see that the patentee had carefully distinguished these subordinate parts, and had not left in dubio what claim to parts, in addition to the claim for combination, he meant to assert." In Clarke v. Aidie, L.R. 2 App.Ca. 321 (1877), Lord Cairns also referring to this point, says: "Suppose in a patent you have a patentee claiming protection for an invention consisting of parts which I will designate as A, B, C and D, he may at the same time claim that as to one of those parts, D, it is itself a new thing; and that as to another of those parts, C, it is itself a combination of things which possibly were old themselves, but which put together and used as he puts them together and uses them, produce a result so new that he is entitled to protection for it as a new invention. In a patent of that kind, the monopoly would or might be held to be granted, not only to the whole and complete thing described, but to those subordinate integers entering into the whole which I have described. But then the invention must be described in that way; it must be made plain to ordinary apprehension, upon the ordinary rules of construction, that the patentee has had in his mind and has intended to claim protection for those subordinate integers; and, moreover, he is at the peril of justifying those subordinate integers as themselves matters which ought properly to form the subject of a patent of invention." With regard to what is the object of a claim, in Hinks v. The object of a Safety Lighting Co., L.R. 4 Ch.D. 612 (1876), Jessel, M.R., claim. lays down the principle that "It is for the patentee to tell the world that of which he claims a monopoly; to tell them 'you may do everything but this, but this you must not do: this is my invention.' If a man has described in his specification a dozen new inventions of the most useful character, but has chosen to confine his claim to one, he has given to the public the other eleven, and he has no right to be protected as regards the other eleven if he wishes to recall that gift which he has made by publishing the specification." In Plimpton v. Spiller, L.R. 6 Ch.D. 425 (1876), James, L.J., referring to this point, says: "The object of a claim is not to claim anything which is not mentioned in the specification, but to disclaim something." claim. The claim in a specification must not be too general or too Largeness of large, or it will vitiate the patent; but it will be construed benevolently (see p. 48). Lewes v. Marling, 10 B. & C. 22 (1829). A patent for improvements in shearing machines for shearing or cropping woollen or other cloths. The third claim was for a brush to brush the surface of the Badly drawn claims-construction to be in favour of the patent. cloth to be shorn. This was found useless. Held not to vitiate the patent by claiming too much, the brush not being claimed as an essential. But if it had been claimed as such and was useless, whereby the public were misled, the patent would have been void. Oxley v. Holden, 8 C.B. N.S. 666 (1860). A patent for "certain improvements in doors and sashes of carriages." The specification finished thus: "I have shown my invention as applied to railwaycarriage doors and window fittings, although they are equally applicable to the doors and windows of any other description of carriage, or in any position where windows or doors are subject to jar or vibration." Held not to be a claim for such, and so claim not too large. Arnold v. Bradbury, L.R. 6 Ch. 706 (1871). A patentee described in his specification an improved ruffle, and the machinery for making it and fastening it to a plain fabric by a single series of stitches. By his claim he claimed the production "by machinery" of ruffles, &c. Held the claim was not too large, as the machinery meant was fully described in the specification. Cropper v. Smith, W.N. 1883, p. 49. In a case of a patent for a combination of known machinery in a novel manner, the Court held, there being sufficient novelty, that they were not bound to assume that the patentee meant to claim what would avoid his patent. The first claim was sufficient, and the others were superfluous, but that did not make the patent invalid. Badishe Anilien und Soda Fabrik v. Levenstein, W.N. 1883, p. 134. Where a patentee took out a patent for a chemical process, it was held he must be considered as claiming to work his process by ingredients which were known at the date of the patent, and cannot claim that which should afterwards become a new discovery; but that such claim would not vitiate his patent. (53) CHAPTER VI. THE ISSUE OF THE PATENT. THIS chapter is divided into two parts:- PART I.