Reports of Patent, Design, and Trade Mark Cases

The Valveless Gas Engine Syndicate, Ld. v. Day.

which, by a slight modification, utilises all or most of the essentials of an earlier invention, so as to apply them to a slightly altered class of engine, constitute an improvement on the original invention, assuming always that the result is useful? If it is desirable that mixing in the enclosed space should be dis5 pensed with, why is it not an improvement upon an invent on relating to the composing, compression, mixture and management of the explosive material, to show how the mixture may be conveniently brought about at a later stage, when one of the factors is oil vapour. It could not, I think, be denied that the new invention applies in terms to the class of engine to which alone the earlier 10 inventions are claimed to refer. It shows how in such engines the introduction of a certain class of vapour may be conveniently postponed till the air has left the compression chamber. Why is it any the less an improvement on the improvements already addressed to such engines, when it shows how, by a slight modification, the working of the engine itself may be simplified by dis15 pensing with one step in the process, and the substance, of what formed the old improvements made applicable to the engine so improved. It is at once an improvement, in the class of engines to which the old inventions were applied, and an improvement on those inventions themselves by rendering them applicable over a wider area in the same field. To hold otherwise would, I 20 think, be to put rather too narrow and technical a meaning upon improvements on the inventions covered by the previous patent.

I agree that the appeal must be allowed, but that the case must go down for retrial on the question of rectification on the conditions stated by my Lord.

The action was heard, on the claim for rectification, by BIGHAM, J., on the 25 19th and 20th of December, 1898, judgment being delivered on the 16th of January, 1899. The same Counsel appeared as before for the respective parties.

The learned Judge decided that the agreement of the 14th of June 1893 should be rectified by inserting a clause that the patent of 1895 and all patents 30 similar to it were expressly excluded from the agreement. He ordered Day to pay the costs of the first trial, and the Syndicate the costs of the second trial.

Starey v. Graham.

IN THE HIGH COURT OF JUSTICE.-QUEEN'S BENCH DIVISION.

Before MR. JUSTICE LAWRANCE and MR. JUSTICE CHANNELL.
January 25th, 1899.

STAREY v. GRAHAM.

"Patent Agent."-Person knowingly describing himself as such without being 5 registered." Right acquired."—Alleged repeal of Register of Patent Agents Rules 1889.-Conviction.-Appeal dismissed.-Patents, &c. Act, 1883, section 101, Patents, &c. Act, 1888, sections 1 and 27.-Register of Patent Agents Rules 1889, Patent Rules 1890, Rule 81, and Register of Patent Agents Rules 1891.

An information was in 1898 preferred against S. for knowingly describing 10 himself as a Patent Agent, he not being registered as such under the Patents, &c. Act, 1888. S. was convicted and fined, but a case was stated by the magistrate. S. had practised and described himself as a Patent Agent before the coming into force of the Act of 1888, and had made the necessary statutory declaration, and thereupon the required certificate of the Board of Trade, that he was 15 entitled to be registered, had been issued, but he had not paid any fees and had not been registered as a Patent Agent. The special case raised the questions: (1) whether the Appellant had acquired a right in the description "Patent Agent" under the Patents, &c. Act, 1888, section 27 and (2) whether the Register of Patent Agents Rules, 1889, were repealed by the Patent Rules, 1890, 20 and, if so, whether they were revived by the Register of Patent Agents Rules,

1891.

Held, by LAWRANCE, J., and CHANNELL, J., that the appellant had not acquired a right within the meaning of the Patents, &c. Act, 1888, section 27, and that if the Rules of 1889 were repealed as contended, they were revived by the Rules of 25 1891. The Conviction was affirmed, and the appeal dismissed with costs.

