kJ) 1^53 (llnrnpU Ham iri^nol ICibrary Cornell University Library KD 1369.W38 1853 The_new patent law :its history^ obects 3 1924 021 862 440 Cornell University Library The original of tliis book is in tine Cornell University Library. There are no known copyright restrictions in the United States on the use of the text. http://www.archive.org/details/cu31924021862440 TI-IE NEW PATENT LAW: ITS HISTORY, OBJECTS, AND PROVISIONS: IHE 14Vict.c.8i &15Vict. c. 6; AND ^fi« ^nUnt Unit) ^mmtsmmt '^ct^, 15 & 16 Vict. c. 83, & 16 Vict. o. 5 ; THE RULES OF THE COMMISSIONERS OF PATENTS, AS REVISED TO APRIL, 1853, AND PRACTICAL FORMS AND PROCEEDINGS. THIRD EDITION. BY -. THOMAS WEBSTER, Esq., M.A., F.R.S., BARRISTER- AT-LAW. iv, - y I - y . LONDON: F. ELSWORTH, 19, CHANCERY LANE. 1853. LONDON : PBINTED BY A. SWEETINO, EARTLEIT's BUILMNGS. CONTENTS. PAOE Inteoduction ........ V History of the Act 1-14 The Objects and Provisions of the Act 15-36 Omitted Objects ....... 41-47 Act of 1853 48 The Statutes 49-97 The Protection of Inventions Acts 49 The Patent Lavp Amendment Acts . 54 Rules, &c. , of the Commissioners . . . . . 99-106 Practical Directions for obtaining Letters Patent . 107-108 Practical Forms and Proceedings .... 109-119 I. Petition 109 II. Declaration ...... 112 III. Provisional Specification 114 IV. Complete Specification .... 115 V. Keference . . 115 VI, Notice of Proceeding for Patent 116 VII. Particulars of Objections 117 VIII. The Warrant 117 IX. Opposition to the Sealing 118 X. The Letters Patent .... 118 XI. The Specification .... 118 INTRODUCTION. The following pages are designed as a Manual for Inventors desirous of availing themselves of the provisions of the new Patent Law; they will also serve as a guide in the further re- form of our patent system. The Statutes, portions of which relate to patents for inven- tions, are sixteen in number ; most of these are superseded or affected by " The Patent Law Amendment Act, 1852," which may consequently be regarded as the first step towards the consolidation of the Law and Practice of Patents for Inventions. The experience of six months' working of the patent system has disclosed the necessity of various alterations, in addition to the " omitted objects" adverted to in the following pages. Many of the provisional specifications are extremely meagre, and obviously framed with the view of concealment rather than of fairly disclosing the invention. The provisional specifications have hitherto been treated as secret documents until after the filing of the complete speci- fication ; and inventors are advised by some professional per- sons to place no reliance on the provisional protection,- but to proceed at once for the patent. Inventors adopting such advice abandon the benefit to be derived from the use and publication of the invention during the period of provisional protection, and incur at once and without trial the whole expenses of the patent and specification. The inadequacy of the provisional specifications is alleged as one reason for advice so contrary to the whole spirit of the new system ; and the practice under the old system, whereby the mere possession and knowledge of the invention by an opponent was allowed to prevail in opposition to a prior applicant, is assumed still to prevail, in utter disregard of the principle of the new system, that credit is to be given to the first applicant, except in cases of fraud; and to which prin- VI INTRODUCTION. ciple full effect is given by the Lord Chancellor and the Law Officers in the cases of opposition which have occurred. If the Rules of the Commissioners as to the provisional spe- cification were fully carried out, and the provisional specifica- tion were open to inspection after its sufficiency had been certified, inventors would have the means not only of protect- ing themselves against the conflict which is constantly occur- ring between subsequent and preceding patents relating to inventions substantially the same, but also of avoiding expen- sive future litigation. The Rules of the Commissioners as to the drawings accom- panying specifications will be the subject of further revision, as it is impossible that the system of publication can be carried out unless some check be placed on the fihng of preposterous and extravagant drawings, embellished with all the colours of the rainbow. This is one of the relics of the old system ; it serves for a cloak to the absence of distinct substantive invention and proper description in words. A scale of one or one and a half inch to the foot is sufficient for the general plan and elevation of machinery. The details of parts may be to a larger scale, full size, or double size, or even larger; but a large scale is seldom necessary (except in small instruments), inasmuch as working drawings and pat- terns are invariably made before any machine is constructed in the workshop. The mechanical drawings for some years past executed by Mr. Falkner, of Manchester, and by other persons, on stone and zinc, and the description of British machinery, to be found in the elaborate works pubHshed at the expense of Foreign states and bodies, ought long ago to have led to some rules, whereby (as suggested in the follow- ing pages, p. 32) all deposited drawings should be from a stone or plate prepared upon the responsibility of the patentee. The rules and regulations of the Commissioners now in force will be found in the following pages ; and new editions of this work will be published, from time to time, as any change in the practice may render necessary. 2, Pump Court, Temple, T. W. April, 1853. THE NEW PATENT LAW, Letters patent for inventions, prior to the com- Three mencement of the new law, were granted according systems. to three distinct systems ; each of the three countries, England, Scotland, and Ireland, having its own pe- culiar practice for the creation of such exclusive pri- vileges within that part of the United Kingdom ; the Channel Islands, Colonies and Plantations abroad were usually included in the patent for England, though sometimes the subject of a distinct grant made ac- cording to the practice for that country. These three distinct systems of England, Scotland, and Ireland, now superseded by one system for the United King- dom under " The Patent Law Amendment Act, 1852," have continued to subsist notwithstanding the unqualified condemnation of every disinterested per- son of any experience in the subject (a). For the last quarter of a century men of science, inventors, and professional men more peculiarly engaged in patent business, have laboured for the abolition of a vicious and the establishment of a rational system of creat- ing and protecting property in inventions in the arts and manufactures ; but the inherent difficulty of the subject, the conflicting opinions of reformers, a want (a) No language can convey any ade- and other professional men more imme- quate idea of the general dissatisfaction diately engaged in obtaining patents, in and distrust which existed in reference preparing specifications, or in litigation to this subject amongst men of science, thereon, and in advising on inventions persons holding or having held the generally, veere opposed to reform in the highest judicial situations, law officers, patent system ; such, however, is not the and every class of professional men. It fact ; Mr. Wyatt, the editor of the " Ke- has been represented that patent agents, pertory," Mr. Newton, the e4itor of B 2 THE HEW PATENT LAW. Failure of of Sympathy on the part of the public with the compa- rcform/ * ratively small class of scientific and ingenious men, the mistaken jealousy of some capitalists, and other causes, gave power and effect to the obstructiveness or opposition of the numerous persons in the three countries directly or indirectly interested in the official fees levied under the existing systems, and many well-intentioned efforts either failed or produced temporary expedients of little value. The history of the growth of abuses in the patent system is cuiious and instructive, counterparts of which may be found in other branches of our jurisprudence : it presents a striking instance of a system trained and fostered by private interests, until the accumulation of abuses had paved the way for the extinction of the whole system, and induced many persons well affected towards inventors to doubt the policy of maintaining property in the productions of ingenuity in the arts and manu- factures. The history of the struggles for the refoim of that system is equally curious and instructive ; but "The London Journal of Arts and received evidence from C. Barlow, F. W. Sciences," Mr. Robertson, the projector Campin, W.Newton, J.C. Robertson, W. and editor of the "Mechanic's Maga- Spence, and B, Woodcroft, all professional line," and Mr. Barlow in the " Patent persons of experience, in exposition and Journal," and others, have written and condemnation of the abuses necessarily given evidence against the system during incident to the existing system ; several the last quarter of a century. The testi- of the same witnesses, with many others mony oi M.V, Newtonandof the late Mr. of great attainments and experience, gave Robertson, two of the oldest and most evidence to the same eflFect before the two successful patent agents, is supported by Select Committees of the House of Lords almost every other patent agent and pro- on the Designs and Patent Bills in 1851. fessional person examined before any of On those' last occasions the system was the Committees of 1829, 1848, or 1851. described as exhibiting "dodging" (482), The Select Committee of the House of "all sorts of manoeuvres understood by Commons in 1829 examined twenty-four racing" (884), "giving advantage to an witnesses — persons of the greatest expe- unscrupulous over a scrupulous agent, and Hence in the practical and applied sciences presenting a sort of strife degrading to be and in patents, as Davies Gilbert, M.P., connected with" (886); as affording no John Taylor, Mark Isambard Brunei, security, and as bad as hoise jockeying Arthur Aikin, Samuel Clegg, Isaac Haw- (211}--(See evidence before Select kins, J. .Millington, and A. H. Holds- Committee of House of Lords, 1851, on worth, M.P. ; also, persons profession- Patent and Designs Bills). Ihesu wit- ally connected with patents, as B. Rotch, nesses differed as to the nature and ex- Charles Few, W. H. Wyatt, J. Farey,and tent of the remedy to be applied, bui W. Newton — all of whom condemned the were of accord as to the existence and existing svstem. T he Committee on the character of the disease. Signet and Privy Seal Offices, in 1848, THE HISTORY. 3 it would be foreign to our present purpose to dwell more on this part of the subject than to present a simple record of the past as introductory to and ex- planatory of the new system. In 1829, a Select Committee of the House of Former Commons was appointed to inquire into the state of ***«'"P*^- the law and practice relative to the granting of Patents *'^' ^^^^' for Indentions ; numerous witnesses were examined ; the committee reported the evidence, and recom- mended the resumption of the inquiry early in the next session. The inquiry was not resumed ; indeed little necessity existed for further inquiry ; the wit- nesses were almost unanimous in condemning the ex- isting system, and were agreed on many material points as to the remedies to be applied ; the leading features of which were the same as of the system now superseded. In 1833 a bill, introduced by the late Mr. Godson, a.d. 1833. passed the House of Commons ; but arriving at the House of Lords at a late period of the Session, its further consideration was postponed until the next Session; the Marquis of Clanricarde, the Lord Chan- cellor (Lord Brougham), Lord Wynford, and the Lord Chancellor of Ireland (Lord Plunket), speaking strongly on the necessity and importance of the sub- ject. In 1835 a bill, introduced by Lord Brougham, a.d. 1835. passed the House of Lords; the second reading was moved in the House of Commons by Mr. W. Tooke : several members expressed great regret at the measure not being more comprehensive; the Lord Advocate and other members commented on the following evils as untouched by the measure: — 1. The amount of fees and expenses. 2. The existence of distinct patents for England, Scotland, and Ireland. 3. The interval between the application and the grant, dur- ing which the applicant was without any protection, and subjected to opposition. The measure however 4 THE NEW PATENT LAW. passed the House of Commons by a small majority, 5 &6W. 4, and became the law of the land. By this act power p ■ was given to disclaim part of an invention, and to rtisclaim. amend the letters patent and specification ; also, the Confirma- Crown was empowered to confirm existinffpatents, and tion and ex- ' "j' tension of to grant new letters patent for an extended term, on term. |.|jg recommendation of the Judicial Comm.ittee of the Privy Council, in cases in which there had been a limited prior user unknown to the patentee, and in which adequate remuneration had not been obtained from the invention. This act has been a great boon to inventors, and has,' it is conceived, more than realised the anticipations of its noble author (6). The late Lord Langdale, ujider the provisions of an Act(c) for keeping safely the Public Records, passed in Access to 1838, gave the public, at the cost of one shilling, the tions. privilege of reading and copying any specification at the Rolls Chapel, one of the three offices at which specifications were then enrolled ; interests, however, existed inimical to the cheapening and facilitating access to these documents, and the result was a great diminution in the proportion of the specifications enrolled at the Rolls Chapel, and a great increase in the proportion enrolled at the other two offices from which the public were practically excluded. In 1848 his lordship introduced a clause, in an Act(rf) relating to the Court of Chancery, requiring all speci- fications and disclaimers enrolled after the 1st of January, 1849, to be eiu-oUed in one office, and further concessions were made for the convenience of the public ; but fears of a diminution of fees prevented the privilege of copying a single extract being con- ceded to the public, and at the present day the public are not permitted to make an extract even in pencil (i) Some of the provisions of this act (c) 1 & 2 Vic, o. 94. See Law and have been extended and amended by sub- Practice of Patents, 3rd edit., p. 173. sequent acts, viz. 2 & 3 Vic, c. 67 ; 7 & (d) See 1 1 & 12 Vic, c. 94 ; 12 & 13 8 Vic, c. 69. See Webster's Law and Vic, c. 109 ; Law and Pr., 184. Practice of Patents, 3rd edit., p. 166. THE HISTOKT. 5 from any specification either at the Petty Bag or at the Enrolment OiRces. In 1848 a Committee on the signet and privy seal ^-D- 1848. offices-^two of the oifices through which patents for Signet inventions were required to pass " in order that the ^°°""'«ee- clerks thereof might not by any manner of means he defeated of any portion of their fees/' (e)— inquired into the practice of passing patents, and made several recommendations calculated to improve the system ; but a Bill introduced in the session of 1850 into the House of Commons to carry out some of these re- commendations was not prosecuted. The preparations for the approaching Great Exhi- A. D. 18S0. bition of the Industry of all Nations had so effectually aroused attention to the discreditable state of the laws affecting inventions in the arts and manufactures, and to the inadequate protection for the kindred subject of designs, that the public were prepared for a great reform in the laws affecting these two subjects. On the 24th of June, 1850, the Earl Granville in- Extension troduced into the House of Lords the "Law of Copy- Act^"'^"' right of Designs Amendment Bill;" the object, as stated in the preamble, being, to encourage the exhi- bition of works of art, by providing that such exhibition (certain conditions being complied with) should not defeat the copyright. The enacting clauses of the Bill extended to manufactures and inventions theretofore the Subject of protection by patent, and would have brought that class of inventions under the existing system of registration of designs. To this many obvious objections existed ; the system of registration of designs, but recently established, showed many symptoms of itself requiring reform ; the subjects, though kindred, had many distinctive features requiring different regulations j language and technical terms theretofore unknown in connec- (e) See statute 27 H. 8, c. 11 ; A.D. 1535-6 ; Law and Pr.,,121. b2 THE NEW PATENT LAW. Extrava- gant no- tions as to inventors. tion with property either in designs or manufactures were employed in the clauses : these objections hav- ing been pointed out, all reference to inventions other than designs theretofore the subject of registration was omitted, and the Bill was confined to enabling the subjects of copyright, as defined by the preceding Designs Act, to be exhibited without prejudice to after acquired copyright; it being distinctly understood on the withdrawal of the other portions of the bill that similar privileges should be extended to inventions the subject of patents at a sufiiciently early period in the ensuing session to enable such inventions to be exhibited at the Great Exhibition without prejudice to letters patent to be afterwards acquired. A laudable enthusiasm in favour of whatever might contribute to the success of the approaching Exhibi- tion had given rise to extravagant notions of the protection to be afibrded to property in inventions ; the right of an inventor to property in his invention, whether a design or a manufacture, and the right to exclude all others from its adoption, were declared to be natural and indefeasible ; many crude and unreason- able propositions connected with this subject obtained the sanction and support of names of high authority; and in the autumn of 1850, a " Bill to extend regis- tration to inventions generally," was prepared, and printed as suggestive of the views of the advocates of the so-called indefeasible and natural rights of in- tellectual labour. The general scope of that Bill was to enable any person to acquire, by a simple act of registration, exclusive privileges in respect of what- ever he might choose to make the subject of such re- gistration, a system which would lead to a large amount of useless invention and of profitless expense and litigation ; a system pronounced on high autho- rity as proper to be tried in order to put an end to patents altogether {J"). ( f) See evidence of Mr. Brunei House of Lords, session 1851, on the (1836) before Select Committee of the Patent Bills. THE HISTORY. 