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CHAPTER VIII.

THE PROVISIONAL SPECIFICATION.

THE fifth section of the Patents Act of 1883 directs that the application for a patent must be accompanied by either a provisional or complete specification. The latter instrument is the subject of the next chapter; it is to the former that we now draw the reader's attention. According to the third subsection of the same section, a provisional specification must describe the nature of the invention, and be accompanied by drawings if required; whilst by the fifth subsection it is directed that it must commence with the title. (As to size, form, &c., of the drawings, if any, see Patents Rules, 1890, rr. 30-33.) It ought not to comprise more than one invention (sect. 33), and the Comptroller may refuse to accept it if it does comprise more. (As to the meaning of the words 'one invention' see p. 96.) The applicant, however, is authorised by Rule 19 of the Patents Rules, 1890, to amend the application so as to make it apply to one invention only; and he can then make application, if he thinks proper, for separate patents for the other inventions. In that case every such application will be dated as of the date of the first application, as if originally made on that date.

The form of the application is given as already stated in the second schedule to the Patents Rules, 1890, Form A. In case of an application on a communication from abroad Form A 1 must be used. For the form of provisional specification see Rules 5 and 6 (2) of 1890, and Form B in the second schedule to those rules. As to the procedure the reader is referred to the note on p. 89.

Specifications and all other documents must be written or printed in large and legible characters upon one side only of strong wide-ruled foolscap paper measuring thirteen by eight inches, leaving a margin of two inches on the left-hand; and the signatures of the applicants or agents thereto must be written in a large and legible hand (see Rule 10).

Then by the sixth section the Comptroller is directed to refer every application to an examiner, who is to ascertain and report to him whether the nature of the invention has been fairly described, and the application, specification, and drawings (if any) have been prepared in the prescribed manner. If the examiner reports (sect. 7 as altered by the 2nd sect. of the Patents Act, 1888) that the nature of the invention is not fairly described, or that the application, specification, or drawings has not or have not been prepared in the prescribed manner, or that the title does not sufficiently indicate the subject-matter of the invention, the Comptroller may refuse to accept the application, or require that the application, specification, or drawings be amended before he proceeds with the application; and in the latter case the application shall, if the Comptroller so directs, bear date as from the time when the requirement is complied with.

Where the Comptroller refuses to accept an application or requires an amendment, the applicant may appeal from his decision to the law officer, who will, if required, hear the applicant and the Comptroller, and may make an order determining whether, and subject to what conditions, if any, the application shall be accepted. (Brown's Application, 2 Griffin, P. C. 1.) When an application has been accepted, the Comptroller will give notice thereof to the applicant, and by Rule 21 of the Patents Rules, 1890, he will advertise such acceptance in the official journal of the Patent Office. If (subs. 5 of sect. 2, Act 1888), after an application for a patent has been made, but before the patent thereon has been sealed, another application for a patent is made, accompanied by a specification bearing the same or a similar title, the Comptroller, if he thinks fit, on the request of the second applicant, or of his legal representative, may, within two months of the grant of a patent on the first application, either decline to proceed with the second application or allow the surrender of the patent, if any, granted thereon.

Under section 4 of the Patents Act of 1885, where an

application for a patent has been abandoned or become void, the specification and drawings (if any) shall not at any time be open to public inspection or be published by the Comptroller.

When the legal representative of a deceased inventor intends to apply for a patent, under the authority of the 34th section of the Patent Act of 1883, the application must be made within six months of the decease, and it must contain a declaration by the legal representative that he believes the person whom he represents to have been the true and first inventor of the invention. An official copy of or extract from the will or letters of administration must accompany the application in proof of the applicant's title. (Rule 20 of 1890.)