By the Patents, Designs, and Trade Marks Act, 1883, section 101, it is provided (1) That the Board of Trade may, from time to time, make such general rules "and do such things as they think expedient, subject to the provisions of the "Act. (3) General rules may be made under this section at any time after the 30 passing of this Act, but not so as to take effect before the commencement of "this Act, and shall (subject as hereinafter mentioned) be of the same effect as "if they were contained in this Act, and shall be judicially noticed. (4) Any "rules made in pursuarce of this section shall be laid before both Houses of "Parliament, if Parliament be in session at the time of making thereof, or, if 35 "not, then as soon as practicable after the beginning of the then next session of "Parliament, and they shall also be advertized twice in the Official Journal' "to be issued by the Comptroller. (5) If either House of Parliament, within "the next 40 days after any rules have been so laid before such House, resolve "that such rules, or any of them, ought to be annulled, the same shall, after the 40 "date of such resolution, be of no effect, without prejudice to the validity of

Starey v. Graham.

anything done in the meantime under such rules or rule, or the making of any new rules or rule."

By the Patents, Designs, and Trade Marks Act, 1888, section 1, it is provided that "(1) After the 1st of July, 1889, a person shall not be entitled to describe 5 "himself as a Patent Agent, whether by advertisement, by description on his place of business, by any document issued by him, or otherwise, unless he is "registered as a Patent Agent in pursuance of this Act. (2) The Board of Trade "shall, as soon as may be after the piss ng of this Act, and may from time to "time, make such general rules as are, in the opinion of the Board, required for 10" giving effect to this section, and the provisions of section 101 of the principal "Act shall apply to all rules so made as if they were made in pursuance of that "section. (3) Provided that every person who proves to the satisfaction of the "Board of Tra le that prior to the passing of this Act he had been bonâ fide "practising as a Patent Agent, shall be entitled to be registered as a Patent Agent 15" in pursuance of this Act. (4) If any person knowingly describes himself as a Patent Agent in contravention of this section, he shall be liable on summary "conviction to a fine not exceeding 207. (5) In this section 'Patent Agent' means exclusively an agent for obtaining patents in the United Kingdom.' By section 27 of the same Act it is provided that " The principal Act shall, as 20" from the commencement of this Act, take effect subject to the additions, omissions, and substitutions required by this Act, but nothing in this Act "shall affect the validity of any act done, right acquired, or liability incurred "before the commencement of this Act."

The Register of Patent Agents Rules, 1889, made by the Board of Trade, 25 provide for the keeping by the Institute of Patent Agents of the Register of Patent Agents, and for the payment of a fee of 57. 58. by a Patent Agent on registration, and of an annual fee of 37. 3s. by every registered Patent Agent on or before the 30th of November in each year in respect of the year commencing January the 1st following. The fifth rule provides that a person desirous of 30 being registered on the ground of having practised as a Patent Agent before the passing of the Act is to transmit to the Board of Trade a certain statutory declaration, but the Board of Trade may require further or other proof. Upon the receipt of such statutory declaration, or of such further or other proof to their satisfaction as the case may be, the Board of Trade shall transmit to the 35 Registrar a certificate that the person therein named is entitled to be registered in pursuance of the Act, and the Registrar shall, on the receipt of such certificate, cause the name of such person to be entered in the register.

By Rule 81 of the Patent Rules, 1890, it is provided that "All general rules "heretofore made by the Board of Trade under the Patents, Designs, and 40" Trades Marks Acts, 1883 to 1888, and in force on the 31st day of March, 1890, "shall be and they are hereby repealed as from that date, without prejudice, "nevertheless, to anything done under such rules or to any application then "pending."

The Register of Patent Agents Rules, 1891, refer to the Rules for 1889, as though 45 the same were in force, amending the same in various respects, and providing (inter alia) that they should, "where applicable, and save so far as they are altered by the present rules, have effect," with the modifications therein mentioned. This was the hearing of a Special Case stated by Sir John Bridge, Chief Magistrate of the Police Courts of the Metropolis, sitting at the Police Court, Bow 50 Street. An information was on the 30th of June, 1893, peferred by Henry Ho vgrave Grahan, Secretary and Registrar of the Chartered Insitute of Patent Agents, agi nst John Starey un ler the Patents, Designs, and Tra le Marks Act, 1885, charging the said John St trey with knowin ly describing hi nself as a Patent Agent, he not being registered as such under the Patents, Designs, and 55 Trade Marks Act, 1888. The summons was heard at Bow Street on the 7th and 14th of July 1898, and the said John Starey was convicted and was fined 2 guineas and 3 guineas costs. The following case was stated by Sir J. Bridge

