casks, "and analogous vessels," in which staves were formed with a croze or groove for receiving the head or bottom. The claims were narrow and clear and related only to the manner in which the heads were fastened in. Held by the Law Officer that the title was sufficient, without the addition of the words "and analogous vessels." See further Brown's Patent, Gr. L. O. C. 1.

Reference to Examiners.

Where a complete specification is lodged after a provisional both specifications are referred to an examiner, who is to examine and report whether the invention particularly described in the complete is substantially the same as that in the provisional, and whether the complete has been prepared in the prescribed manner. If the report be unfavourable, the comptroller may refuse to accept the complete unless and until it be amended to his satisfaction.1 But the Comptroller can also at this stage require amendments as he may think necessary without any reference to an examiner.2 From his decision there is an appeal to the Law Officer. The Law Officer's rules relating to notices, evidence, and costs are set out post, p. 571.

Illustration.

The title of the provisional was for "improved means for regulating the action of dynamo electric machines and motors." In the complete the last two words were left out. The applicants said that they found that part of the invention was inapplicable for motors, and so drew the complete on narrower lines. Held, by Webster, A. G., that if the title do not correspond with the application the Comptroller may require amendments under Sec. 7 (1), but that no amendment of the title is required when the patentee drops part of his invention. But he may lodge a complete dropping part of the title, and then request the Comptroller, after examination under Sect. 9, to amend the title in provisional under Sect. 7. "It must, however, be distinctly understood that such an amendment in the title and provisional ought in my opinion to be confined to excision only, and not to amendment or other explanation, and the excision must be such as does not extend the scope of the title." Dart's Patent, Gr. 307.

1 Sect. 2 of Act of 1888, post, p. 487.

2 C.'s Application, 7 R. P. C. 250.

3 Sect. 9 of the Act of 1883, post, p. 487.

The Act of 1902.

In addition to these inquiries directed by the Act of 1883, the Act of 1902 requires a much more extended and important inquiry. It applies to all applications made after sect. I of that Act comes into force on a date to be directed by the Board of Trade (sect. I (11), post, p. 524). "Forthwith," upon the depositing of the complete specification, the examiner is to "make a further investigation for the purpose of ascertaining whether the invention claimed has been wholly or in part claimed or described in any specification (other than a provisional specification not followed by a complete specification) published before the date of application, and deposited in the Patent Office pursuant to any application for a patent made in the United Kingdom within fifty years next before the date of the application" (sect. I (1), post, p. 523).

"If on investigation it appears that the invention has been wholly or in part claimed or described in any such specification, the applicant shall be informed thereof, and the applicant may, within such time as may be prescribed, amend his specification, and the amended specification shall be investigated in like manner as the original specification" (sect. 1 (2), post, p. 523).

If there be no such anticipation discovered, and if there be no other lawful ground of objection, the specification will be accepted.

But "if the Comptroller is not so satisfied, he shall, after hearing the applicant, and unless the objection be removed by amending the specification to the satisfaction of the Comptroller, determine whether a reference to any, and if so what, prior specifications ought to be made in the specification by way of notice to the public." An appeal will lie to the Law Officer (sect. 1 (6) (7), post, p. 524).

Until the practice has been settled and decisions reported, the principles, methods of application, and effects of this enactment cannot be fully understood. However, a guide is afforded in the decisions reported in connection with the second ground of opposition discussed in Chap. VIII. post, p. 126 (see also post, p. 151). In consulting such decisions two important differences must be kept

1 There is no time yet fixed for the section to come into operation; some time must necessarily be required to enable the Comptroller-General to increase the staff and make other arrangements.

in mind. The first is that this enactment applies not only to alleged anticipations claimed in previous specifications, but also to those that are merely described. The second difference is that at this stage of the proceedings the Comptroller has no jurisdiction to refuse the application, the statute giving power only to require amendments by way of references to earlier specifications to be inserted, whereas in the case of opposition he has power to refuse the application on its being shown that it has been anticipated by an earlier invention that is claimed in the earlier specification (post, p. 127); the power to require a reference arises from such power of rejection and affords an alternative course (see post, pp. 133, 135).

Acceptance.

When a complete specification is finally accepted, it is advertised in the Official Journal, and is open to the public for inspection (except as mentioned below) at the Patent Office on payment of the prescribed fee.1

The effect of acceptance is to give the applicant the like privileges and rights as if his patent had been sealed on the date of the complete specification, but he cannot institute any proceeding for infringement until the patent be actually sealed.2

Inventions relating to War.

