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If,

In specifi

cations.

when patent

dated.

user, vitiates the grant of letters patent. however, an inventor files a specification and abandons it, but files another before the time allowed him for his provisional specification has elapsed, the first specification is not so published as to invalidate the second (s). The principle which has been laid down as to prior statements in books Rule as to or specifications is thus stated by Lord Westbury: is invali"That an antecedent specification ought not to be held to be an anticipation of a subsequent discovery unless you have ascertained that the antecedent specification discloses a practical mode of producing the result which is the effect of the subsequent discovery" (t), and "The antecedent statement must, in order to invalidate the subsequent patent, be such that a person of ordinary knowledge of the subject would at once perceive, and understand, and be able practically to apply the discovery without the necessity of making further experiments" (u).

86;
Hill v. Thompson, 8 Taunt. 375, 1 Webs. P. R. 244;
Muntz v. Foster, 2 Webs. P. R. 107. Even if difference in
mode of working of invention is substantially the same,
Dobbs v. Penn, 3 Exch. 427; Hullett v. Hague, 3 B. & Ad.
370. Specification does not differ from other publications,
Hill v. Evans, 8 Jur. (N. S.) 529.

(s) Young v. Fernie, 4 Giff. 577; Lewis v. Marling, 10 B. & C. 22; 4 C. & P. 52; 1 Webs. P. R. 490; Stoner v. Todd, 4 Ch. D. 58; Oxley v. Holden, 8 C. B. (N. S.) 666.

(t) Betts v. Menzies, 10 H. L. C. 117.

(u) Hills v. The London Gas Light Company. "This seems

A consideration.

Utility re

quired.

for jury.

Utility.

The invention must be useful, or again there will be a failure of consideration; for the patent is granted for the public benefit (v). There is no express proviso in the Statute of Monopolies that the manufacture must be useful; but that this was intended is evident from the frequent reference to the expediency of these grants throughout the statute. As has been before said, the statute of James was only declaratory of the common law, of which the necessity of the utility of the invention was an axiom (w). Sir E. Coke says: “In every such invention as deserves a privilege there must be urgens necessitas and evidens utilitas" (x).

The utility of an invention is a question for a A question jury (y), and the question to be considered is whether the invention is of some substantial use; and the patent will be invalid if the specification

a very sensible and reasonable rule," per Holker (L. J.), in Otto v. Linford, 46 L. T. (N. S.) 457.

(v) See Introduction, p. xxxvii.

(w) A patent is granted for the good of the realm in consideration of the good that he (the inventor) doth bring by his invention to the commonwealth; otherwise not. Darcy v. Allein, Noy. R. 182. Edgebury v. Stevens, 1 Webs. P. C. 35 ; Shephard's Abridgments, part iii. p. 61.

(a) 3 Just. 184.

(y) Or for the judge to estimate as if a jury, since patents actions are tried without a jury. Lewis v. Davis, 3 C. & P. 502; Bloxam v. Elsee, 1 C. & P. 565,

contains a false suggestion as to utility (z). The fact of an invention not being used is a presumption against its utility (a); but it is not necessary to prove that it has been useful. It is sufficient to show that the invention would be useful, and the evidence of experts on this point will be allowed (b).

Specification.

of invention

tion for letters

patent.

The third consideration for the grant of letters Description patent is that the patentee publishes a description a consideraof his invention in such a manner that he gives sufficient information to the public: Firstly, to enable them to understand fully what they are prevented from using during the period of his protection (a); and, secondly, to enable all the world to have the benefit and use of the invention as soon as the term of the grant is at an end (b). Yet the

(z) Morgan v. Seaward, 1 Webs. P. R. 172, 186; Haworth v. Hardcastle, 1 Bing. N. C. 182. Misrepresentation of utility avoids a patent, Bloxam v. Elsee, 6 B. & C. 178; Turner v. Winter, Dav. P. C. 145; Losh v. Hague (as to the meaning of "improvement"), 1 Webs. P. R. 202.

(a) Morgan v. Seaward, 1 Webs. P. R. 186.

(b) Neilson v. Harford, 1 Webs. P. R. 316.

(a) Macfarlane v. Price,1 Stark. 199; The King v. Arkwright, Dav. P. C. 61; 1 Webs. P. C. 64, per Lord Eldon.

