A DIGEST OF THE PATENT LAW. CHAPTER I. "THE TRUE AND FIRST INVENTOR." s. 6. WHO is a "true and first inventor" is still governed by section 6 of the Statute of 21 James I. c. 3, which enacts: "Letters patent and grants of privilege for the term 21 Jac. I. c. 5, of fourteen years or under, hereafter to be made, of the sole working or making of any manner of new manufactures within this realm, to the true and first inventor and inventors of such manufactures, which others at the time of making such letters patent and grants shall not use, so as also they be not contrary to law, nor mischievous to the State, by raising prices of commodities at home, or hurt trade, or generally inconvenient," may be granted by the Crown. By section 4, subs. (1) of the Patents Act, 1883, it is enacted "Any person, whether a British subject or not, may $.4, Patents Act, make an application for a patent." And by section 117" Person" is defined as including a body corporate. Those who may be true and first inventors may be divided into the following: I. Any one who first suggests the practical principle of an invention. 1883. B 1. Any one who first suggests the practical principle of an invention. Suggestions made by workmen in carrying 2. Any one who first imports an invention from abroad not previously known here. 3. The first to take out a patent where two or more invent the same thing independently at the same time; but a patent may be granted jointly to two or more persons. 4. Any one who renders practically useful an invention not previously known as part of the common knowledge of the State, or not previously practicable. 1. Any one who first suggests the practical principle of an invention. Jessel, M.R., laid down the principle, in Plimpton v. Malcolmson, L.R. 3 Ch.D. 555 (1876), that "A first and true inventor must describe something in his specification which is not already known and used." If he derives his information which he has given the public either from books or from oral communication, he is not the true inventor, and is not entitled to a patent. Stead v. Williams, 2 Web. P.R. 130 (1843). And also in Gibson v. Brand, I Web. P.R. 627 (1842), it is laid down "that a man who has borrowed an invention from some other person, or taken it from a book, or learnt it from a specification, is not the first and true inventor. But he who first suggests the principle is the first and true inventor, although some one else helped him to carry it out. Minter v. Wells, 1 Web. P.R. 132 (1834). Discoveries and suggestions accessory to the main principle, and tending to carry it out in a better manner, made by the out an invention. Workmen of the inventor of the principle in the course of carrying out that principle, are the property of the inventor. Allen v. Rawson, I C.B. 551 (1845). Communication by one British subject to another. Makepeace v. Jackson, 4 Taunt. 770 (1813). But it is otherwise if the workman originated the invention, which then is the property of the workman. R. v. Arkwright, 1 Web. P.R. 64 (1785). Barker v. Shaw, God. P.C. 14 (1823). Bloxam v. Elsee, I C. & P. 558 (1825-7). A communication of an invention made in England by one British subject to another cannot be patented by the receiver of the communication, so as to make the receiver the true and first inventor;1 except in the case where the communica 1 Marsden v. Savile Street Foundry Co., L.R. 3 Ex.D. 203 (1878). tion has come to the legal representative of a person dying possessed of an invention. By section 12, sub-section 3 (b) of the Patents Act, 1883, S. 12, subs. 3 (b). if an applicant after sending in an application for a patent under section 5 of the same Act, dies before the expiration of fifteen months from the date of the application, the patent may be granted to his legal representative, and sealed at any time within twelve months after the death of the applicant. And this will be the case when a person dies before making his application, as it is enacted by— S. 34 (1.) "If a person possessed of an invention The effect of this section overrules the decision in Marsden v. Savile Street Foundry Co., L.R. 3 Ex.D. 203 (1878), as far as it relates to the legal representative of a person dying possessed of a patent. Knowledge obtained in acting as an official referee cannot Knowledge obbe made the subject of a patent. Patterson v. Gas Light and Coke Co., L.R. 3 App. tained officially 2. Any one who first imports an invention from abroad 2. Any one who not previously known here. "A man having learnt abroad an invention, and brought it over to this country and taken out a patent, has been held the true and first inventor within the Statute of 21 Jac. I. c. 3, s. 6, if the invention, being in other respects novel and useful, was not previously known in this country—' known' being used in that particular sense as being part of what had been called the common or public knowledge of the country' (per Jessel, M.R., in his judgment in Plimpton v. Malcolmson, L.R. 3 Ch.D. 555 (1876)). And this is also applicable to the case of an alien (s. 4, subs. 1, Patents Act, 1883; see p. 1). first imports an invention. 3. First to take out a patent. Edgeberry v. Stephens, 2 Salk. 447. Chappel v. Purday, 14 M. & W. 318 (1845). Beard v. Egerton, 8 C.B. 165 (1849). Letters patent may also be granted to an alien resident abroad for an invention communicated to him by another alien also resident abroad. Wirth's Patent, L.R. 12 Ch.D. 303 (1879). But the invention must not have been taken from any book published abroad, if any copy of it has come within this realm, even if the copy be unknown to the applicant for the patent. Stead v. Williams, 2 Web. P.R. 142 (1844); provided the publication has become known to a sufficient part of the public. Lang v. Gisborne, 31 L.J. Ch. 769 (1862). Stead v. Anderson, 2 Web. P.R. 147 (1846). And further see chap. ii. pt. ii. 3. The first to take out a patent, where two or more invent the same thing independently at the same time. A patent may be also granted jointly to two or more persons. Referring to this, Jessel, M.R., lays down in Plimpton v. Malcolmson, L.R. 3 Ch.D. 555 (1877): "Where two people invent simultaneously the same thing in this country, the first to take out the patent is held the first and true inventor." And under the two following sections of the Patents Act, 1883, the first to apply for such patent is held the true and first inventor. S. 7 (5.) "If after an application has been made, but before a patent has been sealed, an application is made, accompanied by a specification, bearing the same or a similar title, it shall be the duty of the examiner to report to the Comptroller whether the specification appears to him to comprise the same invention; and if he reports in the affirmative the Comptroller shall give notice to the applicants that he has so reported." S. 7 (6.) "Where the examiner reports in the affirmative, the Comptroller may determine, subject to an appeal to the law officer, whether the invention comprised in both applications is the same, and, if so, he may refuse to seal a patent on the application of the second applicant." S. 13. Every patent shall be dated and sealed as of the day of the application: Provided that no proceedings shall be taken in respect of any infringement committed before the publication of the complete specification : Provided also, that in case of more than one application for a patent for the same invention, the sealing of a patent on one of those applications shall not prevent the sealing of a patent on an earlier application." The effect of this will be that if the first applicant proceeds with his patent, on its being sealed it will oust the patent obtained by the second applicant1 who will have had full notice given him under section 7, sub-section 5, of the risk he ran from the prior application before he applied for his patent to be sealed. These sections thus overrule the decision in ex parte Bates, L.R. 4 Ch. 579 (1869) on this point. By s. 4. (2) of the same Act, it is enacted :— 66 'Two or more persons may make a joint application for a patent, which may be granted to them jointly." It has been held that a patent may be granted jointly to Joint patentees. two persons, in the case of an adult and a minor. Cheavin v. Walker, L.R. 5 Ch.D. 858 (1877). When a patent is granted to two or more persons, each may use the invention irrespective of the others, and sue alone in cases of infringement. In Mathers v. Green, L.R. 1 Ch. 33 (1865), Lord Cran Saxby v. Hennet, L.R. 8 Ex. 210; see chap. vi. pt. 2. |