The inventor (his executors, administrators, or assigns) of any improvement in instruments or munitions of war, may assign all benefit in any patent obtained or to be obtained for the same to the Secretary of State for the War Department. Covenants in such assignment for keeping the invention secret may be enforced against the inventor or assignor by the Secretary of State. The Secretary of State may require that the specification, and all other like documents, shall be kept secret. The difference between such specifications and others lies in the fact that they are not "published" so as to become anticipations of later inventors. But the later inventors, not being the first inventors, cannot obtain valid patents for the inventions comprised in the earlier secret specifications (ante, p. 49). See sect. 44 of the Act of 1883, post, p. 500.

1 Sect. 10 of the Act of 1883, post, p. 488. Rules 11, 12, post, p. 528.

* Sect. 15 of the Act of 1883, post, p. 490,

CHAPTER VIII.

OPPOSITION TO GRANTS AND APPEALS.

Grounds of Opposition-Evidence generally, p. 120.-First Ground of Opposition and Locus Standi, p. 122-Joint Grants, p. 125-Importers -Second Ground of Opposition, p. 126-Sufficiency of Opponent's Interest, p. 128-Nature of Cases, p. 131-Power to require Amendments, p. 135-Insertion of Disclaimers, p. 138-Considerations affecting Disclaimers, p. 142-Exceptional Cases, p. 146-Evidence, p. 148 -The Act of 1902, p. 151-Third Ground of Opposition, p. 152Appeal to the Law Officers, p. 155-Evidence, p. 156-Sealing of the Patent, p. 158-Contemporaneous Applications, p. 158.

Grounds of Opposition.

IN applications made after sect. I of the Act of 1902 (post, p. 523) comes into operation, the Comptroller inquires into the question whether the applicant's claims have been anticipated by previous published complete specifications. But if the applicant choose at his own risk to persevere with his claims notwithstanding the existence of such alleged anticipations, the Comptroller and Law Officers have power to require references to be inserted (sect. I, subsect. 9, post, p. 524) to give the public notice of the earlier specifications. However, there is no power to reject the application on the ground of anticipation.

Although as a general rule, and subject to the above powers, the Comptroller and Law Officers are precluded from inquiring into the question whether the applicant's patent would be valid if granted as applied for, yet in a limited number of cases they can refuse to seal a patent when opposed on grounds which involve this question of validity. The several conditions or state of facts which constitute a ground for refusal to seal are such that, if proved in a petition for revocation, would involve the invalidity of the patent.

It has already been pointed out that one of the broad principles

underlying the question of validity is that a patent cannot be valid if it have the effect of preventing members of the public from doing anything that they, at the date of the patent, were in the habit of doing (ante, pp. 19, 20). If a patent be granted which has such an effect, any one whose business or trade is thereby interfered with has two courses open to him: either (1) to present a petition for revocation, or (2) to defend an action for infringement, and so contest the validity of the patent.

The Legislature, however, has given an opportunity to such persons to oppose the grant of a patent in certain specified cases.1 These provisions are contained in sect. II of the Act of 1883 as amended by sects. 3 and 4 of the Act of 1888, and are in the following terms:

Sect. 11 (1). Any person may at any time within two months from the date of the advertisement of the acceptance of a complete specification give notice at the Patent Office of opposition to the grant of the patent

on the ground of the applicant having obtained the invention from him, or from a person of whom he is the legal representative, or

on the ground that the invention has been patented in this country on an application of prior date, or

on the ground that the complete specification describes or claims an invention other than that described in the provisional specification, and that such other invention forms the subject of an application made by the opponent in the interval between the leaving of the provisional specification and the leaving of the complete specification, but on no other ground.

These grounds of opposition will presently be considered separately in detail.

Where notice of opposition is given under the above section the Comptroller gives notice to the applicant. Then, after hearing the applicant and opponent, and after the expiration of two months, the Comptroller decides on the case, subject to an appeal to the Law Officer.3

1 The object of and reasons for the section have not yet been so decisively stated, but the trend of the latest decisions is in the direction here indicated.

? This ground is inserted by sect. 4 of the Act of 1888.

Sect. 11 (2) of the Act of 1883, post, p. 489.