can prove that he arrived at the invention alleged as constituting the disconformity by some course of research apart from that covered by the applicant's provisional specification. Such a case is clearly contemplated by the Act. The question at once arises whether this does not afford the inventor a guide by which the risk of disconformity may be avoided. Can it be said that an invention independently arrived at is not such a large step in advance as to constitute a further distinct invention ? Suppose the test be applied to cases of the class of Nuttall v. Hargreaves (ante, p. 334), and Cera Light Co. v. Dobbie (ante, p. 71), in which the novelty of the invention lay entirely in the additional matter. In such the test is obviously satisfied, for others, knowing of the anticipations, could have made the additional inventions as well as the patentees. Another class of cases are those like The Castner-Kellner Alkali Co. v. Commercial Development Corp. (ante, p. 436), in which the provisional has a comparatively narrow ambit owing to the existence of other somewhat similar inventions. The method introduced there as a "modification," and constituting the disconformity might have been independently invented or developed from some of the similar inventions or methods known at the date of the application. On the other hand, where, owing to the novel principle or arrangement employed, the provisional has a wider ambit, as in Woodward v. Sansum (ante, p. 300), in which the alleged disconformity consisted in alteration of the relative action of the parts, one cannot see how an independent inventor could devise the alleged disconform device without at the same time devising the arrangement shown in the provisional, or at least the principle of it. In order to aid the inventor to decide whether to include a certain improvement or make it the subject of a separate application it may be useful to apply the test here suggested. If, considering the state of public knowledge at the date of the provisional, it be possible for one to devise or invent the additional invention without knowing of or inventing what is described in the provisional, it will be safer to make a separate application for the improvement. This test appears to be satisfied in all the reported cases in the House of Lords and Court of Appeal with the following exceptions:In Gaulard & Gibbs' Patent, in the Court of Appeal, disconformity was found under circumstances (ante, p. 3) in which this test would fail; but the House of Lords did not approve of the finding on that issue. In Lane Fox v. Kensington, &c. (ante, p. 349), the Court of Appeal followed their own decision in the case of Gaulard & Gibbs' Patent, but found the patent invalid on other grounds. In Cassel, &c. v. Cyanide the Court of Appeal held the patent to be invalid on another ground, viz. want of novelty in another claim. Ante, p. 369. INDEX. References are given to cases under the headings of the subject-matter of the Abandonment of application. See Application of opposition. See Opposition Abridgments of specifications, places where accessible, 600-606 of complete specification, 117, 487 request for acknowledgment, 593 request for extension of, 528 Achromatic glasses (Dollond's Patent), 50 Act of 1902. See New Practice Address of applicants to be left at Patent Office, 105, 527 notice of, Form R., 565 Admiralty memorandum for inventors, 573, 574 Advertisement of acceptance of specification, 117, 488, 528 Agent, employment of (P.O.R. 81), 104, 541 of incapable person, 104, 506 for searching for anticipations, IOI, 594 of foreign inventors, 176 cannot avail himself of convention, 177 Alien enemy, grant of patent to, 49 Ambiguity in specification avoids patent, 59 See Complete Specification, Sufficiency of Specification See Benevolent Construction Amendment of application for patent 107, 487, 527 Amendment of Specifications, 591 occasions for amendment, 160 Act of 1883 (sect. 18), 161-163, 491, 492 of allowance of, 167 of allowance in part, 169 Act of 1902 (sect. 1), 116, 523 advertisement of amendment, 161, 493, 536 how to be made, 535 cases illustrating, 164–172 of claims, is permissible, 136 not allowed as of course, 113 of clerical errors by Comptroller, 505 form of request for (Form P.), 563 Comptroller, when required by, 107, 108, 115, 160, 487 description may be amended, 136 leave of Court, when necessary, 172 Illustrations, 174-176 recovery of damages after, 492 object of (under sect. 18), 164 opposition, in cases of. See Disclaimer and Opposition to grants form for (Form G.), 556 notice to attend (Form E.), 554 provisional specification, 115 See also Application title, rule as to amending, 115, 136 Anchors, raising ships (Hastings v. Brown), 75 Anthracite coal in smelting (Crane v. Price), 17, 195 Aniline. See Dyes Anisoline. See Dyes Anticipation, definition of, 19, 20 abandoned experiments are not, 23 See Failure Anticipation-continued. by documents. See Prior Publication disclosure necessary for, 27 of invention without mode of performing it, 28 limit to anticipating specification, 26, 524 Appeal to Law Officers, Rules for, 571, 572 no appeal from Law Officer, 101 See also Amendment of Specifications, Application, Opposition Application of old things to new use. See Invention and Manufacture Application for patents, 100-105 statutory provisions, 486-488 Forms, 545 applicant, address of, 105, 527 See True and First Inventor representative of deceased inventor, 104, 498, 527 of person under disability, 104, 506 with provisional specification, 106 acceptance of, 109 amendments in, 108, 487, 527 complete specification, time for, 110, 487 reference to examiner, 108, 115, 486 title of invention, 106. when important, 100 with complete specification, 110-113 acceptance of, 117, 488, 528 reference to examiner, 108, 114, 115, 486 when abandoned, 110, 487 amendment of, 109 appeal to Law Officer, 115, 487 a manufacture, 2, 3, 102, 502 one invention only, 107, 108, 498 not contrary to law or morality, 2, 3, 103, 504 Assignments of Patents- for particular districts, 498 of inventions relating to war, 117, 500 .registration of, 493, 504, 537, 593 Assistance, pecuniary, not given by Patent Office, 595 |