CHAPTER IX. AMENDMENT OF SPECIFICATIONS-CONVENTION APPLICATIONS. Occasions for Amendment-General Considerations, p. 163-Amendments refused, p. 164-Amendments allowed, p. 167-Amendments during Legal Proceedings, p. 172-Terms usually imposed, p. 174-Illustrations, p. 174-Foreign and Colonial Applications, p. 176. Occasions for Amendment. THERE are four stages or occasions in which a specification may be amended. 1. During the period which elapses between the filing and acceptance of the complete specification at the instance of the Comptroller, in order to make it comply with the rules, and under the provisions of the Act of 1902. Amendments of this class have been discussed, Ch. VII. 2. After filing of the complete specification at the request of the applicant or person for the time being entitled to the benefit of the patent when an action for infringement, or petition for revocation is not pending. 3. In cases of opposition amendments may be required as a condition for sealing. The practice in such cases has already been considered under the head of Opposition. 4. Amendments may be made when an action for infringement or petition for revocation is pending. The first and third classes of amendments have already been considered. The proceedings with respect to the second class of amendments is regulated by Sect. 18 of the Act of 1883, which is in the following terms: 1 Jones's Patent, Gr. 313. 18. (1) An applicant or a patentee may, from time to time, by request in writing left at the Patent Office, seek leave to amend his specification, including drawings forming part thereof, by way of disclaimer, correction, or explanation, stating the nature of such amendment and his reasons for the same. The term "patentee" includes assignee (see sect. 46, post, p. 502). The request for leave must be signed by the applicant, contain an address for service in the United Kingdom, and be accompanied by a duly certified copy of the original specification and drawings, showing amendments proposed in red ink. If the patent be sealed, the request must contain a statement that no action for infringement or petition for revocation is pending (Rule 42, post, P. 535). (2) The request and the nature of such proposed amendment shall be advertised in the prescribed manner, and at any time within one month from its first advertisement any person may give notice at the Patent Office of opposition to the amendment. The request and nature of the amendments are advertised in the Patent Office Journal, and as the Comptroller may otherwise direct (Rule 42, post, p. 535). The notice of opposition, on form G, must give grounds of opposition, an address for service of the opponent, be signed by him, and be accompanied by an unstamped copy (Rule 44, post, p. 536). (3) When such notice is given the Comptroller shall give notice of the opposition to the person making the request, and shall hear and decide the case subject to an appeal to the Law Officer. The copy of the opponent's notice is sent to the applicant (Rule 44, post, p. 536). The evidence is by declarations, which the opponent leaves at the Patent Office, and of which he gives copies to the applicant (Rule 45, post, 536). The further proceedings are subject to the same rules as in cases of opposition to grants (Rule 46, post, 536; also ante, p. 118). The applicant, if successful, must, within a time named by the Comptroller, leave at the Patent Office a new specification and drawings as amended (Rule 49, post, 536). The amendments allowed are to be forthwith advertised (Rule 50, pest, p. 536). To "hear and decide" involves the power, in cases where the amendment is opposed, to grant subject to conditions-a partial grant (Hearson's Patent, Gr. 309). But a monetary allowance to the opponent cannot be made a condition of allowing an amendment. Pietschmann's Patent, Gr. 314. M (4) The Law Officer shall, if required, hear the person making the request and the person so giving notice, and being in the opinion of the Law Officer entitled to be heard in opposition to the request, and shall determine whether and subject to what conditions, if any, the amendment ought to be allowed. Before an action had terminated, the applicants obtained leave to amend under sect. 19. They applied for certain amendments on the 7th of March. The action was discontinued prior to the 9th of April. On the 9th of April a second application was made for the same amendments, and the former application was withdrawn on the 20th of April. The opponents (who were defendants in the action) had incurred costs as to the earlier application, and asked for them to be refunded as a condition of the amendment being allowed. Held by Clarke, S.G., that, although the patent as amended would conflict with the earlier ones relied on, the amendment should be allowed, because (1) the claim was narrower and not larger than or different from its earlier form; and (2) the opponents had no interest in the earlier patents which had expired. The proceedings in the action could not be considered as regards costs. Bell's Patent, Gr. L. O. C. II. In the applicants' patent there were two distinct claims. One proved to be invalid. The applicants requested to amend by disclaiming the invalid claim, but through an inadvertence the matter was not proceeded with. Three years later they again applied. Their opponents had infringed the valid claim, relying on invalidity due to the second claim; they asked for terms to be imposed on account of the delay. Held that, in view of the protection afforded by