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Lord Westbury laid down, in Hills v. Evans, 31 L.J.Ch. 463 (1861) : “ The invention must be known before. Therefore, whatever is essential to the invention must be read out of the prior publication. If specific details are necessary for the practical working and real utility of the alleged invention, they must be found substantially in the prior publication. Apparent generality, or a proposition not true to its full extent, will not prejudice a subsequent statement which is limited and accurate, and gives a specific rule of practical application."
(a.) In a specific cation
(a.) In a specification.
In Otto v. Linford, 46 L.T. 35 C.A. (1882), Holker, L.J., in his judgment says: “We have it declared, in Hill v. Evans (31 L.J.Ch. 457), as the law, and it seems very reasonable, that the specification which is relied on as the anticipation of an invention must give you the same knowledge as the specification of the invention itself. That seems very sensible, and a reasonable rule.” And it is laid down by Lord Westbury, in Betts v. Menzies, 10 H.L.Ca. 117 (1862): “ That an antecedent specification ought not to be held to be an anticipation of a subsequent discovery, unless you have ascertained that the antecedent specification discloses a practicable mode of producing the result which is the effect of the subsequent discovery.
The following are a few cases on this point.
publication in the previous specification. Muntz v. Foster, 2 Web. P.R. 94 (1843).
A patent for an alloy of copper and zinc for sheathing ships' bottoms. There had been a previous patent for a certain fusion of copper and zinc, but as that would not have made a sheathing for a ship’s bottom
the patent was upheld.
A patent for combining lead and tin in making capsules for bottles was upheld, although there had been a prior patent for a fusion of lead and zinc, but which did not specify such practicable mode of applying it.
Previous similar specification, but not practicable.
Murray v. Clayton, L.R. 7 Ch.App. 570 (1872).
A patent for a brickmaking machine similar to one made and patented by a German previously, but which was found not to be practically useful. Held the second patent was valid, as it differed from the
previous in being practicable. Otto v. Linford, 46 L.T. N.S. 35 C.A. (1882).
A patent for improvements in gas motor engines, by mixing atmospheric air with inflammable gas, so that on ignition it would produce a gradual development of heat in place of sudden heat.
This was sought to be set aside on the ground that the mixture of air and gas had been previously described in a specification. The court held, as the former application intended sudden shocks, and notgradual expansion,
it was for a different object, and the patent was upheld. The previous description of an invention in a provisional Previous publicaspecification, which has been abandoned in the complete sional specificaspecification, is not a prior publication so as to vitiate a subsequent patent for such invention made practicable. Stoner v. Tod, L.R. 4 Ch.D. 58 (1876).
A patent for improvements in an apparatus for raising and lowering revolving shutters. One Clark had previously in his provisional specification described a similar mode for revolving shutters, but had abandoned it in his complete specification. This was held no prior publication; and also that the description in the provisional specification was presumed unwork
able. And the circumstances of the patentee previously filing a provisional specification himself which he abandoned, describing in part the same invention, will not render a subsequent patent void, the previous provisional specification not being a publication until it has been published by the Patent Office.
Oxley v. Holden, 8 C.B.N.S. 666 (1860). And by section 40, Patents Act, 1883, it is enacted: The S. 40. Comptroller shall have published periodically an illustrated journal of patented inventions, and reports of patent cases decided by Courts of Law; and anything else useful. Under which latter clause he would have power to publish an abandoned provisional specification if he thought fit; and that it would be useful.
(6.) Prior publication of an invention in a book, although (6.) In a book. published abroad, will invalidate a patent for such invention if a copy of the book has come over to this country, and has become known to a sufficient part of the public.
In Lang v. Gisborne, 31 L.J.Ch. 769 (1862), it is laid down: “A publication takes place when a person who is an inventor of any new discovery, either by himself or his agents, makes a written description of that and prints it in a book, and sends it to a bookseller to be published in this country. It is not necessary to sell a copy; the moment it is exposed for sale it is a publication.”
And in Plimpton v. Spiller, L.R. 6 Ch.D. 425 (1877), Brett, L.J., says, refering to a prior publication of an invention in a book: “It must not only be printed in a book, but that book must be placed in such a position and so used that you may fairly infer or assume that the contents of the book have become known to a sufficient number of people.”