7 These extreme views found little favour with the practical inventors of the country ; the working of the Non-ornamental or Utility Designs Act (6 & 7 Vict. c. 65) had indicated some of the probable consequences of such a system {g) ; and public attention was again directed to improving the existing system of patents (A). Meetings were held in the autumn of 1850 at Suggestions various places, which led to the formation of a United °^ '"™°" , , tors. Association of Inventors, whose views were embodied in twelve recommendations, which were agreed upon, and suggested as the basis of the proposed new system (i). A Bill prepared in accordance with these recommen- dations was prepared, printed, and circulated amongst the members of the Association at the close of the year 1850, and formed the model upon which the several Bills introduced in the following session were founded ; all the Bills contained the leading and cardinal features of the system sanctioned during the last session. At the commencement of the session of 1851, ^••'^- ^?^'- the Earl Granville, in pursuance of the understanding of Inven- at the close of the preceding session, introduced "°"^ ^''*' into the House of Lords a Bill to enable inven- tions to be exhibited at the forthcoming Great Exhibition without prejudice to rights to be acquired after such exhibition. The Bill was referred to a select committee of the House of Lords, and their lordships after hearing evidence on the probable operation of registration of inventions generally, ac- cording to the system for the registration of designs, modified the Bill so as to keep distinct from each (y) See evidence before Select Com- and manufacturers showed great unanimi- mittee of House of Lords, Session 1851, ty as to what was required and wished for, on the Designs Extension bill. and formed the basis of the Bills intro- (A) In Noyember 1850, the author of duced in the session of 1851. these pages published " An Outline (i) See evidence of R. H. Wyatt, Scheme and Suggestions" for the amend- Hon. Sec. of the United Inventors Asso- ment of the system ; the replies received ciation before the Select Committee of from more than one hundred inventors the House of Lords, 12th May, 1851. principles. THE NEW PATENT LAW. other the two methods of acquiring and protecting property in designs and inventions. The Bill so modified became " The Protection of Inventions Act, 1851." The protection under that Act was granted only for a year; but the anticipated new patent system not having been sanctioned in the session of 1851, an Act was passed in 1852 extending the protection until February, 1853. ^^" . , The Protection of Inventions Act introduced several new principles of the greatest importance to inventors. It enabled the inventor, on obtaining a certificate of the sufficiency of a description of his invention, to ex- hibit and publish it so as to obtain the assistance and judgment of persons of skiU and capital without pre- judice to any after acquired patent for such invention; it constituted a distinct legislative recognition of pro- perty in inventions in the arts and manufactures; it gave an interest in that property from the date of the application for protection; and it authorised the Lord Chancellor to cause the letters patent to be sealed and bear date as of the day of such provisional regis- tration, thus affording a precedent for the principle that the legal right should date from the day of the application, unless justice to other parties required that it should be post-dated (k). These principles, and the operation of that Act, were the subject of evi- dence before the committee on the Patent Bills, and the New Patent Law embodies such as were appli- cable to the general system. The Protection of Inventions Act came into opera- tion immediately on its passing, on the 10th of April 1851 ; between that day and the closing of the Exhi- bition, application for provisional protection was made in 691, and granted in 615 cases ; the first certificate being registered on the 22nd of April, and the last on the 16th of October ; a very large proportion of those (A) ?ieepost, Act 14 Vict., c. 8. THE HISTORY. inventions being protected by persons to whom pro- perty in their labour and ingenuity would have been denied under the existing patent system. In the administration of that Act frequent opportu- Working of nities were aflforded of suggesting to applicants for ac"!"'"™ provisional protection that the supposed invention possessed no feature either of novelty or of utility, and was not worth further prosecution; in no less than 77 cases out of 691 applications such suggestions were acquiesced in; thus affording conclusive evidence of the importance of and of the benefit to be conferred by protecting inventors against their own ignorance. The majority of the persons acquiescing in such sug- gestions were not of the poorest class; they were persons who had taken up some scheme foreign to their education or business, and who could have found money for a patent which would have been either invalid or utterly worthless, but which when once obtained they might in many cases have been tempted to maintain even by litigation (Z). The injustice of a system of protection for the rich Injustice of to the exclusion of the ingenious but poor inventor, P*'^"' '3"- was much insisted on in the course of the evi- dence before the Select Committee of the House of Lords on the measure just adverted to (m) ; the defects of the existing patent system generally, and of the sys- tem of the registration of designs, and the operation of the act of 1835 (commonly called Lord Brougham's Act), were incidentally discussed in considerable de- tail. The most favourable opinions were expressed as „ Froc6ed- to the beneficial operation and successful working of ings in the (J) The temptation afforded under the a system analogous to that pursued under oldsystemtoadvise the taking out patents the Protection of Inventions Act ; cases without regard to the novelty or utility will occur in which an inventor will not of the invention, was one of the crying take advice, but this is not usually the evils of that system. If some agents should case. decline to solicit such a patent others (m) See evidence of C. May, A. V. would be found to encourage it. These Newton, and Professor Woodcroft, be- evils can only be effectually checked by foreHouse of Lords,13thof March, 1851. 10 THE NEW PATENT LAW. LorT °' ^^^^ ^^* °^ ^^^^' ^* *° *^^ P°'^^^ °^ disclaiming and of extending the term of tlie patent ; and the importance of supplying the omissions referred to in the discus- sions on that measure when in the House of Commons (w) was brought prominently before the committee. The result of this inquiry^ coupled with the general feeling on the part of the public as to the necessity of the revision of the whole patent system, Two Patent led to the introduction into the House of Lords of dueed" """ ^^^ ^i^^s — the One on the 24th day of March by Lord Brougham, the other on the 10th day of April by Earl Granville — both founded on the same general principles, differing only in minor details. The two Bills so introduced, with petitions to the House of Lords praying for the reform of the patent laws, were referred to a select committee, and numerous witnesses, representing various interests, and almost every class in this country and in other countries, were examined, and the evidence was directed to the question of the general policy or impolicy of patents, as well as to the details of the specific measures before the committee (o). The general effect of the evidence being in favour of some of the provisions of each Bill, and sug- gestive of provisions not contained in either Bill, a third Bill amalgamating the two, and containing such provisions, was introduced by the Earl Granville on the 23rd day of June, and having passed the House of Lords was sent dovni to the House of Commons on the 4th day of July. The advocates of the existing system, and oppo- (n) See ante 3. tenance which some of their answers (o) It may be necessary to warn the appear to give to the views against the unprofessional reader of that evidence policy of patents which suggested many not to be misled by the form of questions of the questions. The print of the evi- and answers ; many of the witnesses dence presents a curious confirmation of were wholly unaware of the particular the well-known rule of practice before views which suggested the questions, and our legal tribunals, that a witness is not the result has been that several of the to be led or as it were cross-examined witnesses have been surprised on perns- by his own counsel, ing their evidence in print, at the coun- THE HISTOEY. 11 nents of all reform and of patents generally, were Proceed- not idle during the successive stages of the Bill in the House of House of Commons ; alterations were made in the Commons. form of the Bill, and a clause found its way into the altered Bill which would have defeated one of the main provisions of the measure, by letting in opposi- tion before obtaining provisional protection, and thus the beneficial operation of immediate provisional pro- tection, which had been practically tried with the most satisfactory results under the Protection of Inventions Act during the pendency of the Patent Bill in the House of Lords, and which had been the subject of evidence before that committee, would have been virtually defeated. The Bill, as amended by the House of Commons, was returned to the House of Lords only the evening of the day before the close of the session, and it being impossible to reprint the amendments for the consideration of their lordships, the measure was necessarily postponed. Concurrent with the Patent Bills, there was Appoint- pending in parliament a measure for simplifying the "™' '°„ , appointment to offices and the manner of passing grants under the Great Seal, introduced in accordance with the recommendation of the Committee of 1848 on the signet and privy seal offices; the subject of patents for inventions was expressly excepted from its operation, but when it appeared that the Patent Bill would be lost for want of time to carry it through the House of Lords, the exception was struck out, and three of the useless stages of the old system were thereby abolished (p) ; but the other inherent defects in the system, which it was the object of the Patent Bill to obviate — as, the want of any protection until the actual sealing of the patent ; the inadequate power and tribunal of the law officers ; the caveat system ; the delay and obstruction by interested opponents to the (p) See 14 and i5 Vict., c. 82 ; Law and Practice of Patents, p. 211. 12 THE NEW PATENT LAW. progress of grants ; the triplication of fees for distinct proceedings and patents for the three countries ; the impossibility of obtaining information as to the sub- ject of patents in progress or not specified — were wholly unprovided for. The small modicum of reform effected by the above Act was represented by the opponents of the compre- hensive scheme of reform which had been lost under the circumstances just stated, as sufficient, coupled with the general jurisdiction of the law officers in the three countries, to effect aU that was necessary, and various propositions were made and rules suggested with this view; but the law officers were not thus diverted from prosecuting the comprehensive measure which had been so fuUy explained and strongly re- commended by the Attorney-General, Sir A. E. Cock- burn, on moving in the House of Commons the second reading of the Bill (r). Bills of In the session of 1852, Lord Brougham, on the 13th of February, and Lord Colchester, on the 30th of March, introduced a Bill, in form substantially the same as the Bill returned from the House of Commons at the close of the preceding session; with the ex- ception of two important clauses («) which had been deliberately rejected or adopted by the House of Lords or Commons in the preceding session. The two Bills were referred to a Select Com- mittee ; the Bill of Lord Colchester was sent down to the House of Commons, and referred to a Select Committee to consider its provisions ; some amend- ments were made in Committee ; the House of Com- mons adhered to their former decision, and after a conference between the two Houses, the BiU, as returned from the House of Commons, was agreed (r) On the 25th July, 1851. See 1 1 8 patent as prior publication or use in this Hansard, p. 1534, and pos<. country; also, [that the colonies should (s) The House of Lords was of not be included in the grant for the o{>inion that the publication or use of United Kingdom. The House of Com- an invention in foreign parts should have mons resisted both these alterations in the same effect on the validity of a the existing law and practice. 1852. OBJECTS AND PROVISIONS. 13 to by the House of Lords, and the measure received the royal assent on the last day of the session. Such is a general outline of the history of Patent Law Reform in this country, and of the circumstances which led to the passing of the Patent Law Amend- ment Act, a measure which will probably bring to issue the question of the policy and existence of such privileges in this country ; for if abuses and dissatis- faction, such as existed under the old system, are essentially inherent in any system whereby property in inventions in the arts and manufactures is created and protected, it will be difficult hereafter to maintain such prop&rty, however great the merit of the inven- tion. SECTION II. OBJECTS AND PROVISIONS. The Patent Law Amendment Act does not in terms repeal the existing systems ; the preamble affirms the expediency of amending the law; the clauses provide for, the establishment of a system which in superseding the existing system enabled pending applications to be prosecuted and completed — otherwise various ^ difficulties might have occurred in the transition to the new system. It must not be sup- posed that with every precaution such transition can take place without some difficulty; but the objects with which the several clauses were framed being understood, the applicants for patents and ad- ministrators of the new system will be enabled to concur in giving effect to its provisions. The Act constitutes the Lord Chancellor, the Master Commis- of the Rolls, and six Law Officers of the three ^'''°«"'^i- countries, with such person or persons as the Crown mav think fit to appoint. Commissioners of Patents for Inventions, with general power for the management 14 THE NEW PATENT LAW. Want of conjoint Attempts at reform. and regulation of all matters not specially provided for by the Act. Under the old system no community of action existed ; each of the ahove named Commissioners had an independent and generally a distinct authority and jurisdiction, and the result was that the most obvious reforms were omitted by reason of the want of com- munication with each other as an authorised Board. The repeated attempts to correct abuses and intro- duce improvements would furnish many illustrations of this. The Law Officers have struggled repeatedly against the vague and general titles under which ap- plications were made ; the Lord Chief Justice (Lord Campbell) when Attorney-General introduced a rule as to deposits in opposed cases ; this led to oppositions taking place as a system, and increased the abuse of caveats ; then an open patent, or one which had passed the Law Officers without a deposit, was at a premium, so to speak ; and such patents would occa- sionally lie at the stage prior to the sealing ready to receive any matters within the scope of its title ; per- sons having caveats found patents sealed for inven- tions of which they had received no notice, patents which had passed the Law Officer months or years before; the Master of the Rolls (Sir J. Romilly) when Attorney-General required deposits in all caseg ; -Lord Truro, when Lord Chancellor, made an order that no patent should be sealed without a certificate of the Law Officer that a deposit had been made ; but no such rule as to deposits existed in Scotland or Ireland, and the spirit of the rule as to deposits was shame- fully evaded by the unscrupulous, so that many of the deposits are little better than blank paper ; the co-operation of the Master of the Rolls as the keeper of the specifications would be necessary for any effi- cient comparison between the deposits and the speci- fications. The late Lord Langdale, after several attempts, found that the system must be dealt with OBJECTS AND PROVISIONS. 