sect. 20, there were no special circumstances justifying the imposition of terms. Ainsworth's Patent, 13 R. P. C. 76. No conditions will be imposed on disclaiming a number of invalid claims (even late in the life of a patent) unless it be proved that the applicant, by his conduct, induced the opponent to treat the patent as invalid. Allison's Patent, 15 R. P. C. 411. (5) Where no notice of opposition is given, or the person so giving notice does not appear, the Comptroller shall determine whether and subject to what conditions, if any, the amendment ought to be allowed. (6) When leave to amend is refused by the Comptroller, the person making the request may appeal from his decision to the Law Officer, 1 As to this ground see now ante, pp. 126, 128. (7) The Law Officer shall, if required, hear the person making the request and the Comptroller, and may make an order determining whether, and subject to what conditions, if any, the amendment ought to be allowed. (8) No amendment shall be allowed that would make the specification, as amended, claim an invention substantially larger than or substantially different from the invention claimed by the specification as it stood before amendment. (9) Leave to amend shall be conclusive as to the right of the party to make the amendment allowed, except in case of fraud; and the amendment shall in all Courts and for all purposes be deemed to form part of the specification. See Moser v. Marsden and notes thereto, post, p. 374. (10) The foregoing provisions of this section do not apply when, and so long as any action for infringement or proceeding for revocation of a patent is pending. The words in italics, by sect. 5 of the Act of 1888, are substituted for "other legal proceeding in relation to." "Pending" means pending in the High Court, and does not include appeals. Cropper v. Smith, 1 R. P. C. 254. A petition for revocation is not "pending" if presented in the interval between the application to amend and the hearing by the Comptroller. Woolfe v. Aut. Picture Gallery, Ltd., 20 R. P. C. 177. General Considerations. It is the persons for the time being entitled to the benefit of the patent who are authorized to apply to amend.1 Amendments may be made from time to time, but second applications are not encouraged; 2 so, when an amendment was refused, and the applicant did not appeal, the Law Officer, on hearing an appeal two years afterwards on a second application, refused it on the ground that the amendment was practically the same as the earlier one refused by the Comptroller. So when the application is made late in the life of the patent, the proposed amendments must be critically examined, lest fresh knowledge be imported, or lest an insufficient 1 Sect. 46 of Act of 1883, post, p. 502; Church's Patent, 3 R. P. C. 100. Arnold's Patent, Gr. L. O. C. 6. A Beck & Justice's Patent, Gr. L. O. C. 10. description be made sufficient after the public had relied on the insufficiency as a ground of invalidity, the object of the amendments being to make the patentee's meaning clear.1 Illustrations. Amendments refused. In a specification for " improvements in nozzles for the escape of steam or gas under pressure," no mention was made of gas-engines. An amendment was refused relating to the proper size of the chamber in the case of gas-engines, which were not mentioned in the original specification. Beck & Justice's Patent, Gr. L. O. C. 10. A specification for "improvements in the manufacture of castings from wrought iron and steel" contained directions for the introduction of aluminium into the metal shortly before it was poured out, and contained a statement that this " addition might, however, be made earlier." It was proposed to strike out these words and insert a long statement explaining the action of the aluminium in lowering the melting-point. In refusing the insertion of the new matter, Webster, A.G., said: "If the putting in the aluminium into the molten iron or steel was the proper subject-matter of an invention, and was not a mere example of a known scientific fact, as far as I can judge, the specification sufficiently describes and claims the invention, but under any circumstances, whether that be so or not, it is the duty of the patentee to fulfil the condition of the patent, and to file a proper and sufficient specification. Of course, I am well aware that when a disclaimer is required it is because there is a defect on the face of the specification, but in my opinion that defect must be one which must be consistent with the patentee intending to fulfil the condition of the grant by properly describing his invention, and I cannot see, if that condition is fulfilled in this case, that the amendment is required." Nordenfelt's Patent, Gr. L. O. C. 21. Heath & Frost applied for a patent for "an improved method of blasting and shot-firing in mines." The provisional described the advantages of the new cartridge-dynamite preferably used-the charge was enclosed "in a case surrounded by a water-tight cartridge containing water and sealed up." The complete described two cases—the inner and outer; the former could be dispensed with when dynamite impervious to water was used. The first claim was for "the construction of a simple and practicable water-tight cartridge for blasting purposes, in which the explosive substance is entirely surrounded by and in immediate contact with water, sub stantially as and for the purposes hereinbefore described, set forth, Johnson's Patent, 13 R. P. C. 650; Nordenfelt's Patent, Gr. L. O. C. 20. |