CHAPTER XX.

THE REVOCATION OF PATENTS.

THE old action of scire facias, which was one brought in the name of the Crown for the purpose of repealing a grant of letters patent, has been abolished, so far as patents for inventions are concerned, by the twenty-sixth section of the Patents Act of 1883. By that section it is enacted that the revocation of a patent may be obtained on petition to the Court, and that every ground on which a patent might, at the commencement of the Act, be repealed by scire facias shall be available by way of defence to an action of infringement, and shall also be a ground of revocation.

Previous to the Act of 1883, if two patents had been issued to different persons for the same invention, the first patentee could have brought an action of sci. fa. to repeal the second patent. (R. v. Neilson, 1 W. P. C. 671.) And where there had been a false suggestion, such as was involved in a want of novelty or utility in the invention, the patent could have been repealed by the same proceedings. Fraud, non-compliance with the conditions of the letters patent, such as filing an insufficient specification (Rex v. Arkwright, 1 W. P. C. 66), and the fact that the invention was not a patentable one (R. v. Cutler, Macr. P. C. 124), were also grounds for the action of sci. fa., and are still therefore available as grounds of revocation.

In the case of Gaulard & Gibbs' Patent (6 R. P. C. 225), the patent was held bad on the grounds that there was disconformity between the specification as amended and the provisional specification, and that the scope of the invention. had been extended.

The fact that a patent includes more than one invention,

contrary to the direction in section 33, would seem not to be a ground of revocation, since the same section declares that it shall not be competent for any person in an action or other proceeding to take any objection to a patent on the ground that it comprises more than one invention.'

A petition for the revocation of a patent may be presented by (a) the Attorney-General in England or Ireland, or by the Lord Advocate in Scotland; (b) any person authorised by these law officers; (c) any person alleging that the patent was obtained in fraud of his rights, or of the rights of any person under or through whom he claims; (d) any person alleging that he, or any person under or through whom he claims, was the true inventor of any invention included in the patentee's claim; (e) any person alleging that he, or any person under or through whom he claims an interest in any trade, business, or manufacture, had publicly manufactured, used, or sold within this realm before the date of the patent anything claimed by the patentee as his invention. That is to say, the persons who, in addition to the law officers and those whom they authorise, may present a petition for the revocation of a patent are persons who allege that they have been defrauded by the grant; or those who claim to be the true inventors of the patented invention; or those who set up anterior public user by themselves, or by persons through whom they claim. Before a petition can be presented on the ground of prior user by other persons it will be necessary to obtain the authority of a law officer.

A petition cannot be presented by an agent, although authorised by a power of attorney. (Avery's Patent, 4 R. P. C. 152; S. C. on Appeal, 4 R. P. C. 322.) And all persons beneficially interested in the patent must be made. respondents. (S. C.)

Along with his petition the plaintiff will have to deliver particulars of his objections to the patent, and no evidence will be admitted at the trial in proof of any objection not included in such particulars, except by leave of the Court or of a judge; but the particulars delivered may be from

time to time amended by leave of the Court or of a judge. The proceedings at the trial will be similar to the proceedings in actions when the validity of a patent is in dispute. The defendant is entitled to begin and give evidence in support of the patent; and if the plaintiff gives evidence impeaching the validity of the patent, the defendant is entitled to reply. (Sub-ss. 5, 6, 7, sect. 26, of the Act of

1883.)

By the nineteenth section of the Act of 1883, the Court or a judge may, in a proceeding for the revocation of a patent, order at any time that the patentee shall, subject to such terms as to costs or otherwise as the Court or a judge may impose, be at liberty to apply at the Patent Office for leave to amend his specification by way of disclaimer, and may direct that in the meantime the trial or hearing of the action shall be postponed.

Leave to disclaim after presentation of the petition was given to the patentee upon the terms of his paying all costs and undertaking to apply forthwith for the disclaimer and prosecute the application with diligence. (Gaulard & Gibbs' Patent, 5 R. P. C. 189.)

By the twenty-eighth section of the Act the Court in any proceeding for the revocation of a patent may, if it thinks fit, and shall, on the request of either of the parties, call in the aid of an assessor specially qualified, and try and hear the case wholly or partially with his assistance. The case shall be tried without a jury unless the Court shall otherwise direct.

The following cases have been decided by the Courts upon subsection 4 of section 26 in the Act of 1883.

In construing clause (c) the word fraud must be confined to grave moral culpability, and ought not to be extended to honest mistakes, although the real inventor may have suffered injury. (Avery's Patent, 4 R. P. C. 322.)

Cases of alleged prior user under clause (e). (Walker v. Hydrocarbon Syndicate, 2 R. P. C. 3; Haddan's Patent, 2 R. P. C. 218.)

A person who presents a petition for a revocation under

clauses (c), (d), or (e) is entitled at the hearing, after proving his right to present the petition, to impeach the patent on any other lawful ground. (Morgan's Patent, 5 R. P. C. 186.)

Where a patent has been revoked on the ground of fraud, the Comptroller is authorised by the twenty-sixth section of the new Act, on the application of the true. inventor, made in accordance with the provisions of the Act, to grant him a patent in lieu of the revoked patent. The new patent is to have the same date as the date of the revocation, but is to expire at the end of the term for which the revoked patent was granted.

Where the Court has made an order for the revocation of a patent, an office copy thereof must be left at the Patent Office, that an entry may be made in the Register. (Rule 74 of Patents Rules, 1890.)

In Scotland, proceedings for the revocation of a patent are directed by the 109th section of the Act to be in the form of an action of reduction at the instance of the Lord Advocate, or at the instance of a party having interest with his concurrence, which concurrence may be given on just cause shown only. Service of all writs and summonses in that action are to be made according to the forms and practice existing at the commencement of the Act.

In Ireland, by section 110, all parties are to have their remedies under or in respect of a patent as if the same had been granted to extend to Ireland only.

There is no provision in the Act for service out of the jurisdiction of petitions for revocation. Where, however, the patentee was resident and domiciled in Scotland, and there was evidence that a copy of the petition and objections had been delivered to him in Scotland, and that he had written to the petitioner's solicitors that he did not intend to appear at the hearing because he was not subject to the jurisdiction of the English Courts, an order nisi was made (on the petitioners applying for directions as to the mode of trial) that unless the patentee should appear before a day named the petition should be tried by virâ-voce evidence; but if

the respondent appeared it was to be open to him to dispute the jurisdiction. (Drummond's Patent, 6 R. P. C. 576.)

COSTS.

The Act of 1883 is silent as to costs, but the Courts under their general jurisdiction award costs to the petitioner when the patent is revoked. (Haddan's Patent, 2 R. P. C. 218; Edmonds' Patent, 6 R. P. C. 358.)

At the hearing of a petition for revocation the judge thought that he had no power to give a certificate as to proof of the particulars of objections under the twenty-ninth section, subsection 6, of the Act of 1883. (Gaulard & Gibbs' Patent, 5 R. P. C. 537.)