Reports of Patent, Design, and Trade Mark Cases

Levinstein's Petition.

acid, made under their patent No. 15,176 of 1889. The world's production is many times greater than this quantity. Many other manufacturers make it.

Dr. Mensching was then called for the Petitioners, and gave evidence to the effect that the Petitioners examples, when carried out on a commercial scale, 5 were satisfactory processes.

Some discussion here took place as to whether the Petitioners or the Respondents should have the right of replying last, and it was decided that in this case the Petitioners should be entitled to speak last, but that Respondents should have an opportunity of again replying to any fresh arguments brought 10 forward in the Petitioners' reply.

Terrell, Q.C., for Respondents.-The allegations in the petition have not been proved. The Respondents do not manufacture in this country, but have always been ready to sell at a reasonable figure. Hitherto there has been no demand in this country for their acids. The Petitioners' dye-stuffs can be 15 made without the Respondents' patents, but the Petitioners say not economically. Until the lodging of the Petition the Respondents were never acquainted with the purposes for which the Petitioners required these licenses. The Respondents were entitled to know before the proceedings were commenced. The words "to the best advantage" and the context in sub-section (c) of the 20 22nd section of the Act, cannot be construed to mean that because an English Patentee holds no patents abroad he should therefore get no remuneration or profit on his invention. An applicant for a license under this section cannot assert that because in other countries in which he wishes to compete there are no patents, the Patentee in England therefore must be put on such terms that 25 the applicant can successfully compete with the free traders in these other countries. The section is not intended for that case at all. It is only intended to prevent a Patentee saying I do not work my patent, and nobody else shall, even if they have the best reasons for wishing to do so. The license cannot be sought successfully on the ground that a foreign Patentee by his English 30 patent prevents successful competition by English manufacturers in foreign countries. The Petitioners can buy from the Respondents-there is no reason why the Petitioners must work under the Respondents' patents. The Petitioners cannot make the materials any cheaper than the Respondents. No license to make should be granted. As to amount of royalty, the evidence shows that the 35 chief merit of the Petitioners' inventions is with the Respondents. The terms in the Schedule attached to the petition cannot be taken seriously.

Moulton, Q.C. in reply.-Respondents only hold their patents in England for the sake of blocking trade. The original idea of granting a patent to an importer of an invention was as a reward for the introduction of the invention, 40 "Coke's Institutes," Vol. 3, page 184. In this case there has been no introduction. The Respondents do not work any of their patents in England, nor have they granted licenses to anyone in England, nor do they wish to, nor will they. There is, therefore, default. The Respondents, it is true, will sell, but not on terms which could be accepted by us-only on prohibitive terms. This is a 45 very strong case for relief. If there had been no patent in England, the processes would have been worked. As to the amount of royalty, it should be very small, say d. a lb. of raw material, which is about equivalent to our 10 per cent. on the net profits of the completed dye, and a minimum of 250l. a year. The Petitioners will be taking all the risk of their manufacture being a 50 failure. The Petitioners desire to manufacture for purposes of export to compete in foreign countries where there are no patents. As to sub-section (b), the requirements of the public is shown by their desire for Petitioners' dyes. As to sub-section (c), it is clear that Petitioners are prevented from working their own inventions to the best advantage. As to comparative merit, the 55 Respondents' inventions per se are useless, and the reactions used are old. The Petitioners have, on the other hand, chosen out of thousands of substances a selection which is of practical value as a dye producer. In a comparison,

Levinstein's Petition.

therefore, between the merits of Respondents' and Petitioners' invention, the practical merit is entirely with Petitioners. Petitioners do not mind the form the royalty takes if licenses are granted; d. per lb. would be fair for both. Petitioners are merely giving this money to Respondents as Respondents have not found any use for their inventions, at any rate in the case of No. 9642, of 5 1889. In arriving at these figures, the fact that there are no patents for Respondents' inventions in Germany, should be taken into consideration. Petitioners have to compete with a cheap class of dyes, and a larger royalty would prevent them being able to put their inventions on the market at all.

Terrell, Q.C., in reply to the fresh arguments raised in Moulton, Q.C.'s 10 speech. Respondents were always ready to sell at a reasonable price. The price is reasonable, because it is the price which Respondents obtain in countries where there are no patents. Respondents offer to manufacture in England if Petitioners will guarantee a market of 10 tons per annum. Respondents have no object in blocking the English manufacturers, and there is no evidence 15 that they have ever done so. Compulsory licenses ought not to be granted where Respondents are ready to sell at a reasonable figure. Petitioners can start a factory in Germany to make the material free if they wish.