15 as a whole. The Board of Commissioners now esta- blished affords the means of united action and treat- ment of the system. The Commissioners are empowered to make a seal. Seal of the of which the impression shall be receivable in evi- 1°""''," 2 dence, so that any document bearing that seal may be read without further proof. Under the existing system there were no less than six seals which the courts in this country alone might be required to take notice of, and yet there were many original documents and copies, incapable of proof in this sim- ple manner, but requiring the production of the original, and the attendance of witnesses. The Com- missioners have the power under the Patent Law Amendment Act of so arranging the business, that all documents connected with patents for inventions may be proved by their seal. This will effect a great saving both directly and indirectly in the expense of all proceedings, but it is a benefit which will be chiefly felt in litigated cases. The Commissioners are empowered to make such Commis- rules and regulations as may be expedient. The ^"u^'^rul' successful working of the new system will mainly &c. s. 3. depend upon these rules and their administration. Persons conversant with the old system are well aware how many of its defects and real or imaginary abuses might have been obviated by a few judicious rules and regulations capable of being modified from time to time, had there been any unity of action amongst the persons entrusted with its administration. The Commissioners have issued rules and regulations {t) affording practical directions and instructions for the working of the new system. The Commissioners are to report annually to Par- Annual Re- liament. The annual report of the American Com- P"' '° ^*""' missioners of Patents is a most instructive and useful s. 3. (t) See post. 16 The new patent la\V. compendium, showing the progress of invention in the several departments of the arts and manufactures so far as such invention has been the subject of patents ; with the names of all patentees ; the subject of every patent, in alphabetical and classified lists ; the patents that have expired, or been repealed, or altered by disclaimers, or otherwise. No such lists exist in this country (except the lists of private practitioners, ■which are necessarily imperfect) notwithstanding the enormous amount of moneys levied on inventors in the shape of official fees, and for the engrossing and enrolling of specifications (u). This report will make inventors in remote parts of the kingdom acquainted with the general progress of invention and state of property the subject of protection. One office The Commissioners have the power to provide one for the Urn- . m c i ted King- office, and to appomt competent officers tor the trans- dom, S3. 4 action of all business connected with patents, so that and 5. . . . the inventor or his agent, or any one of the pubhc re- quiring information, need have recourse to one place only for the United Kingdom, instead of to numerous offices in different parts of the metropolis, and to corresponding offices in Edinburgh and Dublin. The Commissioners can make such subdivisions as may be convenient for facilitating the business, but the spirit of the act contemplates that the inventor or his agent will not he required to attend in unopposed or ordinary cases at different offices or places of business. The necessity of attending at so many different offices was one of the greatest practical abuses under the old system, and a great source of expense to inventors and the public. Application -phe first step previous to applying for a patent is s 6. ' the preparation of the Petition, Declaration, and Pro- (u) The lists of private individuals Woodoroft, which have been purchased are not only imperfect but are vfithout for the public, under the authority of an authority. The most complete lists Act of this Session (21st February, known to existwere those of Mr, Bennett 1853). See jjost 92, OBJECTS AND PROVISIONS. 17 visional Specification. The formal parts of these documents are given in the schedule to the Act ; the two former are substantially the same as under the old system, except that they relate to the whole, instead of being distinct documents for each part, of the realm («). The provisional specification is a new document ; The provi- itis to "describe the nature of the invention;" and ^^""^^^P^"" " the provisional specification must state distinctly and intelligibly the whole nature of the invention, so that the Law Officer may be apprised of the improve- ment and of the means by which it is to be carried into efiect" (y). The petition and declaration, as heretofore, set forth the title only of the invention; and this new document is to furnish such specific information as will disclose a real bond fide inven- tion, and not a mere speculation or collection of ideas. The true character of this document, and the conditions which it must fulfil, will be under- stood by comparing the above terms with the corres- ponding language of the condition for the specification, called in the Act the complete specification. In that final document the inventor must " particularly de- scribe and ascertain the nature of the invention, and in what manner the same is to be performed." The term ascertain is usually regarded as having reference to certain precise definitions of the extent of the in- vention, so that the public may know where the invention commences and where it ends ; it is of a limiting nature ; a defining precisely that from which the public are to be excluded during the subsistence of the exclusive privileges. The words "in what manner the invention is to be performed " point to [x) See forms of petition, &c., post ; of a certain size. See " Rules of the and Law and Pr. of Patents, 3rd edi- Commissioners," post 102. tion. They are to be written on paper (y) See "Rules of the Commissioners," post 115. c2 18 THE NEW PATENT LAW. Rule of Commis- sioners as to provi- sional spe- cification. Certificate of Law Officers. Objections totheproTi- sional spe- cification. details of dimensions, parts, proportions, and minute practical directions, which can only be ascertained by experiments or experience, such as cannot take place with security while the invention is unprotected. With regard to a large — probably the largest — class of inventions, the description of the nature of the in- vention will really involve the manner in which it is to be performed ; but even in these something is to be learned from experience, and considering the rigour with which the law interprets the final or complete specification, it is, in the opinion of many practical men, desirable that time should be given for this purpose. The rule of the Commissioners as to the requisites of the provisional specification is directed to check the strong disposition to lodge documents of the most vague and general character ; in fact, mere general principles without any specific means or practical ar- rangements deserving the name of invention. The Law Officer must be satisfied that such means exist ; his supervision and certificate will be a protection and guarantee to the inventor and the public against the abuses of the former system of deposits. An opinion was expressed by the Master of the ' Rolls to the Select Committee of the House of Lords, that the preparation of the provisional specifi- cation might be attended with difficulty, but his Honour was speaking from the experience of the out- line description under the order of the Law Officers, as to which great laxity had been allowed, and in the preparation of which great skill was constantly exer- cised, for the purpose of disguise and of including as much as terms of art and general vagueness would cover, consistent with reasonable or apparent intelligi- bility ; but the bond fide honest inventor, who is in possession of any thing capable of being described and reduced to certainty in writing, beyond a bare idea, experiences no such difficulty, and if language be OBJECTS AND PEOVISIONS. 19 used for the purpose of unfolding and not of conceal- ing ideas little practical diiRculty will occur. The encouragement which the old system aiforded for ob- taining patents for inventions to be made, rather than existing, gave rise to an artificial system of deposits which the new system is calculated to check. The applicant for letters must leave his petition. Practical ■, 1 . . . T proceed- declaration, and provisional specification, or complete ings. specification (z), at the ofiice of the Commissioners. The application for the letters patent will be Proceed- marked in consecutive numerical order and endorsed office of the on the documents, recorded, and a certificate thereof Commis- given, and will, when a provisional specification is left, be referred, according to such regulations as the Commissioners may make, to one of the law ofiicers for his certificate ; which certificate being filed in the office of the Commissioners, the in- vention will be provisionally protected for six months from the date of the application, that is, it may be published and used by the inventor during that period, without prejudice to the rights to be acquired under letters patent afterwards granted for that invention. Under the Protection of Inven- tions Act, the invention could be exhibited only ; it could not be used commercially, with the consent of the inventor, without invalidating the subsequent patent. The success or failure of the new patent system will Duties of mainly depend upon the way in which this duty of q^J;^^ preliminary examination is discharged by the law officer, or the deputy whom he may appoint. One great object of all sincere patent law reformers has been to limit each patent to one substantive invention ; that is, not to allow the crowding of several distinct manufactures into one patent ; the excessive cost of patents, and the delicacy of the law officers to enforce («) See as to the complete specification, post 23. 20 THE NEW PATENT LAW. Rule as to one sub- stantive invention. Amend- ment of title, &c. Rule as to amendment of provi- sional spe- cification. rules which might have the effect of multiplying their own fees, permitted the practice of crowding several inventions into one patent to go on to an extent most pernicious to inventors and the maintenance of pro- perty in inventions. By a rule of the Commissioners " no warrant is to be granted for the sealing of any letters patent which contain two or more distinct substantive inventions," so that if the Law Officer should have inadvertently given his certificate for a provisional specification containing more than one substantive invention, the inventor may be stopped at a later stage by the re- fusal of the warrant. It is greatly for the interest of the inventor to confine each patent to one invention ; difficulties may occasionally arise in the administra- tion of this rule, but if the provisional or complete specification be a proper document, the dependence or independence of the several matters will be at once apparent. The act empowers the law officers to require any title or provisional specification to be amended, in case of its being too large or insufficient ; so that there is power to limit each application to one substantive invention, and to carry out the wholesome rule of the Commissioners as to the specification. The smallness of the payment by the inventor at this first stage, and the supervision to which all fees are to be subject, will effectually remove the supposed justification of the practice hitherto permitted under the old system. The Commissioners have issued a rule that " no amendment or alteration, at the instance of the ap- plicant, will be allowed in a provisional specificatioii after the same has been recorded except for the cor- rection of clerical errors or of omissions made per incuriam." Such a rule, when the whole scope and object of the provisional specification is considered, may appear wholly unnecessary, and probably never OBJECTS AND PROVISIONS. 21 would have been made but for the circumstance that in a body of Rules and Instructions, issued about the 1st of October, the day on which the new law came into operation, under the sanction of the names of the Attorney and SoHcitor-General, was contained a rule allowing the provisional specification to be altered from time to time at the instance of the applicant, a practice subversive of the new system. These rules and instructions were forthwith recalled and an- nulled, and the above rule issued; this rule should be a warning to inventors to have this first document, which will be the foundation of all future legal rights, carefully and considerately prepared. The section (s. 8) defining the duties of the law Alteration officer at this stage was altered by the Committee of '" ^'"' the House of Commons, in a manner which probably attracted little attention at the time, but which, if not properly guarded against, may in the course of events lead to a mutilation of the new system, and the con- tinuance or revival of abuses intended to have been effectually removed. It is desirable, therefore, that attention should at once be directed to it. The section provides that " the provisional specification shall be referred to the law officer, who shall be at liberty to call to his aid such scientific or other person as he may think fit, and to cause to be paid to such person by the applicant such remuneration as the law officer shall appoint." The latter portion of this clause in- volves principles not contained in any of the previous Bills, and at variance with the general spirit of the measure, and of the evidence upon which the measure was founded. While the inability of the law officers, fi-om the multiplicity of engagements and pressure of business, to find time for the adequate examination of the provisional specifications was admitted on all hands, the desirability of retaining their authority and assistance in an appellate and judicial capacity, and in cases of difficulty and opposition, was equally 22 THE NEW PATENT LAW. Clause in original Bills. Construc- tion of indexes. admitted : it was proposed therefore in all the Bills, and the plan met with the approbation of almost aU the witnesses examined on the poiut before the Select Committee of the House of Lords both on the Protec- tion of Inventions and on the Patent Bills, to transfer the examination of the sufficiency of the provisional specifications to other persons, with an appeal to the law officer ; the fee for such examination being paid out of the first payment of 51., according to a scale to be adjusted by the Lord Chancellor and the Master of the Rolls ; the inventor, however, was to be subjected to no additional charge beyond the 51. at this first stage of his application ; the examination was to he provided out of this first payment, in the same way as the advertisement and other general charges. It is essential to the proper administration of the new system that the provisional specifications should be dealt with on one uniform system, that the same mind should be brought to bear on the same classes of in- vention, and that the person authenticating the suffi- ciency of the provisional specification should be re- sponsible for the accurate construction of the indexes to the provisional and complete specifications, as a guarantee of their accuracy. Further, as, in con- sequence of another alteration made probably inadver- tently, the provisional specifications are to be printed on the expiration of the protection, the documents so certified will have great influence on and be subjected to the test of public opinion. It will also be important that the certificates conferring provisional protection should be issued with regularity, and without unneces- sary delay. It was evident that such duties were wholly incompatible with the engagements of the law officers and the changing tenure of their offices, and ought not to be imposed on the law officers, and further, that the law officers must be relieved of the superinten- dence of the routine business of the patent system, by transferring it from the private chambers of the law OBJECTS AND PROVISIONS. 