Page images

S. 29.

Rules; and the matters in such affidavits may be disputed by the parties opposing upon hearing of the petitions.

Rule V.-All persons entering caveats under section 4 of the said Act (now section 25, sub-section (2), of the Patents Act, 1883), shall be entitled to be served with copies of petitions presented under the said section ; and no application to fix a time for hearing shall be made without affidavit of such service.

Rule VI.-All parties served with petitions shall lodge at the Council Office, within a fortnight after such service, notice of the grounds of their objections to the granting of the prayers of such petitions.

It has been held in re Ball's Patent, L.R. 4 App. Ca. 171 (1879), under Rule VI., by Sir B. Peacock : “ It is sufficient to state the grounds of objections, without stating particulars of those objections ;” and that section 41 of 15 & 16 Vict. c. 83, which is repealed and re-enacted by section 29 of the Patents Act of 1883, does not refer to proceedings by the Privy

Council. Rule VII.— Parties may have copies of all papers lodged in respect of any application under the said Act, at their own expense.

Rule VIII.—(See p. 104.)

Rule IX.-A party applying for an extension of a patent under section 4 of the said Act must lodge at the Council Office six printed copies of the specification, and also four copies of the balance sheet of expenditure and receipts relating to the patent in question, which accounts are to be proved on oath before the Lords of the Committee at the hearing. In the event of the applicant's specification not having been printed, and if the expense of making six copies of any drawing therein contained or referred to would be considerable, the lodging of two copies only of such specification and drawing will be deemed sufficient.

All copies mentioned in this Rule must be lodged not less than one week before the day fixed for hearing the application.1

The Judicial Committee will hear the Attorney-General, or other counsel, on behalf of the Crown, against granting any

1 The Judicial Committee will refuse to enter into accounts not filed in time under this Rule. In re Johnson's and Atkinson's Patents, L.R. 5 P.C. 87 (1873). In re Chatwood's Patent, L.R. 5 P.C. 88, note (1874).

for an extension

application made under section 4 of the said Act (now sec-
tion 25 of Patents Act, 1883), in case it shall be thought fit to
oppose the same on such behalf.
S. 25 (4.) “The Judicial Committee shall, in con- S. 25 (+).

sidering their decision, have regard to the
nature and merits of the invention in rela-
tion to the public, to the profits made by
the patentee as such, and to all the cir-

cumstances of the case.' The requisites for an extension of a patent are thus set the requisites out by Sir W. Erle in McDougal's patent, L.R. 2 P.C. 3 bf a patent (1867) :

“It is clear that an extension ought not to be granted unless their Lordships are satisfied that the original invention is of considerable merit, that it is of public utility, and that there has been inadequate remuneration. It is not the duty of the Judicial Committee upon such an application to adjudicate upon the validity or invalidity of the patent itself (Kay's patent, 2 Moore P.C. 24), but they must, in deciding whether the above conditions have been established, ascertain the meaning of the specification.'

The requisites for an extension of a patent may be thus classed under two headings :

1. Merit and utility. 2. Inadequate remuneration.

the invention,

[ocr errors]

As to what must be considered in determining the merits, :: The merit of Lord Kingsdown lays down the following principle in Hill's patent, i Moore P.C. N.S. 264 (1863) :

“In determining whether to recommend a prolongation of a patent or not, even where the claim to a first discovery and the beneficial nature of that discovery are both conceded, it will still be proper to consider both the degree of merit as inventor and the amount of benefit to the public following directly from the invention. . . .. A person may be an inventor within the legal meaning of that term—no one before him may have made or disclosed the discovery in all its terms as described in his specification; but this may have Degree of merit been the successful result of long and patient labour, and of great and unaided ingenuity, without which, for all that appears, the public would never have had the benefit of the discovery; or it may have been but a happy accident, or a fortunate guess, or it may have been very closely led up to by earlier and, in a true sense, more meritorious, but still incomplete, experiments. Different degrees of merit must


surely be attributed to an invention under these different Same principle circumstances. The same principle will apply to the condegrees of benefit sideration of the benefit conferred on the public.” to the public.

This principle was quoted with approval for the Board to follow in Johnson's patent, L.R. 4 P.C. 79 (1871). And Lord Cairns, in Saxeby's patent, L.R. 3 P.C. 294 (1870),

referring to the latter point, says: “It is not the practice of Utility. this tribunal to decide upon the novelty or utility of a patent,

and although they would of course abstain in any case from prolonging a patent which was manifestly bad, yet in one point of view they are in the habit of, in taking into account that which may be termed the question of utility, considering not that amount of utility which would be necessary to support a patent, but that kind of utility which might be more properly described as merit."

In Bakewell's patent, 15 Moore P.C. 386 (1862), Lord Chelmsford says: “Non user of a patent can hardly be said to be a ground why an extension of the term should be absolutely refused, but it must always amount to a very strong presumption as to the invention not being useful.And this can only be rebutted by the strongest evidence. In this case, and Allan's patent, L.R. 1 P.C. 507 (1867), and Hughes' patent, L.R. 4 App.Ca. 174 (1879), the presumption of inutility by non user for fourteen years was not sufficiently rebutted by evidence, and prolongation was refused. But in Berrington's patent (1852), commented on in Allan's patent, L.R. I P.C. 510, non user for fourteen years of a patented knapsack was rebutted as to its utility, as there were such high testimonials of its usefulness that the Council were surprised the Government had not tried it, and granted a prolongation for five years.

