PUBLICATION IN THE SPECIFICATION UNDER A PRIOR PATENT.

The law as regards the publication of the invention in the specification under a prior patent is precisely the same as that with reference to a publication in a printed book. The invention has been deprived of its requisite attribute of novelty if it has been described in a previous specification, whether the patent has or has not expired. If, prior to his obtaining a patent, any part of that which is of the substance of the invention has been communicated to the public in the shape of a specification of any other patent, he cannot claim the benefit of his patent. (Lord Ellenborough, in Huddart v. Grimshaw, 1 W. P. C. 86; and see Jones v. Berger, 1 W. P. C. 550.)

In the case of Macnamara v. Hulse (2 W. P. C. 128), an action for the infringement of a patent for a method of paving streets with blocks in the form of two solid rhombs placed one in front of the other, in opposite directions, so that each side of a block was bevelled both inwards and outwards; it was proved that the defendant used blocks, each consisting of a single solid rhomb, and then fastened two together by pins, so that two of the defendant's blocks thus fastened exactly resembled one of the plaintiff's blocks. This was the infringement complained of. The defendant, at the trial, put in the specification of an expired patent, obtained by one M'Arthy, for a pavement in which each block had two bevels inwards and two outwards on the same side. If M'Arthy's block were cut into two, it would make two blocks similar to the plaintiff's; if cut into four, it would make four blocks similar to the defendant's. Both judge and jury thought that, under the circumstances, the plaintiff's invention was destitute of novelty. The plaintiff asserted that the defendant had infringed his patent by

1 The operation of this Rule is now narrowed by Art. 4 of the International Convention, and by Sect. 103 of the Patents Act, 1883. Any person who has duly registered an application for a patent in any of the States of the Union enjoys a right of priority to a British patent for a period of seven months from the date of his foreign application, although the invention may have been meanwhile published or used in this country.

cutting his block into two. The defendant showed that the plaintiff, in forming his block, had only cut M'Arthy's block into two. The plaintiff, in support of his own patent, was bound to contend that M'Arthy's invention and his own were distinct; but then if he established that, it followed that his own and the defendant's were likewise distinct, in which case there was no infringement.

Even the specification under a worthless patent might sufficiently disclose the invention so as to anticipate a subsequent patent. (Per Lord Halsbury, C., in Kaye v. Chubb, 5 R. P. C. 648.)

But if the prior inventor had not shown how the invention is to be practically carried out, and an independent inventor does this and fully explains the mode in which the result is obtainable, his patent will be held good. In the case of Betts v. Menzies (10 H. L. C. 117) it was held that a general description in a prior specification or in a published book, even if suggesting information or involving some speculative theory pertinent to the invention in question, is not to be considered as anticipating a subsequent patent involving a practical invention unless the antecedent publication contains the same amount of practical and useful information. Betts's patent was for the production of a material capable of application to many useful purposes by combining thin sheets of lead and tin by means of pressure. It appeared that as far back as 1804 one Dobbs had patented a process for making a new material by combining lead and tin by pressure, but he did not with any precision define the relative thicknesses of the sheets of metal nor the degree of pressure to be applied, whereas Mr. Betts entered minutely into those points. Moreover, it was not shown that the earlier process had ever been carried into practice. Under these circumstances the House of Lords held that Betts's invention had not been anticipated. See also the observations of Wood, V. C., in the subsequent case of Betts v. De Vitre (11 L. T. N. s. 445), in which the validity of the same patent was in question.

Under a patent for the purification of gas, Mr. Croll

claimed the use of oxides of iron, which expression was held to mean both hydrated and anhydrous oxides of iron. Mr. Hills afterwards obtained a patent for the use of anhydrous oxide of iron for the same purpose; but it was said, in an action which he brought for the infringement of his patent, that he had been anticipated by Croll. On his part it was argued that as it was a fact that some oxides would answer the object in view, and some would not, it became a subject for investigation and experiment to ascertain what oxides it would be proper to employ, and that when he had made the discovery he was entitled to a patent in respect of it. The Court of Exchequer held that this discovery might properly be the subject of a patent. (Hills v. London Gas Light Company, 5 H. and N. 312.)

