proved not to have been known to the public. Harris v. Rothwell, 4 R. P. C. 231, 282.) Publication by means of diagrams annexed to a German description. See United Tel. Co. v. Harrison, post, p. 282. One copy of a book written in French containing an alleged description of an invention reached England, and was placed in the library of the British Museum. It was indexed under the author's name. Enquirers in any branch of study might as a favour be allowed to see the books relating to a particular subject on the shelves, otherwise they must write a docket giving the index reference. The work in question was mentioned in two catalogues in England. Held, that there was no evidence of the publication of the contents of the book. Otto v. Steel, 3 R. P. C. 109. The patent in question was dated the 16th of April, 1880. On the 9th of December, 1878, and the 5th of February, 1880, two German specifications were received at the Patent Office. These were according to the usual course kept in boxes in numercial order and accessible for use by the public. In due course they were bound with others and placed on the shelves of the Patent Office library for public use. Held by the Court of Appeal that there was evidence proving publication of the invention described in the German specification. Harris v. Rothwell, 4 R. P. C. 225. A patentee sent instructions to have his invention made in Paris. A description of it was inserted in a French Ophthalmic Journal usually sent to certain subscribers in the United Kingdom. As to what is evidence of their having read the description, see Pickard v. Prescott, post, p. 339. Amount of Disclosure in Prior Publications. Publication to constitute anticipation must be such that it fully discloses to those who are presumed to see or read it the invention in question.1 If the alleged anticipating invention be not complete so as to be workable it is no disclosure at all, for it tends to lead the public to think that the device or process in part disclosed is based on wrong principles to effect the object desired, and so tends to discourage further attempts in the same direction. But a distinction must be observed between the invention and the means for 1 See Betts v. Menzies, and Betts v. Neilson, and notes, post, pp. 218, 219, 220; Otto v. Linford (per Brett, L.J.), and notes, post, p. 289; Pneumatic Tyre Co. v. Casswell (per Lord Macnaghten), 16 R. P. C. 542, 1. 46. Galloway v. Bleaden, 1 Webs. 525. Jones v. Pearce, 1 Webs. 124, followed in Househill Co. v. Neilson, 1 Webs. 709, 716. Heath v. Unwin, 2 Webs. 277. See Murray v. Clayton, post, p. 249; Hills v. London Gas Light Co., and notes, post, pp. 208, 210, 212, performing it; the former may be fully disclosed without sufficient information having been given under the latter head to enable workmen to put the invention to actual use.1 Illustrations. For illustration of the failure of a model to anticipate, see Hills v. A new rolled metal was described in a specification in 1804. It was not the lamp, it was folded into a circular shape, is a patentable In 1877 a patent was taken out for a door-fastener. On pulling a handle the bolt was withdrawn, but on pushing the door to close it the bolt projected too soon. The device was abandoned as useless. This did not anticipate a similar contrivance in 1888, in which by a slight alteration the difficulty was successfully overcome. See Kaye v. Chubb, post, p. 315. The patent in question was that for Dr. Hopkinson's "three-wire" system of distributing electricity in incandescent lighting, constancy of pressure in the consumer's part of the mains being important. It consisted of joining up two dynamos in series one for each set of installations and employing a "middle wire" to convey the difference of the currents between the junction of the dynamos and the main common to the installations. An alleged anticipation consisted of an installation at the Alexandra Palace, in which two arc lamps were set up, the current to each from a separate dynamo returning by a common conductor. The dynamos were at first "in parallel," but one of them immediately (owing to instability of electrical equilibrium) became "reversed" (field magnets becoming de- and re-polarized), so that the dynamos ran "in series." The discovery of this did not convey to the mind of the engineer the means of reducing conductors or maintaining the pressure in parallel incandescent lighting. It was no anticipation. Hopkinson v. Kensington and Knightsbridge, &c., 10 R. P. C. 61. The patent in question was for a new basic dye stuff. The invention 1 Discussed in notes to Hills v. Evans, post, p. 224, and in King & Co. v. Anglo-American Brush Corp., post, pp. 344, 345. was based on the discovery that rhodamine acted as an acid. The alleged anticipation contained the statement of an erroneous theory to explain the process therein claimed. This erroneous specification pointed away from the use of the unconverted rhodamine base, although the inventor in fact used it thinking it was another substance. This is not an anticipation. See Badische Anilin, &c. v. La Societé Chimique des Usines du Rhone, post, p. 407. The patent in question (Haddan's, 1878) was one for "compound winding" of dynamos. The alleged anticipation consisted of a passage in Varley's specification, 1876, but there was no claim therein for compound winding, nor illustrations of it, nor directions for doing it in practice. Clark's specification, 1875, disclosed shunt winding, but was unknown to eminent electricians at that date. It was proved that Varley knew of it, hence that other electricians might have known of it also. Held, that Varley's specification, when read with the knowledge disclosed in Clark's specification of 1875, disclosed Haddon's