23 officers of the three kingdoms to the office of the Commissioners. The portion of the section now under consideration throws a responsihility on the law officers hardly compatible with their other duties and the proper carrying out of the leading features of the measure. But the alteration is open to other serious objec- Additional tions: the imposition on the inventor of any addi- •"g°°Q^g tional charge is contrary to the spirit of the act ; and that additional charge is partial and uncertain. When will the law officer determine whether assistance is to be called in, and how will he determine the proper remuneration in each case ? The law officer, out of a natural anxiety to save the pocket of the inventor, will either undertake duties which he cannot ade- quately perform, or he wiU decline them altogether, and subject the inventor to an additional tax, which would soon grow into a charge, either fixed or vary- Wrong in ing according to the number of words in the provi- P"""P'® sional specification and lines or letters on the draw- ings. The occasional charge contemplated by the act is wrong in principle ; it is a tax on the author of an invention requiring superior knowledge, for that very superiority. It is to be hoped that any such charge will be uniform for every application, and that it will be paid as originally intended out of the first payment of £5 by the applicant. The uncertainty attendant on such a charge would Further throw an additional duty on the inventor or his agent ; inventor, the application having been made, no further act on the part of the inventor has to be performed until his notice of intention to proceed with the patent ; the Commissioners have to take all intermediate proceed- ings. In lieu of the provisional specification, the appli- Complete cant for letters patent may deposit with his petition ^''o^i^'s^q' and declaration a complete specification, and thereby obtain not only provisional protection without the 24 THE NEW PATENT LAW. certificate of the Law OiScer, but like powers and privileges as might have been conferred under letters patent if granted immediately. This provision, for which the public are indebted to the Master of the Rolls, may be regarded as the first step to requiring the complete specification to be deposited at the time of leaving the petition and declaration, a practice which exists, with some qualifications, in most countries but our own. Considerable diflferences of opinion exist, in reference to this and other questions involved in it, amongst inventors ; it is extremely de- sirable that the complete specification should be enrolled as early as possible, and in the case of in- ventions provisionally protected for six months, it will be a question whether the complete specification should not be required to be enrolled immediately on the granting of the patent (a). There are, undoubtedly, a class of inventions requiring at least six months' trial and experience in the actual working before the details can be properly and definitively settled. The period within which the specification was re- quired to be enrolled for England was two months ; the time became extended to six months by reason of the delay supposed to exist in obtaining the patents for Scotland and Ireland, in order to prevent a pub- lication in one country before the other. Two sys- The working of the two systems, the protection by the provisional and complete specification re- spectively, will require to be carefully watched, and measures must be adopted on the part of the Com- missioners to prevent that which is the subject of a provisional specification being included in a com- plete specification ; the rival claims may co-exist during the six months of provisional protection, but they ought to be adjusted on the granting of the patent ; (a) By a Rule of the Commissioners six months from the date of the appli- the final specification must be filed within cation for the patent. Post 104. terns. OBJECTS AND PROVISIONS. 25 and the act expressly provides (s. 10) for the protec- tion of the true against the false claimant. The day of the application is the time to which T*"* ^^\- °* , . . ^'^ the applica- every tnmg is referred under the new system ; the tion the di- rights when granted relate back to that date (except "ding time. otherwise specially ordered); under the old system all rights dated from the sealing of the patent, so that there was an interval varying from three to six weeks or of greater length, at the option of the applicant, during which the invention was without protection, and the use or publication of the inven- tion would invalidate the patent. It is important that this feature of the new system should be kept prominently in view, for several of the objections urged against the system result from this feature being disregarded. Any protection obtained under the act is adver- „e^"''^i"i tised by the Commissioners j thus the public or those interested in watching what patents may be in pro- gress, have the means of obtaining that information. The advertisement is substituted for the caveat system, which was condemned in the strongest terms, and undoubtedly afforded, in fact created, the opportunity for discreditable practices. The caveat system was a great source of expense in fees for letters "and at- tendances at the chambers of the Law Officers, of doubtful benefit in any, and of imquestionable mis- chief in many, cases. The applicant who shall have used his protection Second to ascertain the value of his invention, or to obtain * '^^^' the means of prosecuting it, may give notice at the office of the Commissioners of his intention to pro- ceed with his patent ; the Commissioners will cause this application to be advertised, and any person having occasion for supposing that the invention sought to be patented has been borrowed from himself, may oppose the grant of such letters patent 26 THE NEW PATENT LAW. by leaving particulars in writing of his objections, and the whole subject will be heard before the Law Officer, who has power to compel either party to pay such costs to the other as he may think fit. The requiring an opponent to deposit particulars in writing of the grounds of his opposition, and the empowering the Law Officer to make the party, whether applicant or opponent, who may be in the wrong, pay costs to the party who is in the right, are most wholesome provisions ; they will check the tendency to the practice, to which the old system presented great temptation but no check, of opposing on speculation, and without any just or bond fide ground ; this might be of little consequence to the rich, but it was frequently ruin or exclusion to the poor man. Ground of The Commissioners are empowered to make regula- tions as to the particulars of objections, and this part of the system will require some consideration. Hitherto the practice of the same and successive Law Officers has presented much discrepancy, dependent as they have been in great measure, on first entering office, on information communicated from their predecessor, or more frequently from the practitioner who might first have occasion to appear before them, and who was not unfrequently obliged to elect between the immediate interests of his client and his duty as amicus curice ; in the conflict, however, of such ex parte representations the Law Officers would in time arrive at some definite conclusion as to the practice. Differences Considerable differences of opinion and of practice practice. -^^^^ existed amongst the Law Officers as to the nature of the grounds for refusing a patent ; bare knowledge on the part of the opponent of the inven- tion of the applicant, without inquiry as to how that knowledge was obtained, or even when it was admitted that the knowledge had been improperly OBJECTS AND PROVISIONS. 27 obtained, has induced some Law Of&cers to refuse the grant, unless some arrangement were come to betvyeen the parties. This practical injustice was excused by the inability of the Law Officer to protect the party, in whose favour he should decide, against the consequences of an immediate publication, by the party against whom he should decide, of the inven- tion, inasmuch as under the old system no protection existed until the patent was actually sealed, and no patent could be sealed of a day earlier than the warrant for the patent, which was several stages after the hearing before the Law Officer. But the practice was also excused on the ground that the Law Officer had no means of deciding between the rival claim- ants, and that the possession of the invention by more than one person, or by two rival claimants, affi)rded a guarantee for its publication and preser- vation for the public, which it is one object of the patent laws to secure. Recently, however, the Law Officers have modified More re- this practice, and have examined into priority of °|^g_ P"^*"" claims, and received affidavits and declarations on the subject, but they were without any adequate power to administer justice efficiently by mulcting in costs the parties in the wrong. In cases of opposition before the Lord Chancellor referred back to the Law Officers costs have been obtained by an order of the court, but these have been very few in number. The protection by means of the provisional or Security of complete specification, the requiring the particulars "^'^ ^y*'^"- of opposition to be stated in writing, and the power to give costs, will enable the Law Officers to reform the whole system; to dispense with the ex parte hearings in private — a fruitful source of dissatisfac- tion — to ask questions of the parties in the presence open in- of each other without fear of disclosing the secrets stead of of either party, and to conduct these proceedings tribunals. 28 THE NEW PATENT LAW. openly and in the presence of all parties interested in his decision (b). The Law Officers and all persons professionally concerned in the hearings before them will gain credit with the public by such a change^ and by the destruction of a system which had thrown this species of business so exclusively into the hands of a few patent agents, that it was no uncommon thing for the same agent to appear in the person of himself or his clerk for the applicant in support of the patent, and for the opponent against the patent, at the same hearing before the same Law Officer (c). Objections It will be for the Commissioners to consider what * ™^ ■ weight is to be given to priority of invention, to priority of possession in case of an imported in- vention, to similarity of invention, and to priority of application, respectively, as representing the general classes of objections which will be endeavoured to be brought before the Law Officers. Objections But such objections are to be stated in writing and to be stated |gfj ^^ ^jjg office of the Commissioners. This is a very in writing. . . -' great improvement on the old system ; it affi)rds a safeguard to the real inventor against unjust rival claims, inasmuch as, such claims, as made in the ob- jections and as supported by affidavits or depositions or the viva voce examination of witnesses, seldom pre- sent the consistency of a true story; it will also check the practice which had become so prevalent under the old caveat system of opposing on specula- tion. Persons having standing caveats in respect of certain classes of inventions, would receive notice of (6) The defects of the secret tribunal the importance of an open, tribunal, have been felt equally by Law Officers, 118 Hansard, p. 1534. Post 42, professional men, and inventors. Sir A. E. Cockburn, A.G., on moving the se- (c) The beneficial operation of the cond reading of the Bill in the House of new system was very clearly shown in a Commons, 25tli July, 1851, spoke very case which occurred before Sir F. Thesi- strongly on the mischief of a secret, and ger. OBJECTS AND PEOVISIONS. 29 any application for patents relating to such classes, and oppose, if they thought there might be an inter- ference, although they themselves had no invention whatever in contemplation (d). The spirit of the Act is to give credit to priority of First application, but the real inventor is protected (s. 10) ^P^'^^"^ against any prior application in fraud of him and the to be the consequences thereof; the short interval which elapses g^MpHn between the application and the first advertisement oases of may be of value to the inventor, who may be exposed '^" ' ^' ' to the risk of having his invention stolen and claimed by other persons. The Act (s. 12) allows " any perSon having an in- Persons terest in opposing" the grant of letters patent for the i^™e^t^ invention to be heard; two classes of persons maybe may oppose, regarded as having such an interest. 1. The real inventor, who has been anticipated in the application by a person having obtained a knowledge of his in- vention. 2. The owner of a subsisting patent which may be infiinged by the invention for which a patent is sought. Opposition on this latter ground is com- paratively of modern origin, having been created by the development of the old caveat system ; and such questions, except so far as may be necessary for the protection of the applicant, had better be left to the tribunals for trying patent cases. The power of the Lord Chancellor to review the Eeservation decision of the law officer in granting a patent is ex- f(^^^^^ pressly reserved by the act (s. 15), so that any party Chancellor. aggrieved by the granting of a patent in favour of another, and to his exclusion, may have the decision of the law officer reviewed. Should the law officer refuse to grant the patent, his decision is final, and fd") See evidence of P. R- Hodge tent Bills 1851, and of B. Woodcroft on r482^ J Duncan (815—820), W. Designs Bill 1851, before the Select Spence (884—886), R. Roberts (1239 Committee of the House of Lords. — 1247), B. Fothergill (1455), on Pa- D 2 30 THE NEW PATENT LAW there is no appeal. This was the case under the old system, and experience has not shown any practical inconvenience or injustice. Third pay- The application for the patent having been adver- Warrant. tised, and the opposition (if any) disposed of, the law officer will direct the warrant to be prepared for the sealing of the patent. The warrant is to be sealed with the seal of the Commissioners, and to bear a stamp of £5. Issuing of The warrant having been sealed, the Commissioners, when required by the applicant, will cause letters patent to be prepared and passed under the Great Seal of the United Kingdom, extending to the whole United Kingdom of Great Britain and Ireland, the Channel Islands, and Isle of Man, which will bear date as of the day of the application, except the law officer or Lord Chancellor shall otherwise order. Patent The permitting letters patent to bear date from day^of ap™ t^® ^^7 °f ^hc application is one of the leading fea- plication. tures of the new system ; that day becomes the commencement of right under the patent, and no publication or use of the invention subsequent to that day will have prejudiced the grant. Under the old system, letters patent bore date the day of sealing, or a day not earlier than the delivery of the privy seal bill or warrant into Chancery for the mak- ing of the patent, and the term of fourteen years, the longest which could be granted under the statute of James, began from that day inclusive. Now, how- ever, the term will be reckoned from the day of the application inclusive. Inventors, therefore, who make application for a patent before their invention is ade- quately matured for working, will have the teim of fourteen years practically shortened by so much of the six months as is employed in perfecting the in- vention. Filing the The last act of the patentee is the preparation of tion°wi°hin the Complete specification, and the filing the same in OBJECTS AND PROVISIONS. 31 such office of the Court of Chancery as the Lord Chan- six months. cellor shall direct, accompanied by an extra copy of any drawings referred to in the specification, and a stamp of £5 as a further and the final payment. By a rule of the Commissioners the complete specifica- tion must be filed within six months of the application for a patent. The Commissioners have issued some regulations size of as to the size of the paper or parchment in which drawings. the specifications are to be written, and as to the size of the accompanying sheets of drawings (e), but there are no acknowledgment or enrolment fees or stamp duties requiring the number of the words and letters on the drawings to be counted, as formerly. Under the old system the patentee had to provide or pay for two copies of the drawings, the one annexed to his specification, the other to be annexed to the roll on which his specification was transcribed, in a hand scarcely legible by the public. The extra copy ^""^ ""fy of the drawings now required to be furnished with the ings. specification was intended to be used for the pur- pose of publication, or for consultation by the public, a paper copy of the written part of the specification being made in the office of the Commissioners for the same purposes, so that the signed and sealed specifica- tion would be preserved as an original record, and never consulted except on special occasions, under the order of the Commissioners or their officers. The Lord Chancellor has directed the Great Seal One Patent Office to be the office for the filing of specifi- office, cations, and to be combined with the Office of the Commissioners, so that there is now but one office for all matters connected with patents, specifications, and disclaimers. All specifications are to be printed, pubHshed, and Specifica- sold at reasonable prices ; the money heretofore paid printed. s. 30. (e) See Rules of Commissioners, ^os* 102. 