If a specification contains a general statement which gives no clear intimation either by its own construction or in the opinion of a workman of ordinary skill, either as to the result or as to the means, and if a person should out of the general words which describe nothing discover something not inconsistent with them but not disclosed by them, he may obtain a patent for his discovery. But if in a specification one of the modes described in it gives a clear result by clear means, although the person who took out the patent does not see that result, and another person by studying the specification more carefully perceives the result, he has no right to take out a patent for it. (Per Lord Esher, M. R., in Kaye v. Chubb, 4 R. P. C. 298.)

The antecedent description of an invention which will have the effect of depriving a subsequently patented invention of the attribute of novelty, must (according to Lord Westbury, C., in Hills v. Evans, 4 De G. F. & J. 288) 'be such that a person of ordinary knowledge of the subject would at once perceive, understand, and be able practically to apply the discovery, without the necessity of making further experiments and gaining further information, before the invention can be made useful. If something remains to be ascertained which is necessary for the useful application of the discovery, that affords sufficient room for another

valid patent. . . . The information as to the alleged invention given by the prior publication must, for the purposes of practical utility, be equal to that given by the subsequent patent. The invention must be shown to have been before made known. Whatever, therefore, is essential to the invention must be read out of the prior publication. If specific details are necessary for the practical working and real utility of the alleged invention, they must be found substantially in the prior publication. Apparent generality, or a proposition not true to its full extent, will not prejudice a subsequent statement which is limited and accurate, and gives a specific rule of practical application. . . . Upon principle, therefore, I conclude that the prior knowledge of an invention to avoid a patent must be a knowledge equal to that required to be given by a patent, viz. such a knowledge as will enable the public to perceive the very discovery, and to carry the invention into practical use.'

...

According to L. J. Brett, in Otto v. Linford (Court of Appeal, 46 L. T. N. s. 39), the question to be considered is whether the prior specification, fairly read by a person conversant with such matters, would give a reasonably clear description of the later invention—that is, supposing it to relate to a machine, whether it would give a reasonably clear description of a machine that would effect what the machine of the later inventor effects. (See also Von Heyden v. Neustadt, 50 L. J. N. s. 126; Moseley v. Victoria Rubber Co., 4 R. P. C. 252; Bray v. Gardner, 4 R. P. C. 400; Haslam v. Hall, 5 R. P. C. 19; American Braided Wire Co. v. Thomson, 5 R. P. C. 122.)

'Even if there is identity of language in two specifications' (said Lord Westbury, in Betts v. Menzies, 10 H. L. C. 152), and (remembering that those specifications describe external objects) even if the language is verbatim the same, yet if there are terms of art found in the one specification, and also terms of art found in the other specification, it is impossible to predicate of the two with certainty that they describe the same identical external object, unless you ascertain that the terms of art used in the one have pre

cisely the same signification, and denote the same external objects at the date of the one specification as they do at the date of the other."

Where a provisional specification contained an incomplete description of a piece of mechanism which was omitted from the complete specification, and another patent was afterwards obtained for similar mechanism, the passage in the preceding patent was held not to be a prior publication so as to vitiate the second patent, because the description was not sufficient to enable a workman to make the object. (Stoner v. Todd, L. R. 4 Ch. D. 58.)

PRIOR PUBLICATION BY INVENTOR.

We now come to a series of cases which declare the law with regard to a publication of the patented invention before the date of the patent-not by persons other than the patentee, but by the patentee himself. A person may be the true and first inventor of that for which he has obtained a patent, and yet he may have disentitled himself to the benefit of it by prior dealings with or prior publication of the invention. The law says that a man may not first publish his discovery and then obtain protection for it against the public, whom he has already made acquainted with it. Having done that, he has no longer anything to give as a consideration for the grant.

Some of the cases will show inventors who intend to protect their inventions that they should be extremely cautious how they deal with them before applying for patents.

An inventor does not lose his right to a patent by keeping his invention to himself after its completion, provided there is no profitable user of it (Bentley v. Fleming, 1 C. & K. 587). But it may be remarked that, although not destructive of his right, delay is here especially dangerous, and the fact might, under certain circumstances, be used as a strong argument against a patentee.

In the same case of Bentley v. Fleming it was held that an inventor might safely deposit a machine of his invention,