invention. See King & Co. v. Anglo-American Brush Corporation, post, pp. 340, 344, 345. Exhibitions. Special provisions are made for the benefit of inventors who wish to exhibit their most recent discoveries at industrial or international exhibitions. To obtain this benefit the exhibitor must give the Comptroller notice of his intention to exhibit. The application for the patent must be made within six months of the opening of the exhibition.1 his His Majesty may by Order in Council declare at any time that the foregoing provisions shall be extended to any industrial or international exhibition held out of the United Kingdom and mentioned in the Order. The condition of giving notice to the Comptroller may by such Order be suspended or made subject to conditions.2 The effect of the provisions are that the right of the inventor or representative to obtain provisional protection is not prejudiced by the exhibition of his invention at the industrial or international exhibition, or to publication of any description of the invention during the period of the exhibition, or the use of the invention for the purpose of and in the place of the exhibition, or the use by others without the priority or consent of the inventor elsewhere during the holding of the exhibition.3 Sect. 39 of the Act of 1883, post, p. 499. Identity of Inventions. Under the new procedure (post, p. 116) the applicant for a patent, or his agent, will have to consider in many cases whether the inventions disclosed in prior specifications are included in the claims he puts forward in his specification. He should be satisfied, and should be prepared to satisfy the Comptroller if necessary, that his claims, either as originally drafted or as amended on consideration of alleged anticipations, do not include inventions disclosed in previous specifications. In addition to the principles affecting publication generally, those relating to "documentary anticipations (ante, pp. 25-27) must be considered. The following considerations should also be borne in mind in comparing an invention with an alleged anticipation :— A patent being invalid if the claim include any invention already published1 or protected, it becomes important to consider the conditions under which two inventions are to be considered "identical." An invention for this purpose "includes" one already known if the claim be such that the monopoly granted by it would cover the earlier manufacture, so that the patentee could prevent others from doing what had been known before. The comparison in any given case is between the alleged anticipation and a single claim in the specification under consideration; the point to be considered is whether the claim in question claims the earlier invention, that is, includes it in the monopoly claimed. A patentable invention has been defined (ante, p. 9) as the application of principles to produce certain results, or the new results if vendible themselves. Hence the first step in comparing two inventions is to ascertain in the case of each (1) what are the principles applied, (2) the mode of application, and (3) the immediate result or thing produced. Two inventions will be identical when the same principles are applied in the same manner. For instance, in combinations the same principles are applied in the same manner when the elements of the combination (ante, p. 16) discharge or 1 R. v. Else, post, p. 180; per Lord Eldon, L.C., in Hill v. Thompson & Forman, and notes, post, p. 184. 2 See ante, p. 9, and also Lord Hatherley, L.C., in Cannington v. Nuttall, post, p. 248. perform the same functions in the same way. If the manufactures compared together (the subjects of the claim and alleged anticipation respectively) be vendible articles as distinguished from the mode of producing them, then they are identical when they consist of the same article or substance. If the inventions be processes or methods, then the similarity of the principles and the mode of their application must be compared together, as the resulting products may be the same although the modes of making—that is, the inventions may be different. Inventions may be similar in outward form and yet different in the principles applied, or apparently different in form and yet similar in principles and their application. Claims including what was old. One claim out of twelve in a specification was for a certain mode of construction of ships with iron frames; it was wide enough to include what was previously known, hence the patent was invalid. See Jordan v. Moore, post, p. 243. A patentee claimed "a mode of producing or preparing stripes" of certain materials in a certain manner, "and of reweaving" them to produce certain results. This constituted two separate claims for producing and weaving; the former being old, the patent was invalid. Templeton v. MacFarlane, 1 H. L. Ca. 595. Webb's process (1891) of concentrating sulphuric acid gave results commercially very superior to those of Chance's process (1871), but both consisted of the application of the same principles and the claim in Webb's specification was wide enough to include Chance's method. Webb's patent was invalid. See Kynochs, Ltd. v. Webb, post, pp. 425, 428. If the differences between the old and new inventions be such as to introduce a new principle into operation in the later invention they cannot be identical. This difference of principle may be apparent in the result attained, or in cases of a new process or method for producing an old result or attaining an old object it may be apparent in some distinctive feature in the method, such as greater speed. It is this difference of function, and not the mere form of the inventions, that must be looked to as affording evidence of the new or different principle. |