and so long only in the case of each State colonies and S. 104 (1.) "Where it is made to appear to Her Provisions for (2.) "An Order in Council under this Act By section 117 "British possession' means any territory or place situate within Her Majesty's dominions, and not being or forming part of the United Kingdom, or of the Channel Islands, or of the Isle of Man, and all territories and places under one legislature, as hereinafter defined, are deemed to be one British possession for the purposes of this Act. 466 Legislature' includes any person or persons who exercise legislative authority in the British possession; and where there are local legislatures as well as a central legislature, means the central legislature only." CHAPTER IX. DISCLAIMERS. S. 18 (1.)" An applicant or a patentee may from time to time, by request in writing left at the Patent Office,1 seek leave to amend his specification, including drawings forming part thereof, by way of disclaimer, correction, or explanation, stating the nature of such amendment and his reasons for the same. (2.) "The request and the nature of such proposed amendment shall be advertised in the prescribed manner, and at any time within one month from its first advertisement. Any person may give notice at the Patent Office of opposition to the amend ment. (3.) "Where such notice is given the Comptroller shall give notice of the opposition to the person making the request, and shall hear and decide the case, subject to an appeal to the Law Officer. (4.) "The Law Officer shall, if required, hear the person making the request, and the person so giving_notice, and being in the opinion of the Law Officer entitled to be heard in opposition to the request, and shall determine whether and subject to what conditions, if any, the amendment ought to be allowed. (5.) "Where no notice of opposition is given, 1 By section 97 all notices may be sent by post. 2 As to powers of the Law Officer over costs, &c., see p. 36. or the person so giving notice does not (7.) "The Law Officer shall, if required, hear By section 18, sub-section 8, it is enacted— Lord Westbury, in his judgment in Foxwell v. Bostock, 10 L.T. N.S. 147 (1864), referring to 5 & 6 Will. IV. c. 83, s. I, which enacted that a disclaimer must not be such as will extend the exclusive right granted by the letters patent, and which, although now repealed by the Patents Act of 1883, is similarly re-enacted in the section above, says: "Possibly they mean that the patent must not by the operation of disclaimer be made to include or comprehend something which was not originally contained in the patent. The invention claimed may be reduced or diminished, but it must not be extended or enlarged." S. 18 (8). No disclaimer allowed to alter the invention claimed. And referring to the same subject, he says, in Ralston v. The object of a Smith, II H.L.Ca. 243 (1865): "The object of the Act disclaimer. authorizing disclaimers was plainly this, that when you have in your specification a sufficient and good description of a useful invention, but that description is imperilled or hazarded by something being annexed to it which is capable of being severed, leaving the original description in its integrity good and sufficient without the necessity of addition, then you 1 As to the power of the Law Officer over costs, &c., see p. 36. No novelty left after disclaimer. Good disclaimer. Disclaimer too extensive. Disclaimer claiming a different invention. might, by the operation of a disclaimer, lop off the vicious matter, and leave the original invention as described in the specification untainted and uninjured by that vicious excess." Also, in Dudgeon v. Thompson, L.R. 3 App.Ca. 55 (1877), Lord Hatherley says: "The object of a disclaimer is merely to take out and renounce part of what had been claimed before, and it would vitiate the new specification if, by striking out that part, you gave an extended and larger sense to what is left, so as to make it embrace something which it did not embrace before." The following are a few cases in which disclaimers came in question : Tetley v. Easton, 2 C.B.N.S. 706 (1857). A patent for improvements in machinery for raising and impelling water. After the operation of two disclaimers there remained only a claim " for the introduction of water at both ends of the wheel, for its propulsion by centrifugal force," and this claim was held bad for want of novelty. Seed v. Higgins, 8 H.L.Ca. 550 (1860). A patent for improvements in machinery for preparing, slubbing and roving cotton and other fibrous substances. The specification set out that the invention consisted in the application of the principle of centrifugal force to the flyers in the above machinery for purposes of pressure on a bobbin. The disclaimer set out: "I disclaim all application of the law and principle of centrifugal force as being part of my invention, except its application by means of a weight acting upon a pressure, &c." Held this was a good disclaimer. Foxwell v. Bostock, 10 L.T. N.S. 147 (1864). A patent" for improved arrangement and combination of machinery for sewing and stitching by a needle and shuttle;" the means for regulating the supply of silk or thread, the arrangement in accommodating the machinery to the different thickness of silk or thread, and the means of preventing the material rising or missing the stitch. The three latter claims were disclaimed. Held the disclaimer left no specification remaining of that invention for which the patent was granted, and patent void, the improved arrangement and combination not being set out. Ralston v. Smith, 11 H.L.Ca. 223 (1865). A patent for "improvements in embossing and finishing woven fabrics." The specification claimed the employment of fluted, grooved, or otherwise indented rollers of metal, wood, &c., driven at a greater speed than the bowls connected with them, so as to exert a rubbing friction upon the fabric, &c. The disclaimer stated: "I disclaim the use of any pattern roller, except made of metal or other suitable material, and having circular grooves, flutes, or indentures around their surface. Held this claimed a new manufacture, and so disclaimer vitiated the patent. Thomas v. Welch, L.R. I C.P. 192 (1866). Disclaimer Improvements in apparatus for stitching and sewing, claiming less. The several component parts were described in the drawings and lettered, and referred to in the claims in the specification. On disclaimer all the parts were struck out except the instrument lettered " G." Held a good disclaimer, the effect of the result not being such as to alter the invention. Cannington v. Nuttall, L.R. 5 H.L. 205 (1871). Disclaimer A patent for " improvement in manufacturing glass." limiting claim. The disclaimer set out: "In case my specification makes a general claim for suppression of fire-clay pots or crucibles, and placing the materials in the furnace itself, I disclaim such, limiting myself to my claim for forming the sides of tanks or chambers in such wise that a current of refrigerating air may circulate, and prevent excessive heating." Held a good disclaimer. "The reason given for a disclaimer is no part of the disclaimer itself" (per Lord Westbury, in Cannington v. Nuttall, above). S. 18 (9.) "Leave to amend shall be conclusive as to the right of the party to make the amendment allowed, except in case of fraud; and the amendment shall in all Courts and for all purposes be deemed to form part of the specification. (10.) "The foregoing provisions of this section do not apply when and so long as any action for infringement or other legal proceeding in relation to a patent is pending." After disclaimer a patentee cannot go on with an action After disclaimer for infringement brought before his disclaimer, unless he new action to be was allowed to disclaim by the Court or Judge under section 19; but he must institute a new action, since the disclaimer instituted. |