And in Stead v. Anderson, 2 Web. P.R. 147 (1846), quoted by Brett, L.J., above, Baron Parker laid down: That the invention must become generally known in the sense that it has become known to the people in the trade, and the question with regard to that is, was the invention published and offered to the public to such an extent as that it was generally known among engineers or persons interested in the matter.”
And “if the machine (the subject of an invention) be published in a book, distinctly and clearly described, corresponding with the description in the specification of the patent, although it has never been actually worked, that is a previous publication” (per Lyndhurst, L.C., in Househill Co. v. Neilson, i Web. P.R. 718 n. (1843)).
“ It is not necessary that an invention should have been used by the public as well as known to the public” (per Lord Blackburn, in Patterson v. Gas Light and Coke Co., L.R. 3 App. Ca. 244 (1877)).
As to what has been held a sufficient publication.
An invention previously described in a book which had been printed a third time held a sufficient
publication to vitiate a subsequent patent. Stead v. Williams, 2 Web. P.R. 142 (1843).
A patent for paving streets, &c., with wooden blocks.
A French book, describing the invention, exposed for sale and published openly in England, four copies
of which were sold, was held a sufficient publication
to vitiate the subsequent patent. Patterson v. Gas Light and Coke Co., L.R. 3 App. Ca. 240 (1877).
A patent for improvements in purification of coal gas, the improvement becoming known to Patterson, the patentee, in his official capacity as one of three referees under City of London Gas Act, 1868, and embodied in their report published afterwards. Held immediately it was known to the referees, and embodied in their report, they being public officers, and the report belonging to the State, the matter became the property of the public, and they were bound to make it known, and consequently there was a prior
publication sufficient to void a subsequent patent. United Telephone Co. v. Harrison, L.R. 21 Ch.D. 720 (1882).
The invention had been previously described in a scientific journal written in German, illustrated by drawings, and published abroad. A copy of the journal was in the Patent Office Library, also another in the Institute of Civil Engineers in London, but entered under heading of “ Journals.” A telegraph engineer deposed that he could understand the description of the invention in the journal by the drawings, although he was ignorant of German. This was held a sufficient publication of a prior invention before the date of the patent, and was not questioned on appeal.
As to what has been held not a sufficient publication.
A book containing a description of an expired
other grounds. Plimpton v. Spiller, L.R. 6 Ch.D. 422 (1877).
A book from America, describing a patent, which was received at the Patent Office Library in London, but not put in the catalogue, not being known to the librarian, and was afterwards found on a shelf in a public corridor there, was held not to be a
sufficient publication to void a subsequent patent. Where an inventor claims two or more separate inven- Two inventions tions in his specification, and one of them is already known, in one patent.
such claim will vitiate the whole patent. And it is now
the first schedule to this Act, and shall
in an action or other proceeding to take any objection to a patent on the ground that
it comprises more than one invention." And it is the duty of the Examiner under section 9, subsection (1), to see that the complete specification does not claim more than one invention. But where any patent has been granted claiming more than one invention, although under section 33 no objection can be taken in any proceeding on that ground, yet if one of the inventions claimed is bad for want of novelty, that will be a valid objection against the patent, and vitiate it.
The following cases bear on this subject.
A patent for an improvement in smelting and working iron, and also for the application of lime in certain stages of the process to cure a disease common to iron. Held the second claim was for an invention already known, and although the first claim was good
the patent was vitiated.
A patent for improvements in anchors, and also for a mooring chain. The anchor was held not novel, and although the mooring chain was novel the patent
A patent for improvements in steam engines, and also improvements in machinery for propelling vessels. The improvement in steam engines was held bad for want of novelty; and although the second was
good, the whole was invalidated by the first claim. Sugg v. Silber, L.R. 2 Q.B.D.493 (1877). A patent for improvements in gas burners; also in
; the method of constructing the same. The method of casting and constructing being not new the patent
was held vitiated thereby. Henderson v. Clippens Oil Co., Sc. Cas. 4th Ser. vol. 9,
p. 232 (1881).