-The Grant of the Patent. On the acceptance of the complete specification, and its advertisement under section 10 of the Patents Act, 1883, section II enacts on which a opposed. S. 11 (1.) "Any person may, at any time within The grounds (2.) "Where such notice is given, the Comp- Opposition to the grant. Evidence. Colourable existing patent, to the applicant, and shall, on the expiration of those two months, after hearing the applicant and the person so giving notice, if desirous of being heard, decide on the case, but subject to appeal to the Law Officer. (3.) "The Law Officer shall, if required, hear the applicant, and any person so giving notice and being, in the opinion of the Law Officer, entitled to be heard in opposition to the grant, and shall determine whether the grant ought or ought not to be made.1 (4.) "The Law Officer may, if he thinks fit, obtain the assistance of an expert, who shall be paid such remuneration as the Law Officer, with the consent of the Treasury, shall appoint." Referring to the opposing of grants of patents, Lord Selborne lays down the doctrine in ex parte Sheffield, L.R. 8 Ch. 240 (1872), that, "In all these cases the whole burden is upon the opponent, who has to show that he has so clear a case as to make it right do that which, if wrongly done, would, so far as relates to the patentee, be irreparable, but which if left undone would not inflict upon the opponent any irreparable injury." All the evidence which the opponent can bring forward must be brought before the Law Officer at the hearing before him, and cannot be brought forward afterwards. In re Vincent's patent, L.R. 2 Ch. 342 (1867). Ex parte Sheffield, L.R. 8 Ch. 237 (1872). A reference will be made to the Law Officer when the imitation of an sealing of the patent is objected to on the ground that it is a colourable imitation of an existing patent, to decide whether the patent should be sealed or not. Ex parte Yates, L.R. 5 Ch. 1 (1869). Ex parte Manceaux, L.R. 5 Ch. 518 (1870). The Law Officer has, under section 38, power over the costs in all cases before him (see p. 36). And this should be on the ground that the invention has been previously patented (s. II, subs. (1)). application. In the case where there are two rival applicants for a Priority of patent of a similar invention, Lord Hatherley, referring to priority of application, said, in ex parte Bates, L.R. 4 Ch. 579 (1869): "If the law officer received a second provisional specification, he could not refuse to grant the statutory protection, unless he suspected that one was derived from the other, or that there had been fraud. There is nothing to compel an inventor who lodged the first specification to proceed with his invention if he does not, and no second specification was allowed the invention might be lost. The second applicant must therefore have a right to his provisional protection. If not, the first applicant might within the six months1 lodge a second provisional specification, and so prevent any one else obtaining a patent for an indefinite period." 2 And in ex parte Henry, L.R. 8 Ch. 168 (1872), Lord Selborne, after quoting ex parte Bates on the point of priority of application, says: "It is impossible to maintain that, by filing a complete specification, an applicant could for six months prevent any one else from obtaining a patent for a similar invention. I cannot hold the deposit of a complete specification to be equivalent to an actual grant of letters patent under the Great Seal." Where an existing patent does not cover all the invention claimed in the second application, the second applicant may have a patent granted to him for so much as is not comprehended in the former patent. Lord Hatherley held in ex parte Bates, L.R. 4 Ch. 579 (1869), that, "When one patent actually exists, and is brought to the notice of the Crown, a second patent will not be afterwards granted for the same invention. . But if there is anything in the present applicant's invention not covered by the patent, he will have a right for a patent for so much." And in ex parte Bailey, L.R. 8 Ch. 60 (1872), Lord Selborne, referring to ex parte Bates, said: "The rule laid down in that case, as I understand it, so far as it applies to a case like the present, is, that if an application to seal a 1 Now nine months by section 8 of the Patents Act of 1883. 2 By section 7, sub-sections (5) and (6), of Patents Act, 1883: In the case of the Examiner reporting that there is a second application for a similar patent, the Comptroller may, subject to an appeal to the Law Officer, refuse to seal a patent on such second application (see pp. 4, 36). Existing patent invention in not covering all second application. |