Upon a consideration of the Referee's report, the Board of Trade made the following Order :—

After reciting Section 22 of the Patents, &c. Act, 1883, proceeded :"And whereas, on the 11th of June 1889, a patent numbered 9642 was granted "to Oliver Imray, of 28, Southampton Buildings, London, patent agent, for an "invention communicated to him by The Farbwerke vormals Meister Lucius, "and Brüning, of Hoechst-am-Maine, in the German Empire (hereinafter 25 "called the Patentees), relating to the production of oxysulphonic acids of napthalin And whereas, on the 24th of May 1892, the said patent was duly assigned by the said Oliver Imray to the Patentees, which said assignment was, on the 27th of May 1892, duly registered at the Patent Office: And "whereas, on the 26th of September 1889, another patent numbered 15,176 was 30 "also granted to the said Oliver Imray for an invention, in like manner com"municated to him by the Patentees, relating to improvements in the production "of amidonapthol-mono-sulphonic acids, and the manufacture of their diazo compounds and azo colouring matters therefrom: And whereas, on the 24th "of May 1892, the said patent was duly assigned by the said Oliver Imray 35 "to the Patentees, which said assignment was, on the 27th of May 1892, duly 66 registered at the Patent Office: And whereas the Petitioners presented a petition to the Board of Trade under the said section for an order that the "Patentees, under the said Letters Patent No. 9642 of the 11th of June 1889, and "No. 15,176 of the 26th of September 1889, should grant to the Petitioners a 40 "license under or in respect of the inventions described and claimed in and by "the Specifications of the said respective Letters Patent: And whereas, on "consideration of the said petition and of the matters therein mentioned, it has "been proved to the Board of Trade that the said Petitioners are persons "interested in the matter of the said petition, and that by reason of the default 45 "of the Patentees to grant licenses on reasonable terms the said patents are not being worked in the United Kingdom, and that by reason of the default "aforesaid the said Petitioners are prevented from working and using to the best "advantage certain inventions of which they are possessed: Now, therefore, "the Board of Trade, in exercise of the power conferred upon them by 50 "Section 22 of the Patents, Designs, and Trade Marks Act, 1883, and of all "other powers enabling them in this behalf, do hereby order as follows:(1) That a license, to take effect from the date of this Order and in the form "set forth in the Schedule hereto, be forthwith granted by the Patentees to the "Petitioners to make, use, exercise, and vend within the United Kingdom the 55 "inventions described and claimed in and by the Specifications of the said "Letters Patent Nos. 9642 and 15,176 of 1889 for the unexpired residues of the

Levinstein's Petition.

"respective terms of the said Letters Patent at a royalty of one halfpenny for "each pound weight avoirdupois of products made by the licensees under the "said Letters Patent or either of them, but so that in each year a minimum "royalty of 2507. per annum shall be paid by the licensees, and the Patentees 5 "shall forthwith deposit such license duly executed by them with the Board "of Trade. (2) The said Petitioners, before the 6th day of August 1898, shall "execute and deposit with the Board of Trade a counterpart license in the form "aforesaid, and in default of their doing so this Order shall be of no effect. "Dated this 6th day of July 1898.

between The

"This indenture, made the day of "Farbwerke vormals Meister Lucius, and Brüning, of Hoechst-am-Maine, 15" in the Empire of Germany (hereinafter called the Patentees), of the one part, "and Levinstein, Ld., and Ivan Levinstein, managing director of Levinstein, "Ld., of Minshall Street, Manchester, in the county of Lancaster (hereinafter "called the licensees), of the other part: Whereas, by an Order of the Board "of Trade dated the 6th day of July 1898, and made under Section 22 of the 20 "Patents, Designs, and Trade Marks Act, 1883, it was ordered that a license, to "take effect from the date of the said Order, should be granted by the Patentees "to the licensees to made, use, exercise, and vend the inventions described in "the Letters Patent hereinafter mentioned (to the benefit of which the Patentees are entitled) in the form set out in the Schedule to the said Order, being the 25 form of these presents: Now, this indenture witnesseth that in pursuance of "the said Order the Patentees do hereby grant to the licensees license within "the United Kingdom to make, use, exercise, and vend the inventions described and claimed in and by the Specifications of the Letters Patent Nos. 9642 and "15,176 of 1889 mentioned in the said Order; to hold, exercise, and enjoy the 30 said license for and during all the residues now to come and unexpired of the 66 respective terms of the said Letters Patent, and during any further term for "which the said Letters Patent or either of them may be extended; and the "licensees hereby covenant with the Patentees that the licensees will, during "the continuance of this license, pay to the Patentees half yearly, on every 35"6th day of January and 6th day of July, royalties at the rate of a halfpenny "for each pound weight avoirdupois of product made by the licensees under the "said Letters Patent or either of them in the half years then ending respectively : "Provided always that if the royalties payable in any year ending on the 6th day of July shall not have amounted to the sum of 250l., the licensees shall, "on such 6th day of July, pay to the Patentees such further sum as with the "said royalties shall amount to the said sum of 2507., hereinafter called the yearly rent. The licensees do hereby also covenant with the Patentees that "the licensees will, during the continuance of the license, keep proper accounts "in separate books containing full particulars of all products made by them 45" under this license, and of all other things which may be material for the "purpose of showing the amounts payable to the Patentees by way of royalty, "and will at any time produce the same for the inspection of the Patentees "or any person appointed by them, who shall be at liberty to make copies "from or extracts from any of the accounts or matters therein contained, and 50"that the licensees will within ten days after each of the half-yearly days "aforesaid deliver to the Patentees an account in writing, showing all the "particulars and matters aforesaid with respect to the products made during "the preceding half year: And it is hereby agreed and declared that the "Patentees shall be at liberty at any time during the continuance of this license

Levinstein's Petition.