'One Invention.'-It has been already stated that by sect. 33 of the Act of 1883 the provisional specification ought not to comprise more than one invention. The question whether a provisional specification comprises more than one invention will often be a delicate one, and no general rule can be laid down for the inventor's guidance. If the words of the Act were interpreted strictly patents would be greatly multiplied, whilst a liberal interpretation cannot go far in the face of the clear language of the statute. The Comptroller must be left to exercise his discretion on the facts of each case subject to appeal to the law officer. It has been said by a law officer that if there are several heads of invention it ought to be shown in the provisional specification that they have all a common object. Under the title of Improvements in Railway Carriages, an attempt to include improvements in the seats, doors, windows, coupling apparatus, and illumination would doubtless. be a failure, and yet all these heads of invention have the common object of improving a railway carriage.

The following cases have been decided by the law officers on appeal and have been reported.

Where there is a new combination of parts and some of the subordinate parts are themselves new, they may all be included along with the entire combination in the same

specification. But where a specification describes a combination of parts and also comprises a minor combination which is stated to be applicable not only to the purpose of the entire combination but to a purpose distinct therefrom, the latter application must be considered a different invention and ought not to be included in the same specification. (Jones's Patent, 1 Griff. P. C. 265; Hearson's Patent, 1 Griff. P. C. 266; Robinson's Patent, 1 Griff. P. C. 267.)

Alternative devices for effecting the same object ought to be treated as one invention; for example, several devices of an analogous nature, or cognate devices, for securing the rails on a railway. (Jones's Patent, 1 Griff. P. C. 265.)

The thirty-third section of the Act of 1883 enacts 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.

Office of the Provisional Specification.—A general description of the invention, fairly showing its real nature, is sufficient for the provisional specification. An applicant is not bound to describe the way in which his invention can be carried into effect. (Woodward v. Sansum, 4 R. P. C. 174; Siddell v. Vickers, 8 R. P. C. 426.) It is enough if its principal and essential features are set forth.

In the next chapter it will be shown that it is not allowable to vary the invention in any important respect when the complete specification is in preparation, or to introduce. new matter into that instrument; and the chief object of the provisional specification is to afford means for securing the identity of the invention at the time of application and when finally specified.

The provisional specification is not intended to ascertain the entirety but the identity of the invention, said Pollock, C. B., in Newall v. Elliott, 1 H. & C. 797. And see also Foxwell v. Bostock, 4 De G. J. & S. 298.

The office of the provisional specification' (said Mr. Justice Byles in Newall v. Elliott, 4 C. B. N. s. 269) 'is only to describe generally and fairly the nature of the invention, and not to enter into all the minute details

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as to the manner in which the invention is to be carried out.'

'A provisional specification' (said Sir G. Jessel, M. R., in Stoner v. Todd, L. R. 4 Ch. D. 58) is not intended to contain a complete description of the thing so as to enable any workman of ordinary skill to make it, but only to disclose the invention-fairly, no doubt, but in its rough state, until the inventor can perfect its details.'

The office of the provisional specification' (said Lord Chelmsford in Penn v. Bibby, L. R. 2 Ch. 127) is to describe the nature of the invention, not with minute particularity, but with sufficient precision and accuracy to inform the law officer what is to be the subject-matter of the patent. It is not at all necessary that the provisional specification should describe the mode or modes in which the invention is to be worked or carried out.'

For further remarks by various learned judges as to the office of the provisional specification, see Woodward v. Sansum (4 R. P. C. 178), Siddell v. Vickers (5 R. P. C. 79, 426), Crampton v. Patents Investment Co. (5 R. P. C. 397).

When an inventor is engaged in preparing his provisional specification, he ought to keep in mind that every part of the invention, excepting details, intended to be claimed by the complete specification, ought to be foreshadowed in the preliminary instrument.

It sometimes happens that, after a provisional specification has been lodged, an inventor thinks it desirable to abandon it and lodge another in a different form. Under the old law it was held that a patent obtained upon a second provisional specification, when filed within the six months' term of provisional protection, was valid, as the first specification had not become public by the mere fact of abandonment. And in Lister v. Norton (3 R. P. C. 206) it was held that where an inventor had lodged a provisional specification, and then within six months had lodged a second one for the same invention, proceeding upon the latter to obtain a patent dated in 1881, it was no objection to the patent