Starey v. Graham.

on Starey's application. "Henry Howgrave Graham proved he was Secretary "and Registrar of the Chartered Institute of Patent Agents and produced the "Board of Trade certificate of registration of the Institute of Patent Agents. "A copy of the rules of the Institute and what purported to be the rules of 1889 "and 1891 made pursuant to 46 and 47 Vict. c. 57 and 51 and 52 Vict. c. 50 and the 5 "current register of the Institute and he proved that no person named John "Starey was registered therein. An application dated the 9th March 1898, on "which the words Patent Design and Trade Mark Agent' appeared with the "name John Starey appended thereto was shewn to the witness. He also "stated that the Defendant John Starey called upon him in February 1898 and 10 "asked if he was entitled to be registered, and that he looked amongst his papers and found a certificate entitling one John Starey to be registered and "told him he could be registered at any time on payment of 51. 5s. Od. the fee "prescribed by the Patent Agents Rules 1889. He produced a certificate of the "Board of Trade 10748 94 dated 9th October 1894, that one John Starey was 15 "entitled to be registered. A statutory declaration made by one John Starey "dated September 4th 1894 was produced to the witness, and he said that it "appeared to be in the same handwriting as to the signature as the application "for the Trade Mark. It was contended on behalf of the Respondent that the "Acts herein before referred to and the Rules of 1889 and 1891 empower the 20 "Institute to apply to a court of Summary Jurisdiction against any person "describing himself as a Patent Agent who was not registered as such with "the Chartered Institute of Patent Agents. It was contended on behalf of the Appellant that the rules of 1889 had been repealed by Rule 81 of the Patent "Rules 1890, and it was contended on behalf of the Respondent that such 25 "repeal clause did not apply to the rules of 1889, but if it did and they were "repealed by the rules of 1890, then that they were revived by the rules of "1891. There is no revivor clause in the rules of 1891 but they refer to the "rules of 1889 as though the same were valid and in force and had not been repealed by the rules of 1890. It was contended on behalf of the Appellant 30 "that there was no power under the said Acts of Parliament to revive a repealed rule by a subsequent rule but that if it was desired to revive a "repealed rule the rule must be re-enacted pursuant to section 101, sub"section 4, of 46 and 47 Vict. c. 57. No proof was placed before me that the "requirements of the said section and sub-section had been carried out, and it 35 was contended on behalf of the Appellant that in the absence of proof of "the regular re-enactment of such rules they were not binding and that "the rules of 1889 are the only rules which fix the amount to be paid to the "Institute for registration.

"There was a third point raised on behalf of the said Appellant, and it was 40 proved on his behalf that he had bona fide practised as a Patent Agent many years before the passing of the Act of 1888 and that he has described himself as a 'Patent Agent' and it was contended that the Act of 1888 applied to three "classes of individuals, first to persons acting bona fide as 'Patent Agent' at "the time of the enactment being in force, with whom it was optional as to 45 "whether they should be registered as 'Patent Agent' or not. Secondly, persons who were acting bona fide as 'Patent Agent' and so described them. "selves at the time of the passing of the Act and who desired to be registered as Patent Agents, might, if they elected to do so, be registered, and it was "contended that this was a voluntary act on their part; and, thirdly, that all 50 persons who desired to become Patent Agents and described themselves as "such subsequent to the passing of the Act, were subject to the requirements of "the Act and the rules thereunder, and it was contended that as the Appellant "had acquired a right to describe himself as a Patent Agent, he having bond "fide acted as one and described himself as one for many years prior to the 55 "passing of the Act of 1888, that he was at liberty to describe himself as a "Patent Agent whether he paid or not the registration fee, or whether he was