32 THE NEW PATENT LAW. by inventors for the engrossing and enrolment of their specifications in England, Scotland, and Ireland, would have paid for their publication many times over. The act provides for the printing of the pro- visional as well as of the complete specifications ; in this respect it differs from the Bill of 1851, and will occasion a great and unnecessary expense, and one not contemplated when the Schedule of Fees was settled in the preceding session. If proper regula- tions were made, requiring all drawings to be on sheets of certain sizes, and executed at once on stone or zinc, so that there might be one expense to the inventor and the public, the filed and deposited and published copies might come from the same original, and the specifications might be published and issued without any delay. Copies of The Commissioners are to cause true copies of all tw'nrfo'^ th specifications to be open to the inspection of the public, public, at the oifice of the Commissioners, and at an office in s- 29. Edinburgh and Dublin. According to the original intention of the clause, it vi^as conceived that the copies so open to the public would be the printed copies ; it has recently been urged that printed copies would not be true copies ; that the scale and colouring of the drawings would not be preserved in the en- graved or published copies. The arrangement sug- gested above as to filing impressions from stone or metal, printed in colours, will at once obviate this difficulty ; but whatever effect may be given to a quibble about terms, it will not be tolerated that the spirit of the act should be violated to such an extent as to impose upon inventors the tax of providing two distinct copies of drawings for the benefit of the public in Edinburgh and Dublin, when printed copies are so much more convenient, and wiU afford all the information that the public can reasonably require. Payments The letters patent, when granted, will expire at the at end of x a j. OBJECTS AND PROVISIONS. 33 expiration of three and seven years respectively, un- 3rd and 7th less before the expiration of the said three and seven ^^^^^' ^■^^■ years stamps of the value of £50 and £100 respec- tively be affixed to the letters patent, and inven- tors must bear in mind, that in reckoning the term of a patent or other grant as against the public, the day on which the grant commences, that is, the day of the application for the grant, is reckoned inclusively, so that a .patent applied for on and sealed as of the 1st of October, 1852, will expire on the 30th of September, 1855, unless the £50 stamp be affixed on or before that day; or on the 80th September, 1859, unless the £100 stamp be affixed on or before that day; or on the 30th of September, 1866, by the natural ef- fluxion of the term, unless extended on the recommen- dation of the Judicial Committee of the Privy Council. This periodical payment is new ; and does not, it Periodical is believed, exist in any country ; small annual pay- P^y™^"'- ffients exist in some countries, but their continual recurrence is objectionable. The period of six months of protection at a cost of £5 will enable the inventor to make inquiries as to the novelty and utility of his invention ; the periods of three and seven years re- spectively will have afforded the opportunity for inves- tigation and experience decisive of the merits of most inventions ; if the invention be profitable, or if the capital embarked in carrying out the invention be large, the further payments will be a reasonable contribution to the public purse for the continued subsistence of the exclusive privileges under the patent; and the further payments will operate in all cases as an inducement to allow the patent to lapse, and thereby leave the invention to be adopted or improved upon by the public. The existence of patents for inventions of no prac- Effect of tical utility, with a considerable portion of their term payments' unexpired, is one of the difficulties to be contended 34 THE NEW PATENT LAW. with ; such inventions remain in abeyance until some further improvement has rendered the original inven- tion useful and commercially profitable, and then the person to whose skill and capital the public are really indebted for a successful invention is frequently sub- jected to legal proceedings under the patent which he has made profitable. The periodical payment will operate to prevent much of this species of litigation, inasmuch as few patents will be kept alive which are not yielding some return, and each improver upon such expired patents will only have to take care to limit his claim to the precise improvement which he has made. Justice of The system of periodical payments seems well ment^*^" adapted to the justice and peculiar circumstances of the case. The cost of the patent under the new sys- tem was fixed at what appeared to be necessary for the general expenses of the requisite establishment and the printing of the specifications; thus the in- ventor would pay no more for the patent than its cost ; the subsequent payments are optional, and may be regarded as a tax on a successful adventure. Indexes,&c. The Act provides (s. 32) for "the making and main- =• ^2- taining of proper indexes, both of names and sub- jects ; this will be essential to the new system, and will, if properly executed, present a history of the progress of invention in the arts and manufactures. Such in- dexes will materially assist the inventor in ascertain- ing what has been done before, and thereby enable him to confine his claim to the precise feature con- tributing to the success of the invention ; they are to extend back to all specifications. Register of The Act also provides (s. 34) for registers of patents patents and ^^^ specifications, disclaimers and memoranda of al- propnetors, ^ . „ . i • ,• 6. 34. terations, and for a register of proprietors, that is, of persons and others interested in the patents or in licenses, so that means will exist for ascertaining the OBJECTS AND PROVISIONS. 35 grants and persons interested under them, a matter fre- quently of considerable importance to persons having made improvements upon the subject of existing patents. The power of entering a disclaimer or memorandum Caveat at of alteration in a patent or specification has been ^ffioe of . . Commis- reierred to ; under the former practice a person m- sioners, terested in opposing such an entry must have entered °' ^^' a caveat at the chambers of each of the six Law Offi- cers of the three kingdoms ; under the new system (s. 39) one caveat entered at the office of the Com- missioners will be sufficient, and will entitle the party to notice of any application for leave to enter a dis- claimer or memorandum of alteration. The beneficial results of the extension of the term Extension of patents, upon the recommendation of the Judicial °^ *^''™ °^ , . patents, Committee of the Privy Coiuicil, has been already s. 40. noticed incidentally ; but private interests in fees had materially detracted from the pecuniary value of that benefit, inasmuch as the applicant, after having ob- tained the Order in Council, was obliged to go through the same routine of applying for the new letters patent as had been done originally for the old patent, and to pay fees Avhich had been gradually in- creasing, until in one case they amounted to the sum of £800. This has been remedied by enacting (s. 40) that her Majesty's Order in Council shall be a suf- ficient authority for sealing new letters patent, and the only fee upon such new letters patent will be the fee of £5 upon the sealing of the patent. In addition to the .amendment in the proceedings Amended for obtaining property in an invention, the means of J.*|*l P^"' protecting that property when obtained are also im- s. 40. proved. In case of proceedings by scire facias to repeal the letters patent, the patentee who, according to the form of the proceedings, appears as the de- fendant, is entitled to begin and explain his own invention, instead of having it misrepresented and frittered away by the testimony of adverse witnesses 36 THE NEW PATENT LAW. and speeches for the prosecution ; also particulars of the objections to the patent will have to he stated with sufficient certainty as to time and plaCe of user and publication, to enable the patentee to ascertain their effect, and not be taken by surprise at the trial. The defendant, also, is entitled to be informed with pre- cision as to the nature of the infringement with which In'unciions ^® ^® charged. But the most important provision for by com- the protection of property under letters patent, is the courts^" power now conferred (s. 42) on the courts and judges s. 42. of common law of granting injunctions and an ac- count, in cases of infringement, in the same manner as heretofore was done by the judges in equity only. None but those who have had actual experience of the delay, uncertainty, and expense, attending the old system, can adequately appreciate the importance of this change. A court of equity would rarely interfere until the right had been established at law ; after which, the proceedings at law were not unfrequently the subject of discussion in equity, and sometimes a second trial at law became necessary before adequate protection could be obtained from the Court of Equity; and if, as is usually the case, any question should arise at the trial and be reserved for the court, or if a rule for a new trial should be obtained, the patentee must await the decision of the court before making any application to the Court of Equity. During all this time, not unfrequently extending over a twelve^ month, and sometimes two years or more, the infringe- ments would go on with impunity, and should the patentee be ultimately successful, he would often find no effects upon which to levy even the taxed costs of his litigation. In addition to this, the ex- pense of such long-continued and varied litigation was sufficient to deter a poor man from attempting to maintain his property against a rich infringer. This state of things is entirely altered, and the application to the law courts for an injunction will probably, in OBJECTS AND PROVISIONS. 37 the majority of cases, practically decide the ques- tions at issue, and terminate the litigation. The preceding, with other beneficial enactments as to the costs to be paid to the successful party, will greatly improve the condition of the person having occasion to resort to such measures for the protection of his property. In cases in which letters patent had been already Fees on granted for one of the three countries, or were in pro- E^lt.'JiL'" o y i: progress,- gross, the act provides (s. 53) for a reduction of the s. 53. fees, and for assiinilating the payments as near as may be to those under the new system. The Act provides for the letters patent under the Patents Great Seal of the United Kingdom being available in Coion^es her Majesty's Colonies and Plantations abroad, or such s. 18. of them as shall be named therein. Several questions of difficulty had arisen in respect of grants of patents for the Colonies : the Bills of 1851 and 1852,.as they left the House of Lords, were silent as to the Colonies, which in this respect Avere placed on the same footing as foreign countries; and the term "realm," in con- nexion with this subject, was in the bill of 1851 de- fined to mean or include the United Kingdom of Great Britain and Ireland, the Channel Islands, and Isle of Man, but not to include her Majesty's Colo- nies and Plantations abroad, or any of them. The House of Commons, however, in both sessions, added the Colonies and Plantations abroad, with a proviso that such letters patent should be of no effect in any Colony in which such or the like letters patent would be invalid by the law of the Colony, pointing probably to the case of Colonies having (like Canada, for in- stance) a patent law of their own. By a rule of the Commissioners, the applicant is required to specify the particular colony or colonies to which the patent is desired to extend; and a special report is to be made thereon to the Chan- 38 THE NEW PATENT LAW. cellor (/). Applicants, as a compliance with this rule, inserted in their petitions a list of all the colo- nies and plantations abroad, and the consequence was the suspension of all proceedings on such patents unless the colonies were struck out ; the subject of granting patents including the colonies is now under consideration. Patent to Provision is made (s. 21) for granting letters adminis- patent to the personal representative of a deceased "■*""^' applicant, during the continuance of the provisional protection, or at any time within three months after its expiration. Patents had been granted under the old practice, in a few cases, to an executor or to a near connexion of the deceased, as a communication from such deceased; but no legislative sanction ex- isted for the practice, or for the validity of such grants. English Two Other clauses require to be noticed ; the one expire with (s. 25) relating to the terms of patents for imported foreign. inventions which are or have been the subject of patents in foreign countries ; the other (s. 26) relating to the use in foreign ships of inventions which may be the subject of patents here. In the Bills as passed by the House of Lords in both sessions a clause was inserted declaring that the use or pubhcation of an invention in a foreign country before the grant of the patent here should have the same effect on such patent as use and publication in this country ; this, however, was not acceded to by the House of Commons; the right of the foreigner is recognised in this country during the subsistence of his exclusive right in the foreign ,. „ country, but no longer. tented in- Foreign ships resorting to Eritish ports may use tor ventionsin ^-jjg purpose of navigation an invention the subject ships. of patent in this country, subject to certain conditions. (/) See Eules of Commissioners, post 105. OBJECTS AND PROVISIONS. 39 This clause was introduced in consequence of liti- gation arising under some of the patents for the screw propeller with the owners of foreign ships, entering into British waters, having machinery made abroad in a foreign country where there was no patent, which if made in this country would have been an infringe- ment of subsisting letters patent. The Act contains various other clauses relating to Other the enjoyment of the patent, as permitting more than '''*"'^'' twelve persons to have an interest in the letters patent (s. 36), and protection against false entries in the register of proprietors (s. 38) ; and to other regula- tions, as sending transcripts to Edinburgh and Dublin, and the fees, and salaries, and application of the moneys — which, however, do not require any special comment. All patents were made subject to a proviso making Patents the same void if more than a limited number of per- ™ay be sons (five in the earlier patents, and twelve in the for anj °^ patents granted during about the last twenty years) ""mber of should hold shares in the patent, as partners di- s. 36. viding, or entitled to divide, the benefits or profits of the patent. The Committee of the House of Com- mons introduced a clause (s. 36) annulling this con- dition of all existing patents, so that an unlimited number of persons may now be interested in these patents or subscribe capital for carrying them out. A schedule of fees (commuted to stamps by an Act Fees of of the present (y) session) is annexed to the Act, and ""^'^ it is provided, s. 45, that no other fees should be taken except such fees to the Law Officers, in cases of opposition to the granting of letters patent and of disclaimers, as the Lord Chancellor and Master of the EoUs should direct. These fees have been fixed (h), so that the parties know what they have to pay, and the exaction of any other fees would be illegal. This also is a great boon to inventors ; a practice had (y) See 16 Vict, e, 5, post 93. (A) See Rules, &c„ post 101 , 40 THE NEW PATENT LAW. grown up of charging expedition and other extra fees in certain cases, and if the applicant should hap- pen to appear hy counsel hefore the law officers double fees were exacted. The growth of such extra fees is curious ; they would commence as a species of gratuity, or for some additional service or duties bond fide rendered or performed ; their repetition would become gradually more frequent, until the charge became regular and so permanently established, that each successor in office felt himself bound by the practice of his predecessors and the interests of his successors. The recent Act has put an end to all such charges ; the fees to be taken are settled and published. tffects on Such is a general outline of the obiects and pro- progress or . . ° J r invention, visions of " The Patent Law Amendment Act, 1852," most material for consideration in reference to the new system recently come into operation, and which, what- ever may be its effects on the progress of invention, aifords to inventors a simple means of creating pro- perty in their inventions, and recognises the policy and justice of such property, and of the protection to be aflforded to it. Hitherto patents for inventions have been regarded as emanations from the preroga- tive, and as sources of fees and of revenue for indi- viduals and the state ; henceforth they will be looked upon as the legal means of creating property in the successful application of mind to the arts and manu- factures under the sanction of Acts of Parliament. Inventor jt may be conceded to the opponents of such pro- nefitted. perty that it has not been generally beneficial to the inventor himself; that in the majority of cases the inventor runs a great risk, and will be barely re- munerated for his time, labour, and outlay ; the same may be said of the majority of other persons who devote themselves to professional or intellectual pur- suits ; very few recover the capital embarked in their education and subsistence until their occupa- OBJECTS OMITTED. 