THE GRANT AND VALIDITY OF PATENTS. PART I. CHAPTER I. INTRODUCTORY-TREATMENT OF THE SUBJECT. Introductory. FROM very early times the English Courts held that trade monopolies granted by the Royal Prerogative were contrary to the public good, as tending to deprive persons already trading of their means of livelihood, and to raise the prices of commodities. But these considerations did not apply to monopolies granted with respect to new manufactures introduced into, or invented within, the realm, and it was in the public interest that the introducers and inventors of new manufactures should be rewarded for their share in developing the trade of the country. Hence when monopolies were declared illegal by the Statute of Monopolies, 21 Jac. 1, c. 3, an exception was made in sect. 6 in favour of inventions, in the following terms: 6. Provided also . . . that any declaration before mentioned shall not extend to any letters patent and grants of privilege for the term of fourteen years or under, hereafter to be made of the sole working or making of any manner of new manufactures within this realm,' to the true and first inventor and inventors of such manufactures, which others at the time of making such letters patent and grants shall not use, so as also they be not contrary to the law nor The realm for this purpose now includes the United Kingdom and the Isle of Man. British Colonies are places "abroad" within the meaning of the Patents Acts. Rolls v. Isaacs, 19 Ch. D. 258; 45 L. T. 704. B mischievous to the state, by raising prices of commodities at home, or hurt of trade, or generally inconvenient; the said fourteen years to be accomplished from the date of the first letters patent or grant of such privilege hereafter to be made, but that the same shall be of such force as they should be as if this Act had never been made, and of none other. The grants of monopolies are made by "letters patent," ie. litteræ patentes,-"letters open" or not sealed up, and addressed to all subjects of the King. "Letters patent" are used for other grants, such as titles, appointments, and so forth, but the abbreviation "Patent" is, in connection with manufactures, used for "letters patent for an invention."1 To "patent" an invention means, therefore, to obtain, by complying with the law, letters patent granting a monopoly with respect to the invention in question. An invention which is the subject of such a grant is usually termed "patented," or "protected." But any representation that an article is the subject of a "patent" when it is not is now an offence punishable by fine and imprisonment. The usual form of a "patent" is given post, p. 569. 2 The grant of a patent is now regulated by the Patents, Designs, and Trade Marks Act, 1883, and subsequent Acts. But the definition of an "invention" in sect. 46 of the Act of 1883 (post, p. 502), refers to the sixth section of the Statute of Monopolies, hence the limits placed by the law on a "patentable invention" are the same as those under and since the Statute of Monopolies, which, from the concluding words of sect. 6, include the limits recognized at common law at the date of that Act (1624). There have been a large number of decisions on the meanings and limitations of the terms "new," "manufacture," "true and first inventor," "others shall not use," in the Statute of Monopolies. Besides the limitations imposed by such interpretations of the statute, other conditions have been defined; namely, that the alleged invention to be patentable must be useful for the purpose intended by the patentee; that it must not be of too simple a nature, or the grant of a monopoly for it would unduly hamper skilled workmen in using and applying their knowledge in their respective trades to new conditions, or to overcome new difficulties; and also that it 1 See sect. 46 of the Patents Act, 1883, post, p. 502. 2 Sect. 2 (1 d) (3) and sect. 3 (1 e) of the Merchandise Marks Act, 1887, 50 & 51 Vict. c. 28: and sect. 105 of the Patents, &c., Act, 1883: 46 & 47 Vict. c. 57, post, p. 510. must not be one for effecting any purpose that is contrary to law or morality.1 The term "manufacture" is a very wide one. As the monopoly is permitted to promote the industries of the country, a "manufacture" must consist of something by which the industrial wealth of the country is increased. The monopoly is for the "sole working or making of any manner of new manufacture," hence a "manufacture" must be capable of being "worked" or "made," and as it must be something that others at the time of the grant "shall not use," it must be capable of being "used." For these reasons such things as schemes of co-operation or methods of conducting business, ideas embodied in literary form, such as the contents of a book, are not manufactures within the meaning of the statute. Although the embodiment of ideas