seal, was the ultimate judge as to the issue of a patent, being the sole judge of the common law branch of the Court of Chancery. By the Patent Law Amendment Act of 1852, the Commissioners of Patents were empowered to make and use a seal for sealing the warrant as directed by the law officer and required by the applicant for letters patent. In pursuance of the warrant the patent was prepared and ultimately sealed with the Great Seal. The powers of the Lord Chancellor were by the Act of 1852 expressly reserved as before the passing of that Act. But now, under the Act of 1883 (sect. 12, post, p. 489), patents are sealed with the seal of the Patent Office, which has the same effect as the Great Seal. If the law officers decide that a patent be sealed there is no room for any appeal, the direction to seal (sect. 12) being mandatory. If the ultimate decision be against the applicant, the Act is silent as regards any appeal. In the absence of any provisions for that purpose, it appears that the decision is final." The duties of the Comptroller and Law Officers in relation to the grant of patents are administrative, and in part judicial. The administration of the statutes as regards the granting of patents 1 For details, see par. 24 of Circular of Information, post, p. 598. and the amendment of specifications is entrusted to the Comptroller, with an appeal under certain conditions to one of the Law Officers of the Crown, that is, the Attorney- or Solicitor-General for England. From the law officers there appears to be no appeal, nor any means of reviewing their decisions.1 As a general rule (the statutory exceptions to which are discussed in the following pages) neither the Comptroller nor the Law Officers have any jurisdiction to decide questions involving the validity of patents; they cannot enter into the question generally whether the applicant's invention is novel or subject matter for a patent.3 But under the Act of 1902, the Comptroller investigates the question of novelty so far as the invention claimed is published within fifty years in earlier British specifications. In the event of the applicant not amending his claims so as to exclude the alleged anticipation, a reference to the earlier specification may be required, subject to appeal to the law officer (2 Edw. 7, cap. 34, sect. I, post, p. 523). This procedure takes place at a later stage, and is discussed post, p. 116. An invention will be subject-matter if it be a “manufacture” within the meaning of the Statute of Monopolies (ante, p. 6), and not one of so simple a nature that a patent for it would be hurtful to trade or generally inconvenient (ante, p. 20). It is within the jurisdiction of the Comptroller to take the question of the invention being a manufacture into consideration and reject the application;5 but in the case of an invention that is an improvement this is not done (except in cases of opposition to sealing); for the determination whether the addition to the stock of public knowledge be a manufacture or not involves the question of novelty, and an examination into what has been done before. Except in the case just mentioned (and in certain cases of opposition, post, p. 118), neither the Comptroller nor Law Officers can inquire into subject-matter. Cases frequently occur in which an applicant claims more than he is entitled to, sometimes by claiming that which is merely an 1 Van Gelder's Patent, 6 R. P. C. 22; The Queen v. Comptroller-General (Ex parte Tomlinson), 16 R. P. C. 233. 2 Haythornwaite's App., 7 R. P. C. 70; Todd's Patent, 9 R. P. C. 487; Thornborough & Wilks' Patent, 13 R. P. C. 116 (45). Jones' Patent, Gr. L. O. C. 34; Todd's App., post, p. 132. For definition, see sect. 46 of Act of 1883, post, p. 502. Cooper's App., 19 R. P. C. 53; Johnson's App., 19 R. P. C. 56. • Todd's Patent, 9 R. P. C. 487. improvement in terms more general than the extent of the invention warranted. It is not the applicant's interest to obtain an invalid patent by claiming too much. Hence there is a tendency in the interests of the applicant to insist on such amendments as would narrow the claim to what could be supported.1 not be forgotten that, under the Act of 1883, there is no jurisdiction to require amendments on any such ground (the applicant being supposed to look after his own interests), but where required the jurisdiction frequently exists in consequence of the case coming within the provisions of sect. 11 (post, p. 135). Another ground on which such amendments are sometimes required is that it is not in the interests of the public that they should be led to suppose the description is for a claim entirely general, whereas it is only limited to the improvement. But considerations of "public interest " are for the Legislature when considering the provisions of a Bill, but cannot extend the jurisdiction given by the Act as regards opposition or amendments. It is not in the "public interest" that any invalid patent should be granted; hence, if "public interest" could give jurisdiction, the Comptroller's powers might, be enlarged to a great extent. But under the Act of 1902 the powers of the Comptroller and Law Officers have been considerably enlarged with respect to examination of previous British specifications, and power is given to require insertion of references to previous specifications in the interests of the public; but power is not given to refuse the grant on the ground of anticipations disclosed by the search. That power exists only in cases of opposition (post, p. 119). This examination takes place after the complete specification has been filed, and is discussed post, P, 116, 151. The Comptroller may refuse to grant a patent for any invention the use of which would in his opinion be contrary to law or morality,3 e.g. burglars' tools, instruments of gaming, such as loaded dice, weighing appliances adjustable falsely, spring-guns or man-traps for use in grounds, or elsewhere than in a dwelling-house. 1 Hoskins' Patent, Gr. 292. 2 Newman's Patent (No. 2), 5 R. P. C. 281. Modes of Application. When an application is made the proper forms must be used, for the application is made either by the true and first inventor (or importer of invention from abroad), with or without others, or by a patentee of an invention patented abroad who applies under the International and Colonial arrangements. The latter are considered post, p. 176. If the applicant be incapable, on account of infancy, lunacy, or other inability, of making the necessary declarations, or of doing anything required to be done by the Act or Rules, then the guardian, committee, or person appointed for that purpose by the Court or judge may make the necessary declarations, or do what is necessary on behalf of such incapable person.2 In case of the death of an inventor, his legal representative may apply for a patent within six months of the death. The proper evidence of the applicant being the representative of the deceased inventor must be supplied.1 The following directions as to the mode of applying for a patent are given in the Circular of Information issued by the Patent Office : 1. Mode of applying for Patents in the United Kingdom. (i.) All applications and communications must be made in English. (ii.) Any person, whether a British subject or not, may make an appli- Two or more persons may make a joint application for a patent, Applicants must apply in their real names, and not under assumed or trade names. A company (body corporate) may apply for a patent as joint applicant with the inventor, but not as sole applicant, unless the application is made in respect of an invention communicated 1 The persons entitled to obtain patents are mentioned ante, pp. 48, 49. 2 Sect. 99 of the Act of 1883, post, p. 506. Sect. 34 of the Act of 1883, post, p. 498. |