41 tions become remunerative ; but the public reap the benefit of such expenditure and pursuits, and the improvement to which they conduce, however little the individual may benefit thereby, is part of the progress of civilised life. Great discoveries in sciences, art, or manufactures, Industrial such as will revolutionise existing systems, are of '"^"°''"°''- rare occurrence, and within the reach of few; but steady and progressive improvement in different de- partments of our industrial arts is within the reach of a large proportion of the more intelligent of the minds engaged therein, and it may be doubted whether industrial education can be carried out suc- cessfully unless the persons so educated can acquire such a property and protection in the products of their ingenuity and industry as will enable them to maintain their independence against the overwhelm- ing influence of capital. Section III. OBJECTS OMITTED. The system established by the Patent Law Amend- New system ment Act must be regarded as the foundation whereof the superstructure has yet to be raised under the sanction of further legislation. The Act has swept away the foundation and sources of great abuses, and established a system having the following cardinal features. 1. Protection from the day of application. 2. One patent for the United Kingdom. 3. Moderate cost and periodical payment. 4. Printing and publi- cation of specifications. 5. One oiRce of patents and specifications. The Committee of the House of Com- mons introduced alterations, which, although not destroying the leading features of the new system, have materially impaired its efiiciency, and which will occasion unnecessary trouble and expense and further legislation. e2 42 THE NEW PATENT LAW. Expenses and delay. Inquiry on granting patents. Tribunals. Secret tribunals. Some of these alterations, so far as they interfere with the heneficial operation of the system established by the Act, have been already noticed ; but other alterations of a more important character aifecting the ultimate success and credit of the new system remain to be noticed. These may be regarded as omitted objects, and which must form the subject of further legislation. Some of these objects were pro- minently brought forward by Sir A. E. Cockburn, A. G., in moving the second reading of the Bill in the House of Commons in the Session of 1851, so that no doubt can be entertained as to the views of its promoters. Sir A. E. Cockburn, A.G, (») : " Complaints had been made as to the delay, the uncertainty, and the expense attendant upon the granting of patents, and it was impossible to deny that these complaints had considerable foundation. " Some persons had lately started the notion that there should be no inquiry as to whether a man should have a patent or not. It was said they should allow a man to claim an invention as novel, and that on registering that invention, he should without inquiry be entitled to patent rights, and to maintain them against all mankind. It seemed to him that they ought to pursue a different course ; they ought to guard the public against the assumption of rights to which the individual was not entitled in case his invention was neither new nor useful ; they should guard other inventors that had preceded him, and protect them by a cheap process, without driving them into expensive litigation for the protection of their rights. " The great consideration was with respect to the tribunal which was to determine whether a party was entitled to a patent or not. Hitherto that question had rested entirely with the Law Officers of the Crown. Two great objections had been taken to the existing tribunal, and he thought those objections well founded, constituted as that ti-ibunal was at present. It was said in the first place that the tribunal was a secret one. That was a great objection, but the secresy did not arise from the will or inclination of the Law Officei'S, but from the necessity of the case. It arose in this way — the rights which were ac- (i) 118 Hansard, 1534-25 July, 18.51. OBJECTS OMITTED. 43 quii-ed under a patent dated from the period when the patent was sir A. E. granted. The report of the Law Officers on the merits of the Cockburn, invention was made at an early stage of the proceeding. It was f'P'\ o^!'' the object therefore of the inventor, that until his patent was ^^' sealed, no one but himself should know -what was the nature of the invention. On the other hand, a party opposing the inven- tion on the ground of want of novelty, or that he had a prior claim to its discovery, had a right to appear before the Law Officers and state his case. The unavoidable result was that the Law Officers were obliged to hear each of the parties separately with closed doors, lest in the event of the inventions turning out to be dissimilar, the principle of each man's invention might be discovered to the other, or to the world. Nothing could exceed the anxiety shown by the rival applicants on these occa- sions lest the tribunal should disclose, by the questions put, their respective inventions. To remedy this state of things, the Bill proposed to require a man at the same time that he applied for a patent to lodge in the office of the Commissioners, to be appointed under its provisions, a provisional specification, which was to state the precise nature and the general features of the inven- tion. As soon as he had deposited that provisional specification it was proposed to give him protection for six months, or in cer- tain cases for nine months. He would then have liberty to use his invention before the public during that time. It was also proposed to require a man objecting to a patent to lodge his objections with the Commissioners before hand. There would likewise be an open tribunal, and the parties would be heard before one another, by which arrangement all secresy would be done away with. " There was another objection to the existing tribunal, the Board of incompetency, the almost unavoidable incompetency, of the Law Exammers. Officers to decide questions involving intricate and nice points in mechanics, chemistry, and general science. It appeared to the Government that the best mode of proceeding would be to con- stitute a Board of Examiners, consisting of persons having a reputation for scientific knowledge, to whom in the first place the provisional specification should be referred, and who would be required to report as to its propriety and on the question of conflicting rights, in cases where such should arise, to the Law Officers. He was happy to say on that point that the expenses would not be increased. The Law Officers of the Crown were perfectly willing to make a personal sacrifice in that respect in order that the public might obtain the full benefit of the pro- posed arrangement. " With regard to the provisional specification, the six or nine months' protection which would be affiarded to the patentee, would enable him to take his invention into the market with a 44 THE NEW PATENT LAW. Register of Inven- tions. Bill of 1851. view to obtain the assistance of capitalists in carrying it into practical operation — a benefit which, under the present system, was wholly impossible. "The Bill also provides for the proper classification of all patents, for the transcription and publication of all specifications, and for a register of patents and of proprietors which might be consulted from time to time. At present it often happened that when a man had devoted his time, his patience, and his money, to an invention, and imagined that he was on the eve of reaping the fruits of his labours, he found that some one else had antici- pated him, that a patent was already in force for the particular invention he had made, and that therefore all his labours and expense went for nought." Such were the terms in which the Bill of 1851, as sent from the House of Lords, was introduced to and received with acclamation by the House of Commons ; the Bill of 1852, as sent from the House of Lords, with provisions for effecting the same objects, was referred to a Committee of the House of Commons; during the progress of the Bill in that Commit- tee, the clauses for referring the provisional speci- fication to examiners were struck out, and clauses referring the provisional specification to the law officers substituted; other apparently trifling altera- tions were made ; the combined effect of which, how- ever, was to retain and import into the new system most of the defects so strongly pointed out by Sir A. E. Cockburn as connected with the tribunal of the law officers (/c). Upon the subject of the examination under the pro- posed system, considerable misconception existed in the minds of many members of the Committee; but the imminent danger which impended of the Bill being again defeated by want of time, rendered it in- expedient that anything should be done which might occasion delay. No opposition therefore was prose- (K) A change had taken place in the Government shortly after the commencement of the Session of 1852; new law officers had been ap- pointed, some of whom were members of the Committee of the House of Commons. Neither Sir J. Romilly, M.R.. nor Sir A. E. Cockburn, nor Sir W. Page Wood, was a member of the Committee of 1852. OBJECTS OMITTED. 45 cuted to such alterations ; the members of the Com- mittee, who were thoroughly acquainted with the wants and wishes of inventors and manufactui-ers, thankfully accepted any portion of the measure as a first and great instalment of reform; and regard being had to interests in the three countries which were pressed upon the Committee, and to the con- flicting nature of the views suggested by the oppo- nents of reform, the public are greatly indebted to the Committee collectively, for having saved so much of the original measure. The provisional specification and preliminary ex- Objects of amination were intended to afford protection to the gpecifi °a"^' inventors and to the public. The visionary nature of tion. many of the projects, and the visionary character of their authors, are notorious ; the provisional specifica- tion and its examination by competent persons, are calculated to check the mere speculative inventor, whose supposed invention in the majority of cases will not admit of being expressed in distinct and intelligible language. Such an examination would check the majority of applications at the first stage, and save further expenditure to the inventor, and the creation of privileges of no use but to invite and encourage litigation. The provisional specification and preliminary examination were approved of by almost every witness examined before the Select Com- mittee of the House of Lords on the Bill of 1851, as affording a guarantee of the kind required. The opponents of patent law reform assigned much more extensive duties to the examiners than either the promoters of the measure, or the witnesses who gave evidence on the subject. The duties assigned were the satisfying themselves that the description was clear and intelligible, and that the invention was sufficiently defined, and many of the witnesses re- ferred in support of these views to the beneficial operation of such examination under " The Protec- tion of Inventions Act, 1851." It is true that some of 46 THE NEW PATENT LAW. the witnesses spoke in favour of the opinion, that such a board ought to or might judge conclusively on the question of novelty, hut few concurred in that opinion. L^w^Offi '^^^^ ^^^^^ °^ preliminary examination spoken to cers. hy almost every witness as of paramount importance, and as requiring time, knowledge, and attention, which the varied occupations and frequent changes of the law officers precluded the possibility of being adequately discharged by them, however great their scientific as well as legal acquirements, the Committee of the House of Commons thought fit to impose upon the law officers, with whom now rests the responsi- bility, of certifying the sufficiency of the provisional specification, and that it states distinctly and intelli- gibly the whole nature of the invention so as to apprise the law officers of the improvement, and of the means by which it is to be carried out (I). Time will show the result of this alteration in a fundamental principle of the measure, not only without any evidence to guide the Committee, but in direct opposition to the most positive evidence on the subject. If inventors, relying on the certificates which have been given, should be grievously disappointed in the result, it must not be laid to the new system, but to those who deprived that system of this great safe- guard and of the means of correcting evils and of relinquishing duties which the experience of all law officers had led them to wish to entrust to other persons. Reduction The reduction of the cost of patents has in this as in other countries acted as a great stimulus to inven- tion, having placed the means of obtaining protection for and creating property in inventions within the reach of classes formerly excluded; but the corrective to such stimulus as applied in every other country is wanting, and no practical check upon the applications (I) See Rules of Commissioners, post 104. of cost. OBJECTS OMITTED. 47 at present exists. The result is, that every inventor is tempted and induced to proceed through the suc- cessive stages, and to incur the whole cost of the patent, a consequence beneficial to his professional advisers, hut very detrimental to the credit of a system framed vs^ith the view of preventing useless expenditure of money and time, and of checking as much as possible the creation of useless privileges. The evil last adverted to, namely, the stimulus Inspection which exists to prosecute every application for a °io„arspe- patent, is augmented by another alteration, which cification. gives colour for the opinion that the provisional spe- cification was to be a secret document. This is contrary to the intentions of the promoters of the original measure, and to the spirit of the Bills of 1851. It might be expedient so long as any con- siderable number of patents granted under the old system remained unspecified, that the provisional specifications should be secret documents; but the period for the enrolling of such specifications having passed, the provisional specifications, when certi- fied as sufficient, ought to be open to inspection. The speech of Sir A. E. Cockburn, already quoted, assumed this; and the great object of provisional protection, namely, that a party may avail himself of the experience and knowledge of others, leads to the same conclusion. Further, the public and inventors have a right to know at the earliest moment, consistent with the security of the inventor, from what they are debarred; and it is contrary to public policy that such secresy should exist. Such secresy is an encouragement to crude and immature schemes, and injurious to inven- tors, who have a real interest in knowing at the earliest moment the demerits of their inventions. To suggest that fraudulent persons might there- by acquire a knowledge of the invention, and by means of such knowledge oppose the patent at a later stage, is to import into the new one of the 48 THE NEW PATENT LAW. crying defects of the old system, namely, that mere possession of an invention was a ground for opposing a patent, and to disregard the principle of the new system, that the first applicant ha.s the primd facie right. The suggestion of prejudice to the foreign patents is of the same character; np person ought to apply for a pa- tentwhose inventionis not suiRcientlymatured to furn- ish a description adequate for the foreign patents, and a short interval, as a fortnight, between the deposit of the provisional specification and its being open to inspection, would aiFord all the security that can he required in respect of the application for the foreign patents. Section IV. ACT OF 185 3. Ail pay- By an Act of the present Session (16 Vict., c. 5), stam * ^^ which received the Royal assent 21st of February, 1853, all payments are to be made by stamps of suit- able denominations, instead of in money. The Com- missioners of Stamps are to provide stamps of various denominations, which are to be used as directed in the Act; the applicant or person wishing for an oifice copy, or to consult any document, or to enter an opposition, will purchase a stamp, which will be retained in the ofiice of the Commissioners of Patents, or affixed to the copies of documents, and thus afford evidence of the payment. Purchase of The Act also empowers the Commissioners to pur- Indexes, chase the indexes of Mr. Bennett Woodcroft, for the Use of the public. These indexes had been the sub- ject of evidence before the Select Committee of the House of Lords, and their value to inventors, in enabling them to ascertain the subjects of prior patents, and as the nucleus of a complete history of inventions in the arts and manufactures, can hardly be too highly estimated. STATUTES. 14 Vict. c. 8. 