"to enter upon any factory or place of business of the licensees in which the "manufacture of the said products shall be carried on at any reasonable hour "with a view of obtaining all such information as may be material for the purpose of ascertaining the amount of royalty payable to them under this "license: And it is hereby also agreed and declared that if any payment of 5 royalties or yearly rent under this license shall be in arrear for one month "after the same shall have become due (whether payment thereof shall have "been demanded by the Patentees or not), or if the licensees shall make default "in the performance of any obligation on their part herein contained, and shall "not have made good the same within fourteen days after the Patentees shall 10 "have by notice in writing required them to do so, then the Patentees may, "with the consent of the Board of Trade, by notice in writing to the licensees, "revoke this license as from the date of such notice without prejudice to the right of the Patentees to recover any monies then due hereunder: And it is hereby also agreed and declared that if the said Letters Patent or either of 15 "them shall become void, or shall be declared by a Court of Law to be void, "the licensees may, with the consent of the Board of Trade, by notice in "writing to the Patentees, revoke this license.

"As witness, &c."

IN THE COURT OF APPEAL.

Before THE MASTER OF THE ROLLS, and LORDS JUSTICES CHITTY and
VAUGHAN WILLIAMS.-November 7th and 8th, 1898.

ALLEN v. OATES AND GREEN, Ld.

Patent.-Action for infringement.-Construction.-Subject-matter.—Novelty -Patent held invalid.-Appeal dismissed.

In 1885, Letlers Patent were granted to A. for "The use of earthenware pipes "in place of brickwork or other material in the formation of self-flushing "water closets." The claim (as amended) was for" The use of pipes of the above form, constructed of earthenware to form, as hereabove stated and described, "a direct communication of the water closet seat with the main drain." The 30 Patentee brought an action for infringement, in which the Defendants alleged (inter alia) non-infringement, want of subject-matter, and want of novelty. The Plaintiff alleged that his invention consisted in a combination of pipes performing a function not performed by the parts separately. Held, at the trial, that the claim was for the use of the pipes in combination, that it was 35 useful, but that the patent was invalid for want of subject-matter, sine the combination performed no function not performed by the parts separately,

Allen v. Oates and Green, Ld.

which functions so performed were not novel, and that even if this were not so, the combination was not novel. The action was dismissed, with costs. The Plaintiff appealed. The appeal was dismissed, with costs.

On the 20th of October 1885, Letters Patent (No. 12,505 of 1885) were 5 granted to William Thomas Allen for an invention of "The use of earthenware pipes in the place of brickwork or other material in the formation of self"flushing water closets." The Complete Specification (as amended on the 16th of November 1887) was as follows:-"I William Thomas Allen, Uffington "House Tamworth Road, Erdington in the county of Staffordshire, Builder 10" do hereby declare the nature of my invention for the use of earthenware pipes of novel form in place of brickwork cement, slate, stone concrete, or "other material in the construction of self flushing water closets, and in what manner the same is to be performed, to be particularly described and ascer"tained in and by the following statement:

"It consists of pipes of earthenware of round, oval, octagonal, hexagonal, square or other required section, which connect the aperture of the seat of the "water closet with the main drain, in a manner to make the main drain a direct "receptacle for excreted matter and the main drain will be flushed by waste or “surface water by an automatic syphon and collecting cistern as in the ordinary 20manner. The pipes are to be applied as follows viz-N° 1 A horizontal pipe to "connect the main drain and having a socketted aperture to receive end of a "vertical pipe. N° 2 A vertical taper pipe contracting from diameter at aperture "of seat to socketted aperture of N° 1 pipe. N° 3 A vertical pipe of straight "section of length required to complete height to underside of seat.

"Having now particularly described and ascertained the nature of my said "Invention, and in what manner the same is to be performed, I declare that "what I do not claim as novel pipes 1, 2 and 3 respectively, but I claim is÷

"1. The use of pipes of novel the above form, constructed of earthenware to form, as hereabove stated and described, a direct connection of the water 30"closet seat with the main drain."

Subjoined is a reproduction of Figure 1, except that A is substituted for N° 1, B for N° 2, and C for N° 3 :—

In 1897, W. T. Allen commenced an action for infringement of the said Letters Patent against Oates and Green, Ld., claiming the usual relief. The 35 Statement of Claim alleged :-(1) That the Plaintiff was the registered legal owner of the said Letters Patent, and (2) infringement by the Defendants. The

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Reports of Patent, Design, and Trade Mark Cases, Volume 15