Non user.

Presumption rebutted.

2. Inadequate remuneration.

Section 25, sub-section 4, also enacts—" that the Judicial Committee, in considering their decision, shall have regard to the profits made by the patentee as such," and to all the circumstances of the case. This Mr. Chamberlain, in introducing the Bill into the House of Commons, said did not refer to the profits made by the manufacturer, but only“ by the patentee as such.” Nor would the rule, that where it was now shown that the inventor had made a sum of £10,000, no application for an extension would be granted, be now acted on, as there were cases sometimes in which such remuneration would be inadequate.

The accounts must be gone into in order to arrive at what remuneration a patentee has received from his patent, and the accounts must clearly show all the expenses and profits


arising from the patent fairly and fully, with the utmost candour and frankness; and when a patentee, whether English or foreign, has obtained foreign patents, they should be stated, and full information afforded as to their profits.

Lord Chelmsford says, in Betts' patent, i Moore P.C.N.S.49 (1862): “There can be no difficulty in a patentee beginning from the first to keep a patent account distinct and separate from any other business in which he may be engaged. He knows perfectly well that if his invention is of public utility, and he has not been adequately remunerated, he will have a claim for an extension of the original term of his patent. It is not, therefore, too much to expect that he should be prepared, when the necessity arises, to give the clearest evidence of everything which has been paid and received on account of his patent."

And Lord Cairns, referring to this point in Saxeby's patent, L.R. 3 P.C. 294 (1870), thus expresses himself : “Now, it is the duty of every patentee who comes for the prolongation of his patent to take upon himself the onus of satisfying this Committee, in a manner which admits of no controversy, what has been the amount of remuneration which, in every point of view, the invention has brought to him, in order that their Lordships may be able to come to a conclusion whether that remuneration may be fairly considered a sufficient reward for his invention or not. It is No amendments not for this Committee to send back the accounts for further allowed. particulars, nor to dissect the accounts for the purpose of surmising what might be the real outcome if they were differently cast; it is for the applicant to bring his accounts before the Committee in a shape which will leave no doubt as to what the remuneration has been that he has received.”

In this case the omission from the accounts of any Licences must be particulars of what licences were granted, and what accounts. profits resulted therefrom, was a defect in the accounts, which were held unsatisfactory, and so the petition

was dismissed. In Trotman's patent, L.R. 1 P.C. 123 (1866).

An omission of all mention of licences and profits in the accounts, which were on this ground held

Clark's patent, L.R. 3 P.C. 421 (1870).

The rule in Saxeby's patent quoted and followed.
The accounts being held unsatisfactory, prolongation

Houghton's patent, L.R. 3 P.C. 461 (1871).
Here the patent was prolonged, the Privy Council

in the accounts


Foreign patent to be stated in the accounts.

Where accounts
are prima facie
they will be gone
into before the
The remunera-


being satisfied as to the merit of the invention, although no profits had been made, and the accounts

were rendered in the best way possible in the case. Pitman's patent, L.R. 4 P.C. 86 (1871).

In this case the accounts were held unsatisfactory, as there was no mention of the foreign patent for the same invention belonging to the applicant in America,

and so the petition was refused.
Re Adair's patent, L.R. 6 App. Ca. 176 (1881).

In this case the applicant made no mention of his foreign patent or profits arising therefrom, and the accounts were unsatisfactory. Held, quoting Betts'

case above, no extension should be granted. Wield's patent, L.R. 4 P.C. 89 (1871).

Where the accounts are prima facie unsatisfactory, the merits will not be gone into until the question of accounts has been decided. In this case they were

held unsatisfactory, and prolongation refused. With regard to the question of remuneration, Lord Kingsdown, in Hill's patent, i Moore P.C. N.S. 264 (1863), said : “ The principal question always is, has the individual patentee under all circumstances received what in equity and good conscience may be considered a sufficient remuneration.”

And Lord Chelmsford, referring to this question in Trotman's patent, L.R. I P.C. 123 (1866), says: “The question in all cases of this description is not what the patentee has received, but what has been made, or by proper judgment and application might have been made, by the patent. The petitioner might, if he pleased, have become

the manufacturer of his patent. If he had, it would then How the profits have been necessary to ascertain what part of the profits of patent are to be the manufacturing business ought to be ascribed to the

patent. In arriving at this result, the proper course would have been to deduct the original cost of the anchor (the invention in question), the ordinary amount of manufacturers' profits in the particular trade, and probably an allowance for the time and labour of management, and the remainder would then be the profit due to the patent."

A patentee is entitled to deduct from the profit of his patent a manufacturer's fair profit; also, the expenses caused by litigation and the expenses of taking out the patent and bringing it into use.

Galloway's patent, 1 Web. P.R. 729 (1843). Manufacturer's

Fair profits made by the patentee as manufacturer are allowed to be deducted.

Betts' patent, i Moore P.C. N.S. 49 (1862).

Deductions allowed.


« PreviousContinue »