14 Vict. c. 8. An Act to extend the Provisions of the Designs Act, 1850, and to give Protection from Piracy to Persons exhibiting new Inventions in the Exhibition of the Works of Industry of all Nations in one thousand eight hundred and fifty -one. [11 April, 1851.] Whereas it is expedient that such protection as hereinafter mentioned should be afforded to persons desirous of exhibiting new Inventions in the Ex- hibition of the Works of Industry of all Nations in one thousand eight hundred and fifty-one : Be it therefore enacted by the Queen's most excellent Majesty, by and with the advice and consent of the Lords Spiritual and Temporal, and Commons, in this present parliament assembled, and by the authority of the same, as follows : I. Any new invention for which letters patent Proprietors might lawfully be granted, may at any time during venticls't'o the year one thousand eight hundred and fifty-one, ^e allowed but not afterwards, be publicly exhibited in any place them with- previously certified by the Lords of the Committee °?' pi'^J"- of Privy Council for Trade and Foreign Plantations letters pa- to be a place of exhibition within the meaning of the j^ereaft^'r Designs Act, 1850, without prejudice to the validity granted. of any letters patent to be thereafter, during the term of the provisional registration herein-after mentioned, granted for such invention to the true and first in- 50 THE NEW PATENT LAW. 14 Vict, ventor thereof: Provided always, that such invention inv nti n ^^^^ previously to such public exhibition thereof to be provi- been provisionally registered in manner herein-after gistered,'^' mentioned ; and provided also, that the same be not and not to otherwise publicly exhibited or used by or with the fore^grant-" Consent of the inventor prior to the granting of any ing of the such letters patent as aforesaid, except as herein-after patent. mentioned : Provided also, that no sale or transfer, or contract for sale or transfer, of the right to or benefit of any invention so provisionally registered, or of the rights acquired under this act, or to be ac- quired under any letters patent to be granted for such invention, shall be deemed a use of such invention ; and the publication of any account or description of such invention in any catalogue, paper, newspaper, periodical, or otherwise, shall not affect the validity of any letters patent to be during such term granted as aforesaid. Public trial H. The public trial or exhibition of any such in- tural OThor- vention as aforesaid (being an invention for purposes ticuitural of agriculture or horticulture), which shall be certi- under the fied by the Lords of the said Committee to have taken direction of place Under the direction of the Commissioners for the com- inissioners, the Exhibition of 1851 for purposes connected with not to pre- ^t^^ exhibition thereof, in such place of public exhi- judice let- ' 'l ^ ^ i -i ■ ■ ters patent, bition as aforesaid, whether such trial or exhibition take place before or after the passing of this act, shall not prevent the provisional registration of such invention underthis act, nor prejudice or affect the validity of any letters patent to be granted for such invention during such term as aforesaid. Certificate III. Her Majesty's Attorney-General, or such of invention person or persons as he mav from time to time ap- to be grant- ' ^ ii- i- ed for pro- point to issue certificates under this act, on being ^'istratioiT' fif^'shed with a description in writing, signed by or on behalf of the person claiming to be the true and first inventor within this realm of any new invention intended to be exhibited in such place of public ex- STATUTES. 51 hibition as aforesaid, and on being satisfied that such 14 Vict. invention is proper to be so exhibited, and that the "' ^' description in writing so furnished describes the na- ture of the said invention so intended to be exhibited, and in what manner the same is to be performed, shall give a certificate in writing, under the hand or hands of such Attorney-General or the person or persons appointed as aforesaid, for the provisional registration of such invention. IV. The Registrar of Designs acting under the Certificate Designs Act, 1850, upon receiving such certificate, "o be™egi°- and being furnished with the name and place of ad- 'ered. dress of the person by or on whose behalf the regis- tration is desired, shall register such certificate, name, and place of address, and the invention to which any certificate so registered relates shall be deemed to be provisionally registered, and the regis- tration thereof shall continue in force for the term of one year from the time of the same being so regis- tered, and the Registrar shall certify, under his hand and seal, that such invention has been provisionally I'egistered, and the date of such registration, and the name and place of address of the person by or on whose behalf the registration was effected : Provided always, that if any invention so provisionally regis- tered be not actually exhibited in such place of public exhibition as aforesaid, or if the same invention be in use by others at the time of the said registration, or if the person by or on whose behalf the said regis- tration has been effected be not the first and true in- ventor thereof, such registration shall be absolutely void. V. The description in writing of any invention so Descriptiun provisionally registered shall be preserved in such gg„gj"^anc[ manner and subject to such regulations as the At- invention to torney-General shall direct, and any invention so ^^^W^^ provisionally registered, and exhibited at such place words of public exhibition as aforesaid, shall have the words airy™regis-"' tered." 52 THE NEW PATENT LAW. 14 Vict. « provisionally registered" marked thereon or at- tached thereto, with the date of the said registration. Provisional VI. Such provisional registration as aforesaid shall to confer during the term thereof confer on the inventor of same bene- such invention, with respect thereto, all the protec- the Designs tion against piracy and other benefits which by the Act, 1850. Designs Act, 1850, are conferred upon the pro- prietors of designs provisionally registered thereunder with respect to such designs; and so long as such provisional registration continues in force the pe- nalties and provisions of the Designs Act, 1842, for preventing the piracy of designs shall extend to the acts, matters, and things next herein-after mentioned, as fully and effectually as if those penalties and pro- visions had been re-enacted in this act, and expressly extended to such acts, matters, and things ; that is to say, to the making, using, exercising, or vending the invention so provisionally registered, to the practising the same or any part thereof, to the coun- terfeiting, imitating, or resembling the same, to the making additions thereto or subtraction from the same, without the consent in writing of the person by or on whose behalf the said invention was so pro- visionally registered. Letters pa- VH. AH letters patent to be during the term of tent there- , ... • . . ■ . j • i after grant- ^T^Y such provisional registration granted m respect «".l^"j'«'s act. the continuance of the protection conferred under this act by reason of such deposit, save that where the application to seal such letters patent has been made during the continuance of such provisional or other protection as aforesaid, and the sealing of such letters patent has been delayed by reason of a caveat or an application to the Lord Chancellor against or 64 THE NEW PATENT LAW. 15 & 16 in relation to the sealing of such letters patent, then such letters patent may be sealed at such time as the Lord Chancellor shall direct, tenfmay te ■^-^^- P^^ided also, that where the applicant for granted to such letters patent dies during the continuance of present-™' *^® provisional protection, or the protection by rea- tives of the sonof the deposit of a complete specification, (as the dunng^the ^^^^ ™^y ^^'^ ^^'^^ letters patent may be granted to term of the executors or administrators of such applicant or wUhin's ^^^ring the continuance of such provisional or other months protection, or at any time within three months after cant's de-'" *^® death of such applicant, notwithstanding the ex- cease, piration of the term of such provisional or other protection, and the letters patent so granted shall be of the like force and effect as if they had been granted to such applicant during the continuance of such pro- visional or other protection. If letters XXII. Provided also, that in case any such letters destroyed patent shall be destroyed or lost, other letters patent or lost, of the like tenor and effect, and sealed and dated as other let- . i i • ters patent 01 the same day, may, subject to such regulations as may be is- jjjg commissioners may direct, be issued under the sued. 1 • /. authority of the warrant in pursuance of which the original letters patent were issued, t^nf^^be XXIII. It shall be lawful (the act of the eighteenth dated as of year of king Henry the Sixth, chapter one, or any the appUca- °^^^^ ^^^' ^ ^^^ contrary notwithstanding,) to cause tion. any letters patent to be issued in pursuance of this act to be sealed and bear date as of the day of the application for the same, and in case of such letters patent for any invention provisionally re- gistered under the " Protection of Inventions Act, 1851," as of the day of such provisional registration, or, where the law officer to whom the application was referred, or the Lord Chancellor, thinks fit and directs, any such letters patent as aforesaid may be sealed and bear date as of the day of the sealing of such letters patent, or of any other day between the STATUTES. 65 day of such application or provisional registration '5 * 16 and the day of such sealing. ^"^ "' " XXIV. Any letters patent issued under this act Letters pa- sealed and bearing date as of any day prior to the l^tedated^ day of the actual sealing thereof shall be of the same '" be of the force and validity as if they had been sealed on the iMity ^^if day as of which the same are expressed to be sealed '^*'«^ "" and bear date : Provided always, that save where the date." such letters patent are granted for any invention, in respect whereof a complete specification has been deposited upon the application for the same under this act, no proceeding at law or in equity shall be had upon such letters patent in respect of any in- fringement committed before the same were actually granted. XXV. Where, upon any application made after Letters the passing of this act, letters patent are granted in J^^^g"^ °^ the United Kingdom for or in respect of any inven- United tion first invented in any foreign country or by the forp^tented subject of any foreign power or state, and a patent or foreign in- like privilege for the monopoly or exclusive use or not'to'ron- exercise of such invention in any foreign country is ti°ue in there obtained before the grant of such letters patent the expira- in the United Kingdom, all rights and privileges tionof the under such letters patent shall (notwithstanding any patent. term in such letters patent limited) cease and be void immediately upon the expiration or other determina- tion of the term during which the patent or like pri- vilege obtained in such foreign country shall con- tinue in force, or where more than one such patent or like privilege is obtained abroad, immediately upon the expiration or determination of the term which shall first expire or be determined of such several patents or like privileges : Provided always, that no letters patent for or in respect of any inven- tion for which any such patent or like privilege as aforesaid shall have been obtained in any foreign oountrv, and which shall be granted in the said 66 THE NEW PATENT LAW. 15 & 16 United Kingdom after the expiration of the term for Vict. e. 33. , . , , ° . . ' , which such patent or privilege was granted or was in force, shall be of any validity. Letters XXVI, No letters patent for any invention (grant- P&t6Illt IIOl t n 1 • to prevent cd after the passing of this act) shall extend to pre- inventions ^^"* ^^^ "®® °^ ^"^^ invention in any foreign ship or Vessel, or for the navigation of any foreign ship or vessel, which may be in any port of her Majesty's dominions, or in any of the waters within the juris- diction of any of her Majesty's courts, where such invention is not so used for the manufacture of any goods or commodities to be vended within or ex- ported from her Majesty's dominions : Provided always, that this enactment shall not extend to the in foreign ships re- sorting to British ports ; except ships of foreign whole 'ports ^^^P^ ^^ vesscls of any foreign state of which the British ships are prevented from using foreign in- ventions. laws authorise subjects of such foreign state, having patents or like privileges for the exclusive use or exercise of inventions within its territories, to pre- vent or interfere with the use of such inventions in British ships or vessels, or in or about the navigation of British ships or vessels, while in the ports of such foreign state, or in the waters within the jurisdiction of its courts, where such inventions are not so used for the manufacture of goods or commodities to be vended within or exported from the territories of such foreign state. XXVII. All letters patent to be granted under fii'ed instead this act (save Only letters patent granted after the filing of a complete specification) shall require the specification thereunder to be filed in the High Court of Chancery, instead of requiring the same to be enrolled, and no enrolment shall be requisite. XXVIII. Every specification to be filed in pur- suance of the condition of any letters patent shall be filed in such office of the Court of Chancery as the Lord Chancellor shall from time to time appoint, Chancellor and every provisional specification and complete spe- shall direct, ^.g^^^.^^ left or filed at the office of the commis- Specifica- tions to be of being enrolled. Specifica- tions, &c. to be filed in such office as Lord STATUTES. 67 si oners on the application for any letters patent, shall L^ ^^ '^ oo forthwith after the grant of the letters patent, or if no letters patent be granted then immediately on the expiration of six months from the time of such ap- plication, be transferred to and kept in the said office appointed for filing specifications in Chancery ; and in case reference is made to drawings in any speci- ^^ *" ^''PS ncation deposited or tiled under this act, an extra ofdrawings. copy of such drawings shall be left with such speci- fication. XXIX. The commissioners shall cause true copies Copies of of all specifications (other than provisional specifica- tions to be tions), disclaimers, and memoranda of alterations, °P™.*° '"" • r 1 ■ 1 1. 11 spection at filed under or in pursuance ot this act, and of all office of provisional specifications after the term of the pro- <^.°™""^- ^ ^ ^ . , , ^ sioners, and visional protection of the invention has expired, to at Edin- be open to the inspection of the public at the office p'^blin"' of the commissioners, and at an office in Edinburgh and Dublin respectively, at all reasonable times, sub- ject to such regulations as the commissioners may direct; and the commissioners shall cause a tran- script of the said letters patent to be transmitted for enrolment in the Court of Chancery, Dublin, and shall cause the same to be enrolled therein, and the transcript or exemplification thenceforward shall have the like eflFect to all intents and purposes as if the original letters patent had been enrolled in the Court of Chancery in Dublin, and all parties shall have all their remedies by scire facias or otherwise, as if the letters patent had been granted to extend to Ireland only. XXX. The commissioners shall cause to be printed, Specifica- published, and sold, at such prices and in such 'X'r'docu- manner as they may think fit, all specifications, dis- ments to be claimers, and memoranda" of alterations, deposited or pubUshei filed under this act, and such^. specifications (not being provisional specifications), disclaimers, and memoranda respectively, shall be so printed and pub- 68 THE NEW PATENT LAW. 15 & 16 lished as soon as conveniently may be after the filing ' thereof respectively, and all such provisional speci- fications shall be so printed and published as soon as conveniently may be after the expiration of the pro- As to pre- visional protection obtained in respect thereof; and it senting §{^^11 jjg lawful for the commissioners to present copies copi6S or pubiioations of all such publications to such public libraries and to public museums as they may think fit, and to allow the per- &o. ' son depositing or filing any such specification, dis- claimer, or memorandum of alteration to have such number, not exceeding twenty-five, of the copies thereof so printed and published, without any pay- ment for the same, as they may think fit. Enrol- XXXI. It shall be lawful for the Lord Chancellor Ilmy'be re- ^^^ t^® Master of the Rolls to direct the enrolment moved to of specifications, disclaimers, and memoranda of for s°peoSi- alterations heretofore or hereafter enrolled or de- cations, posited at the Rolls Chapel Office, or at the Petty Bag Office, or at the Enrolment Office of the Court of Chancery, or in the custody of the Master of the Rolls as keeper of the Public Records, to be trans- ferred to and kept in the office appointed for filing specifications in Chancery under this act. „ . XXXII. The commissioners shall cause indexes Commis- /. • 1- 1 ■ sionersto to all specifications, disclaimers, and memoranda of cause in- alterations heretofore or to be hereafter enrolled or dexes to be i r • j i. i • made to old deposited as last aforesaid to be prepared in such tiOTs^te • f°^^ *s *^^y ™*y think fit, and such indexes shall such speoi- be Open to the inspection of the public at such place fec^'mav be °'^ places as the commissioners shall appoint, and printed and subject to the regulations to be made by the com- pubhshed. mjsgjoners, and the commissioners may cause all or any of such indexes, specifications, disclaimers, and memoranda of alterations to be printed, published, and sold in such manner and at such prices as the commissioners may think fit. STATUTES. 