6

disclaimer. The specification in this case was expressed in general terms, embracing a great number of modes of engraving upon rollers any desired design for the purpose of embossing woven fabrics. It was afterwards found that only rollers with circular grooves. would answer, and the patentee thereupon, by disclaimer, limited his invention to such rollers. Now' (said Lord Chelmsford), as these were not specifically described in the original specification, but were merely involved in the general terms which were used, the patentee had not complied with the conditions of the letters patent in particularly describing and ascertaining the nature of his invention. When, therefore, by his disclaimer he confines his claim to circular grooved rollers as his sole invention, though in one sense he may be said to narrow a right, yet he really extends it, because he thereby describes his alleged invention sufficiently to enable him now to assert a right under the patent which he never could have successfully maintained upon the original specification alone.

Other decisions as to disclaimers under the old law were Cannington v. Nuttall (L. R.5 H. L. 205) and Dudgeon v. Thomson (L. R. 3 A. C. 34).

It seems, from the case of Thomas v. Welch (L. R. 1 C. P. 192), that all the claims might under the old law be struck out by disclaimer, provided that there was enough left in the specification to show distinctly what was the invention sought to be protected.

Under that part of the Act of 5 and 6 William IV. c. 83, which enacts that no objection shall be made, in any proceeding whatsoever, on the ground that the party making such disclaimer or memorandum of alteration had not such authority in that behalf,' it was held that the disclaimer of a patentee who had assigned all his interest in the patent could not be objected to (Wallington v. Dale, 7 Exch. 888). The language of the

new Act, as we have seen above, is that leave to amend shall be conclusive as to the right of the party to make the amendment allowed except in case of fraud.'

The Master of the Rolls may without bill filed order a disclaimer to be removed from the file, when filed without the consent of the patentee (Re Berdan's Patent, L. R. 20 Eq. 346).

The M. R. refused to cancel a memorandum of alteration made under 5 and 6 William IV. c. 83, when application was made to him for that purpose, on the ground that it extended the patentee's privilege and infringed the petitioner's patent rights, for he held he had no jurisdiction (Re Sharp's Patent, 3 Beav. 245).

The twentieth section of the Act of 1883 directs that where an amendment by way of disclaimer, correction, or explanation has been allowed under that Act no damages shall be given in any action in respect of the use of the invention before the amendment, unless the patentee establish to the satisfaction of the Court that his original claim was framed in good faith, and with reasonable skill and knowledge.

To amend clerical errors in a specification application must be made to the Master of the Rolls or the Comptroller as before stated.

The following cases decided by the Lord Chancellor or Master of the Rolls relate to the amendment of clerical errors under the old law: Re Sharp's Patent (3 Beav. 245); Re Redmund (5 Russ. 44); Re Ruberry's Patent (1 W. P. C. 649); Re Dismore (18 Beav. 538); Re Johnson's Patent (L. R. 5 Ch. D. 503).

If a patentee should enter a disclaimer after he has obtained an injunction against an infringer, he is no longer entitled to enforce the injunction, but must proceed de novo against the infringer (Dudgeon v. Thomson, L. R. 3 App. Ca. 34).

An order having been obtained to amend a specification during the progress of an action, subject only to the payment of the costs by the plaintiff, application was made to the Comptroller, and the Comptroller gave leave to amend as proposed without imposing any conditions. On appeal to the law officer, Herschell, S. G., he held that the leave should be made subject to the condition that no action should be brought or proceeding taken in respect of any infringement prior to the 1st January 1884, but without prejudice to any question in the pending action. The law officer stated during the argument that the Attorney General and he were of opinion that the Comptroller, as well as the law officer, had power to impose conditions on giving liberty to amend a specification by way of disclaimer (Re Hearson's Patent, R. P. C. 214).

COSTS.

The law officer is empowered by the thirty-eighth section of the Patent Act of 1883 to order costs to be paid by either party, and any such order may be made a rule of Court. But the Act does not authorise the Comptroller to award costs.

CHAPTER XI.

EXTENSION OR PROLONGATION OF LETTERS PATENT.

NOTWITHSTANDING the merit and utility of his invention, a patentee frequently finds himself nearly at the expiration of the term for which his patent was granted, without having reaped the reward which he was fairly entitled to expect. This may have happened from various causes. To perfect the invention, to work it out, and to bring it before the public, may have been attended with great expenses, which were never repaid. It sometimes occurs that the public are slow to acknowledge the merit of an invention of real value, and the patentee's privilege is on the point of expiring before they can be brought to extend their patronage to it. It may be that the patentee's monopoly has been infringed, and that much time has been lost and large costs have been incurred in enforcing or defending his just rights. Or it may be that the patentee did not himself possess sufficient means, and was never fortunate enough to meet with a capitalist to advance what was necessary to work the invention. From some one of these causes, or from several of them combined, it occurs frequently that a patentee fails to derive any benefit, even if he escapes loss, from an invention of sterling merit and utility.

In order to afford the unsuccessful but meritorious patentee an opportunity of remedying this hardship at a less cost than a special Act of Parliament, the statute of 5 and 6 William IV. c. 83, empowered him to petition

the Queen in Council for a prolongation of the term of his patent; and now by the twenty-fifth section of the Patent Act of 1883 it has been enacted that a patentee may, after advertising in manner directed by any rules made under this section his intention to do so, present a petition to her Majesty in Council, praying that his patent may be extended for a further term; but such petition must be presented at least six months before the time limited for the expiration of the patent.' Any person may enter a caveat, addressed to the Registrar of the Council at the Council Office, against the extension. If her Majesty shall be pleased to refer any such petition to the Judicial Committee of the Privy Council, the committee shall consider the same, and the petitioner and any person who has entered a caveat shall be entitled to be heard on the petition. The Judicial Committee are to have regard to the nature and merits of the invention in relation to the publie, to the profits made by the patentee as such, and to all the circumstances of the case. If they report that the patentee has been inadequately remunerated, her Majesty in Council may extend the term of the patent for seven, or in exceptional cases fourteen, years; or may order the grant of a new patent for the term therein mentioned, and containing any restrictions, conditions, and provisions that the Judicial Committee may think fit.

An assignee may apply for an extension, but he does not stand altogether in the same favourable position as the patentee. It is chiefly with the view of rewarding a meritorious inventor that the extension of a patent is granted. If, however, the assignee be a person who has assisted the inventor with funds to

In the case of Brandon's patent (1 R. P. C. 154), it was held that owners of patents existing before 1st January 1884 could apply for prolongations at any time before the expiration of such patents