in writing or print is the subject of copyright, and not a patent, yet the physical, as distinguished from intellectual, means, such as printing processes, binding, &c., of producing a book, are “manufactures" because producing a vendible article—a book; and these means are independent of the contents (ie. the embodied ideas) of the book. When an inventor has an invention for which he desires a patent, he must comply with certain conditions laid down by statute. Inasmuch as the patent is of the nature of a reward for the introduction of a new manufacture, it is granted conditionally on the inventor making a true and full disclosure of his invention and the mode of performing it, so that men skilled in the particular art may, without having to investigate or to solve the problem of overcoming difficulties, know how to carry it out for their own benefit after the fourteen years have expired. For this purpose the inventor must file at the Patent Office a "specification" setting forth clearly what his invention is and the mode of performing it. The rules on the several matters alluded to in the foregoing paragraphs have been evolved through a long series of decisions, and are now fairly well ascertained and defined. But there is immense difficulty in applying these rules in various cases as they arise. From the technical nature of the facts in each case and the difficulty of 1 Sect. 86 of the Act of 1883, post, p. 504. 2 R. v. Arkwright, 1 Web. 71 (per Buller, J., supported by Tindal, C.J., in Crane v. Price, 1 Web. 409; 12 L. J. C. P. 86). 3 Cooper's App., 19 R. P. C. 53; Johnson's App., 19 R. P. C. 56. 4 See post, p. 400. taking a comprehensive view of previous decisions, these rules are not of easy application. In the following pages the reader's attention is directed to the application of the rules as well as to their enunciation. Treatment of the Subject. In dealing with the question of the Grant and Validity of Patents for Inventions from the point of view of the inventor, it must be borne in mind that, according to the English law and practice, the question of validity (save in a few cases) 1 cannot be entertained or decided by the authorities whose duty it is to grant such patents. The inventor takes his patent at his own risk, and the validity of the grant may be contested in subsequent proceedings in the High Court, either by a Petition for Revocation being presented, or by the Defence in an action for infringement. A "patentable invention" and a “valid claim" mean, therefore, not merely those for which a grant may be obtained, but those which will be upheld and supported in subsequent litigation. It appears that at least 42 per cent. of the patents granted in England are invalid on the ground of want of novelty alone. The rules on which the questions affecting the grant and validity of patents depend are derived from various sources: (1) the common law and considerations of public policy; (2) the Statute of Monopolies, 1624; (3) a long series of decisions elucidating the foregoing; (4) the Patents, &c., Acts, 1883 to 1902, and cases thereon; and (5) the rules made under the provisions of those Acts. Although the rules relating to validity are mainly found in actions for infringement and petitions for revocation of patents, yet a knowledge of them is necessary in order to avoid taking out a patent which cannot be subsequently maintained when challenged. Under the new practice introduced by the Act of 1902, the applicant will be informed by the Comptroller of such previous specifications as appear to anticipate the invention in respect of which a patent is applied for. He must therefore, with professional assistance in most cases, decide whether he will modify his application, and if so, in 1 See further, post, p. 102. 2 The Comptroller's estimate of the number anticipated by earlier specifications is 42 per cent. (see Par. Rep. 1901, Cd. 506, par. 6); of 213 contested in the Courts from 1893-1902 inclusive, 110 were found invalid. 3 The date on which the new procedure comes into operation will be fixed by an order of he Board of Trade, probably early in 1905. what manner. This decision cannot be arrived at without a knowledge of the principles upon which the Courts decide on the validity of patents, and the mode of application of those principles. The rules and their application are treated of in the following pages under four main heads or divisions :— I. The consideration of the "manufacture" or "invention" for which III. The persons to whom and the conditions on which the grant will IV. The procedure to be followed, the drafting of specifications, the amendment of specifications, and opposition to the final sealing of the patent. 1 It will be seen that, though logically distinct, this cannot be considered altogether apart from the Specification under the next head. |