patentee had not described the mode in which the ruffle was made; but Lord Hatherley, C., held that as the machine was very simple, and as the drawing showed how it was worked, that was sufficient. (See also Hastings v. Brown, 1 E. & B. 454; Morton v. Middleton, 1 Cr. S. 3rd Ser. 722; Daw v. Eley, L. R. 3 Eq. 500 n., 14 W. R. 126; Poupard v. Fardell, 18 W. R. 127.) It seems that a patentee will not be allowed, in an action brought by him for an infringement, to refer to a drawing as descriptive of a material part of the invention not described in the letterpress of the specification (Clark v. Adie, L. R. 10 Ch. 667; affirmed on appeal, L. R. 2 App. Cas. 315; Macfarlane v. Price, 1 Stark, 199, 1 W. P. C. 74 n.). In the matter of Pullan's Patent (May 1878), leave was given by the Lord Chancellor upon an ex parte application to correct a filed specification by the addition of drawings alleged to have been omitted through inadvertence. The drawings so added were not described in the specification. Some months after the addition was effected an application was made to the Lord Chancellor by a person who had been threatened with an action for infringing the patent to re-hear the original application. The Lord Chancellor decided to hear the matter afresh, and upon reading the affidavits filed on both sides, and finding that his order had been made on imperfect information, ordered the added drawings to be struck out of the specification, with costs. RELATION OF THE COMPLETE TO THE PROVISIONAL We have seen that the provisional specification need not contain all the details by which the invention is proposed to be carried into effect: it is sufficient if a broad outline of the invention is there sketched, so that its whole nature is ascertainable. On the other hand, it is permissible for a patentee to let drop some of the features of the provisional specification when he comes to prepare his complete specification, provided there is no fraud; that the essential features of the invention are preserved; and that the complete specification does not claim something different from the provisional specification. (Thomas v. Welch, L. R. 1 C. P. 192; Penn v. Bibby, L. R. 2 Ch. 134; Stoner v. Todd, L. R. 4 Ch. 58; Wright v. Hitchcock, L. R. 5 Ex. 46.) Although portions of the provisional specification may within the limits above mentioned be omitted from the complete specification without endangering the validity of the patent; and although the invention set forth in the earlier document may be expanded and developed when the complete instrument comes to be prepared, in accordance with the fuller knowledge which the inventor may then possess, yet he must carefully keep within the lines originally laid down, and must sedulously avoid introducing into the complete specification anything which can be construed as a larger or different invention. A material addition to the invention for which he originally sought protection will not be permitted. Thus, where the provisional specification set forth an invention for preserving animal substances in a fresh state for some time, which consisted in the application of a definite mixture of an aqueous solution of gelatine with an aqueous solution of bisulphite of lime, and the complete specification in addition to the use of that mixture claimed the use for the same purpose of an aqueous solution of the bisulphite of lime alone, this was held to be a distinct matter not covered by the provisional specification. It was an invention 'larger than and different from that disclosed in the provisional specification,' and the patent was therefore invalid (Bailey v. Roberton, L. R. 3 App. Cas. 1055, affirming the decision of the Court of Session in Scotland). And see United Telephone Company v. Harrison, L. R. 21 Ch. D. 721, where it was held that if part of an invention is insufficiently described in the provisional specification, the patent will be rendered void by the description and claim of that part in the complete specification. If any part of the invention, as described in the complete specification, does not fall within the title, the patent will be invalid. (Croll v. Edge, 9 Scott, C. B. R. 479; Crossley v. Potter, Macr. P. C. 240.) However, where the title of a patent was for Certain Improvements in the Doors and Sashes of Carriages,' and the patentee, in his specification, said, 'I have shown my invention as applied to railway carriage-doors and windows, although they are equally applicable to the doors and windows of any other description of carriage or in any position where doors and windows are subject to jar and vibration,' this was held not to extend his claim beyond the title (Oxley v. Holden, 8 C. B. N. s. 707). See also Newall v. Elliott (10 Jur. N. s. 954). A patentee will not be allowed to read the provisional specification with the view of aiding or supplying a defect in the complete specification (Mackelcan v. Rennie, 13 C. B. N. s. 52). RULES TO BE OBSERVED IN THE PREPARATION OF SPECIFICATIONS. Good Faith. The first thing that a patentee about to specify should bear in mind is, that he is bound to act with good faith. There must be no studied ambiguity or equivocal language; no attempt to keep anything secret; he must make a full disclosure of his invention; and his whole specification must be fair, open, explicit, and honest. If he acts in any other manner, it will bear hardly with him when his specification comes to be examined in a court of justice. Definition of the Invention. The next point to be attended to is the accurate definition of the invention, so that the reader may clearly understand of what it consists. In the case of Macfarlane v. Price (1 Stark, 199; 1 W. P. C. 74) Lord Ellenborough said that the patentee in his specification should say, My improvement consists in this; describing it by words if he can, if not by reference to figures. But here the improvement is neither described in words nor by figures. . . . A person ought to be warned by the specification against the use of the particular invention, but it would exceed the wit of man to discover from what he is warned in a case like this.' Every party' (said Cresswell, J., in Gibson v. Brand, 1 W. P. C. 640) is bound to tell the public clearly by his specification what he claims, and what they may do or not do without risk of an action for infringing his patent.' A patentee sometimes obtains a second patent for improvements upon an invention which formed the subject-matter of a previous patent, and the second specification usually refers to the first. Care should be taken in preparing the second specification to make it distinguish clearly the later improvements (Eades v. Starbuck Waggon Co. W. N. 1881, p. 160) from the earlier invention; for notwithstanding the case of Harmer v. Playne (11 East, 101), there is reason to suppose that unless it can be seen on reading the second instrument, after the expiration of the earlier patent, of what the later invention consists, as something distinguishable from an old part, the second patent would be pronounced invalid. It seems that when the invention is partly original and partly communicated from abroad, the latter part should be defined in the specification. (Renard v. Levinstein, 10 L. T. N. s. 177.) In the case of a patent for an invention communicated from abroad, it is no answer to an objection that the specification did not sufficiently describe the invention, to say that the patentee has stated all that was communicated to him. (Wegmann v. Corcoran, L. R. 13 Ch. D. 65.) On the other hand, where an invention communicated from abroad is sufficiently described in the specification, it is not a valid objection to the patent obtained by an agent in this country, that the foreign inventor is possessed of information which has not been set forth in the specification. (Plimpton v. Malcolmson, L. R. 3 Ch. D. 351.) Besides furnishing a lucid and precise definition of the invention, the patentee must set forth how it is to be carried into effect so that the promised result may be duly accomplished. The specification must show plainly how the aim and object of the invention can be achieved, and with that view all necessary details, directions, and explanations must be correctly given; all the parts, apparatus, materials, and ingredients must be accurately described; proportions, quantities, times, temperature, and the like, so far as they are respectively material, must be stated, precisely if it can be done, approximately if that only is possible; whilst the needful processes and operations must be fully communicated and clearly unfolded. These things should be taken in proper order and expressed in perspicuous language. 'It is most important' (said Mr. Baron Alderson, in Morgan v. Seward, 1 W. P. C. 170) that patentees should be taught that they are bound to set out fully and fairly what their invention is. . . . The specification ought to contain a full description of the way in ... |