A patent for improvements in the destructive distillation of shale or other oil-yielding minerals, and in apparatus therefor. The use of hot residuum of shale for fuel was known before. The Court held the claim did not embrace two separate inventions, but the improvements in the distillation effected by means of the use of the apparatus in the way described; and that the plaintiff did not claim the use of the hot residuum of shale as fuel, which, if he had, that use being known before, would have vitiated his patent.

the invention

This case was affirmed on appeal (W. N. 1883, p. 33). But if an inventor claims in his specification an invention where a part of and its parts, one of which is already known, if that part claimed is not is to be used only in conjunction with the whole invention, new. and subsidiary to it, and if, after deducting this known part so claimed from the whole invention, sufficient novelty to be advantageous and useful remains, such claim will not invalidate the patent.

Plimpton v. Spiller, L.R. 6 Ch.D. 412 (1877).

A patent for improvements in roller skates by attaching rollers to the foot-stand, with a contrivance by which they could be made to turn in a circle by rocking the foot-stand. The claim for attaching rollers to a foot-stand was not new, although the mode of making them work was, and the patent was upheld. Frearson v. Loe, L.R. 9 Ch.D. 64 (1878).

A patent for improvements in screws and screwdrivers, the V nick in a screw being already known; but it was held, after striking out the old part, there was sufficient novelty left to be advantageous and useful, and so the patent was supported.

"Within the Realm."

The invention must be new "within the realm," which is defined by section 16, Patents Act, 1883, to extend over "the United Kingdom and Isle of Man," that being the extent of a grant for letters patent under the Act.

The Colonies do not, therefore, come "within the realm" for this purpose.

Rolls v. Isaacs, L.R. 19 Ch.D. 268 (1881).

A patent communicated from Natal, where it was known and used, to a person in England, who took out letters patent for it to use the invention in the United Kingdom and Ireland, Channel Islands and Isle of Man, was held good, as the prior user at Natal was not "within the realm."

Applicants.

The application.

CHAPTER III.

Proceedings under the New Patents Act, 1883,
to obtain a Patent.

By Section 3 this Act comes into operation on January 1, 1884.

THE APPLICATION.

S. 4 (1.) " Any person, whether a British subject or not, may make an application for a patent. (2.) "Two or more persons may make a joint application for a patent, which may be granted to them jointly" (see chap. i.).

And by

S. 34 (1.)" If a person possessed of an invention
dies without making an application for a
patent for the invention, application may
be made by, and a patent for the invention
granted to, his legal representative.
(2.) "Every such application must be made
within six months of the decease of such
person, and must contain a declaration by
the legal representative that he believes
such person to be the true and first
inventor of the invention.”

S. 5 (1.) "An application for a patent must be
made in the form set forth in the First
Schedule to this Act, or in such other form
as may be from time to time prescribed;
and must be left at, or sent by post to,'
the Patent Office in the prescribed
manner.'

1 All documents and notices under this Act may be sent by post, it being enacted by

S. 97 (1.) "Any application, notice, or other document authorized or required to be left, made, or given at the Patent Office, or to the Comptroller, or to any other person under this Act, may

(2.) An application must contain a declara-
tion to the effect that the applicant is in
possession of an invention,' whereof he, or,
in the case of a joint application, one or
more of the applicants, claims or claim to
be the true and first inventor,2 or in-
ventors; and for which he or they desires
or desire to obtain a patent, and must be
accompanied by either a provisional or
complete specification.

.

An applicant by section 33 can only obtain a patent for one invention (see p. 30), but if he applies for a patent including more than one invention when it has been refused, may amend his application so as to cover one invention only, or may apply for separate patents for each under rule 23, p. 158.

All documents and copies sent to the Patent Office must Documents. be written or printed upon strong wide ruled paper (on one side only), of a size of 13 inches by 8 inches, leaving a margin of 2 inches on the left-hand part thereof, see rule 10, p. 156. By rule 27. An application for a patent for an invention Communication communicated from abroad shall be made in the form A I set forth in the Second Schedule of the Rules (p. 172).

from abroad.

possessor invention.

senior of an

In the case of the legal representative of a person dying From deceased possessed of an invention applying for a patent under section 34, he will have to set out such fact, and also a declaration in accordance with that section (see p. 32).