(b) Newberry v. James, 2 Mer. 446; Liardet v. Johnson, Bull N. P. 76, 1 Webs. P. R. 53; The King v. Arkwright, Dav. P. C. 106; Morgan v. Seaward, 1 Webs. P. R. 173; Bovill v. Moore, Dav. P. C. 361; Galloway v. Bleaden, 1 Webs. P. R. 524.

To whom addressed.

Must not necessitate experiment.

description need not be such as to enable unskilled persons to make articles by its aid; for to discard the use of technical terms for popular language would, instead of increasing the clearness, result in inconvenient length and ambiguity. The specification must then be of such a nature as to clearly disclose the invention to such persons of ordinary skill and ordinary knowledge as are engaged in the particular trade to which the invention relates, and to enable them, by bringing that skill and knowledge to bear upon the subject, to construct the machine or make the product by the means of the description given by the patentee (c); provided, however, that they need not have to resort to experiment or exercise their own inventive power (d). In the case of Bädische Anilin Fabrik v. Levenstein,

(c) Morgan v. Seaward, 1 Webs. P. R. 178; Neilson v. Harford, 1 Webs. P. R. 295–374; Elliot v. Aston, 1 Webs. P. R. 224; Arkwright v. Nightingale, Dav. P. C. 56; Hornblower v. Boulton, Dav. P. C. 228; Huddart v. Grimshaw, Dav. P. C. 279; Harmer v. Playne, Dav. P. C. 316; Liardet v. Johnson, Bull N. P. 76; Bickford v. Skewes, 1 Webs. P. R. 218; L. R. 1 Q. B. 938. What amount of skill and knowledge the persons to whom the specification is addressed are given credit for is very clearly pointed out in the judgment of Sir G. Jessel in Plimpton v. Malcolmson, 3 Ch. D. 568.

(d) The King v. Arkwright, Dav. P. C. 106; Morgan v. Seaward, 1 Webs. P. R. 173, 174; Beard v. Egerton, 19 L. J. C. P. 36; Turner v. Winter, Dav. P. C. 152; Crompton v. Ibbotson, Dan, & Lloyd 33 (where the patentee, knowing that only one material was suitable, said that he prefers that material, but that any other suitable material might be used).

Mr. Justice Pearson held that in considering the specification of such a patent as a complicated chemical compound, the standard of knowledge of the persons to whom it was addressed was that of such a chemist as would be in the usual course of events employed in that and similar works (e).

false or

The patentee must not only particularly describe Must give complete inhis invention, but he must state all he himself knows, formation. or his specification will be bad and his patent invalid (ƒ); and also if it be materially false or Must not be defective the patent is against law and cannot be defective. supported (g). When old and new matter is mixed New matter up in the same specification, as, for instance, where tinguished the patent is for an improved process, or a new combination of old parts of a machine, the new must be distinguished from the old (h).

By doing so he misled others into trying experiments which he
knew must fail. See also Stevens v. Keating, 2 Ex. R. 772;
Simpson v. Holliday, 13 W. R. 578; Plimpton v. Malcolmson,
L. R. 3 Ch. D. 568.

(e) 48 L. T. (N. S.) 822; 24 Ch. D. 156 (not reported on this point).

(f) Lewis v. Marling, 4 C. & P. 52; 10 B. & C. 26; Liardet v. Johnson, 1 Webs. P. R. 53; Bovill v. Moore, 2 Coop. C. C. 56; Hinks & Son v. Safety Lighting Company, 4 Ch. D. 607.

(g) The King v. Arkwright, 1 Webs. P. R. 64; Turner v. Winter, 1 Webs. P. R. 77; Crossley v. Potter, Mac. P. C. 240; Betts v. Neilson, L. R. 3 Ch. 429.

(h) Bovill v. Moore, Dav. P. C. 404–413; Parkes v. Stephens, L. R. 8 Eq. 265; Titley v. Castor, Macr. P. C. 48; Harrison v. The Anderston Foundry Company, L. R. 1 App. Cas. 574; Foxwell v. Bostock, 4 De G. J. & S. 298; Clark v. Adie, L. R. 2 App. Cas. 328.

must be dis

from old.

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