Starey v. Graham.

registered as such Patent Agent or not, and in support of this contention "Section 27 of Act 51 and 52, Vict. c. 50 was relied on, and it was contended "that the words 'right acquired' therein referred to the case of a person who was a Patent Agent before the Act and had bona fide described himself as 5 "such, and that as the Defendant had bona fide acted and described himself as a Patent Agent he had acquired a right to do so, and could not have that right "taken from him and be compelled to pay a yearly fee for that which he has "done lawfully for years. Having compared for myself the signature to the "application form with the signature to the statutory declaration, I was of 10" opinion that the Appellant had signed the application form.

"The questions of law arising on the above statement for the opinion of the "Court therefore are: First, whether the Appellant had acquired a right in the "description 'Patent Agent' under section 27 of 51 and 52 Vict. c. 50 from the "fact of his having bond fide used it, and described himself as such in his 15" business for many years prior to the said Act coming into force. Second, "whether the rules of 1889 were repealed or not by the rules of 1890, and, if so "repealed, did the Patent Rules of 1891, by reference to them, revive them, and was it necessary for the re-enactment of such rules, for the provisions of "section 101, sub-section 4 of 46 and 47 Vict. c. 57 to be complied with.' The matter now came on for hearing before LAWRANCE and CHANNELL, J. J., sitting as a Divisional Court.

Muir Mackenzie and Nathl. Green (instructed by Firth and Co.) appeared for the Appellant; Sutton and Corrie Grant (instructed by Radford and Frankland) appeared for the Respondent.

Muir Mackenzie for the Appellant.-The Appellant was fined for describing himself as a Patent Agent without having been registered. Two questions arise-(1) whether the Rules of 1889 are valid and in force, and (2) whether under the circumstances of this case the Appellant was not protected, having been a Patent Agent before the Act of 1888 was passed. It is submitted that 30 the Rules of 1889 were repealed by the Patent Rules 1890, but it will be contended on behalf of the Respondent that, even if that were so, they were revived by the Rules of 1891. The Appellant had bona fide practised as a Patent Agent, and described himself as such before 1888, and it is contended that in such a case registration was voluntary. By Section 27 of the 35 Patents, &c. Act, 1888, nothing in the Act is to affect any right acquired before its commencement. Sections 82 and 101 of the Patents, &c. Act, 1883, are referred to. The conviction was under the Patents, &c. Act, 1888, section 1.. (4). The Rules of 1889 were made under section 1 of that Act. The Appellant had complied with all requirements except the payment of the fee. A person who 40 has bona fide practised as a Patent Agent before the Act has a right to registration, but he is not compelled to register. By Rule 81 of the Patent Rules 1890, general rules made under the Patents, &c. Acts, 1883 to 1888, are repealed, and the Rules of 1889 are therefore repealed. It was decided by the House of Lords in Chartered Institute of Patent Agents v. Lockwood, 45 11 R.PC. 374, that the Rules of 1889 were valid, but the attention of the House was not called to the repeal. I submit that the Appellant had acquired a right to practise as and to call himself a Patent Agent. [CHANNELL, J.-The words of the Act mean a specific right.] As to the meaning of these words see Hough v. Windus, 12 Q.B.D., 224, a case on the Bankruptcy Act, 1883, 50 Sections 146 and 169. Again, the Register of Patent Agents Rules, 1889, are made under the Patents, &c. Acts, 1883 to 1888, that is to say, under the combined Acts, and therefore repealed by Rule 81 of the Patent Rules, 1890. It is true that the Register of Patent Agents Rules, 1891, ignored the repeal and referred to the Rules of 1889, but rules cannot be enacted by such a reference; all the 55 requirements of section 101 of the Patents, &c. Act, 1883, must be observed on re-enactment. It is found, as a fact, that there was no evidence that such requirements were satisfied.

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Reports of Patent, Design, and Trade Mark Cases, Volume 16