69 XXXIII. Copies, printed by the printers to the 15 & 16 Queen's Majesty, of specifications, disclaimers, " and memoranda of alterations, shall be admissible gpeoifica- in evidence, and deemed and taken to be ^rima t'o"s> &c. facie evidence of the existence and contents of by Queen's the documents to which they purport to relate in P"n'ers to . ■''■,. beevidenco, all courts and m all proceedings relating to letters patent. XXXIV. There shall be kept at the office ap- ^fjf^f j°' pointed for filing specifications in Chancery under be kept, this act a book or books, to be called " The Register of Patents," virherein shall be entered and recorded in chronological order all letters patent granted under this act, the deposit or filing of specifications, dis- claimers, and memoranda of alterations, filed in re- spect of such letters patent, all amendments in such letters patent and specifications, all confirmations and extensions of such letters patent, the expiry, vacating, or cancelling such letters patent, with the dates thereof respectively, and all other matters and things affecting the validity of such letters patent as the commissioners may direct, and such register, or a copy thereof, shall be open at all convenient times to the inspection of the public, subject to such regu- lations as the commissioners may make. XXXV. There shall be kept at the office appoint- A Register ed for filing specifications in Chancery under this act tors to be a book or books, entitled "The Register of Pro- kept at the „ , . , „ , J • T. office for prietors," wherem shall be entered, m such manner fiUng speci- as the commissioners shall direct, the assignment of fications. any letters patent, or of any share or interest therein, any licence under letters patent, and the district to which such licence relates, with the name or names of any person having any share or interest in such letters patent or licence, the date of his or their ac- quiring such letters patent, share, and interest, and any other matter or thing relating to or affecting 70 THE NEW PATENT LAW. vicf 1%! *^^ proprietorship in such letters patent or licence ; and a copy of any entry in such book, certified under such seal as may have been appointed or as may be directed by the Lord Chancellqr to be used in the said office, shall be given to any person re- quiring the same, on payment of the fees hereinafter provided ; and such copies so certified shall be re- ceived in evidence in all courts and in all proceed- ings, and shall be prima fade proof of the assign- ment of such letters patent, or share or interest therein, or of the licence or proprietorship, as therein expressed: Provided always, that until such entry shall have been made the grantee or grantees of the letters patent shall be deemed and taken to be the sole and exclusive proprietbr or proprietors of such letters patent, and of all the licences and privileges thereby given and granted ; that certified duplicates of all entries made in the said Register of Proprietors shall forthwith be transmitted to the office of the commissioners in Edinburgh and Dublin, where the same shall also be open to the inspection of the public; and any writ of scire facias to repeal such letters patent may be issued to the sheriff of the county or counties in which the grantee or grantees resided at the time when the said letters patent were granted ; and in case such grantee or grantees do not reside in the United Kingdom it shall be sufficient to file such writ in the Petty Bag Office, and serve notice thereof in writing at the last known residence or place of business of such grantee or grantees ; and such register or a copy shall be open to the inspec- tion of the public at the office of the commissioners, subject to such regulations as the commissioners may make: Provided always, that in any proceeding in Scotland to repeal any letters patent service of all writs and summonses shall be made according to the existing forms and practice ; provided also, that the STATUTES. 71 grantee or grantees of letters patent to be hereafter ^ ^ '^ granted may assign the letters patent for England, Scotland, or Ireland respectively as effectually as if the letters patent had been originally granted to ex- tend to England or Scotland or Ireland only, and the assignee or assignees shall have the same rights of action and remedies, and shall be subject to the like actions and suits as he or they should and would have had and been subject to upon the assignment of letters patent granted to England, Ireland, or Scot- land, before the passing of this act. XXXVI. Notwithstanding any proviso that may ^^"^-^l exist in former letters patent, it shall be lawful for a twelve per- larger number than twelve persons hereafter to have 3°"^^^."' a legal and beneficial interest in such letters patent, terest in XXXVII. If any person shall wilfully make or [,!j^;^ cause to be made any false entry in the said Register Paisifica- of Proprietors, or shall wilfully make or forge, or *'°° or for- cause to be made or forged, any writing falsely pur- tries a mia- porting to be a copy of any entry in the said book, demeanour. or shall produce or tender, or cause to be produced or tendered, in evidence any such writing, knowing the same to be false or forged, he shall be guilty of a misdemeanour, and shall be punished by fine and im- prisonment accordingly. XXXVIII. If any person shall deem himself ag- Entries grieved by any entry made under colour of this act expunged. in the said Register of Proprietors, it shall be lawful for such person to apply, by motion, to the Master of the Rolls, or to any of the courts of common law at Westminster, in term time, or by summons to a judge of any of the said courts in vacation, for an order that such entry may be expunged, vacated, or varied ; and upon any such application the Master of the Rolls, or such court or judge respectively, may make such order for expunging, vacating, or varying such entry, and as to the costs of such application. 72 THE NEW PATENT LAW. vIct 0.^83. ^^ *^ *^^ ^^'*^ Master of the Rolls or to such court or judge may seem fit ; and the officer having the care and custody of such register, on the ^production to him of any such order for expunging, vacating, or varying any such entry, shall expunge, vacate, or vary the same, according to the requisitions of such order. P™™'™' XXXIX. All the provisions of the acts of the W. 4,0.83, session holden in the fifth and sixth years of King *7"&°8^Vict William the Fourth, chapter eighty-three, and of the c.t69, as to session holden in the seventh and eighth years of md'merao- ^^^ Majesty, chapter sixty-nine, respectively, relat- randa of ing to disclaimers and memoranda of alterations in toamlvTo letters patent and specifications, except as herein- patentsun- after provided, shall be applicable and apply to any letters patent granted, and to any specification filed, Applioa- under the provisions of this act: Provided always, tionsfor |.jjg^j. g^Y applications for leave to enter a disclaimer disclaimers '^^ and caveats or memorandum of alteration shall be made, and c^ceof ^^^ caveats relating thereto shall be lodged at the commis- officc of the Commissioners, and shall be referred to sioners. ^^^ respective law officers in the said first-recited act mentioned : Provided also, that every such dis- claimer or memorandum of alteration shall be filed in the office appointed for filing specifications in Chancery under this act, with the specification to which the same relates, in lieu of being entered or filed and enrolled as required, by the said first- recited act, or by the act of the session holden in the twelfth and thirteenth years of her Majesty, chapter one hundred and nine, and the said acts shall be construed accordingly: Provided also, that such filing of any disclaimer or memorandum of alteration, in pursuance of the leave of the law officer in the first recited act mentioned, certified as therein mentioned, shall, except in cases of fraud, be conclu- sive as to the right of the party to enter such dis- claimer or memorandum of alteration under the said STATUTES. 73 acts and this act ; and no objection shall be allowed 15 & 16 to be made in any proceeding upon or touching such '" ' °" letters patent, specification, disclaimer, or memoran- dum of alteration, on the ground that the party en- tering such disclaimer or memorandum of alteration had not sufficient authority in that behalf : Provided also, that no action shall be brought upon any letters patent in which or on the specification of which any disclaimer or memorandum of alteration shall have been filed in respect of any infringement committed prior to the filing of such disclaimer or memorandum of alteration, unless the law officer shall certify in his fiat that any such action may be brought, notwith- standing the entry or filing of such disclaimer or memorandum of alteration. XL. All the provisions of the said act of the fifth Provisions and sixth years of King William the Fourth, for the w.4, c. 83, confirmation of any letters patent, and the grant of ^ ^^ ^'*l'- , n 11 1 • ■ ,- , . , c. 67, and new letters patent, and all the provisions or the said 7 & 8 Vict. act, and of the acts of the session holden in the "• ^9' ^ '° . confirma- second and third years of her Majesty, chapter sixty- tion and seven, and of the session holden in the seventh and P.™'°°S*- . . . tion, to eighth years of her Majesty, chapter sixty-nine, re- apply to spectively, relating to the prolongation of the term ^e^^Ts act of letters patent, and to the grant of new letters patent for a further term, shall extend and apply to any letters patent granted under the provisions of this act ; and it shall be lawful for her Majesty to grant any new letters patent, as in the said acts mentioned, and in the granting of any such new letters patent her Majesty's order in council shall be a sufficient warrant and authority for the sealing of any new letters patent, and for the insertion in such new letters patent of any restrictions, conditions, and provisions, in the said order mentioned ; and the Lord Chancellor on the receipt of the said order in council, shall cause letters patent, according to the tenor and effect of such order, to be made and sealed H 74 THE NEW PATENT LAW. V ^ ^^83 ^^ *^^ manner herein directed for letters patent is- sued under the warrant of the law officer : Provided always, that such new letters patent shall extend to and be available in and for such places as the original letters patent extended to and were available in : Provided also, that such new letters patent shall be sealed and bear date as of the day after' the expira- tion of the term of the original letters patent which may first expire. In actions XLI. In any action in any of her Majesty's supe- ment of"^*' ™^ courts of record at Westminster or in Dublin letters pa- for the infringement of letters patent the plaintiff t^cuia^sto shall deliver with his declaration particulars of the be deliver- breaches complained of in the said action, and the evidence defendant, on pleading thereto, shall deliver with his allowed not p]eas, and the prosecutor in any proceedings by scire therein, facias to repeal letters patent shall deliver with his declaration, particulars of any objections on which he means to rely at the trial in support of the pleas in the said action or of the suggestions of the said de- claration in the proceedings by scire facias respec- tively ; and at the trial of such action or proceeding by scire facias no evidence shall be allowed to be given in support of any alleged infringement or of any objection impeaching the validity of such letters patent which shall not be contained in the particu- lars deUvered as aforesaid : Provided always, that the place or places at or in which and in what manner the invention is alleged to have been used or pub- lished prior to the date of the letters patent shall be stated in such particulars: Provided also, that it shall and may be lawful for any judge at chambers to allow such plaintiff or defendant or prosecutor re- spectively to amend the particulars delivered as afore- said, upon such terms as to such judge shall seem fit: Provided also, that at the trial of any proceeding by scire facias to repeal letters patent the defendant shall be entitled to begin and to give evidence in support STATUTES. 75 of such letters patent, and in case evidence sball be 15 & 16 adduced on the part of the prosecutor impeaching the ^"^'" "' ^^' validity of such letters patent, the defendant shall be entitled to the reply. XLII. In any action in any of her Majesty's su- Courts of perior courts of record at Westminster and in Dublin '""^ay for the infringement of fetters patent, it shall be law- grant in- ful for the court in which such action is pending, if iasfoAn- the court be then sitting, or if the court be not sitting fringement. then for a judge of such court, on the application of the plaintiff or defendant respectively, to make such order for an injunction, inspection, or account, and to give such direction respecting such action, injunc- tion, inspection, and account, and the proceedings rtierein respectively, as to such court or judge may seem fit. XLIII. In taxing the costs in any action in any Particulars of her Majesty's superior courts at Westminster or '° ^? "I®." -i-.il- II- • » garded in in Dublin, commenced atter the passing of this act taxation of for infringing letters patent, regard shall be had to ''°*'^" the particulars delivered in such action, and the plaintiff and defendant respectively shall not be al- lowed any costs in respect of any particular unless certified by the judge before whom the trial was had to have been proved by such plaintiff or defendant respectively, without regard to the general costs of the cause ; and it shall be lawful for the judge before whom any such action shall be tried to certify on the record that the validity of the letters patent in the declaration mentioned came in question ; and the record, with such certificate, being given in evi- dence in any suit -or action for infringing the said letters patent, or in any proceeding by scire facias to repeal the letters patent, shall entitle the plaintiff in any such suit or action, or the defendant in such proceeding by scire facias on obtaining a decree, decretal order, or final judgment, to his full costs, charges, and expenses, taxed as between attorney and 76 THE NEW PATENT LAW. 15&16 Vict. c. 83. Payments and stamp duties on letters pa- tent to be as in sche- dijle. Duties to be under manage- ment of commis- sioners of client, unless the judge making such decree or order, or the judge trying such action or proceeding, shall certify that the plaintiff or defendant respectively ought not to have such full costs : Provided always, that nothing herein contained shall affect the juris- diction and forms of process of the courts in Scot- land in any action for the infringement of letters patent or in any action or proceeding respecting letters patent hitherto, competent to the said courts : Provided also, that when any proceedings shall re- quire to be taken in Scotland, to repeal any letters patent, such proceedings shall be taken in the form of an action of reduction at the instance of her Majesty's advocate, or at the instance of any other party having interest with concurrence of her Ma- jesty's advocate, which concurrence her Majesty's advocate is authorised and empowered to give upon just cause shown only. XLIV. There shall be paid in respect of letters patent applied for or issued as herein mentioned, the filing of specifications, and disclaimers, certificates, entries, and searches, and other matters and things mentioned in the schedule to this act, such fees as are mentioned in the said schedule ; and there shall be paid unto and for the use of her Majesty, her heirs and successors, for or in respect of the war- rants and certificates mentioned in the said schedule, or the vellum, parchment, or paper on which the same respectively are written, the stamp duties men- tioned in the said schedule; and no other stamp duties shall be levied, or fees, except as hereinafter mentioned, taken in respect tQ;.such letters patent and specifications, and the matters and things in such schedule mentioned. XLV. The stamp duties hereby granted shall be under the care and management of the commission- ers of inland revenue ; and the several rules, regula- tions, provisions, penalties, clauses, and matters con- STATUTES. 77 tained in any act now or hereafter to be in force ^ & is with reference to stamp duties shall be applicable . l''''^' ' tneretO. revenue. XLVI. The fees to be paid as aforesaid shall from ah monejs time to time be paid into the receipt of the ex- '■«<=eived to chequer, and be carried to and made part of the the conso°li- consolidated fund of the United Kingdom.