And under rule 24, an application for a patent by the legal representative of a person who has died possessed of an 'invention, shall be accompanied by an official copy of, or extract from his will, or the letters of administration granted of his estate and effects in proof of the applicant's title as such legal representative.

The following is the Form of Application for a Patent, and bears a £1 stamp, but where there are two or more applicants, Form A (p. 171) is to be used.

be sent by a prepaid letter through the post; and if so sent
shall be deemed to have been left, made, or given respectively
at the time when such letter containing the same would be
delivered in the ordinary course of post.

(2.) "In proving such service or sending, it shall be sufficient
to prove that the letter was properly addressed and put
into the post."

1 As to what is an invention see chap. ii.

2 As to who is a true and first inventor see chap. i.

D

(a.) Here insert name, address and calling of applicant.

title of invention.

£1 Stamp.

"Form A.

"APPLICATION FOR PATENT.

"I (a) John Smith, of 29, Perry Street, Birmingham, in the County of Warwick, Engineer, do solemnly and sincerely declare that I am in posses(.) Here insert sion of an invention for (b) Improvements in Sewing Machines;' that I am the true and first inventor thereof; and that the same is, not in use by any other person or persons to the best of my knowledge and belief; and I humbly pray that a patent may be granted to me for the said invention.

"And I make the above solemn declaration conscientiously believing the same to be true, and by virtue of the provisions of the Statutory Declarations Act, 1835. (c) "John Smith. "Declared at Birmingham, in the County of War

(c.) Signature of applicant.

wick, this

(d.) Signature and title of the officer before whom the de

claration is made.

Clerical error.

Where forms can be obtained.

day of

18

"Before me,

NOTE. Where the above Declaration is made out of the United Kingdom, the words, "and by virtue of the Statutory Declarations Act, 1835," must be omitted, and the declaration must be made before a British Consular Officer; or where it is not reasonably practicable to make it before such officer, then before a public officer duly authorized in that behalf (see Rule 21, p. 158).

With regard to correction of clerical errors, by section 91"The Comptroller may, on request in writing, accompanied by the prescribed fee

(a.) "Correct any clerical error in, or in connection with, an application for a patent."

The memorandum to the Act states that it is proposed to sell the new Application and Specification Forms ready stamped at the Patent Office, or send them by post at the

price of the fee-i.e., no charge to be made for the blank form itself. The Inland Revenue Department will also arrange to sell these stamps at post-offices in the principal commercial centres of the kingdom, to affix to blank forms. These are, £1 on the Form of Application, and £3 on the Complete Specification.

application to

S. 6. "The Comptroller shall refer every applica- Reference of tion to an Examiner, who shall ascertain Examiner. and report to the Comptroller whether the nature of the invention has been fairly described, and the application, specification, and drawings (if any) have been prepared in the prescribed manner, and the title sufficiently indicates the subjectmatter of the invention."

power to require

S. 7. (1.) "If the Examiner reports that the nature Comptroller has of the invention is not fairly described,' amendments. or that the application, specification, or drawings, has not or have not been prepared in the prescribed manner, or that the title does not sufficiently indicate the subject-matter of the invention, the Comptroller may require that the application, specification, or drawings, be amended before he proceeds with the application. (2.) "Where the Comptroller requires an Appeal to the amendment, the applicant may appeal from his decision to the Law Officer. 3 (3.) "The Law Officer shall, if required, hear the applicant and the Comptroller, and may make an order determining whether, and subject to what conditions, if any, the application shall be accepted.*

1 I.e., is not drawn up according to chap. iv. in the case where a provisional specification has originally been left or sent, and according to chap. v. in the case of a complete specification.

2 I.e., according to the Forms in the Schedules of the Rules.

3 The Law Officer, by section 117, means the Attorney-General, or Solicitor-General for England.

4 By section 38-" The Law Officers may examine witnesse on oath, and administer oaths for that purpose under this

Law Officer.