tions for leave to amend specifications under the Act of 5 & 6 Wm. IV., to impose as a condition that no action for an infringement should be brought either against certain persons or against any of the public, before the date of the disclaimer.

The judges of the Court of Queen's Bench having decided, in the case of Holmes v. London and NorthWestern Railway Company, that a patent for an improved turn-table for railway purposes was invalid, because the specification was construed as claiming not only the combination but also the several parts, some of which were old, the assignee of the patent applied to the Solicitor-General for leave to enter a disclaimer of the separate parts of the turn-table, so as to confine the claim to the combination of parts forming the whole apparatus. The Solicitor-General (1853), after hearing counsel in opposition, as well as for the applicant, granted the leave sought for, upon the terms of the applicant undertaking not to bring or prosecute any action or suit against certain parties, in respect of any turn-tables made or used by them before the date of the disclaimer. (Macr. P. C. 31.) See also in the matter of Smith's Patent (Macr. P. C. 232).

In Re Tranter's Patent of 1865, which was a patent for fire-arms and cartridges, an application was made in August 1873, by the assignees of the patent for leave to disclaim certain portions of the matters claimed in the specification, and the application was opposed by manufacturers of fire-arms and cartridges chiefly on the ground that they had embarked large capital in the manufacture of cartridges, and that they ought to be protected in their manufacture against any proceedings on the part of proprietors of a patent which had been allowed to remain in its imperfect state for such a long time, inasmuch as the effect of the disclaimer would be to enable the applicants to take such proceedings.

Coleridge, A. G., granted the leave sought for on the condition that the applicants should undertake that no legal proceedings be taken against the opponents in respect of the manufacture, use, or sale of cartridges, or for any alleged infringement of the patent in question when amended by disclaimer.' And this decision was followed by Giffard, S. G., in the case of Re Jones's Patent, on the application of Mr. Batley, the assignee, for similar leave.

On an application for leave to disclaim parts of the specification under Crabtree's Patent No. 2775 of 1878, James, A. G., Feb. 12, 1881, allowed the application upon terms that no action should be brought against any person in respect of any machine which had prior to the hearing been made or sold by any of the opponents. He directed that lists of such machines should be supplied and verified if required by statutory declaration.

The principle of these cases received considerable extension in Re Medlock's Patent (Newton's L. J. N. S. vol. xxii. p. 69). That was an application for leave to enter a disclaimer of part of a specification under a patent for preparing a red or purple dye by treating aniline with dry arsenic acid. The patent had been the subject of considerable litigation, which had resulted in its being declared invalid on the ground that, of the two alternative processes described in the specification, confessedly only one would answer (see Simpson v. Holliday, 13 W. R. 577, cited ante). The application was opposed by several chemical manufacturers, some of whom had been made defendants in the various suits instituted by the owners of the patent. Collier, S. G., would only consent to grant the leave sought for on the terms that the applicants should bring no action against the opposers for any infringement of the patent by the use or continued use, during the continuance of

the patent, of any processes for manufacturing red and purple dyes in use by them at the present time.' The applicants refused to accept this condition, and the Solicitor-General consequently disallowed the dis

claimer.

The law officer, however, did not always insist upon the patentee giving an undertaking of this nature. It was sometimes thought right that he should be at liberty to seek compensation for the past infringement of the patent (Re Lucas's Patent, Macr. P. C. 234).

We have seen that under the eighth sub-section of the eighteenth section of the new Act 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 the amendment.' The first section of the earlier Act (5 and 6 Wm. IV. c. 83), now repealed, under which disclaimers were first authorised, disallowed such as shall extend the exclusive right granted by the letters patent.'

6

In the matter of Bateman and Moore's Patent (Macr. P. C. 116), an application was made (1854) to Bethell, S. G., for leave to alter the specification, so as to make it disclaim the separate parts of the invention, and claim only the combination. The Solicitor-General said, that he should require to see from the specification itself that it had not been intended to claim the separate parts, but their combination only. Finding some indication of an intention to claim the apparatus as a whole, he gave the patentees permission to reject certain words in the claiming part of the specification which were inconsistent with such a construction.

Several cases came before the courts in which the construction of the prohibitive words of the earlier Act was debated. The object of the Act authorising disclaimers' (said Lord Westbury in the case of Ralston

v. Smith, 11 H. L. C. 223) was plainly this, that when you have in your specification a sufficient and good description of a useful invention, but that description is imperilled or hazarded by something being annexed to it which is capable of being severed, leaving the original description in its integrity good and sufficient, without the necessity of addition, then you may, by the operation of a disclaimer, lop off the vicious matter, and leave the original invention, as described in the specification, untainted and uninjured by that vicious

excess.'

The language of the old Act was always construed as limiting the amending power to the operation of cutting out peccant matter, but power to correct and explain is expressly given by the new Act.

It will be part of the duty of the Comptroller and the law officers, when hearing applications for leave to amend, to see that the proposed amendment does not extend the scope of the patent, or alter the claims in such a way that the invention would become something substantially larger or substantially different from what it was originally.

Where a specification claims both a combination and some of the parts, a disclaimer may sever and reject the claim either to the combination or to any of the parts. But a specification cannot be altered so as to be made to claim a combination or parts if they were not previously claimed. Nor will a disclaimer be good which attempts to make a specification cover an invention different from that originally specified. For example, where a patent has been obtained for a combination of three parts, and it is found that one of them is useless, a patentee is not entitled to disclaim that one with a view of covering a combination of two parts, inasmuch as that would be an invention different from the one for which he had taken out his patent.

The operation of a disclaimer was considered in the case of Seed v. Higgins (8 E. & B. 755). The patentee described in his specification, and illustrated by drawings, some machinery for preparing cotton, and after saying that the apparatus so described represented one practicable mode of carrying out the invention, he proceeded to state that he did not intend to confine himself to this particular method, but claimed as his invention the application of the law or principle of centrifugal force for a certain purpose. He afterwards disclaimed his claim to the application of the law or principle, and limited his claim to the application of centrifugal force acting in a certain manner as described in the specification. This was held to be a limitation of his claim to the particular apparatus described, whereby the principle was applied in a certain way, and afforded no ground for contending that the disclaimer described a different invention from that described in the specification. This view was also taken on appeal by the Court of Exchequer Chamber (8 E. & B. 771) and by the House of Lords (8 H. L. C. 550).

The prohibitive words in the first section of the Act of William IV. were held to apply to all cases where the disclaimer attempted to give the patentee a right which he could not have enjoyed under the specification as originally framed. Thus in the case of Ralston v. Smith (11 C. B. N. s. 471) it was decided by the Court of Exchequer Chamber, and afterwards by the House of Lords (11 H. L. C. 223), that a disclaimer is bad which is in effect an attempt to turn a specification for an impracticable generality into a grant for a specific process, comprised within the generality in one sense, but not to be discovered there without going through the same course of experiment which led to the discovery of the specific process in the